Given that most of today’s judges grew up in the era of Amitabh’s ‘Angry Young Man’ and laconic western protagonists, it is rather strange to see so many judgments play such a significant role in aiding deforestation. Even more concerning is that when it comes to comprehensibility, judges seem to be far more influenced by Gulzar’s indecipherable lyrics than Vijay’s sharp dialogue delivery.
Thankfully, Justice Patel keeps it short and simple. Before I make this piece about my undying love for short and simple judgments, let me cut myself short and get straight to the analysis. But first, let me quickly acquaint you with the facts.
Judgment can be found here.
Garware, a company, produces polyester and plastic films.
Here is an image of the concerned product:
In 1983 and 1999 respectively, they registered the mark “Sun Control” and “Suncontrol”. While registering the mark, the TM office clarified that Garware had no right over the word “control”.
3M, a company, sold products named on the lines of “3M Sun Control Window Films”. .
Garware Sued for infringement.
3M’s main defence to the claim of infringement was that the mark “Sun Control” in the context of polyester films was invalid. And it is this defence that we will look into over the course of this piece.
For proving that a mark is invalid, two things need to be shown.
- That the mark is NOT ‘inherently distinctive’ and
- That the mark has NOT ‘acquired distinctiveness’.
So, let us dive right into (1): Inherent Distinctiveness
For determining ‘inherent distinctiveness’, we need to look at the relationship between the mark and the product. The mark cannot:
a. describe the product itself. For instance, Steve Jobs would not have been allowed to register “Apple” as a trade mark, if he actually sold apples. Because “Apple” has not got anything to do with computers (the products Apple sells), the mark could be deemed to be ‘inherently distinctive’ or fancy.
b. describe the nature of the product
You can’t trade mark “iron”, if you sell iron plates.
Though there is an exception, which I shall talk about later, the trade mark regime does not allow for registration of descriptive marks, because otherwise, competitors will be throttled in their attempts to describe their products to the public. Such a scenario would put competitors of the trade mark owner at a disadvantage, making ownership of such a mark anticompetitive.
Now, let us consider the exception to this rule.
This brings us to (2): Acquired Distinctiveness.
Sometimes, over time, descriptive marks might start being associated with certain manufacturers. They might lose their primary descriptive meaning and consequently, start being used by consumers to refer to a particular manufacturer. In such a scenario, even descriptive marks can be registered.
For determining whether a mark has ‘acquired distinctiveness’, the relevant question to ask is this:
THE BIG QUESTION:
“Are consumers using the mark to identify the manufacturer in exclusion to his competitors?”
In order to answer this question, multiple factors are looked into.
a. The duration of the mark’s usage.
b. The manner of the mark’s usage.
c. Consumer surveys.
d. The volume of sales.
But the significant point to note over here is that the final judgment call (for “THE BIG QUESTION“) is taken based on a cumulative assessment of all these factors. As long as the manufacturer can show one way or another, that consumers use the mark to exclusively identify him, none of these individual factors can invalidate the trade mark.
APPLICATION OF LAW TO CURRENT FACT SCENARIO
The mark in question is “Sun Control”.
Is it ‘inherently distinctive’?
Justice Patel has held that it isn’t.
Using the material in the judgment, I have constructed a fictional exchange to explain what happened in court.
Counsel, if you do not have any more arguments regarding this point, I wish to conclude that “Sun Control” is not ‘inherently distinctive’ and consequently, is descriptive in nature. Both the words “Sun” and “Control” are regular world and even their combination is not fancy or innovative.
Bu, but my lord, I do have an argument.
My lord, I contend that the mark “Sun Control” is not descriptive. The words “Sun Control” describe a product that can be used to control the sun.
Do you mean to say that the term describes a product that could do something like make the sun move or change its temperature?
(Excitedly) Yes, yes, my lord. Exactly.
My client’s modest films are not capable of doing such a task. They merely protect the user from UV radiation. Therefore, they are not descriptive.
Yeah, sure (Sarcastically).
What kind of a super human engineering feat do you think “sun screen” is? Or do you think it is a television set that the sun uses to destress?
Seriously counsel, I won’t hear about this anymore.
The mark clearly describes your client’s product’s feature of protecting against UV radiation.
Even if your lordship believes that the mark is descriptive, I wish to contend that mark is still valid on account of ‘acquired distinctiveness’.
Does your lordship wish that I proceed?
Please note that the narration style used above is only to make reading the piece less cumbersome and is not meant to deride anyone. The analytical and factual core is perfectly accurate, but exaggerations in dialogue have been made for comic effect.
So, evidence was put forward by both sides and finally the court held against Garware. Garware failed to provide sufficient evidence to prove ‘acquired distinctiveness’. Instead of going into an analysis of the evidence, I have chosen to deal with two other issues that this case has brought up.
A very similar fact scenario had come up in the case of the mark “Low Absorb” discussed here.
UNANSWERED QUESTION OF LAW
3M showed evidence to establish that Garware had itself used the mark in a descriptive manner.
But it didn’t stop there.
It argued that as a result of Garware having used the mark descriptively, Garware has lost its right to claim that the mark was a trade mark. The question is:
Does this kind of an estoppel apply?
Justice Patel, to my disappointment, did not take a stance on this question of law. He stated that it definitely weakened Garware’s claim, but wasn’t too sure about whether it barred them from making a claim itself.
It is my belief that no such estoppel should apply because:
As I have stated earlier, the whole dilemma of validity boils down to “THE BIG QUESTION“:
Do consumers use the mark to exclusively identify a manufacturer?
All other considerations, such as descriptive usage by the manufacturer, should only be used for aiding to answer the above question. In other words, none of the considerations should be significant on their own. No matter what a manufacturer does, he should not be barred from ownership or claiming ownership over a mark, as long as he can finally show that consumers use the mark to exclusively identify him.
INSUFFICIENT SCRUTINY EXERCISED BY TRADE MARK OFFICE
Finally, I shall conclude by outlining a broader problem.
During the course of the trial, a certain interesting fact came out.
In the past, V-Kool had changed its advertisement as “India’s No. 1 Sun Control Film Brand” upon receiving a cease and desist notice from Garware.
This shows us the extent of power an owner of a registered mark can wield.
As long as the mark was not invalidated by the court, Garware could exert a considerable amount of pressure on its competitors, for the simple reason that most competitors don’t exactly love getting dragged to court. I have already discussed how big a problem this is in the context of DC and Marvel using the “superhero” trade mark to bully around competitors here.
Therefore, it is very important that Trade Mark officers pay far greater attention while registering marks, because as we have seen above, the owner of a registered mark wields a great deal of power. And exercise of power based on “invalid” marks is detrimental to the world at large.
One cannot just hope that litigation between competitors will weed out such marks.