Thread: WIPO: Telecom Company Loses Tata-Telecom.com

A Canadian company, Toronto Asia Tele Access Telecom, Inc. (TATA Telecom Inc.), lost the domain Tata-Telecom.com to... yes you've guessed it... Tata Sons Limited, India.

The Canadian company claims to have adopted "TATA" as a trademark/trade name because it's an abbreviation for "Toronto Asia Tele Access". Although incorporated in 2006, the company asserts it began providing telecommunications services in Canada in 2002 and had "sister companies" in India (it's not clear from which date). Also, it sold telephone cards in Europe since 1996.

The Panel rejected the Canadian company's claim of prior rights to the TATA mark in association with telecommunication services, saying there was no evidence that the Canadian company ever registered or applied to register TATA as a trademark. Also, the respondent's submissions didn't show use sufficient to establish common law rights in TATA.

The Panel stated that the respondent's claim that it did not know about the well-known TATA mark lacked credibility.

I realise well-known trademarks enjoy a lot of protection under trademark law, however I'm don't agree with the finding of bad faith here. Not only is there a legitimate business involved, using TATA as an abbreviation for Toronto Asia Tele Access make sense to me.

Also, my understanding is that Tata Sons Limited didn't enter the telecommunications industry until 2002 (under the name "VSNL" - then renamed Tata Communications in 2008. The Canadian company claims to also have had a legitimate business in telecommunications around 2002. From what I understand, Tata Sons wouldn't yet have been well-known "in association with telecommunication services".

What do other INForum members think of this decision?

TATA is a very powerful brand name and are also into Telecommunication themselves. Obvious decision.