In a significant ruling, the Madras High Court has sided with Lenovo (Singapore) in its legal battle against RPD Workstations regarding the trade mark ‘THINBOOK.’ The Court, in an appeal filed under Section 57 of the Trade Marks Act, 1999, directed the Trade Marks Registry to cancel the entry of the mark ‘THINBOOK’ in Class 9 from the Register of Trade Marks.

Lenovo, a global leader in laptop manufacturing, initiated legal proceedings seeking rectification, cancellation, and removal of the impugned mark, arguing that it is the exclusive proprietor of the well-established ‘THINK’ Family of Marks. The company emphasized that it has secured trade mark registrations for its ‘THINK’ series, including ‘THINKPAD’ and ‘THINKBOOK,’ both in India and internationally, for a variety of goods and services under Classes 09, 16, 35, and 42. Lenovo asserted that it has been using the ‘THINK’ Family of Marks since 1992, and through prolonged and widespread use, these marks have gained distinctive recognition and exclusivity in the industry, and is well known within the meaning of Section 2(1)(zg) of the Act. Consequently, it argued that the use of ‘THINBOOK’ by RPD Workstations was likely to mislead the public into believing that it was an extension of Lenovo’s THINK Family of Marks.

Court’s Observations and verdict

The Court, after reviewing the submissions, concurred with Lenovo’s contention that the mark ‘THINBOOK’ bore deceptive and phonetic similarities to its THINK Family of Marks. It noted that Lenovo’s long-standing use and global recognition of its trademarks had established a strong brand identity. The likelihood of confusion among consumers, due to the similarity in pronunciation and appearance, was deemed substantial. Additionally, the Court observed that RPD Workstations had obtained registration of the mark ‘THINBOOK’ through misrepresentation, which had misled the Trade Marks Registry into granting approval. The Registrar, by failing to recognize Lenovo’s prior rights over the THINK Family of Marks, had committed an oversight that required rectification.

The Court ultimately ruled in favour of Lenovo, confirming its exclusive proprietorship over the THINK Family of Marks. It held that the existence of the mark ‘THINBOOK’ on the Trade Marks Register would cause confusion among consumers and potentially dilute Lenovo’s brand identity. Therefore, in a decisive order, the Court directed the Trade Marks Registry to cancel the registration of ‘THINBOOK’ in Class 9 within four weeks from the date of receipt of the order.

Implications of the Ruling

This judgment reaffirms the strength of well-known trademarks and the significance of brand identity protection under Indian trade mark law. It underscores the importance of prior usage, consumer perception, and phonetic similarity in determining trade mark disputes. For brand owners, this case serves as a precedent that reinforces their rights against deceptively similar marks, ensuring that brand equity and consumer trust remain safeguarded.

Case Reference: Lenovo (Singapore) Pte. Ltd. v. RPD Workstations Private Limited, 2024 SCC OnLine Mad 7336, decided on 03-12-2024.

By Amrita Chowdhury