TEAM C - SUMMARY OF ARGUMENTS

1. Whether Play Station (PS) Series of Sony is a well-known trademark in India?

¶ It is humbly submitted that, the adjudicating authority should take cognizance of the well
settled jurisprudence on transnational reputation of well-known marks, specifically laid down
in N.R Dongre v Whirlpool Corporation1 where it was that a product and its trade name
transcend the physical boundaries of geographic regions, and that knowledge of the product
of a foreign brand and its trade marks can exist even if the brand is not being sold at that
particular time. Similar view was held in the cases of Societe Anonyme Des Eaux Minerales
D’Evian v. Evian (India2), and Revlon Inc. And Ors. v. Sarita Manufacturing Co. 3 The ‘PS
series’ marks being unequivocally acknowledged and recognized all over the world including
India. On account of its consumer base, worldwide registrations, publicity, promotion &
long-standing use of the PS marks shows that Sony has international goodwill and reputation
and thereby has trans-border reputation.
¶ Further, in the case of Apple Computer Inc. v. Apple Leasing & Industries4 while
acknowledging the foreign claimant's reputation in the mark Apple in relation to computers
the court held that it would not be right for courts to permit the persons who have spent
considerable time, effort, money and energy in building up a name, sufficient to have an
impact to lose control over such an impact by improper use of the very same or colorable
similar name by another dishonestly. Therefore, the applicant should be refused from
squatting on the impugned trademark.
¶ Arguendo, the Ps5 mark of Sony entertainment should constitute for a well known mark
under the definition of s.2(1)(zg) because on analysis of the market data we can find out that
Sony Entertainment’s PlayStation accounts for 88.33% of the console operating system
market share in India as of September 2020.5 If the conflicting mark belonging to the same
class i.e. Class 28 (computer game apparatus, consoles for playing videogames, etc.) were to
attain registration, then its use in relation to this applied mark of Sony’s would be likely to be
taken as indicating a connection with the well known mark.

2. Whether the impugned mark falls within the prohibition of S. 11(1), S.11(2), S.11(3)
and S.11(10) of the Act?

1
N. R Dongre v Whirpool Corporation (1996) 5 SCC 714
2
Societe Anonyme Des Eaux Minerales D’Evian v. Evian (1993) 13 PTC 103 (DEL)
3
Revlon Inc. And Ors. v. Sarita Manufacturing Co AIR 1998 Delhi 38.
4
Apple Computers Inc. v Apple Leasing Industries (1992) 1 ALR 93
5
Console Operating Market Share In India, Statcounter Globalstats, https://gs.statcounter.com/os-market-
share/console/india accessed on 18 October 2020.
¶ It is humbly submitted that, given the well-known nature of the ‘PS series’ marks, it is
natural that consumers would upon being exposed to the impugned mark be induced into
believing that it signifies or is associated with the Opponent’s mark. Therefore, the
registration of the impugned mark by the applicant is hit by S.11(1), S. 11(2) of the Act for
being identical to an earlier trademark and the use of the same would cause an unfair
advantage to the applicant.
¶ Additionally, S.11(10) provides for the protection a well-known trademark against identical
or similar trademarks. In this case; PS5 being a mark which is associated to a well-known
trademark that of the PS Series, it should be adequately protected. Hence it is imperative to
consider the dishonest intention and the bad faith on the part of the applicant in adopting the
impugned mark virtually identical with and deceptively similar to that of the Opponent’s
mark.

3. Whether the impugned mark falls within the prohibition of S.9(1)(a) and S.9 (2)(a) of
the Act?
¶ As mentioned, priorly, the trademarks ‘PS and PS series’ are being used by the Company
from its inception and are exclusively associated with its business. Therefore, the impugned
mark ‘PS5’is not capable to distinguish itself from that of the Opponent’s mark. Moreover,
the law does not permit any one to carry on his business in such a way as to persuade the
customers or clients in believing that the goods or services belonging to someone else are his
or are associated therewith.6 Hence, the impugned application falls within the absolute
prohibition prescribed in S.9(1)(a) and S. 9(2)(a) of the Act and shall be duly refused.
¶ Based on these assertions, we can claim that the Applicant has adopted the Mark with a
dishonest and fraudulent intention, having copied the specifications from the earlier
generation of the product, the PS4, which has a trademark under Application No. 2481440 in
Class 28. The use of the impugned mark by the Applicant is therefore to deceive members of
the public, thereby causing irreparable damage to the reputation of Sony Interactive
Entertainment.

6
Laxmikant V. Patel vs. Chetanbhai Shah, AIR 2001 SCC 4989