Engaged in a Waterloo of sorts, the Tata Groups Mount Everest Mineral Water (MEMW) and Bisleri are wrangling over the usage of the trademark ‘Himalaya’.
As the facts of the case go,
In turn Bisleri has approached the IPAB in Chennai seeking a rectification of the Himlayan trademark on the grounds that the word is a descriptive word that indicates the source, origin and quality of the water.
The Application further relies on the Geographical Indications of Goods Act 1999 (G.I), stating that the word ‘Himlaya’ bears a geographical connotation and hence comes under seeks the ambit of the G.I Act. The G.I is a collective right that is conferred on a group or community engaged in the manufacture of the product traditionally originating from a specific region, bearing intrinsic characteristics attributable to the geography of a place.
This case would hinge on the ability of MEMW to demonstrate and prove that Himlaya is a “generic” term that is used on a wide array of products and not necessarily on goods from the Himalayan terrain. Whether they would be able to push this argument remains to be seen
This case is likely to be a ticklish one, the first of its kind in India in that as it calls for a reconciliation between a trademark and a G.I. It would also entail a close examination of the issues that could possibly arise in future whenever there is an interface between a trademark and a G.I
However in consonance with TRIPS(Article 22.3) Agreement, the Indian Act also sets forth the following with respect to the relationship between trademarks and GIs:
“Where a trade mark contains or consists of a geographical indication and has been applied for or registered in good faith under the law relating to trade marks for the time being in force, or where the rights to such trade mark have been acquired through use in good faith either—
(a) before the commencement of this Act; or
(b) before the date of filing the application for registration of such geographical indication under this Act;
nothing contained in this Act shall prejudice the registrability or the validity of the registration of such mark under the law relating to the trade marks for the time being in force, or the right to use such trade mark, on the ground that such trade mark is identical with or similar to such geographical indication.”
However the word Himlaya as it stands today is not a registered G.I. The G.I Act that came in to being only in 2003 is a nascent one with few domestic case laws in this area of IPR. EU judicial cases such as that of Anheuser Bush Inc vs. Budweiser Malt Products Corpn lays down some guiding principles in determining issues such as the above.
Amidst all this brouhaha, other thirst quencher biggies like Vijay Mallyas’ UB have nose dived headlong into the watery fray to capitalize on the Himalayan H20 strategy.
‘Having registered this name as its trademark the liquor major is now planning to unleash its natural mineral water sourced from the Himalayas.
“We intend launching our natural mineral water in the next few months and as long as it is sourced from the Himalayas we will be using the word Himalaya for our brand.
“Kingfisher Himalaya Natural water has already been registered as a brand and we will definitely go ahead and use it as long as the source for the mineral water is rightly mentioned,” said a senior UB group official.’
Well, when elephants fight, the ants set out to party!
Ayesha,
The other twist to the controversy is that ‘Himalaya’ for mineral water as GI is shared by more than one country – if I am right, mineral water from the Himalayas is extracted by India, China, Nepal and Bhutan.
Bests, Latha Nair
Mr.Bheemeshwar writes:
Dear Aysha,
I have gone through the article, there is no ambiguity in using the “from the Himalayas, by bisleri. As MEMW has only Himalaya in their trade mark. In court of law both are different as the wordings make them different. his is only word juggling, the TATA’s contention does not stand fully. If thier registration doesnot have the brand “From the Himalayas”. Since Himalaya is only thier trade mark in plain speaking this infringement case is lost.
with warm regards
dbheemeswar
Hi Latha,
Thanks for the comment.
This is one issue that has come up for discussion in many of the G.I forums. We do not have a framework as yet to determine the G.I status or the benefit sharing modus for products and crafts that can trace its origins to regions that lie on both sides of the border.This is definitely an issue that merits attention in the Himalaya dispute, should the neighboring countries stake a claim. There is no provision in TRIPS or other legislations that permit joint registrations of G.Is.The case of the Super Basmati where both India and Pakistan wrangled over the origin is another recent issue of this nature. At best we can try to resolve this through strategic regional co-operation treaties. The SAARC forum may be an effective platform to reconcile this issue.
Your book is a brilliant read on the subject. Both your passion and focus comes through.
Thanks Latha,
Aysha
I do not agree with the propositions set out. There is nothing like Himalaya water…infact all water comes from the glaciers and mountains! How can there be a GI? this is over stretching the concept of GI. Gi is a community right..it shd not be taken to a level where even to pluck a leaf from a tree growing on a mountain requires me to take permission from all the countries where the moutain range extends! this is insane! While GI can be very useful..how we use it can be crucial. Right now it sounds like a govt-license regime to me!
It is imp to understand what is that a purpoted GI contributes to the characteristics of the product. merely the use of a geographical name does not make something a GI!
Thanks, Aysha, for the response and the compliments.
While it is true that there is no provision in TRIPS for jointly shared GIs, the EC Regulation 510 of 2006 provides for a joint application by parties(See the second para of Article 5.1).
Also, just to clarify, the Super Basmati issue was more of a variety issue than a GI issue because Super Basmati is variety of Basmati rice now grown on both the sides of the border. The controversy arose when this variety was formally notified by India as an additional variety eligible for export.
I agree with you that such issues can be resolved only through regional co-operation keeping in mind the long term objective of protection of the GI as a common legacy of all the nations concerned rather than unilteral claims made by each nation that the GI belongs only to them. Any unilateral claim could result in the GI being rendered generic in the long run. I guess all those involved – the governments, the trade and the right holders – need to go beyond their prejudices and preconceived notions.
Bests, Latha