Delhi High Court Cancels 'PONTA' Trademark In Plea By Panasonic, Holder Of 'PENTA' Mark

The Delhi High Court has recently ordered the cancellation of the word mark 'PONTA' and its device variant, holding that they are deceptively similar to Panasonic's registered 'PENTA' trademark for electrical goods.

Justice Tushar Rao Gedela, deciding two rectification petitions filed by Panasonic Holdings Corporation, directed the Registrar of Trade Marks to remove both marks from the Register within four weeks.

"What strikes the eye at the first glance is the glaring similarity, rather identicalness, in both the marks. Merely by replacing 'E' with the letter 'O' does not create any distinction at all.", it noted on the similarity. 

Panasonic entered India in 1972 and acquired the 'PENTA' brand as part of its acquisition of the Shah Family Group's business in 2007 for Rs 110 crore. The company has held registrations for the mark in Class 9 for electrical products since 1989.

The dispute arose after Siddharth Vij applied for registration of the mark 'PONTA' in March 2019 on a "proposed to be used" basis for electrical goods in Class 9. The Trade Marks Registry subsequently raised objections citing Panasonic's 'PENTA' marks before granting registration.

Panasonic challenged both the word mark and the device mark, contending that replacing the letter 'E' with 'O' did not distinguish the marks and that the registration was liable to be removed from the Register.

Before the Court, Vij contended that the mark had been derived from Gurudwara Shri Paonta Sahib. He also contended that the word 'PONTA' carries meanings in various foreign languages and was therefore an arbitrary mark.

The Court declined to accept either explanation.

"In the context of the aforesaid innovative storyline and explanation brought out by the respondent no.1 for the first time before this Court, which though seems attractive, but is unpersuasive and unmerited."

The Court noted that neither explanation had been disclosed in the respondent's reply to the Examination Report.

"Had there been a shred of genuineness in such submissions, there was no reason why this was not mentioned by the respondent no.1 in the reply dated 25.05.2019 submitted in response to the Examination Report of the Trade Marks Registry."

On the claim that the mark had been inspired by Gurudwara Shri Paonta Sahib, the Court noted that the explanation was being advanced for the first time before it.

The Court also declined to rely on material generated through artificial intelligence tools that had been produced to support the contention that the word existed in various foreign languages.

"The respondent has extensively relied upon the meaning and references to the word 'PONTA' based on research generated by Artificial Intelligence Tools, without any authentication or corroborative evidence of existence of such word in foreign languages. This Court cannot surely rely upon such unauthenticated and unverified material."

While examining the rival marks, the Court observed that the respondent's marks were deceptively similar to the petitioner's mark. The Court further observed that the design incorporated within the letter 'O' in the device mark created an impression of the letter 'E'.

The court also questioned how the Trade Marks Registry had proceeded to register the mark despite having cited Panasonic's earlier registrations in the Examination Report.

"It is indeed intriguing to note as to how the Trade Marks Registry, despite raising valid objections and citing the relevant mark of the petitioner, proceeded to register the mark 'PONTA', without any sufficient reason or justification in the reply dated 25.05.2019."

The Court found that the marks were deceptively similar, the goods were identical, and the trade circles, distribution channels and retailers were common, making confusion and deception likely among consumers.

Although Panasonic had also sought removal of the mark on the ground of non-use, the Court held that relief on that basis was unavailable because the respondent had produced invoices showing sales under the mark.

The Court nevertheless concluded that the registration of 'PONTA' was without sufficient cause and directed the Registrar of Trade Marks to remove both the word mark and the device mark from the Register within four weeks.