Trademark

Guest Post: Monopolizing generic terms?


Sadhvi Sood, a 3rd year student of NUJS, brings us her first entry to our SpicyIP Fellowship applicant series. Sadhvi’s post notes a recent Madras High Court decision which denies the term “Aachi” trademark protection and then goes further into instances where products and taglines used by companies and celebrities are such that they may end up monopolizing generic terms.  Readers who are interested in this post/topic may also want to check out the discussion going in the comments section of this other recent guest post by Devika on a similar topic.

Grandmother” of all trademark suits tells us where to draw the line

 Aachi-Logo

In mid-2000s, when I read (on a VH1 News Strip) that Paris Hilton owned the phrase “That’s hot!”, I couldn’t contain the urge to surf what such an ownership entailed. Then, in 2009, even “Bananas” came under the possession of a US Fashion stylist. Later, it became all the more interesting to note that generic terms like Apple, Mango and Blackberry had come to occupy such a unique space where the usage of the mark displaced the meaning which the etymology of these respective terms initially represented. Though the importance of trademark cannot be doubted for it helps producers gain commercially whereby consumers are effectively able to distinguish the product or service s/he seeks to purchase, my enchantment was with the concept of owning something that everyone knew and spoke. In other words, how could certain general, common terms in any vernacular, let alone English, be the monopoly of some individual?

Generic Terms

On one hand you have trademarks like Xerox, a term which is often substituted for the word photocopy in India and people seldom realize that they are trademarked names for the entire class of product. For instance we habitually ask, “Can I get a Xerox of this file?” On the other, you have generic marks which are words or terms used so commonly which describe not the particular product in question but the class itself and usually not granted trademark. For instance, “Noodles” is a generic term, but “Ching’s Noodles” is not. Judicial developments in India have been against according trademark protection to generic terms. In December 2013,  Madras HC was faced with a similar question in Mr.A.D.Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd vs Aachi Cargo Channels Private Limited, where the issue hovered around the usage of a term “Aachi” by both Appellant (Masala Company) and Respondent (Cargo Company). While dismissing the infringement suit filed by the former the court also stated that that the term “Aachi” – translating to mean “grandmother” in Tamil – “is of general use”. Thus, it could not be the monopoly of Aachi Masala Foods alone. Though this argument did not form the heart of contentions in the present case (obiter dictum), it provides an opportunity to deliberate upon the debate on how far should we allow trademarks over generic terms, whether as taglines or as the product name itself.

The aforementioned question assumes much importance when the term happens to be used commonly (perhaps, daily by all). In 2011, in Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd,Delhi HC refused to allow for a trademark over the word “Krishna”. Though the trademark was already registered, the Court stated that the word Krishna was as common as “John in the West”. Thus, a word as common as “Krishna” would not afford the Appellant’s product any secondary distinctiveness. Secondary distinctiveness/meaning essentially implies that the usage of the term reminds people of the product or its source. And, overtime the usage has entailed it such distinctiveness to be a trademark. So, arguably, when I say “Krishna”, one would not automatically associate it with the milk and milk products produced by the Appellant, unlike when I say “just do it” and you are reminded of Nike.

Similarly, in Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors’, the same Court found it difficult to uphold the argument of the Cadila that the term “Sugar Free” had acquired such distinctiveness that people associated it solely with Cadilla’s product. Despite the product eating away a healthy slice of the total market share, the term was held to be of common usage as denoting products which simply do not contain sugar and any trader who wishes to use the mark, does so with the clear knowledge of the possibility of other traders also using the said mark. “That is precisely the reason for the denial of protection to such marks by refusing registration as envisaged by Sections 9, 30 and 35 of the Trademarks Act, 1999.” Court concluded that it was a generic term which was at best, a combination of two popular English words. Interestingly, in these cases the Bench has shared the same emotions as mine and gone as far as declaring the already registered trademarks to be too generic and common to be even called as trademarks. But when the Karnataka HC had to decide upon another trademark infringement issue in Reebok India Company vs Gomzi Active, it decided in favour of Appellant, holding “I am what I am” to be a validly registered trademark of Reebok. Since the requirement for the taglines/slogans/phrases to be trademarked is exactly the same as required for a product name when it comes to distinctiveness, the preceding tagline fulfilled the requirements for it to be distinctive and capable of being trademarked.

Based on what has been stated above, whilst I can fully empathise with Pho Holdings (owning Vietnamese restaurants in London) when they expressed their angst towards a small café which went by the name “Mo-Pho”; I cannot appreciate getting a trademark over “Pho” soup, often informally referred to as the national dish of Vietnam. (Later, Pho Holdings retracted their application after public agitation over their move for the trademark) Similarly, when it comes to taglines or phrases, I opine that it will be justified if Raj Kishen got his witty, kitschy line “Zindagi jhandwa fir bhi ghamandwa” (loosely translated as: ‘life sucks, but I strut like a million bucks’) trademarked. But when a Jersey Shore actor calls his abs “The Situation” and tries to get it trademarked, his application is bound to be rejected. The difference between the two is very obvious for the former does not comprise of words or term or is not a phrase that lacks distinctiveness. And, granting a trademark to it will in no way signify that monopoly over the language is being granted. It inherently happens to be something that has been informally called his trademark statement and people closely associate the statement with him. Whereas, “the situation” lacks any sort of distinctiveness. How does one know that “The situation” singularly refers to Mr. Mike Sorrentino’s abs! Such parties seeking monopoly over common terms and phrases we use to converse in should be “advised to [please] chill”.

Swaraj Paul Barooah

Swaraj Paul Barooah

Follow @swarajpb Swaraj has a deep interest in IP, Innovation and Information policy, especially when they involve issues relating to Access to Knowledge, Innovation incentive mechanisms, Digital Freedoms, Open Access, Education, Health and Development. After his BA, LLB (hons) from Nalsar Univ of Law, Hyderabad, he went on to do his LLM from UC Berkeley in 2010. He is now pursuing his J.S.D. degree from UC Berkeley where he is focusing on Drug Innovation Policy and Access to Medicines. Aside from SpicyIP, he is also engaged as a consultant on various IP matters, and is a visiting faculty member at Nalsar Univ of Law. He is also in the process of starting up a New Delhi based "IP, Innovation & Information Policy" focused think-tank.

3 comments.

  1. Anonymous

    I have read the blog with interest. I have gone through the judgment which have been referred to in the blog. I am reminded of a judgment of IPAB concerning the trade mark BEMISAL. The Board has refused to cancel the said trade mark on the specific petition seeking the cancellation of the mark. To my mind word BEMISAL is descriptive of any kinds of goods.

    The trade mark SWAD is registered for food articles. The trade mark SWISS FORMULA is registered for cosmetics. You can find many such instances where the words would be called generic have still been registered.

    That in KRISHNA judgment it has been noticed that the defendant therein was much subsequent in adopting the trade mark KRISHNA with some prefix. The judgment also refers that the defendant therein was also using the several other trade marks including “MURLI” and the MURLI seems to be the registered trade mark of M/s. Parul Foods. MURLI is also the another name of same God namely Bhagwan Krishna.

    That the trade marks MOHAN GHEE, MADHU SUDAN and different other names of Bhagwan Krishna have been registered. The trade mark GANESH is registered for Biri.

    That the Parliament in its own wisdom has not prohibited the registration of the names of the Gods/Dieties. It is stated that there are 330 millions Hindu’s Gods and many of those names have been registered and are protected by the courts.

    That to my mind the judgment in the Krishna case is wrong. The Hon’ble Judge has stated that the KRISHNA was common as JOHN in the West. The question arises, is JOHN is not registered and protectable in West, can it be said that the word KRISHNA is “generic”. The writer has rightly stated that “So, arguably, when I say “Krishna”, one would not automatically associate it with the milk and milk products produced by the Appellant, unlike when I say “just do it” and you are reminded of Nike “.

    Reply
    1. Sadhvi SoodSadhvi Sood

      You rightly point out how the names of gods and goddesses in our country are being exploited. Whether this is to be allowed or disallowed is a completely different debate, and, if I may say, has a moral tinge to it. But, yes, they are generic terms and I agree with the Bhole Baba judgement to the extent that it says that it becomes extremely difficult, if not impossible for one to associate Krishna solely with the companies product. But what also intrigues me is how Apple has solely come to be associated with the iPhone, iPad, etc i.e. the brand. I guess, inadvertently, public perception and opinion in such cases also plays a major role when it comes to upholding the validity of the already registered trademarks.

      Reply
  2. D. K. Yadav

    In my previous comment, I mentioned the importance of IP jurisprudence, which is lacking in some judgment and the same is hailed by many. In IPR related protection granted by the Court, the dishonesty factor holds the cardinal principle. If the legislator has not prohibited certain names/words to have been monopolized on account of acquiring distinctiveness and secondary meaning, the opinion of self-proclaimed opinionated intellectual cannot deter protection to first of blocks who invested money, labour and time in such names/words to acquire distinctiveness.

    Reply

Leave a Reply

Your email address will not be published.