Trademark

Gillette receives Rap on the Knuckle by IPAB


(Image from here)


                                                        
Case Name: M/s Gillette India Ltd. (hereinafter Applicant) v. M/s Harbans Lal Malhotra & Sons Pvt. Ltd. (hereinafter Respondent) and The Registrar, Trade Marks Registry. [IPAB Circuit Bench at Delhi: ORA/51 & 52/2005/TM/KOL AND M.P.No.392/2012 IN ORA/51/2005/TM/KOL]

Date: June 21, 2013.

Advocates: Hemant Singh (for Applicant) and Debnath Ghosh (for Respondent).

Judges: Hon’ble Ms. S. Usha and Hon’ble Shri V. Ravi.

Facts: The Applicant, an Indian subsidiary of a U.S. Company is seeking the removal of two trademarks ‘CHAMPION’ from the Register, viz. trademark registration No. 223840 in Class 8 for “razor blades for export” (hereinafter TM 1) and trade mark registration No. 244109 also in Class 8 (hereinafter TM 2). If not removal, then Applicant seeks that the description “safety razors” be deleted from the description of goods that the trademark is registered for.

The Respondent had applied for registration of TM 1 on August 18, 1964. This mark is liable to be removed under Section 47(1)(b) of the Trade Marks Act, since no such razor blades have been exported for a continuous period of five years from the date on which the said mark was actually entered into register up to 3 months before the date of filing of this petition. Similarly, TM 2 (applied for registration on September 7, 1967) is also liable to be thus removed as there has been allegedly no bona fide use thereof for more than a continuous period of five years up to a date of three months before the date of filing of the present petition.

Arguments:

The Applicant argues that the trade mark GILLETTE is a household international brand and some of its products carries it supplementary brand like MACH 3 and MACH 3 TURBO in relation to safety razors that enjoys formidable goodwill and reputation, being technically the most advanced safety razor available in the market. CHAMPION was adopted by the GILLETTE Co., USA which is the licensor and parent company of the Applicant in September, 2003. It is used as a laudatory term for brand imagery and used extensively as such in TV commercials worldwide. Thus, the mark CHAMPION used upon packaging of the applicant is merely to indicate a co-relation between the product and the TV commercials for brand imagery. This product and TV Commercial was launched in India in May, 2005 promoting the trade mark GILLETTE MAC 3 Turbo. Thus the Applicant contends that the word CHAMPION is public juris. However, the Applicant has subsequently been served with a Legal Notice on June 14, 2005, by the Respondent for the alleged infringement of its registered trade mark CHAMPION. Therefore, being the ‘persons aggrieved’ by the continuation of both the impugned marks in the register, the Applicant has sought to pray for the removal of the same.  
 
The Applicant alleged that CHAMPION is a laudatory epithet exclusively consisting of a mark which may serve in the trade to designate the kind, quality and value of the goods produced. The OXFORD English dictionary defines it “as a person or thing that has defeated and surpassed all rivals”. Similar, the WEBSTER dictionary defines it as “anything that takes first place in competition and who defeated in a competition or a series of competition so as to hold his place”. Thus the word aptly conveys the message that a manufacturer wants to put across and cannot be allowed to be monopolized by a single manufacturer. Nor can the impugned marks be capable of acquiring any distinctiveness and hence it ought not to have been registered in the first place as per Sections 9(1)(a) & (b) of the TM Act. Section 9(1)(C) also prohibits registration of the mark as it consists exclusively of a mark that has become customary in the current language and established trade practice to be used as “brand imagery” to puff or allow the quality of the product marketed.

The Respondent argues that it is the first user and adoptor of the mark CHAMPION in relation to goods falling in Class 8. It was registered back in 1964 and has been continuously and extensively used since then. The mark has been duly renewed from time to time and is valid up to date. The Respondent has been a well-known manufacturers of razor, safety razor blade etc. in India since long. An A.C. Nielsen Retail Audit Data from 2005 in respect of safety razors and razor blades was also cited to prove that the respondents are the market leaders with a volume share of 46% and valued at 38.7% compared to Gillette’s market volume of 9.7% and a market share of 18%. A letter from GILLETTE, USA written to the Chairman, FIPB, was also cited that acknowledged the Respondent as the market leader in India in this field.

What would have been a usual TM battle then takes a surprising hue when the Respondent alleges the Applicant’s present action as a repercussion of Respondent’s refusal to the unreasonable and malafide offer of the Applicant to take over Respondent’s business! GILLETTE had apparently sought earlier to enter the Indian market by way of a proposed foreign collaboration with the Respondent. After the talks failed, GILLETTE floated its own Indian subsidiary.

To prove continuous use of the mark, the Respondent has also produced old records and export invoices relating to goods exported to various foreign countries under the mark from 1965 up to 5th April, 2012. Respondent further argues that the said mark has due to such continuous usage acquired secondary significance and distinguishes the goods of the Respondent.

Another significant allegation made by the Respondent was regarding the “lack of interest” of the earlier counsel engaged by the Respondent, the firm named M/s Daswani & Daswani. The Respondent stated that the additional documentary evidence for effective and proper adjudication of the dispute could not be tendered on time due to “the mishandling of the case” by the said counsel. This was the reason the Respondent had to file a miscellaneous petition through their subsequent counsel, M/s Khaitan & Company, Kolkata, to take on record said evidence.

Respondent contended that the given that the Applicant is bringing the rectification petition after as long as 40 years since the marks have been registered, the Respondent can seek the protection of Section 32, which protects marks that have acquired a distinctive character in relation to the goods or services for which they have been registered, before commencement of any legal challenge to their validity. Also, while Respondent was the first entity to register the mark regarding razors and razor blades, there are other entities that have done so in relation to diverse goods for distinguishing their products and such registrations are still valid and subsisting.

The Applicant countered these arguments by saying that the Respondent by its own admission has stated that the said mark is not exclusively used by the Respondent, but also by other traders relating to various goods –hence no acquired distinctiveness is possible in this case. Also, the goods in question being of daily use, the evidence of use of such goods must be of exceptionally high volume for the court to draw an inference of acquired distinctiveness. No such evidence has been produced by respondent in the present case.

Judgment:

The IPAB decided to admit the additional evidence introduced by the Respondent, overruling the technical objections made by the Applicant in the interest of justice and so that the Respondent will not be unduly prejudiced. Apart from referring to precedents allowing such admission, the fact was also referred to that the said documents have already been produced in other proceedings between the Applicant and the Respondent and therefore the former couldn’t be said to be caught in a surprise by them. The Applicant’s locus standi to seek the removal of the impugned marks as an aggrieved party was also duly recognized.

With regard to the merits of the case, the IPAB considered whether there exists sufficient evidence to establish any use of the impugned marks (between August 18, 1964 and August 17, 1969 for TM 1 and between September 7, 1967 and September 6, 1972 for TM 2). After going through the documents establishing sale of goods bearing such mark, the IPAB agreed that there has indeed been such use. Hence the objections raised by the Applicant both under Section 49(1)(a) and (b) failed.

With regard to the grounds of objections raised by the Applicant under Section 9, the IPAB had some harsh words for the Applicant, questioning its behaviour and business ethics. It said that the Applicant has admitted to have attempted taking over Respondent’s business in 1996 unsuccessfully, and the Respondent being the largest manufacturers of blade in India, it is rather obvious that the Applicant had foreknowledge of the Respondent’s mark. The parent company of the Applicant decided to promote the word ‘CHAMPION’ as brand imagery only in 2003 and also started its Indian campaign in 2005.

In what appears to be an even sterner tone, IPAB went on to chastise the Applicant in the following manner: “Business ethics have both formative and descriptive dimensions. The conduct of the applicant to oust an Indian trade mark owner in this particular instant is not in conformity with international commercial behaviour…[I]n the instant case the applicant are lacking in commercial scruples and are attempting to crush a relatively small time Indian player from playing its rightful role in the Indian market.

The expression ‘CHAMPION’ may prima facie be a laudatory expression but can qualify for registration, if and when, it acquires secondary meaning. In this case, IPAB dubbed Applicant’s actions as “a process of electronic and TV blitz and related information protocols,” using which “an established mark is sought to be booted out of the register.” Nor did the IPAB find any justification for the Applicant’s silence on the protection offered to the Respondent by Section 32 of the Act.

Order: Both rectification petitions were dismissed without cost and the Respondent was allowed to retain ownership of said marks.

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Shouvik Kumar Guha

Shouvik Kumar Guha

Shouvik is at present employed as a Research Associate and a Teaching Assistant at The W.B. National University of Juridical Sciences, Kolkata. He has obtained his B.A. LL.B. (Hons.) degree from NUJS itself and is also currently pursuing his LL.M. degree from the same university. From his very year at law school, he had been attracted towards the discipline of Intellectual Property and that interest has been kindled further in course of time. The interface between IP and other disciplines such as Economics, Anti-trust Law, Human Rights, World Trade Law and the technological developments relating thereto, has especially caught his attention since then. He’s authored several papers on issues relating to IP and other legal disciplines for journals, books, magazines and conferences in national as well as international levels. He is also currently co-heading an organization called Lexbiosis, which is an endeavor meant to facilitate the collaboration between the legal industry and academia.

2 comments.

  1. AvatarAnonymous

    For [email protected]:43 – ‘knuckles’ – leads to a good chuckle. Perhaps we should all knuckle down and revisit that old friend called ‘Wren & Martin’ !! It could also be that IPAB decided to selectively give one rap on one chosen knuckle.

    Always Anon.

    Reply

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