‘PEPSI’ owned and registered by Pepsico Inc. is a name synonymous with soft drinks, beverages, concentrates, syrups and food products enjoying international reputation and goodwill. Pepsico Inc has its mark registered under class 32, and various applications under various classes remain pending.
Om Textile Factory, engaged in the manufacture of hosiery and ready-made garments filed an application for registration of the Mark "Pepsi". In response to this, Pepsico raised an objection against the registration of the impugned mark.
Pepsico stated that the very adoption of the impugned mark under these circumstances by Om Textiles was a dishonest attempt to trade and benefit from the goodwill and reputation as enjoyed by them. Section 9, 11 and 18 of the Act were taken into consideration while raising objections to the use of the mark. Pepsico Inc also submitted that the trademark PEPSI was a world famous brand and that the intention of Om Textile Factory to use the same, lay in utilizing the benefit arising out of the goodwill and reputation of the brand. It was further contended that since the nature and class of customers of both the products was alike, a chance of deception and confusion arose. It was further contended that only one mark, one source and one proprietor could be there. The non-disclosure on the part of Om Textile factory as to how and why the mark was adopted and evidences such as sales proceeds were grounds brought forth to support their contentions.
The submissions made by Pepsico were vehemently refuted, stating that the impugned mark has been in continuous and extensive use since 1992. An affidavit filed with regard to the same was also presented. Om Textile Factory stated that the opposition to the registration was filed just to harass them without any basis and to delay the registration of the impugned mark.
The Deputy Registrar of Trade Marks at Kolkota agreed that the brand PEPSI enjoyed goodwill and reputation and that the two goods catered to a similar class and nature of goods. The affidavit filed to support the use of the brand ‘Pepsi’ by Om Textile Factory was rejected as unconvincing. The Deputy Registrar of Trade Marks held that it is difficult to digest the honesty and bona fide of the Applicant with regard to the circumstances leading to his adoption of the impugned mark.. Accordingly the Opposition to registration of the Mark PEPSI was allowed resulting in refusal to grant registration to the Mark to Om Textiles and also Om Textile factory had to bear costs.
© Lex Orbis 2006
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