SEJAL MAKKAD | AMITY LAW SCHOOL, AMITY UNIVERSITY CHHATTISGARH | 21st May 2020
Gomzi Active v. Reebok India Co & Anr. 2007 (34) PTC 161 (SC)
Facts:
The appellant was of contention that the slogan “I am what I am” was being used by them since 1998 for selling their garments and they had copyright over them. They claimed that it was their trademark. The same was being used by the company Reebok and the appellants were against it. According g to them, the use of same slogan by both the companies will mislead the consumers and will detoriate the position and market value of them.
Issue:
- Whether the use of slogan by Reebok an infringement of trademark or not?
- Whether the use of slogan by defendant infringing the intellectual property rights of the appellant?
Charges:
- Section 2(1)(w), Trade Marks Act
- Section 27(1), Trade Marks Act
Contention of Defendant:
The slogan used by the appellant was not registered under Government’s register as a trade mark and as per Section 2(1)(w), Trade Marks Act, till the slogan is not registered as a trade mark, copyright over it cannot be claimed.
According to Section 27(1) of the same act no none can institute a claim for recovery of damage for any trade mark unless it is registered in Trade marks register.
Judgement:
The appeal was dismissed and no injunction was ordered to the defendant because the slogan was not registered under trademark register and until it is registered; it can be used by other parties too.
Reasoning of Judgement:
The appellant used the slogan for selling arguments whereas the defendant used it for other purpose so the customers cannot be deviated by the use of same slogan. Also, the defendant does not use it in a sense the appellant does.
Significance:
The judgement explains us the significance of getting the trademark registered. The trademark if not registered can be used by other companies too. This can be harmful for the company’s reputation and can also take away the uniqueness of the company’s products too. Therefore, its necessary to get it registered because without registration court will alos not take any action against any company.
[…] To understand deceptively similar trademarks, we will have to delve into Section 9 and 11 of The Trademarks Act, 1999. As mentioned above, to protect a trademark from infringement, registration is sought. However, a mark has to qualify for registration. Section 9 chalks out the absolute grounds of refusal of registration while Section 11 chalks out the relative grounds of refusal of registration. These sections give the Registrar power to refuse a trademark application. Absolute grounds of refusal talk about the qualities a mark should have or refrain from having in order to be registered and the relative grounds of refusal are between two marks where one trademark is already registered and the new trademark seeking registration is not registrable when compared to the existing trademark. […]