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“
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?
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”.