LENOVO (SINGAPORE) PTE. LTD. v. RPD WORKSTATIONS PRIVATE LIMITED, 2024: Madras High Court on IP Clash and Contractual Breach in Workstation Deal

Case Name	Lenovo (Singapore) Pte. Ltd. V. RPD Workstation Private Limited.
Citation	OP (TM) No. 61 of 20242024 SCC OnLine Mad 7336
Court	High Court of Madras
Decided On.	3rd December 2024
Petitioners	Lenovo singapore
Respondents	RPD Workstations.

INTRODUCTION 

This dispute involved the alleged violation of the registered trademark, The Hon’ble High Court of Madras addressed the issue of whether the trademark, ‘THINKBOOK’ registered by RPD Workstation Private Limited should be canceled due to its similarity to Lenovo (Singapore) Pte. Ltd.’s well-known mark ‘THINK’ family of marks, including ‘THINKPAD’ and ‘THINKBOOK’, Lenovo argued that the ‘THINKBOOK’ mark was phonetically and conceptually similar to its trademarks, causing potential consumer confusion and misrepresentation. 

The Court found that Lenovo had established distinctiveness and reputation for its marks and that the registration of ‘THINKBOOK’ was likely to cause confusion; consequently, the court ordered the cancellation of the ‘THINKBOOK’ trademark from the register of trademarks, directing the second respondent to remove it within four weeks, allowing the petition with no costs. 

IMPORTANT PROVISIONS 

• Section 2(1) (zg), Trade Marks Act, 1999: this provision defines ‘well-known trademark’ and sets the criteria for its recognition and protection in India. 
• Section 11, Trade Marks Act, 1999: outlines and bars registration of marks that are non-distinctive, deceptive, generic or likely to cause confusion among the public.
• Section 9, Trade Marks Act, 1999: Prohibits the unauthorized use of a registered trademark in a way that is likely to cause confusion. 
• Section 57, Trade Marks Act, 1999: empowers the court to rectify or cancel entries in the register of trademarks if the registration is found to be erroneously made or in contravention of the Act, 1999. 

BRIEF FACTS – 

Lenovo (Singapore) Pte. Ltd., internationally renowned for its manufacturing and marketing of high quality laptops and computer devices, holds the registered ownership and long standing usage rights for a distinctive suite of trademarks known as the “THINK” family including the ‘THINKPAD’ and ‘THINKBOOK’ and since 1992, these marks have become synonymous with Lenovo in India and across global markets, representing a reputation for innovation, reliability, and premium business technology, and over the years, Lenovo has invested heavily in building goodwill and branch equity around its ‘THINK’ trademarks, which enjoy the recognition as well-known marks under the India law. 

The central dispute in this case arose when RPD Workstations Pvt. Ltd, a comparatively new entrant in the electronics domain, secured registration for the trademark, “THINKBOOK” under class 9, covering laptops and related electronic goods, RPD stations began manufacturing and selling laptops under this mark which according to Lenovo, closely resembled the appearance, structure and phonetic quality of Lenovo’s registered “THINKBOOK” mark, Lenovo asserted that “THINKBOOK” was conceived and adopted by RPD workstations in bad faith and designed to mislead the consumer and improperly ride on the immense goodwill and reputation attached to Lenovo’s well know marks.

Furthermore, Lenovo contended that the resemblance was not accidental or superficial but deliberate creating a likelihood of confusion among consumers regarding the source and origin of the products offered by the RPD workstations, consumers encountered that “THINKBOOK” Laptops especially in the context of similar product categories and retail channels could mistakenly associate them with the Lenovo’s “THINK” family this diluting Lenovo’s brand distinctiveness and undermining its market position and to support its claim, Lenovo pointed out not just phonetic and visual similarity but also the adoption of similar font styles and marketing cues which is a exact replica of the “THINKBOOK” trade mark. 

Additionally, Lenovo argued that the trademark registry had erred in granting “THINKBOOK” registration allegedly by failing to consider the prior adoption use and reputation of the “THINK” family of marks, and further failing to apply the statutory prohibitions under section 9 and 11 of the Act, 1999, Lenovo maintained that its rights as a prior registered proprietor and prior user entitled its marks to strong protection, forestalling confusingly similar registrations, Lenovo initiated proceedings under section 57 of the Act, 1999, seeking cancellation of the “THINKBOOK” registration and its removal from the register of Trademarks. 

RPD workstations, although served statutory notice, did not participate actively or substantially in the court proceedings. The register of trademarks, named as a respondent, defended its registration process by citing adherence to the procedural norms under the act. 

The case focused on the related issues of trademark similarity, the chance of consumer confusion, the distinctiveness and reputation of well-known marks, and the public interest in stopping misrepresentation and unfair weakening of trademarks, and the legal resolution required a detailed examination of both the law and the real-world views of consumers, brand competition, and protection of intellectual property in the fast-changing technology market.

ISSUES INVOLVED – 

1. Whether the “THINKBOOK” trademark registered by RPD workstations is deceptively phonetically similar to Lenovo’s “THINK” family of marks, thereby likely to cause confusion or association among consumers in the market for laptops and related goods? 
2. Whether Lenovo’s prior adoption, continuous use, and reputation of the “Think” family of marks entitled its mark to protection as a “well-known trademark” within the meaning of Indian law, including the right to prevent registration of deceptively similar trademarks. 
3. Whether the registration of the “THINKBOOK” by the registry contravened the prohibitions set out in sections 9 and 11 of the Trademarks Act, 1999, especially due to the existence and distinctiveness of Lenovo’s earlier trademarks for the same goods.
4. Whether RPD workstations’ conduct in adopting and seeking registration of “THINKBOOK” amounted to misrepresentation or bad faith, with the intention to benefit from Lenovo’s established goodwill, and whether such facts justified rectification and cancellation of the registered mark under section 57 of the act? 

ARGUMENTS ADVANCED BY APPELLANTS – 

• According to the counsels representing ‘Lenovo’ by highlighting its position as the prior adopter, user, and registered proprietor of the globally recognized “THINK” family of marks, including iconic brands such as THINKPAD and THINKBOOK, the petitioner emphasized that these marks have been in continuous use since 1992 across multiple jurisdictions, including India, and have become synonymous with high quality laptops and computing devices, Lenovo asserted that its trademarks had acquired tremendous goodwill and distinctiveness through decades of widespread use, heavy investment in marketing and consistent association with technological innovation. 
• The counsels for Lenovo argued that the RPD workstations’ “THINKBOOK” mark was not only visually similar but also phonetically and structurally deceptive in relation to Lenovo’s known “THINKBOOK” trademark. 
• Lenovo pointed out that the two marks differ by just one syllable: “THINK” and “THIN.” Both names include “BOOK” to refer to laptops and electronic notebooks on the market and they had argued that the spelling, pronunciation, and letter arrangement make it very likely for regular consumers, retailers, and traders to confuse the two terms directly, many might think “THINBOOK” is an extension, variant, or related line of Lenovo’s products and Lenovo claimed that the similarities in goods and sales channels increase the risk of confusion and association, thus weakening the unique identity of its established marks. 
• Lenovo also argued that its “THINK” family of marks, including THINKPAD and THINKBOOK, has reached the status of “well-known trademarks” as defined under Section 2(1)(zg) of the Trade Marks Act, 1999, they claimed that this recognition gives the owner broader and stronger protection against identical or similar marks for the same goods or services, furthermore they also protects against marks that could weaken their unique identity or unfairly take advantage of their reputation the counsels vehemently posited by citing international and Indian cases, Lenovo maintained that well-known marks should receive wide protection, and this prevents the registration of misleadingly similar marks by any new entrant, even if confusion or deception is only likely and not proven in every case.
• Lenovo criticized the Trademark Registry for wrongly and unnecessarily registering “THINBOOK” for RPD Workstations, and the company argued that the Registrar did not carefully compare the proposed mark with Lenovo’s existing registrations. Further, this comparison is required under Sections 9 and 11 of the Act, which prevent the registration of marks that are non-distinctive, confusingly similar, or misleading. 
• Moreover, Lenovo claimed that this mistake allowed a mark to be registered that could confuse the public and weaken Lenovo’s valuable intellectual property, and they also argued that RPD Workstations’ use of “THINBOOK” was not innocent or accidental; it was intentional and aimed at taking advantage of Lenovo’s established reputation and exploiting consumer trust in the “THINK” brand.
• Lenovo pointed out the real risk that the disputed “THINBOOK” mark could harm the well-earned distinctiveness and reputation of the “THINKBOOK” mark. Lenovo argued that even without direct confusion, having “THINBOOK” in the market would weaken the unique link between Lenovo and its “THINK” branded devices and this could reduce their value and make it more difficult to maintain exclusivity in the future, the petitioner also claimed that RPD Workstations could gain an unfair advantage by misleading consumers into thinking there was a connection to Lenovo’s premium products, thus benefiting at Lenovo’s expense.
• Finally, Lenovo referred to Section 57 of the Trade Marks Act, which allows the court to correct the trademarks register, and the petitioner argued that registering “THINBOOK” went against the law, public interest, and the rights of an established trademark holder.
• They stated that the only appropriate solution was to cancel and remove the disputed mark from the registration, and this correction would protect consumers, restore fairness in the market, and strengthen the legal and ethical rights linked to Lenovo’s well-known and distinctive “THINK” family of marks.

ARGUMENTS ADVANCED BY RESPONDENTS – 

• The counsels for the respondents argued that the trademark “THINKBOOK” was granted registration following the due process mandated under the Act of 1999. It argued that proper statutory searches and examinations were conducted prior to registration, and that the registry followed its established protocols without any procedural lapses. The registrar stated that the registration was published for opposition, affording affected parties an opportunity to raise objections thus adhering to the principles of transparency and procedural fairness prescribed in the act. 
• The counsels further pointed out that the RPD workstations pvt. Ltd., did not appeal to contest the suit or provide detailed pleadings, the defense inherently relied on the presumed distinctiveness of the “THINKBOOK” mark, by registering “THINKBOOK” RPD workstations implicitly asserted that the mark was sufficiently distinguishable from existing trademarks on the registry including Lenovo’s “THINK” family, the defense would be premised on the notion that trademark law permits marks that create a separate commercial impression and a syllabic change from “THINK” to “THIN” coupled with the other elements of branding and trade dress was adequate to differentiate the two brands in a consumer’s mind. 
• The respondent’s defense also relied on the lack of concrete evidence showing marketplace confusion or actual deception linked to the use and registration of “THINBOOK,” the Registrar of Trademarks noted that there were no widespread reports of consumer confusion or misuse of Lenovo’s goodwill before the proceedings began and from an administrative point of view, the respondent argued that claims based on potential confusion need solid, objective evidence, these claims should not depend on hypothetical concerns, especially since both marks coexist in the registry and face independent commercial review.
• The Registrar pointed out the limits of its role in trademark administration, they stated that the registry must follow statutory rules (Sections 9 and 11) and must consider the rights of previous registered owners, new applicants, and the public interest, the defense argued that once the registry makes a decision based on the data it has and follows the legal steps, changing or canceling that decision needs clear evidence of a serious mistake or violation.
• The respondent claimed that without proof of bad faith or intentional oversight, its administrative actions should not be changed easily.
• And as a result, the respondents’ opposition was limited to procedural and statutory arguments presented by the registrar of trademarks rather than substantive defenses regarding brand, market use, or differentiation. 

JUDGEMENT – 

• The Hon’ble High Court of Madras embarked on a meticulous comparison of the registered “THINKBOOK” trademark and Lenovo’s suited of “THINK” marks, especially “THINKPAD” and “THINKBOOK”, recognizing Lenovo’s longstanding reputation and extensive global and Indian presence, the court noted that the “THINK” family of marks had become distinctive identifiers in the computing and laptop segment the court further observed that both “THINKBOOK” and “THINBOOK” are used for laptops and related electronics and that the only difference lay in a single letter (K and N) of the prefix. 
• The mark was found to be visually and phonetically similar and was found to be striking, given that the suffix “BOOK” is wholly generic and commonly used in the industry to denote notebook computers. 
•  The Court reasoned that trademarks need to be looked at as a whole. However, special attention should focus on the main and unique features. In this case, “THINK” was the main part of Lenovo’s mark; additionally, “THIN” was very similar in both appearance and sound. This could lead to the same recall and association for the public; the closeness in spelling, pronunciation, and product use increased the chance of confusion, and this risk was greater due to the similar distribution channels for both companies’ laptops.
• The Court explored Indian trademark law and international principles, it highlighted the increased protection given to well-known trademarks as outlined in Section 2(1)(zg) of the Trade Marks Act, the Court determined that Lenovo’s “THINK” family, because of its long-standing use, global marketing efforts, and leadership in the industry, met the criteria for well-known trademarks, which deserve stronger protection and these trademarks are protected not only from exact copies but also from similar, misleading, or phonetically close imitations that could weaken their uniqueness or lead to confusion.
• The Hon’ble High Court had cited precedents holding that the benchmark for confusion is the broader public impression and not technical distinctions that tend to lose significance among non-specialist consumers. The court found that “THINKBOOK,” regardless of how it was styled or marketed, risked being mistaken as a Lenovo product or associated line, given Lenovo’s established presence in the notebook segment. 
• The Court was especially worried that consumers, retailers, or business partners might mistakenly think “THINBOOK” laptops are related to Lenovo or endorsed by them, either as a product variant or a sub-brand, the similarities in products, sales channels, and advertising added to this risk and the Court explained that it is not necessary to show actual confusion when a likelihood of confusion is clearly present, this principle is based on both the law and market factors.
• By adopting a mark so similar to the industry leader’s family of brands, RPD Workstations blurred the lines between its products and Lenovo’s, this also opened it up to claims of unfair competition, dilution, and misappropriation of goodwill the Court noted that opportunistic registrations, especially of nearly identical or misleadingly similar marks for closely related goods, must be strictly monitored to maintain the integrity of trademark law and consumer trust.
• The Court found that the registration of “THINBOOK” was illegal and threatened Lenovo’s exclusive rights, it used Section 57 of the Trade Marks Act to order the cancellation and removal of the disputed mark from the Register, the Court emphasized that this action was necessary to prevent confusion, protect consumers, restore fairness in competition, and reinforce the rights of owners of established and well-known brands.
• Concluding, the Madras High Court reaffirmed that trademark law must change as market complexities evolve but stay focused on protecting the interests of brand owners and consumers, the Court’s analysis clarified that close phonetic, visual, and conceptual similarities in related product spaces, where well-known marks are involved, require strong legal action, trademark registration is not just an administrative task, it is a serious process that needs care and attention to market realities, prior rights, and public perception.

CONCLUSION – 

The Madras High Court’s ruling in Lenovo (Singapore) Pte. Ltd. v. RPD Workstations Private Limited highlights the court’s strong position on protecting well-known trademarks from registrations that are even slightly similar in overlapping product markets. The court found “THINBOOK” to be misleadingly and phonetically close to Lenovo’s “THINKBOOK” mark. 

This decision reaffirmed that strong, distinctive, and globally recognized marks receive extra protection under the Trade Marks Act, 1999. The judgment clearly stated that in cases involving well-known marks, even a small change that does not significantly affect the overall commercial impression cannot protect a junior mark from cancellation, especially when the products and sales channels are the same. 

This decision also reminds the Trademark Registry of its duty to conduct careful examinations; it needs to look beyond surface differences and focus on the likelihood of confusion and dilution of established brand value By ordering the correction and cancellation of “THINBOOK” under Section 57, the Court protected both consumer interests and the fairness of the marketplace.

This article has been written by Mayur Shrestha (Presidency University Bengaluru School of Law).