SC sets aside tribunal order on Infosys trademark

A bench comprising Justices Aftab Alam and R M Lodha set aside the order passed by IPAB and directed the intellectual property tribunal to hear Infosys Technologies' claim afresh.

On September 9, 2004, IPAB had directed the Registrar of Trade Marks to disallow the N R Narayana Murthy-led company from exclusive use of the brand name 'Infosys' on computer stationery, computer manuals, printed matter for computer, instructional and teaching materials, computer hardware and peripherals and machine and machine tools.

This was challenged by Infosys Technologies before the apex court, contending that the IPAB neglected some vital facts while deciding the case. Subsequently, the Supreme Court today partly allowed the IT firm's plea.

"These appeals are allowed in part and the impugned order dated September 9, 2004, is set aside.  The applications... are restored to the file of IPAB, Chennai, for hearing and disposal afresh in accordance with law," the bench said.

Infosys Technologies had contended the IPAB had wrongly classified software as only a 'service'.

The IT firm further contended that IPAB ignored the fact that 'computer programming' is a service enumerated in Class 42 of the the Trade Marks Rules, 2002.

Infosys further contended that the IPAB, without considering the distinction between a 'computer programme' and 'computer programming' and without noticing the entry 'computer' under Class 9, which falls within 'goods', passed the order.

It further contended that use of Infosys trademark by other companies would create confusion in the minds of consumers, who might be led into believing the product they are going to buy is made by Infosys Technologies.

The matter stems from a dispute between Infosys and a Kolkata-based firm, Jupiter Infosys, dealing in computer hardware. The firm had been using the word Infosys in its trademark since 1995 and had issued an IPO in 2001 also.

Jupiter Infosys contended that Infosys Technologies was not using its trademarks except for the software and service industry and filed applications to gain ownership of the trade mark in three categories.

The dispute had subsequently become mired in litigation at the high courts of Delhi, Calcutta and Madras, besides the IPAB.

The apex court held, "We are satisfied that the applications made by the first respondent (Jupiter) for rectification/removal of the subject trade marks from the register need to be considered afresh by the IPAB in accordance with law and the observations made above."