Trademark

Rubik’s Cube: The Assassination of Artistic Freedoms and Genericide of TM


We are pleased to bring to you a guest post by Bharat Ganesan (name changed, since he wishes to keep his identity confidential), who is an attorney working in the US. This post is in opposition to Rahul’s recent post on the Bombay High Court’s interim injunction order restraining the use of ‘Rubik’s Cube’ as the title of a Marathi film.

Rubik’s Cube: The Assassination of Artistic Freedoms and Genericide of TM

Bharat Ganesan

Dissent might be snuffed out in other corners of the legal landscape, but it is well and alive here on SpicyIP. Recently, Rahul wrote a piece, analyzing Justice Gautam Patel’s decision in the Rubik’s Cube case, and argued, inter alia, “This order largely applies well settled legal principles to the fact situation obtaining in this case and can be said to be unexceptionable.” To which I say, for the sake of civility, Hello there!

Rahul’s post does an excellent job of summarizing the facts, and is quite prescient when it comes to objections that people might have with the decision. The crux of Rahul’s argument is as follows, “While some may argue that courts should not grant their imprimatur to the monopolization of terms that are a key part of popular culture and that such use would fall within the four squares of the nominative fair use doctrine, I don’t think this argument would hold good unless the use of such terms is indispensable to the defendant’s enterprise.” He goes on to add “Since nothing in the order indicates that the defendants’ film was about the Rubik’s Cube, I don’t think it can be argued that they were compelled to use the term ‘Rubik’s Cube’ as the title of their film.”.

I definitely do not think it is an “open and shut” case like Justice Gautam Patel and Rahul would have us believe. I am unaware if the defendant’s pleadings contained normative fair use as a defense. If so, I think Justice Gautam Patel should have analyzed the contours of fair use and whether it was applicable here. I particularly disagree with the reasoning that there was no compulsion to use the term ‘Rubik’s Cube’ and therefore normative fair use cannot be claimed. I think that there is something to be said about creative liberties and artistic freedoms when it comes to the artist’s choice of how to name his movie. Is criticism that he could have named his movie something differently, really far away from criticism along the lines of ‘Why does the story have to be lady-oriented’?

Second, while Mahesh Vamen Manjrekar wasn’t arm twisted into naming the movie as he did, he probably preferred naming it ‘Rubik’s Cube’ instead of something like ‘A really difficult puzzle/toy that takes a lot of patience to figure out, watch the movie you’ll know why this is the title’ appended with the tag line “”You Rarely Get the Combinations Right… Even in Love”. I do not wish to belabor the point, but as we shall see below, in the tussle between artistic freedoms and trademark rights, the former should be the victor. Two deontological arguments in particular, interest me, namely:

1. The Rogers Test

First, as I alluded to earlier, shouldn’t 2 creative entities have space to play off of each other? In America they do. In the U.S, when dealing with the use of a trademark within an expressive work, courts follow what is known as the Rogers Test. That test, originally developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 944 (1989), holds that use of a trademark in an expressive work is only infringing if “(1) the use of the mark has no artistic relevance to the underlying work whatsoever, or (2) it has some artistic relevance, but explicitly misleads as to the source or the content of the work.” The test was developed on 1st Amendment lines (our equivalent to Article 19(1)(a)) to allow for situations when a TM was used in an expressive work. In fact, the original Rogers case, has some significance with our case at hand.

In that case, noted artist Ginger Rogers sued Alberto Grimaldi and MGM for production and distribution of the 1986 Federico Fellini film Ginger and Fred, a film about Pippo and Amelia, two Italian cabaret performers whose routine emulated the more famous pairing of Fred Astaire and Ginger Rogers. Rogers claimed that the film violated her Lanham Act trademark rights, right of publicity, and was a “false light” defamation. The Second Circuit, on appeal, noted that, “This appeal presents a conflict between Rogers’ right to protect her celebrated name and the right of others to express themselves freely in their own artistic work. Specifically, we must decide whether Rogers can prevent the use of the title Ginger and Fred for a fictional movie that only obliquely relates to Rogers and Astaire.” Stop me if this reasoning sounds familiar.

The Second Circuit affirmed the decision of the lower court stating that “suppressing an artistically relevant though ambiguous[ly] title[d] film” on trademark grounds would “unduly restrict expression.”  The court held that “In sum, we hold that section 43(a) of the Lanham Act does not bar a minimally relevant use of a celebrity’s name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content.”

The case is eerily similar to the case at hand. The debate was regarding the titling of a film, which protected the TM rights of an individual, but was only tangentially related to the movie. Could that movie have been called ‘2 Italian dancers’? Sure! Yet, artistic expression prevailed, and Alberto Grimaldi was allowed to title his movie unfettered by legal potholes.

Applying the Rogers Test to the ‘Rubik’s Cube’ case, I believe the first prong (namely artistic relevance to the underlying work) is easily satisfied. The threshold for artistic relevance is quite low, and that bar is easily crossed vis-à-vis the tag line and the theme of Mr. Manjrekar’s film. The second prong is whether the use of the term ‘Rubik’s Cube’ explicitly misleads the source or the content of the work and denotes authorship or endorsement. I think that the name, in conjunction with the tag line makes it quite clear that the use of the trademark is meant more as a creative aid rather than downright misappropriation.

The question of what is “explicitly misleading” came up for discussion in the 9th Circuit case of Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), regarding the use of the term ‘Barbie’ in the Danish band ‘Aqua’s hit song, ‘Barbie Girl’. Mattel Inc., which owns the Barbie trademark claimed TM infringement, but the 9th Circuit stated, “The song title does not explicitly mislead as to the source of the work; it does not, explicitly or otherwise, suggest that it was produced by Mattel.” Replace the word ‘song’ with ‘film’ and ‘Mattel’ with ‘Rubik’s Ltd.’, and there is your ballgame.

The disparity between Indian jurisprudence and American jurisprudence regarding artistic freedoms and creative expressions is colossal. In India, we prefer to sacrifice artistic expression at the altar of IP monopolization, and this butchery needs to stop. We might have a morbid counter to this slaughter however, and its name is genericide.

2. Trademark Genericide

For some background regarding this topic, I would direct your attention here. Again, I am unsure whether the defendant raised this defense, and Justice Patel certainly couldn’t craft illusory arguments into his decision suo motu, but I believe that TM genericide should have been discussed. In short, TM genericide refers to a situation where a Trademark becomes so popular in the public domain that it is wrested out of the hands of the Trademark owners and handed to the public for their enjoyment. Examples of such trademarks include Zipper, Videotape, Aspirin, etc. The most common reason why Trademark Genericide occurs, is due to the association of the Trademark with the good as opposed to the source of the good. How is that relevant here? I will let Justice Patel build an iron clad case in his own words.

“He [Defendant] seems to believe that this, the name of an extremely popular puzzle, one that has achieved almost legendary status in the public domain, is one that he can freely adopt and use.” Justice Gautam Patel unwittingly digs a deeper grave when he says” There are figures annexed to the Plaint and in the body of the Plaint attesting to the high sales of these products. It is hard to believe that the Defendants are unaware of this. The very word Rubik’s Cube is an invented and coined work when attached to this puzzle. Rubik’s Cube connotes one and only one item, viz., this puzzle or toy.”

When he references both the high popularity and sale numbers along with the fact that the term is so distinctive and arbitrary that there has been an overlap between the product and the source, he is in fact making out a crystal clear case of Trademark Genericide. Any 3×3 or 4×4 cube, is commonly referred to as a Rubik’s Cube, irrespective of whether it is in fact manufactured by Rubik’s Ltd or not! Further, as that earlier article on TM Genericide had mentioned, some companies have taken active steps to prevent their prized brands from losing their exclusive and exalted status. On its website, the LEGO Company, lets us know that calling the toy bricks LEGOs is an improper use of the term and that the correct plural form is LEGO bricks or LEGO toys. I did a quick scan of the Rubik’s website and found nothing similar. Nowhere has Rubik instructed its users to use the term Rubik’s Cube toys or Rubik’s Cube Puzzles, but rather the stark-naked version, Rubik’s Cube. I believe that this would and should have been a prime case of TM Genericide. Something about the judgement, like an unfinished Rubik’s Cube, just doesn’t fit. Justice Gautam Patel is an eminent jurist but I guess, like the movie’s tagline, “You rarely get all the combinations right… Even in Justice Patel’s Court”!

P.S- My moral compass wouldn’t rest easy unless I directed your attention to a case before the International Trade Commission in Washington, Certain Cube Puzzles, Inv. 337-TA-112,. In this case, in 1982, the Court had to determine whether the import of Ideal Cube Puzzles into America, should not be given ‘free entry’ because it was in violation of Rubik’s Ltd.’ common law trademark right. The court held it was, on the basis of, amongst other things, a survey, which determined that in 1982 the term Rubik’s Cube is not generic. Things have of course changed in the past 35 years, including the Rubik Cube’s popularity and the growth of the genericide jurisprudence.

Image from here

7 comments.

  1. Abeer

    What an utter rubbish piece. Complete lack of understanding of the limitations of the judicial process and judging. No judge can go around inventing arguments that do not exist or are not taken or speculating on what might be. There is no case of Rubik’s Cube being generic made out and it is simply not open to the judge to travel this path. This is a classic damned-if-you and damned-if-you-don’t. What the author suggest was pure judicial adventurism. The original post took the correct line. This is nothing but an attempt to flaunt the author’s so-called learning. All this academic knowledge is utterly useless in court. If the defendant want to evoke a puzzle or dilemma he had plenty of choices. He had no business to fasten on this one. What Rahul Bajaj said in his previous post was correct. There was nothign to show the defendant’s film could not be identified without use of the name Rubik’s Cube; the defendant did not use the name only to identify his own film; and the use clearly suggests an association or endorsement. The use is wholly without a defence.

    By the rationale here, anyone can make a movie calling it “Dell v HP” (hello ‘genericide’) or, without permission, ‘Batman v Spiderman’ or ‘Mercedes v BMW’.

    And where does this author get this that ‘any 3×3 or 4×4 cube is called a Rubik’s Cube whether or not manufactured by Rubik’? This is not even anecdotal. This is opinion masquerading as fact. The Rubik-tm owning company has been prosecuting case after case (seek and thou shalt find) protecting its mark, and succeeding. High numbers etc do not make for genericide. Is this author aware that Xerox (arguably the best case for genericide) has effectively stopped even the HC from using the word when referencing photocopies and photostats?

    Opinion is all very well, but stick to facts please. And what’s this nonsense about anonymity? What for? If you’re going to be wrong, have the courage to be wrong in your own name.

    Reply
  2. Bharat

    Hello Abeer,

    Thank you for your comment! I see you got your claws out. Allow me to retort.

    First, Spicy IP provides a space for anonymity due to various circumstances. Always has. I chose to utilize that service. Why I choose to be anonymous is frankly none of your business.

    Let’s get down to your substantive arguments:

    1. You argue that Justice Patel couldn’t have invented defenses and arguments out of thin air, and even if he could, why would he apply US jurisprudence? My argument exactly. I prefaced both my arguments stating that Justice Patel couldn’t have suo motu invented arguments, but at the same time was unsure about what the defendant’s contentions were. This wasn’t meant to be a post laying down grounds of appeal, but rather to combat conventional wisdom, especially in IP circles, that some judgements are beyond reproach. Instead, my intention behind the post was not to criticize either Justice Patel or Rahul’s work, but merely to draw attention to existing jurisprudence, and really wonder, why we cannot utilize any of it here. The Rogers Test ( If you read my post) is quite intriguing, since it balances consumer confusion on the one hand with artistic freedom of expression on the other. In India, such a weighing scale doesn’t even exist. In fact, freedom of speech and 19(1)(a) arguments are hardly raised in substantive IP arguments, much less in IP circles! If my only crime was to highlight how artistic expression gets a step motherly treatment in IP decisions, then by all means I am guilty.

    Concomitantly, your examples of Batman v. Superman and Dell v. HP etc. would fail under the Rogers Test. I would say to you “Opinion is all very well, but stick to facts please.”

    Batman v. Superman- This is a clear case of passing off, since it is not inconceivable that DC would make a movie about the Superheroes. In the Barbie Girl case, the court while analyzing the second prong of the Rogers Test, the court held that it is not common for Mattel Inc., to sponsor/record a pop song. Therefore, there needs to be likelihood of sponsorship. The same argument extends to your BMW example as well. In fact, the BMW example is more fraught with problems, since it would depend on what the movie is about too. Like the Rogers v. Grimaldi test ( And here in Rubik’s), if the title is merely incidental to the TM, it would pass the Rogers Test. Please do look up more examples regarding the application of the Rogers Test, before spouting examples that are as underwhelming, as they are feeble.

    2. Your second argument is that there is no genericide argument to be had here, since (1) I am being anecdotal, (2) Rubik’s has been continuously prosecuting, and (3) Xerox was let off the leash, so why shouldn’t Rubik?

    First, I am not being anecdotal, but merely reflecting usage in the industry. Would I have liked a survey to be done and hand you the numbers? Sure! But since jurisprudence here is averse to survey’s and the argument was never raised, both are quite difficult to do. Second, I am truly ignorant of Rubik prosecuting others in TM cases, size and shape of the toy? Sure! Please link me to any such decisions where the court found that Rubik’s Cube was not genericized/ where the other party argued the same. Thank you. Finally, if you think that Xerox and Rubik’s Cube are both protecting their brands equally from genericide, you are completely wrong my friend. Xerox Corp. ran an aggressive ad campaign to educate consumers to view its trademark as a source identifier as opposed to a common name for its goods and/or services. This included a campaign where they stated and I quote, Xerox Corp.’s “You can’t Xerox a Xerox on a Xerox. But we don’t mind at all if you copy a copy on a Xerox® copier.”

    Their aggressive campaigning, and long history was exactly why Prabha Sridevan, in a brilliant judgement, held that all HC’s shall use the word ‘photocopy’ and not Xerox.

    So in conclusion, this wasn’t a mere criticism piece, but a piece which should open people’s eyes, to see how we fail to protect artistic freedom at the expense of over-broad IP rights, how this could be a case of genericide, and how our jurisprudence is limited, while other nations have more evolved rules, for letting content industries exist symbiotically. I would be more than happy to argue with you why India should or should not normatively install a “Rogers Test” equivalent. But if you are going to continue ad hominem attacks and strawman my arguments, I apologize, but I don’t have the capacity to sink so low.

    Reply
  3. Abeer

    As usual, long on ad hominem bunkum and opinionated condescension but very short on facts. Justice Prabha Sridevan didn’t hold any such thing. She could not have. She was in no position to ‘hold that all HC’s shall use the word photocopy and not Xerox’. It was brilliant, yes, as is she, but she was chairperson of the IPAB, not heading a SC bench, and therefore and thusly. The application the Board had before it was for *removal* of Xerox from the register, and while dismissing that application, she said — noting as a matter of *fact*, not issuing any sort of mandamus — that High Courts, governments, and government bodies had already agreed to stop the usage. The exact quote is this: “We find, that the High Courts, Port Trust and like institutions, and even the Government of India have agreed to delete the word ‘Xerox’ and use the word ‘photocopying’. Several Governmental organisations have given an undertaking that they will not use the mark in violation of the trademark rights of the respondent…”

    The First Amendment/Article 19(1)(a) argument is completely hokey, because the First Amendment isn’t constrained by anything like Article 19(2). The reason copyright, TM, design etc aren’t held to run afoul of Article 19(1)(a) is obvious. Take it to the logical end, and it’s the death of all IPR. This theory that all IP protection equals stifling creativity is the purest bunk. It pretends that IP protection is something new when it is several hundred years old, and at a time when free speech was already known. The impetus of the two are different and they do not collide. This debate can go on endlessly.

    Your entire structure is flawed. You do not test a hypothesis against cases where it will pass, but against those against which it will fail. That’s basic. No, Batman is *not* necessarily or always passing off — it could be a documentary about a guy who spent his life studying bats or making cricket bats or anything. What happened to Rogers then?

    As to Rubik’s lawsuits, do your own homework. There are cases from the EU regarding design, patent and trade mark. Rubik hasn’t won all of them in all jurisdictions, but the point wasn’t a win/loss record but that Rubik is serious about defending its rights — and no, no one here is ‘averse’ to surveys. Just plain lazy. So no, I’m not the one who’s *completely* wrong. Hint: nyu.edu; bloomberg; guardian; financial times; and links to decisions from these. Have at it.

    Sorry you think disagreeing with you is sinking low or strawman or ad hominem or whatever, but there isn’t a thesis to defend here at all, and you’re clearly overbroadening the scope of what the case was. Plus you seem to have missed that this was not even an interim order, but an ad-interim order. What artistic freedom? Hijacking another’s property protected by law and then claiming the right in the name of art is sham and bogus.

    And, if you felt this was ‘sinking low’, nobody held a gun to your head and demanded a response, chum. Can’t have it both ways, see.

    As to your anonymity, you’re right. It’s none of my business. Except that it’s unintentionally revealing of the things that matter. But again, that’s none of my business.

    Reply
  4. Bharat

    Hello Abeer,

    Allow me to dissect your argument:

    1. Regarding your first and fourth paragraphs ( Genericide argument).

    I said: “Their aggressive campaigning, and long history was exactly why Prabha Sridevan, in a brilliant judgement, held that all HC’s shall use the word ‘photocopy’ and not Xerox. ” You went on a namedropping diatribe. What I meant was simply that Justice Sridevan was very indicative of the repercussions of her decision. I love how you nitpicked on one sentence and converted it into an entire paragraph while ignoring my fundamental argument.

    The argument is this: 1. Rubik’s Ltd. has not campaigned against the usage of the term Rubik’s Cube. Justice Patel himself has wisely noted that it has achieved “legendary status” in the public domain. This fame comes at a price, the price of course being that if a mark becomes “too famous”, the control is transferred from the owner to the public, perhaps because of their ‘role’ in making the mark as famous as it was. This is genericide. 2. You argue that there has been no genericide because Rubik’s has been serious about protecting its rights. You argue, “There are cases from the EU regarding design, patent and trade mark. Rubik hasn’t won all of them in all jurisdictions, but the point wasn’t a win/loss record but that Rubik is serious about defending its rights.” The EU case ( Only one, I don’t know where there are other cases regarding trademark design, and patent that you are referring to) is regarding a trademark in the design of the Rubik’s Cube itself, as opposed to the name “Rubik’s” or “Rubik’s Cube”. ( Link here: https://www.theguardian.com/lifeandstyle/2016/nov/10/rubiks-cube-puzzled-losing-eu-trademark-battle). (Psst, see how I provide links in my comments instead of being pretentious and douchy, so it helps the readers of the blog follow what I am saying? Isn’t this better than doling out generic links like “Bloomberg, Guardian” etc? Try it out sometime!)

    The reason this case has absolutely no bearing on the case at hand is because, defending the rights of the company in the patent or design of the product itself, cannot serve as a defense to the genericide of the trademark name. For example: Imagine if when Otis Elevator Inc. registered a patent in the Escalator, and also a Trade Mark in the name, a competitor also built a similar set of moving stairs as such. Just because Otis went after them in a patent law suit, it DOES NOT mean that their aggressive defense of one TYPE of Intellectual Property, serves as an immunity shield, to ALL types of Intellectual Properties. Similarly, because they were aggressive in their 3-D design ( And lost, as you had rightly noted), that would not ameliorate their genericide problems. You were being sly at best, and deceitful at worst, when you tried to equate the steps that Rubrik took while defending their design trademark, as proof that they were engaged in preventing the trademark name, ‘Rubrik’ from being genericized! Your burden is to show either (a) How they have prevented the genericization or (b) Defending one type of Intellectual Property right, inherently serves as a blanket immunity to genericization. I wish you all the best.

    2. Regarding your 2nd paragraph ( Art. 19(1) and the First Amendment): You argue “The reason copyright, TM, design etc aren’t held to run afoul of Article 19(1)(a) is obvious. Take it to the logical end, and it’s the death of all IPR. ” Hyperbole aside, assuming that Copyright, TM, design etc. are held to be under the purview of 19(1)(a) I fail to understand how they wouldn’t also be under the purview of 19(2), or why the very same defenses that exist under existing IP regimes would suddenly vanish. The first amendment pervades through the United States IP jurisprudence, but Intellectual Property regimes are still hale and healthy in the United States. The reason is that jurisprudence has evolved to such an extent that there exist court created tests, like the Rogers Test, or the Harper Test for fair use etc. I fail to understand why Indian Courts cannot apply similar balancing tests ( Hypothetically of course). Your argument insinuates that applying freedom of speech principles to Intellectual Property means that the owner/creator always loses and the alleged infringer always wins, that is simply not true. A balancing test, is inherently that, a balancing test.

    3. Regarding your 3rd paragraph ( Batman Rogers Test), I am testing it against cases which you provide for me, and letting you know why your examples are or are not pertinent to this case. The Rogers Test has withstood the test of time, and doesn’t need to be defended. You are providing individual examples attempting to discredit the idea behind Rogers, which is exactly why I am telling you why your arguments are inane.

    You argue, ” No, Batman is *not* necessarily or always passing off — it could be a documentary about a guy who spent his life studying bats or making cricket bats or anything. What happened to Rogers then?”

    Sigh. Remember Rogers is a balancing test, so Rogers would still be applicable. Rogers would say, ‘Hey, DC comics does not make documentaries! Especially about Bats, whether Cricket or Baseball! So since there is NO association between Batman the comic/superhero of which DC is the proprietor and a damn documentary on Baseball or Cricket bats, maybe it would be fine if a documentary was called Batman!’. Similarly, since Rubik’s Cube, really is not in the business of making movies, especially Marathi movies about love, maybe the court could have said, ‘Hey you know what, I don’t think that the common man is going to think that Rubik’s woke up and decided to get into the Marathi film industry, just like how people don’t think that Mattel Inc. is suddenly into the pop music industry and wants to make a song about Barbie!’. But nope, clearly that was too much to expect. I believe that inherently art is about borrowing from reality, other artists, past work, and ideas ( All to a reasonable extent of course). I think the only question here in that sense, was whether this was reasonable. Would the outcome have been different if the movie was titled, “Rubik’s: Ek prem kahani” or something of that sort? We will never know because apparently this was an “Open and Shut’ case. I adore Justice Patel’s intellect and think he is an amazing jurist, one of the best we have, but I truly believe he got this one wrong. What bothers me most, is his description of the case as open and shut, and concomitantly providing a bare thread analysis.

    3. I believe that I have addressed your arguments in the 5th paragraph above, when I note that I do not think there was “hijacking” another person’s property in this case at all. Rather, it was usage of what is already prevalent and existing in the public domain, which if nothing else is what art is. To put it simply, I do not think that the Marathi Film intended to appropriate the expression of the Rubik’s Cube when it titled the film as it did, but rather the idea of a Rubik’s Cube. The idea that you rarely get the combinations right. Last I checked, ideas were bulletproof weren’t they? Or was Alan Moore wrong! *Shudders in horror*

    4. Your last two paragraphs contained nothing substantial in them, except for the word, chum. I consider you a close friend as well, Abeer. Thank you!

    Reply
  5. Jasleen Singh

    Dear Mr. Bharat,

    Your response to Mr/ Ms Abeer was epitome of the term mic drop. Very good response and very well articulated both in post and in your comments.

    Mr/ Ms Abeer, I enjoyed your comments up and till you tried to mislead me nd other readers when you said Rubik protected its Trademark in Europe. That was design, this is name. How are both equal? Very disappointing comment. Correctly pointed out by Mr. Bharat.

    Very interesting discussion on this blog!

    Reply
  6. Abeer

    Jasleen, sorry if you felt misled. Read the para again please. I specifically said designs, patent and trade mark.

    Bharat, or whoever you are, I see no reason to respond if, after saying you won’t stoop, you do just that with words like douchy (typo: douchey) and such. I’m perfectly aware of how to do links, thank you very much, and it’s not ‘douchey’ to ask that you check it out yourself. The 2006 and 2016 EU cases were filed *as TM cases*. RC lost, but that isn’t the point.

    All this academic theorizing is well and good and might even be worthwhile if there’s a context. There isn’t. As your post notes, “but I believe that TM genericide should have been discussed”. By whom? The defendant just didn’t bother, and no one raised it, and as you say, GP J could hardly conjure it up on the non-responsive defendant’s behalf. So what’s all this ballyhoo about?

    All of this turns on an acceptance of the theory, and it’s just that, that ‘Rubik’s Cube’ (not just ‘Cube’) is generic. That’s an *assumption*, unproven, and not a fact; and the assertion that every XxX cube is called a Rubik’s Cube is just that — an assertion with no demonstrated factual basis. Show that, and you’re probably right and it’s open hunting season on the phrase. Without that, the case falls and the real danger is in a judge, however eminent, imaginining with no empirical data, a *factual* position not shown to exist.

    The Rogers test of the use of a TM as an expressive idea isn’t, as you say, part of our jurisprudence. Whether it should or should not be is arguably irrelevant because we’re discussing a lawsuit here and that’s not decided on the basis of a wish or a dream. If such a defence is taken, it will have to be addressed. If not, this is pointless. Call it what you want, but it translates to this: if Manjrekar isn’t using the term in a ‘trade marky’ sense, how is it infringement of a TM? The simplest answer might just be the best: Manjrekar adopts someone else’s registered mark and applies it to his product, albeit one entirely different. Is this permissible? What of Section 29 of the TM Act and its various permutations? I don’t think it makes any difference whether it’s an infringment or passing off case or a combination of the two; the same general principle should apply. Is it okay to use ‘Mercedes’ for ice-cream or should that be alllowed to proceed? What happens to mark dilution or devastation, brand devaluing?

    I don’t know the answer to this: would RC be entitled to an injunction against publication of a book called “Rubik’s Cube – the unofficial history of the world’s most popular puzzle” or would RC permission or license be needed?

    As I said, the starting thesis is flawed because it hinges on the supposition that RC is generic. Being hugely popular or well known does not make every such trade mark generic. Frigidaire, Biro, Xerox at some point were possibly generic or close to it. But that does not mean that every mark that attains popularity becomes generic. That’s the second flaw in the argument.

    The rest of the discussion, in general terms, unlinked to this case is a challenge, no doubt about that.

    Oh, and by the way, I wasn’t the one name dropping. I don’t know Justice Sridevan a all, only some of her work and writings.

    All right, moving on. Other things to do now. Enough of this.

    Reply
  7. Rahul Bajaj

    Dear Bharat,

    First and foremost, I am very grateful to you for taking time out to critique my analysis and Justice Patel’s order. Your assertions are founded upon a nuanced understanding of the principles that could undergird the arguments in this case from both sides and are eloquently articulated.
    I do, however, agree with Abeer’s central point viz. it was not open to the court in this case to invoke the Rogers test or the concept of trademark genericide to grant its imprimatur to the defendant’s conduct (although I would have said so in a more moderate tone).
    So while I don’t dispute the proposition that this order may not be normatively desirable when assessed against the touchstone of the theoretical framework outlined by you, absent any statutory provision or Indian case law in support of the Rogers test or the concept of trademark genericide, I am not sure if your arguments would pass muster in an Indian court.
    That said, I greatly enjoyed reading this discussion and would like to thank you once again for engaging with my post.

    Reply

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