In this post Rahul Bajaj, discusses the recent judgment in Gufic Private Limited and Anr. Versus Vasu Healthcare Limited .
There are few greater joys in the life of an IP enthusiast than reading an eloquent, nuanced and pithy judgment of Justice Gautam Patel of the Bombay High Court. His recent judgment in the case of Gufic Private Limited and Anr. Versus Vasu Healthcare Limited (Notice of Motion No. 399 of 2013 in Suit No. 164 of 2013 decided on 28.03.2016) is another excellent example of why he has been consistently ranked as one of the world’s 50 most influential IP thinkers.
We have covered another judgment of Justice Patel on descriptive marks here and two interesting Delhi High Court judgments on the subject here
Facts
The Plaintiff (“Gufic”) adopted the mark ‘SALLAKI’ in 1981 which it uses in conjunction with an ayurvedic tablet that is a pain reliever. Gufic’s trademark was registered with effect from January 13, 1982 and the registration has been periodically renewed. Gufic claimed that it learnt of the Defendant’s preparation bearing the mark ‘SHALLAKI’ in May 2009.
Consequently, Gufic’s advocates sent a cease and desist notice to the Defendant on May 7, 2009 in response to which the Defendant’s advocates contended that they were awaiting instructions. Gufic’s advocates sent two further notices on December 6, 2010 and October 27, 2012 to which there was no response.
Arguments on nature of mark:
The decision of Gufic’s plea for the grant of injunction essentially turned on whether or not the mark was descriptive. It would therefore be instructive to analyze the arguments advanced by both parties in support of their respective positions.
Gufic argued that the mark SALLAKI has acquired a considerable amount of reputation and goodwill – an assertion best evidenced by the fact that it had sold SALLAKI products worth Indian Rupees 7.5 crores in 2011-12 and incurred substantial expenditure in its advertising and promotion campaigns.
In order to substantiate the argument that the mark SALLAKI is not descriptive, Gufic advanced 3 central arguments.
First, relying on its legal battle with Himalaya Drug Company, Gufic argued that it was unequivocally recognized by a single judge of the Bombay High Court that the mark SALLAKI isn’t descriptive. Therefore an argument which was squarely rejected in one case, Gufic argued, cannot be pressed into service in another.
Second, Gufic placed heavy reliance on a factual determination made by the IPAB to the effect that the word SALLAKI cannot be said to be descriptive, in light of the fact that it has acquired a secondary meaning on account of Gufic’s extensive use.
Finally, relying on Justice Patel’s own judgment in Jagdish Gopal Kamath versus Lime and Chilli Hospitality Services, Gufic argued that a mark can be said to be generic/descriptive only if its use has become so widespread that it can no longer be associated with a single trader. None of the material put forth by the Defendant, Gufic argued, was sufficient to meet this high threshold.
On the other end of the spectrum, the Defendant advanced 3 main arguments in support of the proposition that the mark SALLAKI was descriptive and, therefore, did not merit protection.
First, it sought to undercut the probative value of the factual determination made by the two courts that dealt with a similar controversy in the past by pointing out that the single judge’s findings in the Himalaya Drug Company case were reversed by the Supreme Court and, in the same way, a writ petition has been admitted against the IPAB’s observations.
Second, relying on the Indian Council for Medical Research’s review of medicinal plants, the Defendant argued that the plant from which this ayurvedic medicine is derived is called SALLAKI in Sanskrit. It sought to further fortify this argument by referring to a private publication which also states that the Sanskrit name of the plant is Sallaki. On the basis of this evidence, the Defendant argued, the word SALLAKI was the most obvious and ordinary name that the Plaintiff could have selected for the tablet in the prevailing circumstances.
Finally, in order to show how the mark in question was being commonly used, the Defendant gave 16 concrete examples of how the mark SALLAKI or its variants were being used by a large array of manufacturers in the concerned trade.
Decision of the court:
Justice Patel prefaced his analysis by noting that the Defendant’s argument lacked any sense of clarity on account of the fact that the material put forth by the Defendant itself indicated that the plant from which the tablet was derived had multiple names in multiple languages. Therefore, it would be nonsensical, he held, to accept the proposition that all the names attributable to the plant were merely descriptive and fell beyond the pale of trademark protection.
Thereafter, he turned his attention to the central question in the dispute which he enunciated in the following way: “The distinction here is, in my view, a question of testing whether the present Defendant is using the mark as a trade mark or in a purely descriptive sense.”
He then proceeded to delineate 2 main reasons for arriving at the conclusion that the Defendant was using the impugned mark as a trademark and not merely for a descriptive purpose.
First, a closer analysis of the visual get-up of the Defendant’s package, he held, gave rise to the inexorable conclusion that the same was being used purely in a ‘trade marky’ sense. While he accepted the Defendant’s argument that the use of the trade mark symbol in the first iteration of the package was inadvertent, he held that, even sans such a symbol, the visual prominence of the mark left no doubt about its character.
Second, he held that no cogent or specific evidence was brought on record to indicate how the mark was actually as popular or widely in demand as the Defendant would have everyone believe. Rejecting the Defendant’s argument that the mark was being widely used on a number of websites with a rhetorical flourish that would have made Justice Krishna Iyer proud, he held: “If there exists one truism today it is that just because something is found on the Internet it is not only for that reason necessarily and invariably true.”
Finally, noting that the likelihood of deception would be much greater in case of ayurvedic medication on account of the target audience, he granted an injunction in favour of the Plaintiff.
At a time when legitimate claims of Plaintiffs for passing off/infringement are being thwarted by vague and unfounded arguments of descriptive use, this judgment certainly is a welcome development.
So if I understand correctly, the judge says three things:
One, that the transliteration of a descriptive word can be trademarked. Two, that it can be used to injunct a competitor if the competitor uses it ‘as a trademark’, as opposed to as a description (which means the square root of nothing, btw – his understanding of ‘use as a trademark’ is ‘I think it’s being used as a trademark’). Three, you can’t defend yourself by saying that the transliteration is descriptive or common to the trade because the internet is full of lies (it’s a pharma product ffs so of course, there’s similar stuff in the market and online – in terms of whether something that’s common to the trade, ‘don’t believe everything you see on the internet’ is neither here nor there).
No legal justification for any of these conclusions, no meaningful reference to precedent not authored by himself, no reason why ‘extra caution’ is required for in case of Ayurvedic medicines, not even a simple ‘I don’t think this is good enough to rebut a prima facie case but it may be good enough at trial’ re the third conclusion. Yet you’re endorsing this view. And not just in a ‘meh, right conclusion but important things left unsaid’ kind of way – this post is more ‘ZOMG Justice Patel wrote an order, let’s talk about how he’s just, like, the best yayayay!’
Look, it isn’t my intention to nitpick – I have no personal experience before this judge, I’ve only ever read orders he’s written, I think he gets stuff right far more often than he gets it wrong (I thought his order in Sergi was very, very good under the circumstances fwiw) and if you insist that he’s the best thing to have happened to Indian IP law since sliced bread then I’m not going to agree with you but I have no problem looking the other way.
But equally, you’ve got to recognise that this is a pretty immense platform and a lot of people who read stuff on here aren’t really going to go back and read the order you’ve written about (especially when you haven’t linked it in your piece). With this comes the responsibility of not blindly endorsing judges and everything they write, given that lots of people are going to inherit these biases based on what you’ve written. That’s bad enough with an order we can all agree ticks the right boxes but it’s particularly dangerous when there are parts of the judge’s decision-making process that fall apart under the slightest scrutiny.
Again, to clarify: zero problems with you pitching a version of your case report that someone can disagree with on law – just dial down the fanboy meter next time, yeah?
Cheers,
Eashan.
Why do you need a link to the judgement? If you can spend so much time in criticising the same, you can might as well do little bit more and find it on the Bombay High Court website.
Read the facts of the case then judge!!!
This is to clarify that my Comment is on Eashan’s observation hence pl add @Eashan before the comment
Way to spectacularly miss the point. I said that the absence of a link to the judgement is a problem for people who won’t be bothered to track it down because reading a post like this will substitute for that effort.
I’m curious – is your default is to assume that all comments about a judgement have been made without reading it? If so, given that you don’t know me from Adam, any specific reason you extended that courtesy to me?
Also, not that this is relevant or anything, but do you have something to say on the law discussed in the case?
“@ Mahua”, btw, since we’re being all counter-culture and referring to the people we’re responding to after the text of our comments.
Hi Eashan,
First, I wish I could write with the kind of flair with which you do — your observations certainly made me laugh. I think your concerns are very legitimate and valid. 4 main points:
First, while he certainly holds that the transliteration of a descriptive word can be trademarked, I think it would be helpful to remember that he arrives at the conclusion in light of the unique facts of this case. More specifically, 2 factors, as per my understanding, dictated his conclusion: First, there were a large array of vernacular terms in a number of languages which the plaintiff could have chosen for the medicine, but there was an element of discretion and choice in the selection of the word SALLAKI. And, second, as was held in para 23 of the judgment in the Himalaya Drug company case, there were, in fact, two terms for the medicine in Sanskrit, and, even though there was a more appropriate word available, the plaintiff chose the word SALLAKI. Therefore, I would disagree with you if your reading of the case suggests that transliteration without anything more is sufficient for trademarking a word.
Second,I would again disagree with your assertion that he doesn’t offer a sufficiently robust justification for coming to the conclusion that the word was being used by the defendant as a trademark and not in a purely descriptive sense. In paras 19 and 20 of the judgment, he clearly mentions that the factors that he took into consideration were: The strategic placing of the mark SHALLAKI; the use of the trademark symbol in the first iteration of the package, albeit inadvertently; and the prominent display of the mark in the silver foil backing of the package. If you think that these factors are not sufficient, I would be curious to know what other factors you think he should have taken into consideration.
Third, I don’t think it would be fair to attribute his conclusion that the mark was not being used in a descriptive sense merely to his distrust of the content of websites containing the mark in question. In para 21, he mentions the other factors that he took into consideration such as the absence of any concrete data about the defendant’s sales figures, their failure to meet the high threshold that Justice Patel himself enunciated in Jagdish Gopal Kammath and their reliance on random webpages without indicating with sufficient precision how the use of the mark on those webpages was indicative of its descriptive character. In fact, as he rightly notes, what he noted in Jagdish Gopal Kammath has been settled law for 6 decades, so I would be curious to know why you think that his conclusion as to the threshold that must be met for showing that a mark is descriptive is inconsistent with precedents not authored by him.
Finally, insofar as his conclusion about the need to exercise extra caution while grappling with an infringement claim pertaining to Ayurvedic medicines is concerned, I think that his assertion is premised upon the belief that those purchasing Ayurvedic medicines are more likely to be deceived by marks that appear deceptively similar than those who purchase modern scientific medication. I cannot find any fault with that view; I don’t think the inarticulate major premise motivating that assertion requires much elaboration.
Nonetheless, I appreciate your suggestions and will definitely strive to present a more objective analysis in future.
Eashan misses the point on a couple of things, and that makes me wonder if he’s read the judgment at all. Rahul has covered most of the ground in his last response, but the comment about the ‘square root of nothing’ is wholly incorrect. There is a well established concept of using a mark *as a mark*, in the ‘trade marky’ sense (a phrase used in UK and US law as well AFAIK), as opposed to using the mark as a trading name, say, or in a descriptive manner. Hundreds of examples, but take this: does a cigarette company use ‘flake’ as a trade mark or descriptively? It’s emphatically not the square root of nothing. Eashan’s translation of the judge’s phrasing is incorrect.
Actually, on a re-read, I’m puzzled by why Eashan is so put off by this judge. He’s doing a job, he may be wrong even half the time, but he’s unfraid to get it out there and which judge gets it right 100% of the time? Who said anything about him being the greatest, blah blah?
And this is just entirely wrong: “No legal justification for any of these conclusions, no meaningful reference to precedent not authored by himself, no reason why ‘extra caution’ is required for in case of Ayurvedic medicines, not even a simple ‘I don’t think this is good enough to rebut a prima facie case but it may be good enough at trial’ re the third conclusion.”
The judgment has all that Eashan says it doesn’t. But I guess you’d have to read it first.
Nice Article.