Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. These are four appeals filed by Petitioner-BSA Business Software Alliance, Inc. challenging the impugned order dated 25th April, 2023 passed by the Registrar of Trademarks. Vide the said order the oppositions filed by the Respondent have been allowed. The Appellant's applications for registration of the mark 'BSA' bearing number 1678256 in classes 16, 35, 41, 42 have been rejected by the Registrar of Trade Marks.

3. BSA Business Software Alliance, Inc. is an entity which is a non-profit trade association, claiming to advance the goals of the software industry, and advocate for public policies that foster technology innovation and drive growth in the digital economy. It undertakes various compliance activities on behalf of the software companies and almost all the largest software makers are members of the said association such as Adobe Systems, Apple Inc., Bentley Systems, Cisco, Dell, IBM, Microsoft, McAfee, etc.

4. The Appellant also claims to coordinate on a global level and take action against software sellers and end-user organizations that make unauthorized copies of software, and coordinate with enforcement agencies to enforce copyright laws.

5. On the other hand, the Respondent No.1- Tube Investments of India Limited is also a well-known Chennai based company, which has been using the mark 'BSA' since 1950. Its mark is registered, bearing no. 1498332 in class 35 for bicycle, cycle components, accessories, electric scooters, fitness equipment and other related products. The Appellant's trademark applications were opposed by BSA Cycles, which led to the impugned orders being passed.

6. When the appeals were taken up for hearing on 13th October, 2023. Ld. Counsel for the Respondent No.1 had submitted that due to extensive use of the mark 'BSA', the Respondent No.1 intends to seek a declaration as a well-known mark and also that there are various other disputes which are pending between the parties before the Trade Marks Registry including opposition proceedings.

7. On the said date, after hearing Mr. Kalra, ld. Counsel for the Appellant and Mr. Mohan, ld. Counsel for the Respondent No.1, the Court was of the opinion there ought to be broad delineation of services between the 'BSA' i.e., Business Software Alliance and 'BSA' used by the Respondent for bicycles and allied products. The Court directed the parties that the same ought to be agreed between the parties so that the respective marks can be registered, and the parties do not sue each other in respect of products and services, which they agree upon.

8. Pursuant to the said order, parties have consulted with each other and the Appellant had agreed to restrict its services in class 35 as under:

"Class 35: promoting the interests of the software and e-commerce industries."

9. Insofar as the remaining classes are concerned, it is the submission of ld. Counsel for the Appellant states that in class 16, 41 and 42, the scope of registration is already restricted to computer software products and related goods/services.

10. In order to have some clarity, the final goods and services as agreed between the parties for which the Appellant can obtain registration is set out below:

"Class 16: printed materials, namely, annual reports, announcements, posters, teaching guides, flyers, postcards, mailers, brochures, pamphlets, booklets and reports on the subject of copyright protection for computer software products, computer software copyright.

Class 35: promoting the interests of the software and e-commerce industries.

Class 41: educational services, namely, arranging, coordinating and conducting symposiums, conferences, presentations, workshops, classes, training sessions and seminars on the subject of copyright protection for computer software products, computer software copyright enforcement, copyright piracy and international software trade issues, and educational materials distributed in connection therewith.

Class 42: providing a web site with information on copyright protection for computer software products, computer software copyright enforcement, copyright piracy and international software trade issues."

11. The appeals are disposed of permitting the Appellants to obtain registration for the mark BSA in respect of the goods as agreed above in each of the Classes. The registration of the trade marks shall be granted in favour of the Appellant in classes 16, 35, 41 and 42 under the Trade Marks Act, 1999 in terms captured above.

12. Insofar as the Respondent's case that it is entitled to a declaration as a well-known mark in class 12 is concerned, it is clarified that if and when the Respondent No.1 seeks such a declaration either in a suit proceeding or before the Registrar of Trade Marks, the present settlement shall not come in the way of the Respondent No.1 being declared in class 12 as a well-known trade mark as the Appellant has no objection to such a declaration in class 12.

13. The Appellants shall undertake the necessary formalities within four weeks. The office of the CGPDTM shall grant the trade mark registrations within four weeks thereafter and reflect the same on its online portal. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trademarks of India on the e- mail id: llc-ipo@gov.in for compliance of this order.

14. The appeals are disposed of in the above terms. If there are any other oppositions or cancellation petitions between the parties, the same shall also abide by the terms of this order. All pending applications are also disposed of.