LENOVO (Singapore) Pte. Ltd. v. RPD Workstations Pvt. Ltd. and An.: Case Analysis

2nd January, 2025 - 7:21 am Categories: Legal Case Trademark Infringement 0 Comments

Introduction

In a judgment dated 03.12.2024, the Madras High Court has decided on the conflict arising out of similarities between a trademark of Lenovo, a global business leader in the technology industry, and RPD Workstations, a firm based out of Hyderabad. The issue arose when RPD Workstation’s ‘THINBOOK’ line of laptops was granted trademark status while it posed a striking resemblance with the trademark of Lenovo’s ‘THINKBOOK’ laptop line. Lenovo through its representatives filed a petition under Section 57 of the Trade Marks Act, 1999. Lenovo has over the years established the association of the line ‘THINKBOOK’ deeply with its customer base and it contends that the grant of the trademark needs to be revoked as it is a case of misrepresentation.

Statutory Provisions and Current Case

According to Section 2(1)(zg) of the Trademarks Act, 1999, a well-known trademark to any goods or services, is a mark that has gained substantial recognition to the public that they would perceive any other goods or services using the same trademark as a connection to the person or entity using the trade mark concerning the initially established goods or services. Trademark infringement usually occurs when an unregistered mark resembles another registered trademark, giving a false impression that they are of the same established owner and reputation.

Diving deep into the assessment of a trademark infringement, it can be established that an infringement has occurred when an entity uses a trademark identical to that of an already registered and well-established trademark without the rightful owner’s permission. Often this gives the competitor an unfair advantage, as the customer associates such a trademark to a well-established product or service. This could also lead to harm to the established company which is being duped. Legal remedies to such trademark infringement include injunctions, orders of restraint of use, and award of damages to the trademark’s rightful owner. It is in the larger public interest that such infringements are done away with to avoid confusion and provide quality-assured products and services so that they do not fall prey to misrepresentation.

In the current case, the infringing trademark was wrongfully registered through misrepresentation and the petitioner (Lenovo) seeks the cancellation of the trademark under Section 57 of the Trademarks Act 1999. The section lays down the provision to rectify, cancel, and remove the entry of a mark from the Register of Trademarks. Under Section 9 of the Act, a trademark is usually refused registration on the grounds that:

1. The trademark has no distinct character and cannot be distinguished from the goods and services of another.
2. The trademark consists exclusively of marks or indications that serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin, or time of production of the goods or service.
3. The trademark consists exclusively of marks or indications that have become customary in the established trade practice.
4. The trademark could confuse or deceive the public, contain anything scandalous or obscene, or is likely to hurt the religious sentiments of any class or section of Indian citizens or is prohibited to use under the Emblem and Names (Prevention of Improper Use) Act, 1950.
5. The trademark consists exclusively of the shape of goods which results from the nature of the goods themselves, the shape of goods necessary to obtain technical results, or the shape that gives substantial value to the goods.

Notwithstanding the third provision, a trademark cannot be refused registration if, before the date of application, it has acquired a distinctive character through time and trust.

Section 11 of the Act states that a trade shall not be registered if there is an identity with an earlier trademark and a similarity exists between the goods and services provided under the trademark. This is to avoid confusion and association of the goods and services to that of the earlier trademark in the minds of the public.

The Madras High Court observed that Lenovo is the “originator, prior adopter, prior user and prior registered proprietor of the THINK Family of Marks including THINKPAD and THINKBOOK for a varied range of goods and services”. The company has been using the mark since 1992 and it has come to be exclusively associated with them, enjoying a high degree of goodwill and reputation. The trademark registered by RPD is structurally, visually, phonetically, and conceptually like that of the one registered by Lenovo. A Mark of such similarity would confuse the public into thinking that this is a new addition to the company’s THINK Family of Marks. The respondent has copied the unique font style that is used by Lenovo and has been able to register the THINBOOK trademark by misrepresentation and in essence contrary to the provisions of Sections 9 and 11 of the Act. Petitioner is one of the leading laptop manufacturers in the world using the trademark from 1992 in India and internationally from 1920. Lenovo’s contentions satisfied the requirements of Section 57 of the Act for cancelling the first respondent’s trademark, which is deceptively and phonetically like Lenovo’s THINK Family of Marks.

Conclusion

The decision emphasises the intent of the provisions of the Trademarks Act, 1999 enabling the curbing of counterfeit products from confusing the public to believe that they are of better quality and from an established brand. This protects the public from spending more on a product of lower quality. It works in the larger public interest and safeguards the results obtained from capital invested in money, labour, and time by the entity that holds the trademark. It protects the reputation of the entities from being tarnished and prevents other entities from siphoning off the profits of another via misrepresentation.

Author: : T H Suhail, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

Refrences

LENOVO (Singapore) Pte. Ltd. v. RPD Workstations Private Limited and Another 2024 SCCOnLine Mad 7336

“Madras High Court Upholds Exclusive Rights Over “THINK” Family of Marks, Directs Cancellation of Deceptive Trademark” https://thelegalaffair.com/news/madras-high-court-upholds-exclusive-rights-over-think-family-of-marks-directs-cancellation-of-deceptive-trademark/

“Madras High Court Revokes Trademark for “THINBOOK,” Upholds Lenovo’s “THINK” Family of Marks” https://www.linkedin.com/pulse/madras-high-court-revokes-trademark-thinbook-upholds-lenovos-vgd0c/

“[THINKBOOK v THINBOOK ] Lenovo’s THINK family of marks declared distinctive; Madras HC directs removal of infringing ‘THINBOOK’ Mark”
https://www.scconline.com/blog/post/2024/12/17/lenovo-think-family-marks-infringing-thinbook-mark-madras-hc/