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Judgment
V. Ravi, Technical Member
The appellant in this case are seeking quashing of the order of the Deputy Registrar of Trade Marks, Kolkata dismissing the appellant's opposition
under No. Cal 55349 to the respondent's application 557229 for the registration of trade mark JAGUAR in class 14 in respect of ""watches and parts
thereof but excluding clocks"". The brief facts in support of their case are as follows:-
a. appellants own and use inter-alia several trade marks consisting and/or containing ""JAGUAR"" and/or leaping JAGUAR device which are registered
or pending registration in numerous classes all over the world including India.
b. JAGUAR forms the predominant feature of the appellant corporate name & style,.
c. the appellants earliest registration for the mark JAGUAR in India is under No. 108884 in Class 12 dating back to 27th March, 1945.
d. the appellants are also using the trade mark JAGUAR in relation to watches for the last several years.
e. the impugned mark applied for by the respondent is identical to the appellant's trade mark/name and its adoption is vitiated by dishonesty with a
malafide intention to trade upon and benefit from the reputation and goodwill attached to appellant's trade mark.
f. the registration of the impugned mark will lead to a presumption that the business and goods of the respondent has the approval of the appellant and
thus calculated to deceive and cause confusion leading to dilution of the distinctiveness of the appellant's trade mark JAGUAR. Its registration is
contrary to the provision of the legislation governing trade marks law.
g. the earliest registration of the appellant's mark was obtained in UK in respect of Class 12 goods (automobiles) way back in 1943. By virtue of world
wide registration, long standing global use and publicity in respect of automobiles goods members of the trade and public associate and identify the
trade mark JAGUAR solely with the appellant which has been recognized as a well known mark by various judicial authorities in numerous
jurisdictions.
h. the respondent has given no explanation whatsoever for adoption of an identical mark and this is negation of the scheme and purpose of legislation
governing trade marks law embodied in the preamble to the Act. Consequently, the impugned mark is barred by provisions Section 9 of the Act and
not capable of distinguishing the goods of the respondent. The impugned mark was only 'proposed to be used' and so the balance of convenience is in
favour of the appellant.
i. the appellants have challenged the findings of the Deputy Registrar dismissing its opposition on the ground that it is erroneous in law, facts and
equity. It is alleged that the Registrar has misdirected himself in the appraisal and appreciation of facts as disclosed by the materials on record in the
proceedings before him. Further, he was influenced by the irrelevant facts and erroneously relied on speculative factors which never form part of the
evidence in the case resulting in failure to correctly adjudicate the opposition proceedings. The Registrar had failed to apply the accepted principles of
law in deciding such cases which has impaired and allegedly affected the legal validity of the decision and has wrongly exercised his discretion in the
matter disregarding the basic trade mark principles, equity and natural justice.
j. the Registrar's order is based on extraneous factors and ill-conceived premises. He has observed in his order ""Opponent has not filed any evidence
of use of the trade mark 'JAGUAR' for the goods ""watches"" in India and in fact they appear to have used the trade mark sparingly for the goods
clocks fitted to the dash board of their cars"". This inference is fundamentally flawed for the following reasons: -
i) the appellant had filed substantial evidence in the form of promotional literature, invoices etc. demonstrating consistent use of the mark JAGUAR in
respect of variety of watches and clocks on a commercial scale. The finding that the appellants' mark has been sparingly used and that too in relation
to '""Clocks fitted to the dash board of their cars"" is factually erroneous and absolutely contrary to the material on record.
ii) the Registrar has grossly erred in turning the case on the user requirement in India and employed a parochial and regressive approach disregarding
numerous judicial pronouncement of the Apex court as well as TRIPS Agreement which confers protection to well known mark in Indian irrespective
of their local use or its registration and the nature of goods or services.
iii) the Registrar failed to appreciate the mail order catalogue/brochures relied on by them demonstrating the promotion and distribution of clocks and
watches bearing the trade mark JAGUAR on a global basis including India.
iv) even going by Registrar's inference of the appellant's mark ""JAGUAR"" being used sparingly in respect of "" Clocks fitted to the dash boards of the
Car"", the appellant had discharged the initial burden to establish at least de minimis use and therefore even on this footing, the Registrar had no cogent
reason to swing his discretion in favour of the respondent.
v) another atrocious observation was that ""the brochures and promotional materials filed by the Opponents do not evidence that they have 'the
manufacturing facilities' for the goods watches in India which clearly proves the bias of the Registrar and is contrary to the established principles of
the trade marks law. This is contrary to the settled position in law that the use of a mark may inure to the proprietor even though goods are
manufactured through permitted user, common-law licensees, contact manufacturers etc.
vi) The litmus test of ""manufacturing facilities"" for the appellant for evaluating the registration of the 'proposed to be used' mark of the respondent
clearly exhibits the uneven standards applied vitiating the decision of the Registrar.
vii) The reasoning of the Registrar in exercising his discretion in favour of the respondent that because the appellant had not filed any application for
the registration of the trade mark JAGUAR in class 14 (watches etc.) is inherently flawed and manifestly wrong for the following reasons:
a) the appellant's trade mark 'JAGUAR' has been heralded as a well known mark in numerous cases and in diverse jurisdiction including Japan,
France, China etc.
b) the appellant had succeeded in cancelling the registration of the respondent's trade mark in many jurisdiction including France, Singapore, etc. and
obtained restrained order against the respondents and its affiliates from using the trade mark 'JAGUAR'.
c) the findings of the Registrar that ""The Appellants.... are also prior in use of the trade mark 'JAGUAR' for the goods ""watches"" as is evident from
the exhibits filed along with their affidavit under Rule 51 (E to I)"" is absolutely erroneous and contrary to the materials on record.
d) The exhibit filed clearly indicate that the respondent have been using the impugned mark only since 1989 whereas the appellants have filed
substantial evidence in the form of invoices etc. to demonstrate the use of the mark 'JAGUAR ' in relation to watches since 1983. This illustrates that
the Registrar's findings are factually incorrect, skewed and pre-determined in favour of the respondent.
e) to somehow justify the respondent's case, the Registrar has held that 'JAGUAR' is a common dictionary word and the name of an animal and
therefore no exclusive monopoly rights can be conferred. This reasoning is completely misplaced as in that event how can trade marks like Camel,
Caterpillar, Fox, Kiwi, Eagle etc. be regarded as well-known international brands?
f) The Registrar has purposely overlooked the judicial verdicts delivered by many competent authorities in a majority of jurisdictions affirming the
appellants absolute and unconditional proprietary right in the trade mark JAGUAR. On the contrary, the Registrar has given excessive weight to a few
registration obtained surreptitiously by the respondent in some jurisdiction of less commercial interest to the appellant.
g) the Registrar has placed undue reliance in the respondent's ""one off' registration for the trade mark 'JAGUAR' obtained in 1945 and that too in the
respondent's home country in Switzerland. The world today has completely changed and is more like a global village due to the phenomenal growth of
internet. The Registrar has also failed to evaluate judicially the list of purported registration furnished by the respondent as it is incomplete in several
respects and he has acted on ""absolute faith"" on respondents submissions. The Registrar has been overwhelmed by the co-existence of the appellants
and respondents 'JAGUAR' mark in some jurisdictions without evaluating the material on record presented and accepted it as a fait accompli thereby
over simplifying the situation. The appellant has made every efforts to oppose the respondent's application by exposing the dishonesty and malafide of
the respondents wherever possible. Thus, the international registration under the Madrid Protocol relied on by the respondents has already been
declared void by the court of appeal in France and registration obtained in Singapore for the mark JAGUAR has also been cancelled.
h) the Registrar had allowed himself to mislead by relying on the list of pending applications for JAGUAR in various countries of the world adduced by
the respondent. Further, the Registrar has been swayed by the fallacious submissions that ""there are many marks in the Register consisting of the
word 'JAGUAR' in various classes."". In fact, most of the so called valid registration mentioned in the list by the respondents belong to the appellant
and or its subsidiary or business affiliate or licensee. Other such marks owned by third parties have been cancelled or invalidated or are pending
rectification and cannot be relied upon.
i) The Registrar has also failed to realize that the impugned mark had been applied in bad faith and disqualified from protection as a trade mark under
Section 11(10)(ii).
j) The Registrar is also misdirected himself by carving out a superficial distinction between clocks and watches and allowed the impugned mark to be
registered subject to amendment of the specification of the goods to read as ""Watches and parts thereof included in Class 14 but excluding Clocks"".
This finding is contrary to the ruling in Banga Watch Company Vs. N.V. Philips, Eindhven, Holland & Anr. (AIR 1983 P & H 418), where it was held
that clocks and watches are goods of the same description more particularly since they are sold across the same counter.
k) finally, the Registrar has not dealt on the issue of proprietorship of the impugned trade mark under Section 18(1) and ignored the settled legal
position crystalized in the judgment delivered by the Hon'ble Supreme Court in 'Milment Oftho Industries Vs. Allergan Inc.' 2004(28) PTC 585] that
the ultimate test for proprietorship of a mark would be who is first in the world market. The appellant's adopted the trade mark JAGUAR way back in
1935 and secured its registration in 1943 thereby conferring superior proprietary right on them.
l) in view of the foregoing, the appellants pray that the order of the Deputy Registrar dated 29.09.2006 be set aside/quashed and application No.
557259 be refused registration.
The respondent's case in brief are as follows:-
a. It is a Swiss company engaged in the business of manufacturing, distributing and sale of watches falling in class 14.
b. it is the owner of the mark JAGUAR in class 14 and other related Classes in various countries.
c. its earliest registration in Switzerland dates back to 28.08.1945 obtained by its predecessor SINDACO SA. In October, 1989 the said trade mark
was assigned to the respondent.
d. JAGUAR is a dictionary word and the appellant cannot claim exclusive monopoly right in respect of totally different goods.
e. the respondent's predecessor had honestly adopted the trade mark 'JAGUAR' in respect of watches in 1945 and has been using it openly,
continuously and extensively since then.
f. the respondent is the prior applicant in India for the trade mark 'JAGUAR'. The appellant have applied for the same mark 'JAGUAR' in class 14 on
25.01.1996 under no. 695799 only on a 'proposed to be used' basis which application has been opposed by the respondent herein and the case is
awaiting adjudication.
g. the appellant's mark 'JAGUAR' is co-existing with 45 other registered JAGUAR trade mark in the names of various proprietor.
h. The respondents' mark is registered in 90 countries around the world and co-existing with the appellants mark in 28 countries.
i. Various Courts around the world have decided in favour of the respondent in trade mark opposition initiated by the appellant upholding the
respondent's right in the trade mark JAGUAR including Courts in Zurich, Switzerland, Italy, South Africa and Paraguay. The competing goods namely
watches and Cars are completely dissimilar and never sold through the same outlets and are unlikely to be associated with the goods of the appellants
or respondent or vice versa.
j. the appellants have no reputation or use of their mark JAGUAR in relation to watches in India.
k. the allegation that the respondents has dishonestly and malafidely adopted the mark JAGUAR are baseless and untenable.
l. the impugned mark is distinctive of the respondents goods.
m. the appellants have neither priority of use or adoption or application of the impugned mark JAGUAR in respect of watches either in India or in the
world market and therefore the are entitled for the registration of the impugned mark.
n. the order of the Registrar is based on sound law and correct reasoning.
o. the appellant have failed to establish the word JAGUAR has attained the status of the well known mark before the Registrar.
p. the appellant have not filed a shred of documentary evidence to show use of the mark JAGUAR in respect of watches nor has the appellant filed
any proof of advertisement in India in relation to watches.
q. the appellants mark is not a well known mark in India since the Registrar has granted 45 registration in India alone across various classes.
r. the appellant's claim of prior use of the mark JAGUAR even in respect of watches is preposterous.
s. the Registrar has rightly refused the appellant's opposition as he was not bound by the decision of the Kenyan and Singapore Registrar's finding on
the said mark.
t. the respondents take strong objection to the malicious language used by the appellant like ""surreptitiously'. There is nothing surreptitious about
applying for and obtaining registration of a trade mark under due process of law.
u. the respondent was the first to adopt the mark JAGUAR in respect of watches.
v. the entire proceeding is vitiated and vexatious born out of trade rivalries. The allegation that the respondent had applied for the impugned mark in
bad faith or that there has been any distortion, suppression or concealment of material fact is utterly false and unfounded.
w. although the impugned mark was applied for on a 'proposed to be use basis' its refusal at this stage would cause serious prejudice to the
respondent.
x. the ruling of the Hon'ble Supreme Court in the cited case is not applicable to this proceeding as the mark Occuflox was a coined word and
inherently distinctive whereas the impugned mark is an ordinary dictionary word.
y. in view of the foregoing, the prayer to refuse the impugned trade mark is totally untenable, unsustainable and liable to be rejected. The order of the
Registrar is absolutely correct, based on sound appreciation of the principles of law and facts placed before him. Accordingly, this appeal is liable to be
dismissed with exemplary as well penal costs.
The appellant have filed a reply to the counter statement the gist of which is as follows:-
a. it is alleged that the counter statement is replete with bald denials and baseless statement. The stand of the respondent is ambiguous and does not
attempt to address the real issues involved and therefore it is vague, frivolous and lacks merit. The respondents have sought to adduce various
evidences as annexures in the counter statement as a additional evidence without adhering to the provisions envisaged in Order XL 1 Rule 27 of CPC
and so these documents deserve to be ignored and no reliance placed thereon.
b. the rest of the reply is a denial of the all the material averments which are contrary to or inconsistent with the claims and assertion made by the
appellant in their grounds of appeal.
The matter was listed for hearing before us on 5th December, 2012 when both the learned counsel advanced arguments for the respective parties.
We have also gone through pleadings and records of the case.
The appellant have filed copious evidence in support of the rectification application including evidence filed at the opposition stage before the
Registrar which was relied on. Scrutiny of these materials are crucial to decide the outcome of this petition. It includes an affidavit of one Donald
Aiken, Chief Trade Mark Counsel for Ford Motor Company which then owned JAGUAR Cars Limited. In it the deponent states that the trade mark
JAGUAR was registered in India in 1945 under No. 108884 in Class 12. They have other registration in Class 9 & 25 also. It is stated that a range of
JAGUAR products is distributed through a wholly owned subsidiary namely the JAGUAR Collection Limited including leather belts, novelty items,
sports accessories, perfumes, chronological instruments including watches, sun glasses etc. Distribution of goods bearing the trade mark JAGUAR is
also made through 'employee shops' located at or close to motor car manufacturing facilities in UK and accessed by all visitors. The appellant also
have a licensing programme authorizing third party companies to jointly manufacture and/or distribute products bearing the trade mark JAGUAR with
quality standard and specification set by the appellant. JAGUAR Motor Cars are high quality prestige products and the appellant have complete
control of the distribution of spare parts replacement for Cars. The trade mark JAGUAR has been published and advertised frequently in all
international news papers including the Daily Telegraph, Financial Times, The Times, The Economist etc. The trade mark JAGUAR has become so
famous that it has been acknowledged in a book titled ""BRANDS"" published by Mercury Business Books. The appellant are also in the business of
MOTOR racing and have won the Le Mans 24 hours race in 1951/1953/1955/1956/1957/1988 and 1990. It has also won the Worlds Sports Cars
Championship in 1988 and 91. The appellant has also enclosed a write up by one Andrew Whyte on the definitive history of The great British
JAGUAR cars. Thus by virtue of worldwide proprietorship of the trade mark JAGUAR and the tremendous goodwill and global fame for more than
seven decades, the mark is omnipresent throughout India and its trans-border reputation flows through various mediums including internet site,
circulations of magazines etc. In fact the trade mark JAGUAR is ranked 17th in the Asian Wall Street Journal survey conducted in respect of highly
regarded brand names in the world. The appellant has never hesitated to take legal action wherever necessary and has never acquiesced the use of
the impugned mark by the respondent.
Case Laws Relied On By The Appellant:
a. ""Daimler Benz Aktiengesellschaft and another Vs. Hybo Hindustan"" -IA. NO. 5843 of 1993 in Suit No. 1388 of 1993 -Hon'ble Delhi High Court
it will be a great perversion of the law relating to trade marks and designs, if a mark of the order of 'Mercedes Benz' its symbol, a three pointed star, is
humbled by indiscriminate colourable imitation by all or anyone---such marks are not up for grabs.
b. ""Banga Watch Company Vs. N.v. Philips, Eindhoven, Holland and Another""-First Appeal No. 61 of 1973 -High Court of Punjab and Haryana
The trade mark 'Philips' has become a household word and has acquired enviable reputation in India and throughout the world and is associated by the
public and traders with the goods of the plaintiff.
c. ""Honda Motors Co. Ltd. Vs. Mr. Charanjit Singh and Ors."" -IA No. 12971/00 Suit, No. 2785/00 in the High Court of Delhi
The mark HONDA connotes distinctiveness, reputation, quality and goodwill acquired by the plaintiff over a number of years and is understood by the
consumers as associated with the plaintiff. The defendants have adopted the mark Honda deliberately with an intention of creating a subtle association
between their activities and that of the plaintiff.
d. ""N.R. Dongre and Ors. Vs. Whirlpool Corpn. and Anr. 1996-1996 VI AD(SC)710
The mark name 'WHIRLPOOL' is associated for long with WHIRLPOOL Corporation. The fact that the defendants Washing Machine is 1/3rd the
cost of the plaintiffs washing machine, itself supports the plaintiffs plea that the defendants product are not of the same engineering standard and are
inferior in quality to the washing machines of the plaintiff.
e. ""Milment Oftho Industries & Ors. Vs. Allergan Inc. "" 2004(28) PTC 585 (SC)
The mere fact that the respondents have not been using the mark in India would be irrelevant if they were the first in the world market.
f. "" Prakash Roadline Ltd. Vs. Prakash Parcel Service (P) Ltd. ""-Interim Appln. Nos. 14319 and 14690 of 1991 and Suit No. 3807 of 1991 48(1992)
DLT 390 14319and 14690 of 1991 and Suit No. 3807 of 1991 48(1992) DLT 390
The word 'Prakash' has acquired a secondary meaning in the trade on account of long use in transport business. Even educated or qualified person
liable to be deceived.
Balance of convenience in plaintiff favour to grant injunction.
The Following Case Laws Were Relied On By The Respondent:
a. "" Sony Kabushiki Kaisha Vs. Shamrao Maskar and others ""-AIR 1985 BOMBAY 327 PENDSE J.
Registration of the mark 'SONY' in respect of 'nail polish' is not likely to cause confusion or deception in the mind of customers. Electronic goods and
nail polish are items pole apart-not sold under one roof-no common field of activity-class of customers are distinct and different.
b. ""Allianz Aktiengesellschaft Holding Vs. Allianz Capital & Management Services Ltd.""- 2002(24) PTC 177(Del.)
Dispute revolved around use of the word 'ALLIANZ' used by a Gamon Company for non-banking finance. Defendant an Indian Company changed
its name from 'Asthana' to 'Allianz' and reasons explained. Petitioner not carrying on business in merchant banking. Held, defendant entitled to us the
word 'Allianz' for its investment and financial sector.
c. ""Raymond Limited Vs. Raymond Pharmaceuticals Private Ltd. ""-Notice of Motion No. 661 of 2006 in Suit No. 437 of 2006 in the Hon'ble High
Court of Bombay; 2007(35) PTC 334
Plaintiff registered trade mark 'Raymond' for wearing apparels. Defendant a pharm company using the word 'RAYMOND' as corporate name-
showed it is common dictionary word-No attempt to derive unfair and advantage or cause damage to plaintiffs mark Suit for injunction dismissed.
d. ""Hero Cycles Pvt. Limited Vs. Hero Agricultural Industries and Dy. Registrar of Trade Marks""-- TA No. 314/2004/TM/DEL(CM(M) 321/1983)-
IPAB.
Respondent applied for 'HERO' for wheels and axles by animal driven vehicles in Class 12. Registration allowed though opposed by 'HERO
CYCLES'-Appeal dismissed by Board holding competing goods are different as also trade channel.
e. ""Vinayak Tea Co. Vs. Kothari Products Ltd. on 5th April, 2002.""-Allahabad High Court-2002(2) AWC 1448
The objection of appellant is that respondent company is selling tea with the trade name 'PARAG CHAI' albeit the wrappers used are totally different
in size, shape and colour. Plaintiff/respondent registered 'PARAG' for pan masala. Ex-parte injunction order obtained from Court below. Appeal
allowed and injunction vacated.
f. ""Municipal Corporation for Greater Bombay Vs. Lala Pancham of Bombay and Ors. "" - AIR 1965 SC 1008
Under r. 27 the High Court has the power to allow a document to be produced and a witness to be examined. But the requirement of the High Court
must be limited to those cases where it found it necessary to obtain such evidence for enabling it to pronounce judgment. This provision does not
entitle the High Court to let in fresh evidence at the appellate stage where even without such evidence it can pronounce judgment in a case. It does
not entitle the appellate court to let in fresh evidence only for the purpose of pronouncing judgment in a particular way. In other words, it is only for
removing a lacuna in the evidence that the appellate court is empowered to admit additional evidence. The High Court does not say that there is any
such lacuna in this case. On the other hand what it says is that certain documentary evidence on record supports ""in a large measure"" the plaintiffs'
contention about fraud and malafides. We shall deal with these documents presently but before that we must point out that the power under cl. (b) of
sub-r. (1) of r. 27 cannot be exercised for adding to the evidence already on record except upon one of the grounds specified in the provision. If the
documents on record are relevant on the issue of fraud the court could well proceed to consider them and decide the issue.
Brief summary of arguments of the appellant's counsel
The appellant are the owners of the trade mark JAGUAR for cars and also watches. The respondent had filed an application for registration of the
impugned mark for watches on 21.08.1991 on a 'proposed to be used' basis. The appellants had filed an application for watches in 1996. JAGUAR
was first coined by them in 1938. The appellant hold over 800 registration worldwide for cars and other merchandise including watches under the
trade mark JAGUAR. Our attention was invited to various Exhibits: Exhibit A (first registration in UK on 13.10.1943; Exhibit B (page 42) to show
world wide registration and in India as of 27.03.1945; page 281 (index of sale); Exhibit E (page 310) (invoice dated 17.09.1998); page 330 (first
invoice for sale of watches in 1983); page 380 Exhibit-I to show sale of clocks and gents watches under the trade mark JAGUAR; details of
advertisement expenses from page 393 upto 414; Exhibit K ((page 415 onwards) excerpts from various magazines; page 440 orders passed by various
courts confirming the extraordinary brand reputation of JAGUAR. The counsel reiterated the issues raised in the pleading and asserted that the
impugned mark needs to be refused and the registrar's order are clearly malafide.
Respondent's argument
It was argued that the impugned mark was adopted in 1945 and registered in Switzerland for watches in Class 14. Appellant's first registration was in
1943 in U.K. Thus there is a gap of just two years and also the appellant's mark could not have influenced the adoption of the same mark for
dissimilar goods by the respondent. The appellant's have reputation only for cars. The impugned mark is in use in several countries and no case of
confusion reported. The respondent had applied for the impugned mark in India on 27th August, 1991. The appellant mark is not used in India and
certainly not in respect of watches. There is not a single invoice that pertains to sale in India. The respondents are the prior applicant in India. There
are 45 registered trade mark JAGUAR in India including one by British Aero Space in Class 3, 12 and 16 that are co-existing in the register. The
purported well-knowness of the appellant mark does not extend to other goods. The appellant have very little and sporadic use in India for promotional
purpose. Nowhere has the respondent misled the Registrar. The Kenyan and Singapore Registry rulings are not part of the finding and the recital
submission which is being misquoted. There is nothing surreptitious in the adoption and use of the respondent impugned mark for watches in India.
Reference to page 593 to the affidavit are self-serving documents and credit card statement is not proof of actual confusion in U.K. and the document
itself is suspect as it is signed at New Delhi. Further, it is not a sworn testimony. The Philips and Barga Watch Co. cases are distinguishable as the
trade channel in those cases were the same and not so here.
Rebuttal submissions
The appellant doubted whether the original registration was still valid as there was variation in registration number in subsequent renewals after 1945,
in 1965 and 1985 which is unaccounted for. The first invoice of the respondent is from 1989. It appears the respondent took a fresh registration in
1985. The appellant have been already in the global market some 54 years before the impugned mark was seriously used from 1989 onwards by the
respondent. The appellant also rubbished the alleged registration of 45 other JAGUAR mark in India stating 26 of those belongs to the appellants
themselves and remaining under opposition or rectification. The appellant finally concluded that this is clear case of tarnishing and dilution of the
appellants mark. They also placed reliance on all the supporting documents placed before the registrar in the opposition proceeding.
The main purpose of trade mark registration is to protect the distinguishing power of the trade mark. The Act seeks to protect the commercial
value of the mark that are registered. An infringer slowly whittles away the trade marks distinctiveness. Why are the appellant herein so agitated?
Their primary fear is 75 years of huge brand building exercise is sought to be diluted by the use of an identical mark albeit for non-competing goods
and thereby lose its capacity to signify a single source. The strength of the appellant mark JAGUAR is not in dispute. It is an instantly recognizable
brand. The question is does its reputation extend to products other than car and automobiles. In India such protection is extended by the concept of
well known mark. One of the legal effect of the various provisions relating to well-known mark embodied in the Act is that the registrar shall not
register a trade mark which is identical to an earlier trade mark (which subsumes the concept of well known mark) in a manner that is likely to have
the effect of depreciating the value of goodwill attached thereto. These provisions has to be co-jointly read with the concept of transborder reputation
in India. The appellant's apprehension here is the respondents are enticing customers in India on the strength of the appellant's fame which will
depreciate the value of goodwill attached to JAGUAR Car manufacturers which in some jurisdiction are regarded as reputation leeching and
outlawed. So our main task here is to examine whether the Registrar fell in error in allowing the registration of the impugned mark and could not
foresee the impact of his ruling and whether his findings were in conformity with the language and intended purpose of the Act. The operative part of
the registrar's finding are reproduced below.
I have gone through the written submissions of both the parties. Admittedly the Opponents application in class 14 for registration of identical mark to
that of the applicant in India is subsequent to the impugned application. Also the Opponents have not filed any evidence of use of the trade mark
'JAGUAR' for the goods ""watches"" in India and in fact they appear to have used the trade mark sparingly for the goods ""clocks fitted to dash boards
of their cars"". There is no evidence on record filed by the Opponents in support of their use and advertisement of the trade mark 'JAGUAR' in India.
It is correct that the Opponents' first registration relates back to the year 1945 for the goods in class 12 but their application in class 14 is much
subsequent to the impugned application. The brochures and promotional materials filed by the Opponents do not evidence that they have the
manufacturing facilities for the goods watches. The Opponents have no registration of the trade mark 'JAGUAR' in class 14 and in fact their class 12
registration for the mark 'JAGUAR' under No. 482715 is only for a device of a jumping jaguar and their other application under No. 794889 is stated
to be pending. The applicant are prior in filing the impugned application to the Opponents and are also prior in use of the trade mark 'JAGUAR' for the
goods ""watches"" as is evident from the exhibits filed along with their affidavit under Rule 51 (E to I). It may be stated here that the word 'JAGUAR' is
a common dictionary word and there is no evidence of any dishonest adoption, as attributed by the Opponents on the part of the applicant. The
applicant are having a number of registrations of the trade mark 'JAGUAR' in more than 30 countries of the world and the rival marks of both the
parties are co-existing. The applicant have been granted registration in many countries of the world. I do not find any reason as to why it cannot co-
exist in India especially when the Opponents are much subsequent to the present applicant in making the application for registration of the word
'JAGUAR' in India. There are many marks on the Register consisting of the word 'JAGUAR' in various classes. The Opponents' objection to the
registration of the impugned mark on the basis of well-known status of their mark cannot hold good in these proceedings on account of the fact that
they have failed to substantiate and establish by evidence, the status of a well-known trade mark, in these proceedings. Moreover the goods watches
and cars cannot be held to be the goods of similar specification. I am conscious of the fact that once the well-known status of a trade mark is
recognized, irrespective of the specification of the goods, it can be an obstacle in the registration of a similar mark, but at the same time it may be
mentioned here that the Opponents have failed to substantiate the fact that the word 'JAGUAR' has attained the well-known statutes in terms of
Section 11 of the Act in these proceedings as stated earlier. I have no hesitation in allowing the impugned application for registration which is much
prior to the Opponents' application in the same class. However keeping in view the overall facts and circumstance of the case and keeping in view the
evidence filed by the parties, the application shall proceed further with the specification of goods to read as ""Watches and parts thereof included in
class 14 but excluding clocks.
There are certain observations of the Deputy Registrar that needs to be looked into:
(a) the Opponents (appellant herein) have not filed any evidence of use of the trade mark 'JAGUAR' for watches.
(b) the appellant have used JAGUAR sparingly for watches in India.
(c) there is no evidence of use and advertisement of JAGUAR in India.
(d) brochure and promotional materials of the appellant do not evidence that they have any 'manufacturing facilities' in India.
(e) the opponents/appellant hold no registration for JAGUAR in Class 14 for watches.
(f) the respondent/applicant are prior in filing the impugned mark for watches.
(g) JAGUAR is a common dictionary word
(h) both the appellant's and respondent mark are co-existing in over 30 countries.
(i) there are many marks on the Register consisting of the word JAGUAR in various classes.
(j) the appellant have not established that JAGUAR is well known mark
The set of cumulative reasons advanced almost makes a cast iron case to permit the registration of the impugned mark and send the appellant's
JAGUAR to the orbit and as of little consequence. The first error is not appreciating that appellants mark need not be registered in a particular class
(14) to receive protection. The appellant are the prior registrant in India since 1945 for auto products 46 years later another entity seeks protection of
same mark in another class for watches. Companies invest large sum of money to create brand recognisation. The Deputy Registrar took a stand that
the enforceable trade mark rights of the appellant's JAGUAR would arise from the actual use of it in commerce in India which in this case for
watches was not established. He has completely ignored the reputation of the appellants mark. The appellant's mark JAGUAR is a luxury brand with
extensive exposure over the years in India and world over. The appellant have furnished over 1600 pages of exacting proof and extraordinary
evidence of fame to establish that the respondent is a copycat. It includes consumer recognisation surveys, exposure in movies, TV magazines,
internet publications, blogs, sales outlets frequented by international tourist etc. Changing market realities not only lead a similarity or relatedness
between goods or services that would not have been considered as similar or competitive a century ago, but also contributes to the creation of new
categories of confusion, to wit-confusion of sponsorship or approval; confusion of business affiliation; initial interest confusion; post sale confusion etc.
In the light of this, the reasoning that the respondent were prior applicant for watches for the impugned mark JAGUAR even if factually correct is an
artificially constructed and laboured justification to sneak the impugned mark into the register more particularly so once it was lawfully opposed by the
appellant. The finding that there is no evidence of use and advertisement is contrary to the material on record. Yes, one may infer appellants
JAGUAR has not been used for watches as such but the ruling that there is no advertisement is palpably a false statement. The registrar has
concocted a new and novel test of 'manufacturing facilities' in India to draw an inference of non-use. This is a unheard of theory in trade marks
jurisprudence and almost amounts to a trade barrier not envisaged by law. Similarly, the other reason for dismissing the opposition being that the
appellant are not registered in class 14 for watches is both illogical and fallacious. This is contrary to section 21 which states 'any persons' may file an
opposition in the prescribed manner. Further, the inference that the respondent is prior applicant for watches is no justification to dismiss a valid
opposition. Then again just because JAGUAR is a common dictionary word gives no license for any person to freely grab it for adoption and abuse
without any regard to the market realities of how big that word has grown across nations. This is a good example of free riding on someone else
goodwill. Another laboured justification is the impugned mark co-existing in 30 other jurisdiction. We should remind ourselves that Indian IP laws
including The Trade Mark Act are world class legislation by far superior to most countries and the registry should not lower its guards in granting
registration to copycat. Another futile justification is that there are many JAGUAR mark in the register. This is one more example to bulletproof the
argument of the respondent. This has also been effectively rebutted by the appellant. It only shows undue eagerness, excessive zeal and mental
gymnastic exercised by the Deputy Registrar to push the impugned mark in the register. Finally, the registrar has categorically ruled that JAGUAR is
not well known mark in India. It is a reckless and illegal conclusion without a critical analysis and it is findings like these that dent the image of the
Registry with its varying level of generalities and infraction of the law. However, we are not here adjudicating on that issue except to state that lack of
alleged well knowness is a sure shot insurance and passport for the respondent to happily enjoy monopoly on the word JAGUAR for watches.
The respondent have placed heavy reliance on classification of trade mark and the fact that the competing goods fall in different classes. That
may be so. But classification is only an administrative tool for the registry for search purpose and is not a fail proof test to eliminate likely market
confusion. It effectively does not advance the respondent's case one bit. All things considered, we conclude that the registrar's order is full of
infirmities and exhibits pronounced bias necessitating the Board to step in to right a terrible wrong. Accordingly OA/21/2008/TM/KOL is allowed and
application No. 695799 in Class 14 is refused registration. There is no order as to costs. Miscellaneous Petition No. 53/2008 is closed.