Branding the "Himalayas": Descriptive, Generic or a GI?

His post deals with a trademark issue involving the use of the term “Himalayan” for packaged mineral water. He opines that since the term “Himalayan” is a descriptive term, it could potentially acquire distinctiveness and is therefore capable of trademark protection. Apart from the issue of whether the plaintiff in this case could really make out a case in favour of acquired distinctivess, what we’d like to ask our readers is this?

Is this a case of a descriptive mark, in which case long and sustained use could confer distinctiveness and render it trademark-able? Or is this a generic term, not capable at all of being registered as a trademark, irrespective of the extent of use? Or better still, would this term serve best as a “geographical indication”?

FIGHT FOR THE HIMALAYAS
By VC Mathews

There is a legal battle being waged between Mount Everest Mineral Water (hereinafter referred to as MEMW) and Bisleri for the Trademark “Himalayan”. MEMW had registered the Trademark “Himalayan”, in the year 1994. MEMW recently won an interim injunction, given by the Delhi High Court against Bisleri, whereby:

1) Bisleri has agreed to stop using the domain name http://www.bislerihimalayan.com.
2) Bisleri will not use the word “Himalaya” in large font. It will write “Himalaya” as a descriptive word in small font to denote origin of the water.

The injunction seems to have been given by the courts on the basis of the fact that MEMW had registered the trademark in the year 1994.

Mount Everest Mineral Water commenced operations in 1991 with its plant at Dhaula Kuan in Sirmour district, Himachal Pradesh. The company was promoted by Dadi Balsara, an NRI from Singapore. The company’s first public issue in 1995. The Tata group, through Tata Tea, acquired 31.73% stake in the company partly by purchase of shares from investors and partly by preferential allotment.

Himalayan natural mineral water is endowed with the wellness of vital organic minerals. The water is untouched and unprocessed, and has a unique taste which takes 20 years of percolation to acquire, as it makes its way to the underground aquifer located in the Shivalik range of the Himalayas. Situated about 130 metres below the earth’s surface, the Himalayan aquifer is one of the largest and most pristine sources of natural mineral water in the world. Himalayan is bottled at source and this lends the brand its strong intrinsic heritage. Himalayan is internationally accredited by the US FDA, the European Union, the health ministries of Japan and France, and Institut de Fresenius Germany. An IS / ISO 9001-2000 certified company with an HACCP compliant bottling plant, Himalayan is the only internationally accepted natural mineral water from India.

In India there is a differentiation made between natural mineral water and packaged drinking water. The former is water from an underground source that is packaged close to the source and meets the quality standards without processing. The latter is from any source and has to be treated and disinfected, a process that could involve filtration or ozone treatment, reverse osmosis before it is fit for human consumption.

India is the tenth largest bottled water consumer in the world. Bottled water is sold in numerous ways like packages, pouches, glasses, 330 ml bottles, 500 ml bottles, one litre bottles etc. The bottled water business in India can be divided into 3 categories in terms of cost. They are premium natural mineral water, natural mineral water and packaged drinking water.

Under premium natural mineral water brands such as Evian, San Pelligrino and Perrier are included. Natural mineral water includes brands such as Himalayan, Catch etc. Packaged drinking water which is the largest category includes brands such as Parle Bisleri, Coco Cola’s Kinley and PepsiCo’s Aquafina.

If water is drawn from a natural source and it confirms to composition listed under IS13428:1998, Amendment 1- 5 and is bottled without altering the composition, it falls under natural mineral water. As far as packaged drinking water is concerned, any of the process of filtration, disinfection listed under IS 14543:2004 can be utilized, altering the composition of the water and bottling it.

It is a necessity for all bottled water manufacturers, to obtain the ISI mark from the Bureau of Indian Standards (hereinafter referred to as BSI) if they intend to set up a processing unit.

Bisleri has recently forayed into the business of producing and marketing natural mineral water. This it does by the acquisition of a facility near the Himalayas from which is draws its water for its new brand of natural mountain water. But it erred by using the name “Himalaya” thereby making their brand similar to that of MEMW’s.

MEMW claims that they can use the name “HIMALAYA” as that is where the source of their product is. A similarity can be drawn to Evian, which is the most popular natural mineral water in the world. Evian natural spring water owes it origin to the spring water which originates from the pristine peaks of the French Alps to the spring in Evian – les- Baines. Thus it got its name from the place of its origin.

But can the name “Himalaya” be trademarked? Some may argue that the mark “Himalayan” is descriptive in nature. In the matter of Godfrey Philips India Ltd. v. Girnar Food & Beverage (p) Ltd., a descriptive trademark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source.

MEMW’s mark “HIMALAYAN” relating to natural mineral water is descriptive in nature but has acquired a secondary meaning, thereby fulfilling the condition for registration of a trademark.

The packaged drinking water sector in our country is growing at a rate of 25% per annum and is expected to be worth Rs. 12, 364 crore by 2010. The rapid growth in this sector needs to be regulated as there seems to be arising numerous cases where bottled water is not as pure and safe as is being advertised. Stringent measures is the need of the hour to combat the same.