Every person, in one way or the other, must have come across the revolutionary video game known as PlayStation manufactured by the tech giant, Sony. Since its invention a lot of versions of the game have been available in the market. Recently, Sony has launched its much-awaited next generation console, the PlayStation 5 (“PS5”). The whole world of video-game aficionados have been waiting for its launch and Sony is set to release the console in mid-November in various countries. In India, however, there was a delay in the announcement of the release date.
The reason for this delay was that Sony was in the middle of a trademark dispute with Mr. Hitesh Ashwani, a person based in Delhi who had applied for the registration of PS5 mark in October 29, 2019 – interestingly, on October 13, 2020 – Mr. Ashwani filed a Letter of Withdrawal seeking to withdraw his trademark application.
He had applied for registration prior to Sony, who (Sony) was only able to apply for the registration of trademark in February 2020. Both of the parties applied for registration of their trademark under Class 28 (Sony applied for a multi-class application including in Class 28).
As anyone can anticipate, Sony had opposed Ashwani’s application for registration and filed a Notice of Opposition to Ashwani’s application No. 4332863 on April 16, 2020. The grounds for such opposition by Sony included that the ‘PlayStation and PS series of marks’ has been in extensive use by it in connection to the manufacture and sell of video game consoles. Furthermore, Sony had asserted that ‘PlayStation and PS series of marks’ are recognized all around the world, including in India, and thus should fall under the definition of ‘well-known’ trademark. It was further asserted that since PS4 has been previously registered in India, the use of such mark by Ashwani could be considered as ‘identical and deceptively similar’ to the ‘PlayStation and PS series of marks’ and has the power to deceive potential consumers, thus causing irreparable damage to Sony’s reputation and goodwill. Ashwani had also filed its counter-statement in response to Sony’s notice on September 16, 2020 alleging that Sony’s applications have been made on a ‘proposed to be used basis’, and that no similar mark had been used prior to this application. Furthermore, it was claimed that Sony has made applications in a mala fide way to harass him as he is the alleged creator of the mark.
Interestingly, Ashwani had also opposed Sony’s application for registration and filed the Notice of Opposition to Sony’s application bearing Application No. 4431871. The claims made in Ashwani’s notice were that Ashwani is the rightful proprietor by virtue of its earlier application and that the mark was allegedly adopted by him on 29.10.2019. The other contentions mirrored Ashwani’s counter-statement claims. The opposition was filed only against the word mark, since the logo mark has not yet been accepted and advertised by the Trade Marks Registry.
It is likely that Sony may have offered a settlement deal to Ashwani, or perhaps it was the pressure of the legal proceedings, because on October 13, 2020, Ashwani withdrew his trademark application. As many experts argue, this dispute has once again brought up the issue of trademark squatting. Trademark squatting refers to instances where one party intentionally applies/registers a trademark of another party in a country where the second party does not hold a registration. Hence, the applicant acts in a mala fide way. This is often done to manipulate parties like Sony to pay monetary compensation to procure the rights over the trademark squatted by such other person.
Reported by Ujjawal Bhargava, Student Ambassador