The Madras High Court recently upheld a decision by the Trade Marks Registry in favour of Sumar Chand Nahar, trading as M/s. Paragon Engineers (“Respondent”), rejecting the appeal of Paragon Polymer Products Private Limited (“Appellant”) to deny the registration of the Respondent’s trade mark ‘PARAGON + a flying bird’ device in Class 9.
The Appellant had filed an opposition against the registration of the Respondent’s above-noted mark, citing similarities between the Respondent’s mark and the Appellant’s PARAGON mark, which had been in use since 1975 on and in relation to footwear. The Appellant also relied on a 2017 order in which the Trade Marks Registry had recognized its mark as a well-known mark.
The Respondent countered by asserting that it had been using the PARAGON-formative mark on and in relation to electric motor starters since 1986. Additionally, the Respondent had obtained registration for a similar mark in Class 7, to which the Appellant had not raised any objections. The Respondent further argued that the target consumers of the rival parties are distinct, thereby minimizing any potential for confusion. The Trade Marks Registry ultimately accepted the Respondent’s arguments.
Dissatisfied with the ruling, the Appellant filed an appeal with the Madras High Court. During the appeal, the Appellant contended that the Trade Marks Registry had erred by disregarding the well-known status of its mark.
The Court acknowledged the Appellant’s mark as well-known, but noted that such recognition was only granted in 2017. Therefore, the Appellant could not leverage its well-known status to challenge a mark that had been in use since 1986. The Court emphasized that no mark is inherently well-known; it must earn that recognition over time. Allowing the retrospective application of well-known status could unfairly penalize honest, concurrent users in the market. The Court concluded that the benefits associated with a well-known mark could not be applied retroactively.
Paragon Polymers Product Private Limited vs. Sumar Chand Nahar and Ors., [(T)CMA(TM) No. 80 of 2023, judgement dated January 7, 2025]
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