In this post, I focus on the practice of trademarking descriptive and common terms under the umbrella of ‘secondary meaning’, and how the overreach of such protection might have adverse consequences for the public domain.
This week, No Man’s Sky, a highly anticipated video game settled a three-year long dispute with Sky UK Limited (formally British Sky Broadcasting), which gives them the right to use the word ‘Sky’ in their title. This is the first defeat in what seems to be quite a number of trademark decisions that went Sky’s way – Microsoft was forced to rename their ‘Skydrive’ cloud service to ‘Onedrive’ in 2014 after the England and Wales High Court ruled in Sky’s favour, and until they appeal, they have been disallowed from registering ‘Skype’ as a trademark, as the European General Court was of the opinion that it was ‘confusingly similar’ to ‘Sky’.
Next in absurd trade mark registrations, Citibank was granted rights over the phrase ‘THANKYOU’, and recently filed a suit in the U.S District Court, Manhattan to prevent AT&T from using ‘thanks’ in their new marketing campaign. “Citibank sues AT&T for having good manners” read GQ’s headline. India saw a ‘Thank You’ controversy of its own in 2011, although it was disputed not as a trademark, but as a title of a move. Read here, and here for our previous posts on the copyrightability of movie titles.
Trademark overreach – A real problem
Trademark overreach, or trademark abuse, is essentially where the trademark owners use their position to file unnecessary suits against those whose products do not prima facie infringe, and whose use would not cause any harm to the owners of the trademark, either to their business or goodwill. While the ‘Skydrive’, ‘Skype’ and ‘thank you’ cases, are in my opinion, perfect examples of overreach, the No Man’s Sky judgement is a welcome change to Sky’s success in the Courts.
Harshavardhan Ganesan wrote an interesting post on quite the opposite problem: ‘Trademark genericide’ or the transition of valid trademarks to the public domain due to widespread use. He gives examples of marks we are all too familiar with – Zipper, Thermos and even Videotape. In 2012, the IPAB recognised ‘Xerox’ as a non-generic term and a valid trademark – a major victory for a brand that had been trying in earnest to prevent their trademark from becoming generic. Read Adarsh Ramanujan’s post on the topic here.
Position in India
Section 29 of the Trademarks Act provides that a registered trademark is infringed if a mark is likely to cause confusion on part of the public, and likely to have an association with the registered mark due to its identity or similarity with the mark and the goods or services covered. The likelihood of confusion was further expounded in Corn Products Refining v. Shangrila Food Products Ltd, where the Supreme Court in 1959, held that the question had to be approached from the point of view of a man of average intelligence and imperfect recollection.
Section 9 of the Act spells out absolute grounds for the refusal of registration, and includes descriptive marks, as well as marks which have become customary in the current language or in bona fide and established practices of the trade. The Section importantly provides an exception to the rule, and mandates that marks which would be otherwise barred, but have acquired distinctive character as a result of their use may be registered. As phrased by the Delhi High Court in Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd, a mark is said to have achieved secondary distinctiveness when it immediately brings to mind the product in question.
Our Courts have visited the question of secondary meaning of generic and common terms a number of times. We have written on the topic before, and have covered disputes surrounding the words ‘Ultra’ and ‘Today’, where the words were not seen to have acquired a secondary meaning. The Delhi High Court has prevented the registration of trademarks on lack of secondary meaning and exclusivity, in 2009 for the words ‘Imperial’ and ‘Sugar free’, in 2010 for ‘Yo!’, and in 2011 for ‘Krishna’. The Bombay High Court, when faced with the trademark ‘Home Solutions’ in 2007, held that such a term was inherently incapable of becoming distinctive. These cases can be differentiated from the ‘Scrabble’ controversy, where the Delhi High Court, in 2008, recognised that ‘Scrabble’ had indeed acquired secondary meaning, leaving its descriptive nature behind.
While it is comforting to note that our Courts are hesitant in accepting descriptive terms as having acquired secondary meaning, India is not immune from the practice of trademark overreach. In an ongoing case in the Delhi High Court – Rikhab Chand Jain v. Audi AG, the Plaintiff, the owner of ‘TT textiles’, a clothing brand, sought to prevent Audi from selling their two-seater coupe named ‘Audi TT’, as it was in their eyes, infringement of their trademark ‘TT’. In a surprising order on the 21st of July, 2015 – Justice Najmi Waziri restrained Audi from selling cars under the ‘TT’ name, as he found a ‘prima facie case for an ex parte interim injunction’. The Court however, changed its stance and modified its previous order on the 28th of August, 2015, removing the restriction on Audi to use ‘TT’. Audi was represented by Saikrishna & Associates, and a final order on the case is yet to be delivered.
This isn’t the first time TT Textiles has tried to enforce their trademark in unrelated sectors, and against those whose use would not cause conceivable harm to them. In 2008, they sued ‘TT Enterprises’, a sales agent for British Airways World Cargo. Justice Endlaw of the Delhi High Court was clear in stating that there was no infringement, due to the limited field of business of the Plaintiffs. Although it is unclear whether an acronym would qualify as a generic, or a descriptive mark, it is not inherently distinctive, and the fact that TT Textiles is attempting to monopolise its use in different sectors is a perfect example of the overreach we see in ‘Sky’ and ‘thankyou’.
When the threshold of likelihood of confusion in marks is applied to cases such as ‘TT’, it is quite unlikely that even a man of average intelligence and imperfect recollection would make the association between a clothing brand primarily known for their line of underwear products, with an internationally known luxury car company. As Harshavardan notes, companies do find themselves with the burden to protect their trademarks from becoming generic, and perhaps excessive litigation is one of the options they turn to. However, care needs to be taken to make sure that they go after only those marks that make up actual threats, and hence, do not harm the public domain by preventing the registration of generic marks that would otherwise be free for use.
(Image taken from here)