The IPAB, in its decision dated 24 February 2014, in Jones Investment Co v. Vishnupriya Hosiery Mills took on the role of somewhat of a guardian for local companies and small business owners against suits filed by larger companies or MNCs.
Jones Investment Company, the Appellant, is an American establishment which uses the trademark, ‘Jones New York’ internationally in relation to apparel, hosiery, footwear, etc. which they had been using since 1966. The Trademark had acquired international reputation and was registered sometime in 1997. The Respondent, Vishnupriya Hosiery, is a textile firm based in Erode, Tamil Nadu. They had applied for a trademark for the name of ‘Jones’ in relation to their textile products which was, quite expectedly, opposed by the Appellants. When the notice of opposition was dismissed by the Deputy Registrar of Trademarks, the Mercian MNC decided to appeal!
The Appellants contended that they enjoyed considerable reputation in the international market and that their registered Trademark had been around since the 60s and that the registration of trademark with respect to the same goods under the name ‘Jones’ by the Respondent would cause confusion and would deceive the consumers. They also contended that the Respondent did not have a large sale volume and their profits did not amount to much and therefore, the Respondents couldn’t claim that they have a reputation in the market.
The IPAB dismissed the Appellant’s contentions and held that; “…a multinational company cannot claim infringement of trademark by a local Indian company purely based on international presence, unless they can expressly establish that their presence extends to India or precedes that of the Indian company.” In taking its decision, The IPAB relied on the Supreme Court decision of Milmet Oftho Industries and Ors v. Allergan Inc. where the Hon’ble Court held thus-
“Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market”
– Ronojoy Basu