‘Xerox’ is not Generic…….Yet?!
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As a child, I recollect being asked to get ‘xerox copies’ of papers and documents. I still remember the few number of photocopier shops strewn across the small town I grew up in, simply named ‘Xerox’ shops. Others may recollect similar instances as well. I even vaguely recollect one senator using the phrase ‘Xerox copy’ during the Watergate hearings. Of course, most IP folks today will know that ‘Xerox’ is actually a registered trademark, which, by statute, grants exclusive rights on the registered proprietor of the trademark, to use the mark.
However, the point remains that all around we have noted instances where the word ‘Xerox’ has penetrated the market and the language of the common man to such a deep level that the term may have become generically associated with photocopies and photocopiers. If trademarks are meant to identify a particular source – ‘distinguishing the goods and services’ of one person from another – can something that has become so ‘generic’ be allowed to remain a ‘trademark’ under Indian law? This is the gist of the most significant issue that the IPAB was confronted with in its recent decision of Ilango v. Rank Xerox Ltd. & Ors., delivered on September 21, 2012. The rectification applications filed by the Applicant seeking the removal of the trademark ‘Xerox’, on this ground, were dismissed.
The judgment of the IPAB notes (even appreciating the Applicant for such painstaking efforts) that the Applicant has filed as many as seven volumes of papers, that included Rules of various High Courts, cause lists, judgments (both foreign and Indian), circulars etc. to show that the word ‘Xerox’ has become a synonym for photocopying. According to the Applicant, all this resulted in the trademark becoming ‘generic’ and liable to be removed. The Respondent, i.e., the registered proprietor of the trademark, also filed massive amount of evidence to show that it had engaged in significant efforts to police the inappropriate use of the word ‘Xerox’, including issuing numerous C&D notices to various Government departments. Interestingly, these government departments also responded with their undertaking to correct this “inadvertent error”. The Respondent had also filed evidence indicating its ad campaigns against the generic use of its trademark.
It was pointed out by the Respondents and accepted by the IPAB that even where ‘Xerox’ was loosely used, the first letter was always consciously capitalized. The IPAB, when confronted with the above evidence, in attempting to find a middle path, states the following:
“…though the public had been using the word Xerox in a loose manner, [the public] clearly knew that the owner of the trade mark was the Respondent’s. Perhaps the respondent has acted just in time to save its mark losing its life….Therefore, while there is no ignoring the documents that have been produced by the applicant…..the equally voluminous replies filed by the respondents show the public’s knowledge of the trade mark rights of the respondent.”
The IPAB also points to the mark being on the register since the 1960s, which registration has been continuously renewed by the proprietor without any opposition or challenge from competitors.
The applicant had also relied on the case of Enrique Bernat FSA v. Guadalajara Inc. (210 F.3d 439), more famously the “Chupa Chups” case, where a person was not permitted to monopolise the term Chupa, which meant “lollipop” in Spanish. The IPAB held that this case was inapplicable on facts and rightfully so. The IPAB correctly noted that whereas in the “Chupa Chups” case, giving exclusivity to ‘Chup’ would prevent other makers of lollipop from entering the market, in the present case, none of the competitors every complained about the existence of the mark till date and even the applicant had done so until recently. The fact that an alternative word (photocopy) existed and was used by competitors weighed against the argument of the applicant.
Therefore, the following factors led the IPAB to conclude as it did:
· “public acceptance of the trademark rights” of the Respondent;
· “long continuous existence on the register”, which was uncontested by competitors;
· Presence of alternative words to describe the goods / services
Policing unauthorized uses of trademarks is a constant fire-fight and IP practitioners would certainly vouch for that. The statement of the IPAB – “[p]erhaps the respondent has acted just in time to save its mark losing its life….” – appears to vindicate best efforts of trademark holder in being vigilant, rather than requiring a more stringent standard of eliminating any and every unauthorized use. So far so good….
However, what is troubling (and confusing) is the absence of any reference to legal provision in the entire judgment. After all, whether a trademark should remain on the register or otherwise, ought to be decided within the framework of the Trade Marks Act, 1999. In one were to go back to the drawing board, reference will have to made to Section 9(1) and a bare reading would render (a) and (c) as being most relevant to the case.
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Under clause (a) of Section 9(1), marks that are “not capable of distinguishing the goods or services” of one person from another cannot be registered. Considering that the word ‘Xerox’ is arguably invented and has already been registered, what would be analysed is whether, over a period of time, photocopy machines of other manufacturers are being traded or sold to consumers as ‘Xerox’ machines. This was obviously not the case and this has been brought out in the Respondent’s argument as well as in the IPAB’s judgment.
Under clause (c) of Section 9(1) on the other hand, marks that have “become customary in the current language or in the bona fide and established practices of the trade” are also prohibited. As was pointed by the Respondent in this case, the evidence filed by the Applicant referred to non-commercial use only and therefore, it appears that the case, in essence, revolves around the first portion of Section 9(1)(c) – that the word ‘Xerox’ has become customary in the current language to refer to photocopiers and photocopies. When seen from this perspective, the judgment of the IPAB creates perplexing questions of statutory interpretation. Take, for instance, the long uncontested presence of the mark on the register – how and why would be relevant to determine whether a given word has become ‘customary’ in current language? Similarly, the fact that there was recognition of the Respondent’s legal rights has, in the view of the IPAB, rendered Section 9(1)(c) inapplicable. One cannot deny that the evidence arguably does indicate that ‘Xerox’ is being regularly used in usual practice (a.k.a customarily used) to refer to photocopying.
Section 9(1), readers may recollect, contain absolute grounds of refusal and to the extent, any of the sub-clauses are fulfilled, the registration ought not to be granted. However, Section 57, which deals with rectification proceedings, states that the IPAB “may” cancel or vary the registration of a trade mark or “may” pass orders for making, expunging or varying an entry in the registry. The language appears to permit the IPAB discretion in passing orders under Section 57 and the order of the IPAB very clearly states that the “long continuous existence [of the mark] on the register and the public acceptance of the trademark rights…are factors that weigh with us in our exercise of discretion”. Clearly, as per the IPAB reading’s of the statute even grounds under Section 9 are apparently ‘discretionary’ in a rectification proceeding.
Note: There were 7 rectifications in total corresponding to 7 different registrations, of which 3 were allowed since the Respondent failed to prove use of the mark.