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Japan Patent Office V. Ms. A2z Glass And Glazing Co. & Or.

By - King Stubb & Kasiva on November 28, 2023

In an interesting case, the Japan Patent Office sought injunction against the Defendant for using a similar stylized mark “JPO” as of the Plaintiff.

Background

The case of the Plaintiff is that the Defendants’ have blatantly copied Plaintiff’s ‘JPO’ mark/logo, for manufacturing and selling of their products in India. The Defendants’ have also filed for trademark registration of their mark ‘JPO PLATINUM’ bearing number 4645875 in class 6, which is opposed by the Plaintiff.

Facts

The Plaintiff- Japan Patent Office (hereinafter ‘JPO’) has filed the present suit - in a rather piquant situation where its ‘JPO’ logo has been sought to be appropriated by the Defendants i.e., M/s. A2Z Glass & Glazing Co. (Defendant No.1), M/s. Future Architectural Glass Fitting (Defendant No.2) and M/s. Future Overseas (Defendant No.3), who are using an identical logo for manufacture and sale of tools and kits.

The JPO is a Japanese governmental agency which is in charge of the Industrial Property Rights affairs in Japan. It functions under the Ministry of Economy, Trade and Industry, Japan.

The JPO’s legacy shows that it has been associated with the founding date of Patent Law in Japan, on 18th April, 1885, which is the date when the Patent Monopoly Act of Japan was enacted. The said day is celebrated as the Invention Day in Japan to raise public awareness of the industrial property rights system including patent system. JPO is one of the five largest patent offices in the world along with the European Patent Office (EPO), Korean Intellectual Property Office (KIPO), China National Intellectual Property Administration (CNIPA) and the United States Patent and Trademark Office (USPTO).

It provides services to intellectual property owners for registration of patent utility models, designs and trademarks. It is headed by a commissioner. The JPO has had a large number of collaborations internationally with various organizations including World Intellectual Property Organization (WIPO) and Asia Pacific Industrial Property (AIPC), etc.

In India, the JPO has a history of holding training programs and seminars in the field of Intellectual Property since 1996. In 2006, an MoU was entered into between JPO and Controller General of Patents, Designs and Trademarks, India (CGPDTM) for cooperation in the area of Intellectual Property. The Memorandum of Cooperation on Industrial Property, 2015 recognizes the cooperation between JPO and CGPDTM for speedy processing and disposal of IP applications while ensuring quality of Intellectual Property Rights. As per the plaint, in paragraph 11 the JPO’s further enhanced new Action Plan contemplates training courses for new Patent Examiners of CGPDTM or sending JPO officials who are well-versed with the Patent Prosecution highway (PPH) to India.

The various initiatives taken by the JPO in India have been set out in the plaint. Japan was the first country with which India established a Patent Prosecution Highway in 2019. This clearly shows that JPO has had recognition and goodwill even within India for the last several years.

The JPO’s logo is stated to have been adopted in 2011 to commemorate the 125th anniversary of the Industrial Property Rights System in Japan. Ld. counsel for the Plaintiff has pointed out that the said logo was adopted after a competition held for the JPO’s logo.

The Defendant No.1 i.e. A2Z Glass and Glazing Co. is a proprietorship firm owned and managed by one Mr. Ramesh Sharma. As per paragraph 21 of the Plaint, the Defendant is engaged in the business of manufacturing and supply of glass connector and glass door handles. The company is also engaged in the trading business of architectural glass fittings, shower handles, shower hinges, etc. of third-party companies under their respective brand names. Defendant No.2- M/s. Future Architectural Glass Fitting and Defendant No.3- M/s Future Overseas are sister concerns of Defendant No.1 entity, all managed and owned by Mr. Ramesh Sharma.

Held

It was held that the Court was convinced that the Plaintiff makes out a prima facie case for grant of an ex-parte injunction. Balance of convenience also lies in favour of the Plaintiff considering that it is a well reputed patent office in the world, which grants and protects rights of other Intellectual Property Right owners. If an injunction was not granted in the case, it would have led to irreparable loss/harm to the Plaintiff’s reputation and goodwill as also would have led to dilution of its brand equity. This was a fit case for grant of an ex-parte injunction.

Accordingly, the Defendants and all others acting for or on their behalf were restrained from using the impugned JPO mark, JPO logo, as well as the impugned word mark ‘JPO PLATINUM’, or any other mark identical or similar to the JPO mark and logo, in respect of any products or services with immediate effect.

Analysis The Plaintiff also has the advantage of convenience because the world's most reputable patent office grants and defends the rights of other owners of intellectual property. Had an injunction not been issued in this instance, the Plaintiff would have suffered irreversible harm to its goodwill and reputation in addition to having its brand equity diluted.


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