Monday, May 10, 2010

Italian surname not a trademark: High court

Gujarat High Court has recently settled a dispute between two companies fighting over ownership of a title based on an Italian surname — Bisazza. The high court has ruled that “Surname remains a surname whether in Italy or in India or anywhere else, and since the word is not coined by a firm, there cannot be a monopoly over the word.”

A company producing glass mosaic tiles — Bisazza India Ltd, had objections against the regional director, western region (Mumbai) under Union ministry of corporate affairs for granting registration to another company in the name of Pino Bisazza Glass Private Ltd.
As per the company’s claims, it has got business ties with Italian giant in mosaic tiles — Bisazza SPA. It was, therefore, allowed to use the word Bisazza in India. It had applied for registration of trademark in 1996 and was waiting for the same.
While its request for trademark was pending, one Pino Bisazza Glass Pvt Ltd was registered as a company in 2000 in Ahmedabad. Bisazza India Ltd filed its objection with the regional director and the other company was asked to change its name without assigning any reason. But Pino Bisazza sought explanation from the authorities, and the regional director later allowed it to use the name in 2002 again.
This brought Bisazza India to the high court claiming exclusive rights over usage of word Bisazza, as the Italian group had granted permission to it only. The title of Pino Bisazza is quite similar and too nearly resembling with Bisazza India, hence the second company must change its name, it contested.
On the other hand, Pino Bisazza Glass Pvt Ltd argued that Bisazza is a very common surname in Italy, like Shah or Patel in Gujarat. And Pino Bisazza is the first name of chief promoter of the company, who holds 67 per cent equity.
Thus the company is named after its promoter as Pino Bisazza, and Bisazza India cannot claim trademark over a surname in Italy. After hearing both the parties, Justice KA Puj refused to order Pino Bisazza to change its name because Bisazza India was not the company that coined the word ‘Bisazza’, and since the word is derived from a surname, nobody can claim trademark on this word.
While dismissing the plea for directions to the regional director to ask the other company to change its name, Justice Puj dealt with technical aspect of limitation and also analysed titles of both the companies.
The court concluded that Pino Bisazza Glass Pvt Ltd is not similar or too nearly resembling with the name of Bisazza India Ltd because the previous company has got four words with ‘Pino’ and ‘Glass’, which is not in the title of the petitioner company.

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