Yonex Kabushiki Kaisha vs Registrar Of Trademarks

Manmohan Singh, J

The appellant - Yonex Kabushiki Kaisha has filed an appeal against the Order dated July 30, 2019 passed by the Deputy Registrar of Trade Marks

refusing the application no. 816423 for consideration of the mark YONEX as a well-known trade mark under Rule 124 of the Trade Marks Rules,

2002. The impugned order was received by the appellant on 2nd August 2019 and the appeal was filed on 25th October 2019.

List of dates/events of the present proceedings are given below:-

No one appeared on behalf of respondent nor any counter-affidavit has been filed. After hearing the petition for early hearing was allowed. The

appeal was duly argued.

Appellant's Case

The Appellant filed an application/affidavit dated 26th September, 2018 of Kusaki Hayashida (working as President in Yonex Kabushiki Kaisha)

along with accompanying evidence) before the Registrar of Trade Marks to consider the Appellant's trademark YONEX as a well-known trade mark

under the provisions of Section 2 (1) (zg), Section 11 (6) of the Trade Marks Act, 1999 read with Rule 124(1) of Trade Mark Rules, 2017 by

considering the following facts:

a. Use of YONEX as a trade mark, company name and domain name. The Appellant's trade mark YONEX is a coined word derived from the family

name of its founder, Mr. Minoru YONEyama with letter ""X"" added to make it a coined word.

b. YONEX was adopted in the year 1973. The earliest worldwide registration for the trade mark YONEX dates back to the year 1973

c. YONEX trade mark was used by the Applicant since 1974 in India, its extensive sales and news articles on YONEX trade mark were published in

Indian newspapers/magazines such as Economic Times, The Financial Express, Times of India, Hindustan Times to name a few;

d. YONEX trade mark is registered since the year 1980 in India various classes covering wide range of goods and services

e. Racquets bearing the trade mark YONEX is the choice of various Indian badminton superstars Saina Nehwal and P.V. Sindhu;

f. Value of the goods supplied under the mark YONEX in India was in excess of 130 crores for the year 2017.

g. Appellant sponsored various Badminton Tournaments conducted by the Badminton Association of India (BAI) over the years and BAI signed

Rupees 75 crore sponsorship deal in the year 2018 for three years with the Appellant

h. Sponsorship of various sporting events in India and globally by the Applicant and use of YONEX products at the Olympic Games;

i. Appellant's products bearing YONEX trade mark are also sold online in India through various ecommerce portals such as Amazon India, Flipkart,

Myntra, Snapdeal, Rediff, sportsjam etc. Additionally, webpages on YONEX trade mark created on various social media platforms such as Facebook,

Twitter, Instagram, YouTube etc. Appellant is also the owner of domain name/website www.yonex.com since 1975 and has registered other YONEX

based domain names. Further as the internet is accessible across the world including in India, the knowledge and awareness of the Applicant's

products bearing YONEX trade mark is a foregone conclusion and even more so to the relevant trade.

j. YONEX brand has been declared to be a ""Superbrand"" in India, Indonesia, Singapore, Malaysia and Hong Kong.

k. YONEX trade mark was included in the list of ""Asia's Top 1000 Brands"" (YONEX trade mark was ranked 270).

l. 'Yonex India Private Limited' incorporated in 2016 and its registered office is located at Bangalore.

m. YONEX trade mark has been declared as a well-known mark in Japan;

n. Favourable orders passed restraining 3rd parties from obtaining registration and use of marks identical or deceptively marks to Applicant's YONEX

trade mark

It is submitted by the appellant that the impugned order is mainly based on finding that the mark has to be well known to the substantial segment of

Indian public. The concept of trans-border goodwill and reputation has been recognized in India in large number of decisions rendered by the Hon'ble

Supreme Court and various High Courts, who have considered the aspect of well-known mark. No doubt, in order to declare as to whether the

particular trademark is well known or not, it may be necessary if the user in India may help, but it does not mean that if the mark has a goodwill and

reputation by other means, or the overseas countries cannot be declared as well known trade mark. The said conception and notion is imaginative and

against law.

It is also submitted on behalf of the appellant that the finding of the Respondent that ""a trade mark can be considered as ""well-known"" in India only

when it has attained such recognition in the mind of substantial segment of Indian public is a wrong application of law and is contrary to provisions of

Section 11 (6) & (7) of The Trade Marks Act, 1999. The provisions provides recognition and knowledge of the trade mark in the relevant section of

the public, whereas the Respondent has imputed his own interpretation contrary to the law and held that the mark has to be recognized by the

substantial segment of Indian public.

The impugned order of the Respondent suffers from serious deformities and is contrary to the statutory provisions contained in Section 11(9) of the

Act. The Respondent's finding that the YONEX mark had no recognition in the minds of substantial segment of Indian public is clearly in conflict with

the provisions under Trademarks Act. Thus the order suffers from non-application of mind and is contrary to statutory provisions.

The Respondent has observed in the impugned order that the Appellant's has appreciable business in India; however the application was refused

without giving any cogent reasons. The nature of evidence already filed, the details of which are mentioned in para-4 of my order, it is clear that the

mark is well-known.

The respondent has failed to understand the law where it is held that the user in overseas countries may be recognized in home countries also due

to worldwide goodwill and advertisement of mark in modern media which is also read and seen by this country. The evidence produced by the

appellant established the same.

The Respondent did not consider that that badminton racquets bearing the trade mark YONEX is the choice of various Indian and global badminton

and tennis superstars but not limited to Saina Nehwal, P.V. Sindhu, Srikanth Kidambi, Martina Navratilova, Sergi Bruguera, Richard Krajicek, Lleyton

Hewitt, Martina Hingis, Monica Seles and Paradom Srichaphan;

The Respondent did not appreciate and failed to consider sales invoices and value of the goods supplied under the mark YONEX in India was in

excess of 130 crores for the year 2017. The Respondent further failed to consider that Applicant has sponsored various sporting events internationally

and in India. In India, the Applicant has sponsored various Badminton Tournaments conducted by Badminton Association of India (BAI) over the

years and BAI in the year 2018 signed Rs. 75 crore sponsorship deal for three years with the Appellant.

The Respondent did not consider the Appellant's mark YONEX was honestly and bonafidely coined in the year 1973 and put to use on a

worldwide basis in relation to its products in the year 1974. It is obvious in the evidence that the mark YONEX is known in India at large scale. The

worldwide reputation of the Appellant's mark YONEX and its credibility and availability of the products under the trade mark YONEX in more than

50 countries including in India since 1974 is also not considered by the Respondent.

The Respondent failed to appreciate the worldwide registrations obtained by the Appellant's of its mark YONEX, which is registered in more than

50 countries including in India since 1980, which is also one the aspects coupled with the evidence. The Respondent failed to appreciate that YONEX

brand has been declared as a ""Superbrand"" in India.

The Respondent did not consider the immense goodwill and reputation attained by the mark YONEX in India in the mind of general public, which

is in use since 1974 in India and extensive sales and coverage of YONEX trade mark in Indian newspapers/magazines.

'Tata Sons Ltd. Vs. Manoj Dodia and Others - 2011 ((46) PTC 244 (Del))'

The Court held that well known trademark is a mark which is widely known or recognized by the relevant general public. The Court referred to

Article 6 bis of Paris Convention, 1967 and also Article 16 of TRIPS Agreement 1994. The Court observed that as per Article 16 of TRIPS

Agreement 1994, in determining whether the trademark is well known, the members shall take account of the knowledge of the trademark in relevant

sectors of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark. India

became a signatory of the TRIPS Agreement in the year 1994.

The paragraphs 5, 7, 8, 9, 12 and 13 of the following judgement will help the case of the appellant:-

'Texmo Industries v. Taxmo Aqua Engineering India Private Limited and Others - C.S. No. 50 of 2017 by Madras High Court'

The Court considered the various parameters provided under Sections (6) and (7) of the Trademarks Act, 1999 that are to be taken into consideration

by the Registrar of Trade Marks in declaring a trademark as a well-known mark The Court observed that the parameters revolve around the

recognition of the trademark in the relevant section of the public, in short the reach and exposure that the mark has among the relevant section of the

public.

Thus, in view of above, the impugned order is in contradiction to the settled judicial principles and against the purpose of Trademarks Act which is

to accord protection to the honest and bonafide proprietors of a mark such as the Appellant in this case.

The impugned order dated 30th July, 2019 passed by Respondent no. 1 is, therefore, set-aside as the impugned order is passed without application

of mind and against the law.

The appellant's application No. 816423 bearing the mark YONEX, it is declared that YONEX is well-known trade mark in India also.