The Intellectual Property Appellate Board (“IPAB”) affirmed the removal of the mark “AYUR” while deciding on an appeal against the impugned Order of the Registry granting registration for the trade mark “AYURTHEERAM” in favour of respondent (M/s. Alex Resorts and Hotels Pvt. Ltd) for the services “Ayurveda Hospital and Resorts” (included in class 42) subject to confining the services in the States of Kerala and Karnataka. [The Order is available here.] The respondent claimed before the Registry to be the user of the mark from 1.6.2005. It was submitted that the application no. 1384396 was filed on 12.9.2005 and was advertised before acceptance in the Journal no. 1349 dated 1.8.2006.The appellant (M/s. Three-N-Products Pvt. Ltd.) filed their notice of opposition inter alia stating that they adopted the mark “AYUR” openly, continuously and extensively since 1984. They opposed the impugned mark on the ground that it was dishonest and intended to trade upon the goodwill and reputation of the appellants.
The IPAB held that the appellant was not entitled to claim proprietorship over the mark “AYUR” (holding that “AYUR” was a generic word) even though the appellant obtained registration for “AYUR” for a variety of class of goods and was a user since 1984. It also cited its earlier Orders for the removal of the mark from the Registry. Further, it was held that there was no proof for confusion between the two marks.
I am inclined to agree with the IPAB Order. The Sanskrit word “AYUR” means ‘giving life’ or ‘giving longevity’. It is well settled that a dictionary word cannot be registered as a trade mark unless it has acquired a distinctive character. The generic name of a product cannot function as a trademark. An acronym of a generic name, which still conveys the original generic connotation of the abbreviated name, is generic. Even a misspelt generic name is generic if it does not change the generic significance to the buyer. [Mc. Carthy on Trade Marks and Unfair Competition. (Third Edn. Vol. 2) cited by Delhi HC in S.B.L. Ltd v. Himalaya Drug Co. AIR 1998 Del 126].
I intend to examine the mark “AYURTHEERAM” in this context from an academic perspective. “THEERAM” is a Malayalam word which means “the slope immediately bordering a stream course along which the water normally runs” or “a broad elevation of the sea floor around which the water is relatively shallow but not a hazard to surface navigation”. Applying the principle stated above, can it be argued that “THEERAM” being a dictionary word is a generic word and therefore, “AYURTHEERAM” doesn’t warrant protection?
I don’t think so. “AYURTHEERAM” is different from “THEERAM”. It is not a generic mark as it has not fallen into common usage for identifying a particular product or service (like Aspirin, Xerox). I am also disinclined to consider it as a descriptive mark since the mark does not as such describe the ingredients, qualities or characteristics of goods or services (like “FAIR GLOW”). The mark “AYURTHEERAM” is, in fact, a suggestive mark as it requires imagination, thought and perception to discern the nature of service viz., “Ayurveda Hospital and Resorts”. In other words, I am inclined to perceive the mark more like the mark “WINDOWS” which is also a suggestive mark. A suggestive mark suggests rather than describes an ingredient or characteristic of the goods / services. Such a mark does not attract adverse provisions of Trademarks Act, 1999 and therefore, eligible for protection.
H/T: On behalf of SPICY IP, I thank Mr. Praveen Raj for drawing our attention to this development.
After going through the order passed by the IPAB in the case referred to by you, it seems that your title of the blog seems wrong. The case that you have referred relates to the opposition proceedings with respect to the registration of the trade mark AYURTHEERAM which was allowed by Registrar and AYUR had filed appeal before IPAB against the said order.
There is mere passing reference to the revocation of the mark AYUR in the said order of IPAB.
Dear All,
The last paragraph of the referred order does not hold removal of the mark AYUR, but merely makes a passing reference of removal of mark AYUR in IPAB rectification applications initiated by HUL against Three-n-products. Reference to the present order surely is misleading.
I could not locate orders passed in the rectification proceedings referred to in the last paragraph; however, looking at the discussions in IPAB’s present order, I believe, IPAB has erred in holding that AYUR should be rectified because it is generic. It may be noted that although there is a bar on registration of words that are generic or descriptive in nature, yet it is explicitly provided under the Trade Marks Act, 1999, that a generic or a descriptive word, which has been openly and continuously used in the course of trade in respect of goods or services provided there under, and becomes reputed in respect thereof, could be registered under the Trade Marks Act, 1999.
So far as the trademark Ayur of Three-n-products is concerned, I believe, by virtue of open, continuous and extensive use, coupled with wide scale promotional activities, it has acquired a ‘secondary meaning’ in relation to Ayurveda-based consumer products of Three-n-products. Thus, it deserves recognition as a trademark of Three-n-products.
Regards,
Aditi
Dear Aditi,
For some reason, the earlier comment didnt come to my inbox. I corrected the error.
regards
Mathews.