Background
According to a news report Bhasin has filed an opposition in his personal capacity to a request for trademark registration of the name and label “Arroz Gandhi” (Gandhi Rice) before the Ecuador Trademark Office. The trademark was sought to be registered under International Class 30 (which deals with staple foods) with respect to “aged or old rice, also medium and long grain rice” that may or may not come from India. A copy of the record from Corsearch® Advantage™ can be accessed here.
The Main Contentions being raised against this trademark are:
That if the trademark were granted it could hurt the sentiments of the general public in India who respect and revere Mahatma Gandhi as the Father of the Nation. No one can be permitted to carry on any commerce and trade under the name and image of Gandhiji for petty monetary gains, as he was a world famous leader.
The law in India under S.3 of The Emblems and Names (Prevention of Improper Use) Act, 1950 (hereinafter “Emblems and Names Act”) prohibits the improper use of certain names, it states “…. no person shall, except in such cases and under such conditions as may be prescribed by the Central Government, use, or continue to use, for the purpose of any trade, business, calling or profession, or in the title of any patent, or in any trade mark or design, any name … specified in the Schedule or any colourable imitation thereof …” . The Schedule in point 9-A prohibits the use of the name or pictorial representation of ‘Mahatma Gandhi’.
Applicability of the Emblems and Names Act
The Emblems and Names Act applies only to India and to the citizens of India outside India. Since the trademark application has been filed in Ecuador by Valverde Munoz, it is quite unclear how the application of the Act will be extended. I had a talk with Mr. Lalit Bhasin and he believes that they have a strong case under this Act.
Indian law prevents the use of not only the names, symbols and emblems of India but also of other countries. The Schedule to the Emblems and Names Act prevents the use of the name, emblem or official seal of not only the Government of India but of any State, or any other insignia or coat-of-arms used by any such Government or by a Department of any such Government. It also protects the name of the Parliament or the legislature of any State, or the Supreme Court, or the High Court of any State, or, the Central Secretariat, or the secretariat of any State Government or any other Government office or the pictorial representation of any building occupied by any of the aforesaid institutions.
We will be covering this point from the perspective of Ecuador law in a subsequent post and will analyse whether they too have a similar law which protects foreign names, emblems and symbols.
A dispute along similar lines had arisen previously in India as well with respect to Mont Blanc which tried to use Gandhiji’s portrait for their expensive, special edition luxury pens. We had blogged about the issue here, here and here.
Right of Publicity
An interesting aspect to see here would be whether the right of publicity will be invoked by the lawyers for the opposition. It would be important for us to see whether the right of publicity is recognised in Ecuador in order to know whether the lawyers for the opposition can invoke this argument.Essentially the right of publicity is the right of every person to prevent the unauthorised commercial use of his or her identity. It seeks to protect individuals from distress that may result from the unwanted use of their identity.
The right protects anything by which a certain human being can be identified i.e. personal names, pictures etc.
Post Mortem Right of Publicity
The right of publicity protects all persons from the time of birth to the time of death and beyond. When the right of publicity extends after death it is called the post-mortem right of publicity. However whether the right of publicity extends beyond life is very jurisdiction specific. For example the post mortem right of publicity has only been recently recognised in the US in California and will soon be recognised other American states too. Legal recognition of post mortem rights of publicity usually permits the deceased’s beneficiaries or heirs to control and financially benefit from the use of a deceased’s image and likeness.
In order to claim violation of right of publicity one must be able to show identity use, commercial use of identity, that he/she holds a valid ownership interest in the right of publicity in question, that there was lack of consent to use the identity, the use of identity must result in injury.With respect to
1. Identity Use: Under common law anything that triggers a thought of a particular person is considered identity use. In this case the use of Gandhiji’s name in the term ‘Gandhi Rice’ amounts to use of his identity as it immediately triggers an association with Mahatma Gandhi.
2. Commercial use of identity: it can be argued that commercial use is intended since the movers of the trademark application intend to sell aged rice under the Gandhi trademark.
3. Valid interest– Though the lawyers for the opposition may argue that the Emblems and Names Act, 1950 recognises the national importance of Mahatma Gandhi as a revered symbol in India and reserves the name and image of Mahatma Gandhi in the Schedule as a protected national asset, it may become difficult for them to prove a valid interest.The right of publicity is generally invoked by the person whose identity is being used, his/her descendants, heirs, assignees or exclusive licensees . It has never till now been invoked by the general public for protecting the rights of a revered symbol of the nation. So if it is allowed in this case it would be quite an unprecedented move.
4. Lack of consent: is another tricky area since this involves a post mortem publicity right and Gandhi could not have anticipated such a use during his lifetime. However as we brought out in our series of Mont Blanc posts, Gandhi would probably not have consented to such commercial use of his name.
5. The use of identity must result in injury: It can be argued that use of Gandhiji’s name would result in injury as it would hurt the moral sentiments of the Indian people.
Other Registered Marks using the name Gandhi
This is not the first instance of someone using the Gandhi name for commercial purposes. There are innumerable examples, two such instances over which trademarks have been granted are “URBAN GANDHI” associated with clothing and “BABY GANDHI” associated with early childhood videos and DVD’s. It would be interesting to see what impact the grant of these trademarks could have on the present opposition petition and how it would be countered.
Final Thoughts
Though the lawyers for the opposition may argue the case on moral and sentimental grounds, the law seems to be stacked up against them since:The Emblems and Names Act does not extend beyond India and when it does, it does not extend beyond the citizens of India andIf they were to invoke the right of publicity they will in all probability lose due to lack of valid interest, as post-mortem publicity rights can be invoked by the descendants of the deceased or his/her authorised representatives not the general public at large.
The matter will now be heard on October 10. Part II of this post will deal with this issue from the perspective of the law in Ecuador and whether a strong case can be made under provisions in their laws.
