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2023 Supreme(Online)(DEL) 15228
DELHI HIGH COURT
BSA BUSINESS SOFTWARE ALLIANCE, INC. – Appellant
Versus
TUBE INVESTMENTS OF INDIA LIMITED & ANR. – Respondent
CA(COMMIPD-TM)-28_2023
Parties can agree on a delineation of services to avoid confusion and disputes over similar trademarks, and such agreements will be upheld by the Court.
Headnote:
TRADEMARK - BSA - DELINEATION OF SERVICES - AGREEMENT BETWEEN PARTIES - REGISTRATION OF TRADEMARKS - WELL-KNOWN MARK - DECLARATION
Fact of the Case:
BSA Business Software Alliance, Inc. (Appellant) filed four appeals challenging the Registrar of Trademarks' order rejecting its applications for registration of the mark 'BSA' in classes 16, 35, 41, and 42. The Respondent, Tube Investments of India Limited, opposed the applications based on its prior registration of the mark 'BSA' in class 35 for bicycles and related products.
Finding of the Court:
The Court directed the parties to agree on a broad delineation of services between their respective 'BSA' marks to avoid future disputes. The Appellant agreed to restrict its services in class 35 to "promoting the interests of the software and e-commerce industries."
Issues: 1. Delineation of services between the Appellant's 'BSA' mark and the Respondent's 'BSA' mark2. Registration of the Appellant's trademarks in classes 16, 35, 41, and 423. Respondent's entitlement to a declaration of its mark as a well-known mark in class 12
Ratio Decidendi: The Court held that the parties' agreement on the delineation of services would prevent confusion and future disputes. The Appellant was permitted to obtain registration for the mark 'BSA' in classes 16, 35, 41, and 42 with the agreed-upon restrictions. The Court clarified that the settlement would not affect the Respondent's potential declaration as a well-known mark in class 12.
Final Decision: The appeals were disposed of, allowing the Appellant to obtain registration for the mark 'BSA' in respect of the agreed-upon goods in each of the classes. The Respondent's entitlement to a declaration as a well-known mark in class 12 was not affected by the settlement.
$~27 to 30
*
IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 21stDecember, 2023
+
C.A.(COMM.IPD-TM) 28/2023 & I.A. 19774/2023
BSA BUSINESS SOFTWARE ALLIANCE, INC. ..... Appellant
Through:
Mr. Peeyoosh Kalra, Ms V. Mohini
and Ms. Aarti Aggarwal, Advs. (M.
9599041991)
versus
TUBE INVESTMENTS OF INDIA
LIMITED & ANR.
..... Respondents
Through:
Mr. Arun Mohan, Ms. Avanti Bala
and Mr. Vivek Pandey, Mr. Harish
Vaidyanathan Shankar, Advs. (M.
9810806250)
28
WITH
+
C.A.(COMM.IPD-TM) 29/2023 & I.A. 19814/2023
BSA BUSINESS SOFTWARE ALLIANCE, INC. ..... Appellant
Through:
Mr. Peeyoosh Kalra, Ms V. Mohini
and Ms. Aarti Aggarwal, Advs. (M.
9599041991)
versus
TUBE INVESTMENTS OF INDIA
LIMITED & ANR.
..... Respondents
Through:
Mr. Arun Mohan, Ms. Avanti Bala
and Mr. Vivek Pandey, Mr. Harish
Vaidyanathan Shankar, Advs.
29
WITH
+
C.A.(COMM.IPD-TM) 30/2023 & I.A. 19821/2023
BSA BUSINESS SOFTWARE ALLIANCE, INC. ..... Appellant
Through:
Mr. Peeyoosh Kalra, Ms V. Mohini
and Ms. Aarti Aggarwal, Advs. (M.
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:22.12.2023
17:42:11
Signature Not Verified
9599041991)
versus
TUBE INVESTMENTS OF INDIA
LIMITED & ANR.
..... Respondents
Through:
Mr. Arun Mohan, Ms. Avanti Bala
and Mr. Vivek Pandey, Mr. Harish
Vaidyanathan Shankar, Advs.
30
WITH
+
C.A.(COMM.IPD-TM) 35/2023 & I.A. 21288/2023
BSA BUSINESS SOFTWARE ALLIANCE, INC. ..... Appellant
Through:
Mr. Peeyoosh Kalra, Ms V. Mohini
and Ms. Aarti Aggarwal, Advs. (M.
9599041991)
versus
TUBE INVESTMENTS OF INDIA
LIMITED & ANR.
..... Respondents
Through:
Mr. Arun Mohan, Ms. Avanti Bala
and Mr. Vivek Pandey, Mr. Harish
Vaidyanathan Shankar, Advs.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1.
This hearing has been done through hybrid mode.
2.
These are four appeals filed by Petitioner-BSA Business Software
Alliance, Inc. challenging the impugned order dated 25th April, 2023
passed by the Registrar of Trademarks. Vide the said order the oppositions
filed by the Respondent have been allowed. The Appellant’s applications
for registration of the mark ‘BSA’ bearing number 1678256 in classes 16,
35, 41, 42 have been rejected by the Registrar of Trade Marks.
3.
BSA Business Software Alliance, Inc. is an entity which is a non-
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:22.12.2023
17:42:11
Signature Not Verified
profit trade association, claiming to advance the goals of the software
industry, and advocate for public policies that foster technology innovation
and drive growth in the digital economy. It undertakes various compliance
activities on behalf of the software companies and almost all the largest
software makers are members of the said association such as Adobe
Systems, Apple Inc., Bentley Systems, Cisco, Dell, IBM, Microsoft,
McAfee, etc.
4.
The Appellant also claims to coordinate on a global level and take
action against software sellers and end-user organizations that make
unauthorized copies of software, and coordinate with enforcement agencies
to enforce copyright laws.
5.
On the other hand, the Respondent No.1- Tube Investments of India
Limited is also a well-known Chennai based company, which has been
using the mark ‘BSA’ since 1950. Its mark is registered, bearing no.
1498332 in class 35 for bicycle, cycle components, accessories, electric
scooters, fitness equipment and other related products. The Appellant’s
trademark applications were opposed by BSA Cycles, which led to the
impugned orders being passed.
6.
When the appeals were taken up for hearing on 13th October, 2023.
Ld. Counsel for the Respondent No.1 had submitted that due to extensive
use of the mark ‘BSA’, the Respondent No.1 intends to seek a declaration
as a well-known mark and also that there are various other disputes which
are pending between the parties before the Trade Marks Registry including
opposition proceedings.
7.
On the said date, after hearing Mr. Kalra, ld. Counsel for the
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:22.12.2023
17:42:11
Signature N
