IPAB dismisses UK firm's plea to remove trademark Hypnos of Indian firm
Appellate Board said UK-based Hypnos Ltd, which supplies beds to the British Royal Family, failed to prove international reputation spill over to India
The UK company has claimed it was the owner of trademark ‘Hypnos’ for its beds and related products worldwide, and was in existence from 1927, while Hosur Coir Foam had registered ‘Hypnos’ for the classification 20 in 2008, for furniture and goods not included in other classes of various materials. The beds bearing the trade mark ‘Hypnos’ are installed at the palace of Queen Elizabeth XI of the UK, and various other five star hotels in the country.
India’s Hosur Coir Foam had filed an application for registration of trademark ‘Hypnos’ in March 2007 as the proposed user, and had started using it from October 2008.
While the company is the holder of the trademark, Peps Industries, a sister concern, holds the licence for the sale of products.
In 2011, Hosur Coir Foam and Peps had filed a civil suit against Hypnos and Shri Balaji Industries Pvt Ltd, with whom the UK firm had entered into an agreement of collaboration to manufacture and market Hypnos beds in India. “We are in our considered view that the applicant (Hypnos Ltd) has failed to make out any ground for rectification, except making some lofty statements, which are not sufficient to consider the claim at this stage,” the IPAB stated.
They further added, "Therefore, in view of the aforesaid reasons, we are constrained to dismiss the rectification application, as it is devoid of merits."
The UK firm argued it had a transborder reputation spilling over to India and its mark is well known in India. The company argued it has also initiated dialogues with Shri Balaji Industries, Uttarakhand, for a collaboration for manufacture and marketing of its Hypnos beds in India in 2011, only with the intent to use in India.
The Indian firm argued that the local use is must to claim spill over of reputation and for claiming that the mark is well knwon, the UK firm has to show well known of the territory where it claims use of the trademark of almost few decades. It also argued that in an application for rectificaton of trademark from the register, the onus always lies on the applicant to prove his case by producing cogent evidence.
In its findings, the IPAB said that the applicant has failed to establish that indeed the applicant has trans-border reputation due to its long and extensive use of the impugned trademark in question and the impugned trademark Hypnos is well known.
"The applicant has further failed to establish that the trademark "HYPNOS" has attained the reputation and goodwill which has spilled over in to other countries and India. The substantial segments of consumers in India know about the existence of the mark Hypnos as of the foreign entity," said the order.
"The applicant has failed to show any credible evidence in support of the contentions that the Indian consumers actually or link and identify the word Hypnos with them and the use of respondents mark Hypnos would amount to free riding of reputation of the UK firm's mark or is detrimental to the distinctive character or repute of the mark the use of Indian firm's mark will mount to confusion or deception among the public or passing off. Thus the claim of the applicant looks farfetched without any substance and in our considered opinion the applicant has failed also in both the issues," it said.
Hypnos, a family-run business currently managed by the fifth generation in the family, in UK, claims its incorporation in 1926 and has been supplying to the Royal family in Britain. The Keen family have held Royal Warrants, issued by a royal personage to the supplier of goods or services to them, since 1929,and Hypnos has received Royal Warrant for Queen Elizabeth II and covers the category of Bedding and upholstery manufacturers, says the company.
Peps Industries is a Rs 100 crore inner spring mattress manufacturing company based out of Coimbatore with their manufacturing units at North and Western India also. The manufacturing facility comprises machineries from Germany, Sweden and USA featuring some of the world's best like Gribetz International, Leggett & Platt & Spuhl Anderson. Peps is the Indian licensee of world's fourth largest Spring mattress brand Restonic of USA since 1936.