Acko versus Acko: Insurer cries trademark violation in China, moves Indian govt

Bengaluru-headquartered Acko General Insurance has asked the Indian government to intervene in a case of potential trademark violation in China, two people aware of the matter said.

The Amazon-backed insurer objected before Chinese authorities after Shenzhen MengLang Technology applied for the Acko trademark in China under a category meant for insurance and financial services, the people said on condition of anonymity. 

The objection was rejected, but it is unclear if Shenzhen MengLang's application has been granted. 

The Indian insurer then wrote to the Union corporate affairs ministry that the Chinese entity has no affiliation with it and requested it to intervene, the people added.

Acko is keen to avoid any suspicion that it is linked to any country other than India, the people said, adding the insurer has told the government that it is spending significant time, resources and efforts to protect its trademark.

Queries emailed to Acko General Insurance and a corporate affairs ministry spokesperson remained unanswered.

In a similar case, the Delhi High Court recently barred India's Tesla Power from publishing advertisements with a Tesla trademark, after Elon Musk-led Tesla Inc. sued the Gurugram-based company for using its trademark.

Tesla Inc. argued that Tesla Power's use of the trademark in India was causing confusion among consumers and potentially harming its business interests. On 30 May, Tesla Power asked its partners and vendors to remove the Tesla logo from their electric scooters. The case hearing is still on.

Paris Convention vs first-to-file 

Acko's application was rejected in China because unlike countries that recognize well-known international trademarks, China grants them to whoever applies first, the people cited above said. Acko Technologies, the parent of Acko General Insurance, has owned the trademark Acko in India since December 2017.

Under the Paris Convention for the Protection of Industrial Property, to which both India and China are signatories, every trademark registered in the country of origin shall be accepted for filing and protected by all other treaty signatories, Acko highlighted in its letter to the Indian government, according to the people who have seen the correspondence.

Also read | How Tesla's first India lawsuit will affect EV trademark battles

Legal experts, however, say IP laws are local.

Cyril Amarchand Mangaldas has seen similar instances in the past, said Swati Sharma, who heads intellectual property rights at the law firm. This is because China is a “first-to-file" country, and does not recognize the concepts of “spillover reputation or common law rights", Sharma said. 

“The Paris Convention only ensures that all applicants, whether foreign or national, are treated at par for protection and enforcement purposes. However, IP laws are territorial in nature," Sharma added. 

Govt unlikely to intervene

“Each country has its own national laws governing how IP would be protected and enforced in their country. So laws are not uniform and there are many first-to-file jurisdictions in the world such as Nepal and the Middle East," Sharma said. 

“There is no known precedent where the Indian government has intervened to enforce trademark rights of a private company in another jurisdiction. Legal recourse is available under the local laws of China."

Siddharth Mahajan, partner and an IP expert at Athena Legal, said that in such cases, the government usually does not intervene as it has no major role to play.

“Trademark protection is territorial, and trademark owners are expected to protect their trademarks in countries of interest. Such filing of famous third-party trademarks of foreign owners is a common practice that takes place in various jurisdictions and in fact, it’s common practice in China," said Mahajan.

Acko, Mahajan said, would likely have to explore legal remedies under Chinese law, which could include securing an injunction from courts and opposing its namesake in a Chinese trademark's office.