M/S. Jain Electronics v. Cobra Cables Pvt. Ltd. And Ors.
2011 (45) PTC 52 (Del)
On 19th November 1987, Jain Electronics (Petitioner) applied to register the mark “COBRA” in respect of voltage stabilizer and parts and fittings thereof included in Class 9 and the said mark were subsequently advertised in the trademarks journal dated 1st February 1992.
Cobra Cables Pvt. Ltd.(Respondent No1) filed a notice of opposition, before the Registrar of Trade Marks, against such registration stating that they were engaged in the business of manufacturing electrical instruments under the trademark “Cobra” which was part and parcel of their trading style. They also stated that the mark Cobra was registered in their favor and was being renewed from time to time.
The Deputy Registrar refused to register the trademark “COBRA” in favor of Petitioner. The Deputy Registrar held that with the mark of Respondent No. 1 being identical and being registered, acceptance of the application of the Petitioner for the same mark would cause confusion and, therefore, cannot be allowed. It was held that triple identity test, i.e. the mark being identical, the goods being of same description and the area of sale or the sales channel being the same stood satisfied.
Petitioner challenged the order of the Registrar before the Intellectual Property Appellate Board (IPAB). IPAB concurred with the findings of the Deputy Registrar and dismissed the Appeal of the Petitioner.
Against the order of the IPAB, Petitioner filed the present writ petition before the Hon’ble High Court of Delhi.
Petitioner has been using the mark since 1978 and the Deputy Registrar as well as IPAB failed to appreciate the said fact.
Respondent No1’s Contention:
The mark “Cobra” had been registered in their favor and it was originally owned by M/s.M.P Electric Company and was transferred to M/s. Cobra Cables who in turn had assigned the mark to Respondent No. 1 by an instrument of assignment.
On Petitioner’s Claim of use since 1978:
Invoices produced by the Petitioner are 1984 onwards. Many of them do not show the sale of voltage stabilizers with the name of Cobra, although the mark figures in the top position of the invoices. Learned counsel for Respondent No.1 is right in pointing out that the user had to be in relation to the goods and mere the invoices without co-relation to goods are irrelevant.
On triple identity test being satisfied:
The mark has been registered in favor of Respondent No. 1 in respect of goods which included electrical apparatus. The Petitioner sought registration of an identical mark in respect of voltage stabilizers. Use of an identical mark in respect of the two goods is bound to cause deception and confusion in the market. The Deputy Registrar and the IPAB concurrently concluded that the triple identity test stood satisfied in the present case, particularly since the description of the goods is the same, the area of the sale and the trade channel are the same.
The Hon’ble Court also concurred with the view of Deputy Registrar and IPAB.
Therefore, the petition was dismissed.
Author: Anjali Bisht, Law College, Dehradun