JOLEN INC Vs. SHOBANLAL JAIN

JUDGEMENT

(1.) These petitions challenge the separate orders dated 12th January 2005 passed by the Intellectual Property Appellate Board (IPAB) dismissing the Petitioner's appeals thereby upholding the orders dated 11th March 1999 and 11th October 2000 of the Assistant Registrar of Trade Marks ('AR) refusing registration of the trademark JOLEN applied for by the Petitioner. Background Facts

(2.) The Petitioner Jolen Inc., was formed as a partnership firm in the year 1955 in USA and later incorporated as a company in 1964. The Petitioner states that it is the proprietor of the invented trademark JOLEN coined from the names of the founders of the Petitioner company John & Evelyn. It is stated that the trademark JOLEN forms a predominant feature of the Petitioner corporate name and trading style. Its trademark JOLEN has been registered in more than 40 countries all over the world.

(3.) The Petitioner's JOLEN crème bleach is sold extensively in various countries including countries in the middle-east and Gulf from where a number of Indians frequently visit India and bring with them the Petitioner's JOLEN products for their personal use and as gifts for friends and relatives. It is stated that Petitioner's JOLEN products have been brought to India also by Indians visiting abroad. The Petitioner's JOLEN crème bleach are extensively advertised in international magazines having large circulation in India. According to the Petitioner its JOLEN crème bleach is freely available in India in several Customs notified shops and duty free shops in India. Therefore, it is submitted that by virtue of the long, extensive and continuous use in the international market and wide publicity, the Petitioner's trademark JOLEN enjoys great reputation and goodwill. In the above circumstances, it has been pleaded that the Petitioner's JOLEN has acquired trans-border reputation which is spilled over to India.