The Bangalore-based Infosys Technologies Ltd may be a premier Indian company as far as IT services are concerned, but it cannot hold a monopoly on trademark `Infosys'. It was so decided by the Chennai Bench of the Intellectual Property Appellate Board. On an application moved by the Kolkata-based Jupiter Infosys Ltd praying for cancellation of the registration of the trademark `Infosys' held by the Bangalore company, the Board directed the Registrar of Trade Marks, Chennai, to remove the registration of trademark `Infosys'. |Discuss: :Infy losing battle over Infosys trademark does not augur well for its business| The petitioner, Jupiter Infosys Ltd, sells computers, computer parts, accessories and other items of hardware. According to the petitioner, the 1st respondent (Infosys Technologies Ltd) filed an application with the Registrar of Companies, West Bengal, seeking issue of a direction to the petitioner to change its name by deleting the word `Infosys'. The Registrar of Companies declined to issue such a direction. Thereafter, the 1st respondent filed a civil suit before the High Court of Calcutta alleging infringement of its trademark and for passing-off against the petitioner. There were also other company applications by the 1st respondent, including one in the Madras High Court in which it sought an interim injunction against the petitioner, and ex parte interim injunction was granted by the Court on February 1, 2001 restraining the petitioner company from using the name Jupiter Infosys (Pvt) Ltd. By a common order dated May 22, 2001, the Madras High Court dismissed the various petitions moved by the respondent. The petitioner filed the present petition for rectification of the register for removal of the trademark from the register under Sections 11, 46, 56 and 107 of the Trade & Merchandise Act, 1958 in the Madras High Court and has been transferred to this Board in terms of Section 100 of Trade Marks Act, 1999. The petitioner contended that the mark `Infosys' had all along been used by the 1st respondent as a service mark and not as a mark for goods. Even in the suits filed by it against the petitioner, the 1st respondent had claimed that it was providing software services to its customers. The mark registered had never been used in respect of goods for which those were registered for the last five years, the period prescribed under Section 46 of the Trade & Merchandise Marks Act. The petitioner claimed that since the 1st respondent was a leading company exclusively in the field of software, its registration numbers 475269, 475267 and 484837 (pertaining to computer stationery, computer manuals, computer hardware, machine & machine tools, etc), which were not relatable to services and were exclusively in relation to goods of various description mentioned in the Fourth Schedule under the Trade & Merchandise Marks Act be removed from the register. The 1st respondent pleaded that the petition was barred by limitation as the petitioner was aware of the subject registration in 1996 and had chosen to file the petition for rectification belatedly. Since its inception, 1st respondent had been active not only in developing software solutions for large-scale industrial corporations, but in hardware, computer interface, mechanical aspects relating to software system as well as training on computer-related activities. The 1st respondent further denied that in view of the recent circular of the Department of Company Affairs, `Infosys' had become a descriptive expression such as cyber, infotech and computers. The Board, comprising Justice S. Jagadeesan (Chairman) and Dr Raghbir Singh (Vice-Chairman), referred to the contention of the 1st respondent regarding the limitation and said it was clear that with the filing of CS No 71/2001 by the 1st respondent against the petitioner, a fresh cause of action had risen, and the petitioner was the appropriate aggrieved party in the matter, and hence, the petition was within the limitation period. On the contention of the 1st respondent regarding the goods covered under the various registration numbers, the Board held that there was nothing in the various documents filed by the 1st respondent to indicate linkage with the manufacturing or the marketing of the goods for which the company was holding registration of the trade marks. The Board held that in the trademark law as developed in India, the dichotomy between treatment of goods and services was well recognised since the introduction of common law system in the country. Statutory legislations had been providing for registration of goods only. It was only with the enactment of the Trade Marks Act, 1999 that the registration of service trademarks had been provided for. In view of the specific provisions of the Trade & Merchandise Marks Act, 1958, and more particularly in the context of description of various classifications of goods mentioned in the Fourth Schedule, there could not be any scope for interpreting activities, which were known to be ascribable to services to be included as goods. The petitioner also relied on a circular by the Department of Company Affairs, which said that companies dealing in computers were permitted to use names such as `Infosys' as part of their corporate name. The Board held that it was clear that the 1st respondent had not used the registered trademark numbers 475269, 475267 and 484837 for more than a period of five years and one month. The 1st respondent failed to make out its case that it had been in manufacturing or trading of goods for which it had taken the registration numbers. "Accordingly, we hold that the petitioner succeeds in his application. The applications are allowed and the Registrar shall remove these registrations from the register."