Delhi High Court comes to the rescue of Japan Patent Office
Author: Pankhuri Jain, Partner & Anmol Chawla, Associate at ZEUS Law
Published in https://www.asiancommunityne
In the field of business, the legal system of a country serves as the backbone for ensuring the enforcement of rights. It provides a structured framework to resolve disputes, safeguard contracts and confirm that the commercial and business rights are recognised and complied with. One of the prominent branches of law having impact on businesses is Intellectual Property Law, protecting intellectual properties including trademarks, patents, copyrights, etc. To ensure that the intellectual property remains protected and is not infringed, it is necessary that the businesses get their intellectual properties registered under respective laws such as Trade Marks Act, 1999, Patents Act, 1970, Copyright Act, 1957, etc.
Recently, an intriguing situation came into light when the Japan Patent Office (“JPO”) filed a commercial suit before the Hon’ble High Court of Delhi titled “Japan Patent Office vs. Ms. A2Z Glass and Glazing Co. & Ors.”, bearing no. CS(COMM) 720/2023, wherein its ‘JPO’ logo has been sought to be appropriated in India by manufacturers and suppliers of tools, kits and glass fittings, owned by the same person. The Hon’ble Court, considering the seriousness of the issue, granted interim relief to the JPO on the first hearing itself.
JPO, functioning under the Ministry of Economy, Trade and Industry, Japan, is a governmental agency managing the Industrial Property Rights affairs in Japan by providing services to intellectual property owners for registration of patent utility models, designs and trademarks. It is one of the five largest patent offices in the world. JPO’s relation with India also dates back to 1996, when it has been holding training programs and seminars and has also been coordinating with the Controller General of Patents, Designs and Trademarks, India (“CGPDTM”) in the field of intellectual property. Hence, JPO enjoys recognition and goodwill within India for the last several years.
JPO stated that it adopted its logo in 2011 to celebrate the 125th anniversary of the Industrial Property Rights System in Japan and the logo holds a significant value for them. The JPO’s case is that the manufacturers and sellers have not only blatantly copied its ‘JPO’ mark/logo for their products in India but have also gone one step ahead and filed for trademark registration of their mark as ‘JPO PLATINUM’. Furthermore, the logo has been copied identically in the same colour combination and is being printed/embossed on the products.
Taking a stern view of the matter since the Intellectual Property Office of Japan has been at the receiving end of the infringement, the Hon’ble Court observed that it’s like theft being committed in a police station. The Hon’ble Court stated that looking at the use of an identical colour combination and an identical logo by the Indian entity, it is clear that their JPO’s logo has been illegally adopted. It observed that even though JPO does not have a registered trademark or copyright in its favour, it is fully comprehensible as JPO could never have anticipated that even its logo could be imitated. The Court further held that Japan, being a WTO country and the JPO’s logo being an original artistic work, is entitled to copyright protection and has exclusive rights to use the logo under Section 14 of the Copyrights Act, 1957.
Placing reliance on the decision of the Hon’ble Supreme Court in Laxmikant v. Patel vs. Chetanbhai Shah & Ors., MANU/SC/0763/2001, the Hon’ble Court stated that in a prima facie trademark violation case, an injunction could be granted even at the ex-parte stage. Following the said position, it was held that the balance of convenience lies in favour of JPO, considering that it is a well-reputed patent office in the world, which grants and protects the rights of other Intellectual Property Right owners. Therefore, vide this order of Hon’ble Delhi High Court, the manufacturers and sellers have been restrained from using the impugned JPO mark, JPO logo, word mark ‘JPO PLATINUM’ or any other mark identical or similar to the JPO mark and logo.
About Authors: Ms. Pankhuri Jain is a Partner and Mr. Anmol Chawla is an Associate in ZEUS Law Associates, which is an ISO certified full service corporate commercial law firm with a team of dedicated and experienced lawyers well versed in handling domestic and cross border transactions across sectors, jurisdictions and regulatory landscapes.
