The present case involves a trademark dispute between Paragon Polymer Products Private Limited (the appellant) and Sumar Chand Nahar, trading as M/s Paragon Engineers (the first respondent), regarding the use and registration of the trademark “Paragon” in different business sectors. The core issue before the court was whether the first respondent’s use of the “Paragon” mark for electrical products, including electric motor starters, under Class 9 infringed upon the well-known trademark status of the appellant, which had been using “Paragon” for footwear and related products under Class 25 since 1975. The case also raised questions about whether a well-known trademark can restrict another party from registering an identical mark in a different product category.
Paragon Polymer Products Private Limited, formerly known as M/s Paragon Rubber Industries, has been manufacturing and selling footwear under the “Paragon” brand since 1975. Over the years, the company has expanded its product line and obtained trademark registrations under multiple classes, including Class 25 for footwear. The appellant successfully established its trademark as a “well-known mark” in 2017 when it opposed an application by D.M. Tea Corporation, which attempted to register “Paragon” for tea-related products under Class 30. The Trade Marks Registry ruled in favour of the appellant, officially recognising “Paragon” as a well-known trademark.
The first respondent, Sumar Chand Nahar, has been in business since 1977, manufacturing and selling electric motor starters and related electrical products under the name “Paragon Engineers”. The respondent had previously registered the trademark “PE” (Paragon Engineers) under Class 7 and had been using “Paragon” with a flying bird logo since 1986. In 2001, the first respondent filed an application to register the “Paragon” mark under Class 9, which covers electric motor starters and related devices. The Trade Marks Registry published this application in the Trade Marks Journal in 2005, which led to opposition from the appellant.
The appellant opposed the first respondent’s application on several grounds, arguing that the “Paragon” mark was coined by the appellant and had been in continuous use since 1975. It was further argued that the appellant had obtained trademark registration for “Paragon” in multiple classes and had nationwide recognition. The first respondent’s adoption of “Paragon” was not bona fide, as it came ten years after the appellant’s mark had gained widespread recognition. It was also argued that the first respondent’s use of “Paragon” for electric motors would lead to consumer confusion and dilution of the well-known trademark status of the appellant, and the registration of the mark violated Sections 9, 11, 12, and 18 of the Trade Marks Act, 1999.
In response, the first respondent contended that the company had been manufacturing electrical products since 1966 and had adopted the “Paragon” mark in good faith in 1986 for electric motors and related products. The appellant had not opposed the first respondent’s earlier registration under Class 7, meaning it had effectively acquiesced to the use of the mark for electrical products. The first respondent had built its own reputation in the electrical goods market, independent of the appellant’s business in footwear. The respondent highlighted that the term “Paragon” is a common English word with a dictionary meaning, and no single entity can claim exclusive rights over it, and the appellant’s trademark recognition was confined to the footwear industry and does not extend to electrical goods. It was also pointed out that the consumers of footwear and electric motor starters belong to different categories, making confusion unlikely.
The Trade Marks Registry had ruled in favour of the first respondent, rejecting the appellant’s opposition. The Registry found that the first respondent had been using “Paragon” for electrical goods since 1986 and had established distinctiveness in that field. The Registry observed that the appellant’s trademark rights, even though well-known in the footwear industry, did not automatically extend to unrelated product categories. The first respondent’s mark, which included a bird logo, was visually different from the appellant’s simple word mark “Paragon”. The Registry opined that there was no sufficient evidence to prove that consumers would associate the first respondent’s electrical goods with the appellant’s footwear brand. The first respondent was, therefore, entitled to “honest and concurrent use” under Section 12 of the Trade Marks Act, given its long-standing business operations in the electrical sector.
Challenging this decision, the appellant filed an appeal before the Madras High Court, arguing that the Registrar of Trade Marks had failed to consider the importance of the well-known trademark declaration granted in 2017. The appellant contended that this recognition entitled it to cross-class protection, preventing the registration of “Paragon” for any product, regardless of category. The appellant also argued that the Registry’s ruling was based on factual inaccuracies, including incorrect registration dates and a failure to properly assess the risk of consumer confusion.
Considering the arguments of both parties, the Madras High Court also ruled against the appellant. The court held that the concept of a well-known trademark does not grant retrospective rights. Since “Paragon” was declared a well-known mark only in 2017, it could not be used to challenge a registration application filed in 2001. The first respondent had been using the mark for electrical goods since 1986, predating the appellant’s well-known trademark recognition.
The court observed that the first respondent’s mark included a distinguishing bird logo, which differentiated it from the appellant’s plain word mark. The nature of the products, being footwear and electric motor starters, was vastly different, making consumer confusion unlikely. Further, it was observed that the appellant’s failure to oppose the first respondent’s earlier registration under Class 7 indicated a degree of acquiescence.
Thus, the court decided that the Registrar of Trade Marks had correctly applied Section 12, allowing for honest and concurrent use. However, the court acknowledged the need for market clarity and ordered the Trade Marks Registry to impose conditions on the use of the “Paragon” mark by both parties to avoid potential disputes in the future. It remanded the case back to the Registry to determine these conditions after hearing both parties.
This judgment reforges the principle that a well-known trademark does not automatically override existing trademarks in unrelated industries, particularly when both parties have used the mark in their respective fields for decades. It highlights that retrospective application of well-known trademark status cannot be used to challenge older, legitimate uses of the mark.
