Ø Case history:
This post considers a case brought to our notice by Mr. Praveen Raj. The case, currently being heard before the Delhi High Court, deals with the evergreen topic of distinctiveness of a trademark. The question is whether the trademark ‘Manjal’ is descriptive in nature and therefore liable for revocation.
The brief history of the case is as follows, Divine Pharmaceuticals obtained a license to market soaps in 2005 under the name ‘Ayur Manjal.’ It subsequently applied to register the name as a trademark. In the process they realised that ‘Manjal’, ‘Maricos Manjal’ and ‘Marico’S Manjal’ were trademarks owned by another company Marico Limited. Problems arose from the fact that both the parties’ used/intended to use the ‘Manjal’ mark in the same market for similar goods. In order to prevent the value of its trademark from being diluted, Marico Limited successfully filed for an interim injunction before the Delhi High Court to prevent Divine from using the word ‘Manjal’. The Delhi High Court restrained Divine Pharmaceuticals from using the Manjal trademark or any identical or deceptively similar mark. Subsequently, Divine’s goods were seized. As every other experienced litigator, Divine Pharmaceuticals filed an application for the revocation of the ‘Manjal’ trademark on the ground that it was descriptive mark describing turmeric soaps.
The contention that the mark is descriptive arises from the fact that ‘Manjal’ means turmeric in Malyalam and Tamil. Hence, the mark ‘Manjal’ is possibly descriptive of the (Ayurvedic) turmeric-based soaps. The revocation application also contain challenges relating to ownership of the mark and whether the assignment to Marico Limited was valid under law given that it was not registered. These issues are not dealt with in this post.
At a preliminary level one can agree that ‘Maricos Manjal’ and ‘Marico’S Manjal’ refer to or indicate a specific source of origin and the argument that these marks are generic does not arise. Hence, we will focus on the ‘Manjal’ trademark. Manjal’s trademark certificate defines the soap as an Ayurvedic bath soap. Readers are requested to note that as per Marico Limited’s rectification application (filed before the Trademark Registry, a copy of which was provided for our perusal) though the business is spread across India it seems to be Delhi centric.
Ø Brief introduction to the law relating to descriptive marks:
Marks which are descriptive of the nature or characteristics of a good or service cannot be registered as trademarks under Section 9(b) of the Trademarks Act 1994 (the “Act“) on the basis that such terms are commonly used by all involved in the trade and do not distinguish any specific trader of the concerned goods or services. For instance, ‘apple’ would be descriptive of the fruit ‘apple’ and would not be registrable as a trademark for that fruit. This is not an absolute prohibition and a descriptive mark is capable of registration if it has acquired secondary meaning, i.e., it has acquired such reputation and goodwill such that an average customer identifies the descriptive mark with the particular product. This rule was spelt out by the Supreme Court in their Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd, 2005 (4) SCC 457. Another Supreme Court case that dealt with the issue of descriptive marks was J.P. Kapoor v. Micronix India, 1994 Suppl. (3) SCC 215, wherein the Supreme Court observed that the word ‘micro’ being descriptive of micro technology used for production of electronic items of daily use, could not be claimed exclusively. The trademark involved in the case was Microtel and the logo ‘M’ used for products which consisted of electrical and electronic apparatus, instruments, TV boosters and TV tuners. The reasoning of the Court, relevant for this post, is reproduced below:
“the word ‘micro’ being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro chip technology would be justified in using the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not only likely to be misguided or confused merely by, the prefix ‘micro’ in the trade name.”
There are innumerable cases dealing with words common in trade, especially before the Delhi High Court. To list a few in recent times, Competition Review Private Ltd. v. N.N. Ojha (Competition Success Review) wherein the Delhi High Court observed that ‘Competition’ was a generic term and in absence of similarity in colour scheme, the plaintiff could not claim exclusive use of the word ‘Competition’. Similarly in Rupee Gains Tele-Times Pvt. Ltd. v. Rupee Times, 1995 PTC (15) 384, the Delhi High Court held that the word ‘Rupee’ was synonym with money and all financial journals and publications have been using the word business or financial or money for their journals and newspapers. The more recent cases being the India Habitat Centre case, Stokely Van Camp, Inc. & Anr vs Heinz India Private Limited and (drum roll) another Marico case, Marico Limited vs Agro Tech Foods Ltd.
All the cases mentioned above are based on the same legal position, i.e., a descriptive mark is essentially words commonly used in trade and hence given the risk of confusion in the mind of the consumer and the lack of indication of a specific source of origin, such marks are not capable of enjoying any monopoly. Interestingly, all the marks dealt with above are words in the English language. In the J.R. Kapoor case, the average consumer in the information technology sector would possibly have a reasonable command over the English language such that he/she understands that the word micro is a standard industry word and does not indicate a specific source. This clear-cut position gets murkier if regional languages are involved. The question to ask is whether an average consumer in Delhi would know that Manjal means turmeric in Tamil or Malyalam and therefore is descriptive in nature. The questions that arise in this situation are: (a) can the entire territory of India be treated as one market? The answer to this question would be in the affirmative as a trademark under Indian law (subject to few exceptions) is registered for the territory of India as a whole; and (b) Can there be a single construct of an average consumer. Note that in case of general consumer goods the construct of the average consumer is a member of the general public. I have not come across any cases that deal with these issues and in the event that any of the readers have come across such a case I would be grateful if they could direct me to it.
However, the issue is dealt with in the revised draft manual for trademark practice and procedure (2009). The Manual follows the EU approach and under head 5.6.3 Non-English Words which have become customary in the Current Language or in the bona fide and Established Practices of the Trade states that, “The following language are likely to be known to a reasonable (and increasing) number of Indian public. As such, descriptive use in any of these languages will be equally objectionable.
Punjabi, Tamil, Bengali, Urdu, Hindi, Telugu, Oriya, Assamee, Rajasthani, Malyalam, Karnatak. Marathi, Gujarathi and English and scheduled languages under the constitution.”
Hence, if the practice advocated by the draft manual were to be followed then ‘Manjal’ being descriptive of turmeric in Tamil and Malyalam would in all likelihood render the trademark Manjal liable for revocation even though an average consumer in Delhi (the main market of the product), not familiar with either Tamil or Malayalam, would fail to appreciate this fact. The question is whether this approach is tenable?