The court directs removal of 'PONTA' from the Trade Marks Register, citing potential consumer confusion with Panasonic's established 'PENTA' mark.
In a significant decision, the Delhi High Court has directed the cancellation of the trademark 'PONTA,' registered to Siddharth Vij, due to its deceptive similarity to Panasonic Holdings Corporation's 'PENTA' trademark. The court's ruling came after Panasonic filed petitions under Sections 47 and 57 of the Trade Marks Act, 1999, seeking the removal of 'PONTA' from the Trade Marks Register.
The court found that 'PONTA' was visually, structurally, and phonetically similar to 'PENTA,' which has been registered and in use since 1989. Panasonic, a global leader in electrical products, argued that the registration of 'PONTA' created a likelihood of confusion among consumers, especially since both trademarks are used in relation to similar products such as electric sockets and switches.
Justice Tushar Rao Gedela, presiding over the case, emphasized that the registration of 'PONTA' was made without sufficient cause and was likely to mislead consumers. The court applied the "triple identity test," noting that the similarity in trademarks, identical products, and overlapping trade circles would result in consumer confusion and deception.
The court dismissed the respondent's defense that 'PONTA' was inspired by the religious site 'Paonta Sahib,' highlighting that the explanation was neither provided to the Trade Marks Registry nor credible. The court also noted the absence of any genuine justification for adopting the 'PONTA' mark and found the respondent's reliance on various linguistic meanings of 'PONTA' unconvincing.
In light of these findings, the court directed the Registrar of Trade Marks to remove the 'PONTA' word mark and device mark from the register. This decision underscores the importance of protecting established trademarks and preventing consumer confusion in the marketplace.
Bottom line:-
Trademark Law - Registration of a deceptively similar mark - The mark "PONTA" registered in favor of the respondent was found to be deceptively similar to the pre-existing registered mark "PENTA" of the petitioner. Registration of the mark "PONTA" was held to have been made without sufficient cause and was directed to be removed from the Register of Trade Marks.
Statutory provision(s): Trade Marks Act, 1999 Sections 11, 47, 57
Panasonic Holdings Corporation v. Siddharth Vij, (Delhi) : Law Finder Doc id # 2916493
