US company moves HC to quash trademark permission given to TN-

An American apparel company has moved the Madras High Court to quash trademark persmission given to an Erode-based firm in Tamil Nadu for marketing products under the brand name "Jones."
The first bench, comprising Chief Justice Sanjay Kishan Kaul and Justice M M Sundresh, had yesterday ordered issue of notices to the Intellectual Property Appellate Board (IPAB), its Deputy Registrar of trademarks and the Erode-based firm on a petition by the Jones Apparel (UC) LLC alleging infringement of its brand right.
The company submitted that the IPAB delivered the order of giving permission to the Erode based firm in March 2010 after reserving its verdict in March 2004.

The company submitted that it had been making and marketing "Jones Ney York" and "Jones New York Signature" as its brands for its clothing in more than 35 countries since 1966. In order to obtain staturoy protection for its products, it had obtained trademark for its apparels and variants in more than 45 countries.
"The brand is well known all across the world" the company submitted, adding the Erode-based firm had filed trademark application for the brand "Jones" in 1994.
After it was advertised in Trade Marks Journal in March 2001, the US company filed a notice of opposition in July. The IPAB duly took up the matter for hearing and its Deputy Registrar of trademarks reserved his verdict in March 2004.

The US company took a stand that the Erode firm had "slavishly imitated and adopted its internationally well known trademark with malafide intention of passing off the latter's goods as those of the original Jones brand. It will result in complete erosion of the distinctiveness attached to its trademarks and dilute its goodwill and reputation".
The Deputy Registrar of IPAB in his March 9, 2010 order concluded that there was no question of causing any confusion, as the US company itself had admitted that it did not use its trademark for business in India, against which the present petition was filed, saying the order had been passed six years after the arguments were over.

The first bench quoted the senior counsel for the US company as saying that more than six years of lapse of time in pronouncing the order by the Deputy Registrar of trademarks actually resulted in practical loss of all arguments made by the US company and adjourned the matter to April 7 for further hearing.