Money & Banking

State Bank of India files plea in US against Tokyo-based SBI Holdings

Forum Gandhi Mumbai | Updated on April 09, 2021

Says trademark damaging its reputation and creating confusion among customers

State Bank of India has filed a petition in the United States Patent and Trademark Office (USPTO) against a trademark registered by Tokyo-based financial services conglomerate, SBI Holdings, Inc.

SBI has appealed to cancel the latter’s trademark in the US as it is “damaging” and “causing harm” to the Indian bank’s reputation, apart from confusing its customers.

SBI’s logo or mark consists of a light blue, incomplete circle design with a hole in the middle, followed by the lettering “SBI” in dark blue whereas Tokyo’s SBI Holdings’ logo consists of a black, italicised “SBI” with an arch on top of it.

A copy of the application filed by SBI was seen by BusinessLine.

Design mark

The registration for the design mark in the name of SBI Holdings Inc. Tokyo, Japan was issued on January 27, 2015. It has registered services like banking; instalment loans; credit card services; debit card services; acquisition and transfer of monetary claims; electronic funds transfer; exchanging money; financing services among others, which are similar to that of State Bank of India’s services.

“Petitioner (SBI) has used the mark SBI in US commerce in connection with applicant’s services since at least as early as January 4, 2019.

“As a result of this use, consumers in the US have come to associate petitioner’s “SBI” (logo) mark with applicant’s services and a variety of related services,” the petition said. In September 2020, the USPTO refused registration to State Bank because SBI Holdings had already registered the logo.

The Indian bank is, therefore, seeking cancellation of the registration given to SBI Holdings.

SBI’s counsels further said that an investigation conducted by them revealed that there was “no evidence of current use of the mark in interstate commerce (by SBI Holdings)”.

It was argued that SBI Holdings may have abandoned the trademark registration by failing to use the trademark in interstate commerce in the US for a period of at least three consecutive years prior to the filing of the petition.

Failure to use trademark

The counsels further said that it was brought to their notice that SBI Holdings had not intended to commence or resume use of the mark in connection with the Registered Services in interstate commerce.

BusinessLine has learnt that both parties are engaged in settling the said matter.

Published on April 09, 2021

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