Oops, the name is already taken

Failing to obtain trademark registrations early can prove costly.

The industry-leading Sony PlayStation is a household name even among non-gamers¹. The ‘PlayStation 4’ (or more colloquially, ‘PS4’), released in 2013, became the fastest-selling gaming console in history. The eagerly anticipated ‘PS5’—expected to launch in November 2020 —is set to dominate next-gen gaming.

However, in India, the ‘PS5’ faces an awkward scenario: the ‘PS5’ brand had been trademarked there, but not by Sony.

Reports indicate that a Delhi resident, Hitesh Awani, filed to register ‘PS5’ in October 2019². It is unclear why Sony did not file earlier, given that the first news of their next PlayStation emerged in April 2019³ and the hardware specifications were confirmed in October 2019⁴.

Sony now has a few options: challenge or acquire Awani’s registration, or change the ‘PS5’ name to something else. Whichever path it chooses will come at a cost. As of now, the ‘PS5’ may not be available for pre-order in India⁵, and the launch date in the world’s second-most populous country remains uncertain.

Pay to Use or Be Forced to Change

This is not the first case highlighting the importance of registering your trademark in advance. Brands have previously had to change their identity in other countries to avoid legal conflicts.

Here are a few notable examples:

Trademark

What Happened?

When Burger King attempted to expand into Australia, ‘Burger King’ was already trademarked by a takeaway food shop in Adelaide⁶. As a result, the Australian franchise adopted a different name.

Asus was restrained by the Delhi High Court from using the ‘Zen’ brand for its products due to a similar trademark already registered by another party⁷. Consequently, ASUS renamed the ZenFone 6 to ‘ASUS 6Z’.

When TJX Companies expanded into the UK and Ireland, it changed the US brand name to ‘TK Maxx’ to avoid confusion with the established department store TJ Hughes⁸.