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Author : Rahul Sinha

INTRODUCTION

According to Section 2 (zb) of the Trade Marks Act, 1999, “trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”

Requisites of registrable trademark:

1. Marks should have been a distinctive feature.

2. Marks should be graphically representable.

3. The consumer should be able to distinct between different traders.

A trademark, trade mark, or trade-mark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others[1]. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher or on the product itself. For the sake of corporate identity trademarks are also being displayed on company buildings.[2]

Essentials of a trademark:

1.                  Distinctiveness of the trademark. By distinction we mean some quality in the trademark which embarked the goods marked as distinct from those of other products or such goods.[3]

2.                  The trademark preferably should be an invented word. The best trademarks are invented words.[4]

3.                  The trademark should be easy to remember and pronounce.[5]

4.                  It should not be descriptive word but can be suggestive of the quality of goods.

5.                  It should satisfy the requirements of registration.

6.                  It should not belong to the class of marks prohibited for registration.

 

The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, so a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services. The use of a trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark.

It should be noted that trademark rights generally arise out of the use of, or to maintain exclusive rights over, that sign in relation to certain products or services, assuming there are no other trademark objections.

Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea behind this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.[6] The first trademark law in India was passed in the year 1940 and was known as the Trade Marks Act, 1940. This law was subsequently replaced by the Trade and Merchandise Act, 1958. Thereafter the Government of India amended this Act in order to bring the Indian trademark law in compliance with its TRIPS obligations. The new Act that was passed was the Trade Marks Act, 1999. This Act came into force in the year 2003. The Trade Marks Act, 1999 and the Trade Marks Rules, 2002, presently govern the trademark law in India.

The trademark law in India is a ‘first-to-file’ system that requires no evidence of prior use of the mark in commerce. A trademark application can be filed on a ‘proposed to be used or intent-to-use’ basis or based on use of the mark in commerce. The term ‘use’ under The Trade Marks Act, 1999 has acquired a broad meaning and does not necessarily mean the physical presence of the goods in India. Presence of the trademark on the Internet and publication in international magazines and journals having circulation in India are also considered as use in India. One of the first landmark judgments in this regard is the “Whirlpool case”[7] in which the Court held that a rights holder can maintain a passing off action against an infringer on the basis of the trans-border reputation of its trademarks and that the actual presence of the goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder has attained reputation and goodwill in respect of the mark in India through advertisements or other means.

 

LAWS REGARDING USE OF SURNAMES, RELIGION, SECT

Marks that are primarily surnames (such as “SMITH SHOES” or “RODRIGUEZ COMPUTERS”) are treated the same as descriptive marks under U.S. trademark law. As a result, surnames are not given protection as trademark until they achieve secondary meaning through advertising or long use. A trademark is “primarily a surname” if the public would recognize it first as a surname, or if it consists of a surname and other material that is not registrable.[8]

 What’s there in a Name?

 

Whatever may be the intention of Great William Shakespeare stating the above phrase, a name (Trademark / Brand name) means a lot particularly, in today’s globally competitive business scenario.  Success in the business world depends largely on the message you convey and the image you project. If people can’t pick you out easily, they will probably overlook your business in favour of one with a greater presence.  Your trademark distinguishes your goods and services from those of your competitors’ and helps to establish your identity in the market place. According to International Trademarks Association (INTA), the average person sees or hears about 1500 trademarks every day.  This number appears optimistic but may be true particularly in the cities like Mumbai, Delhi, Bangalore etc.

For a trademark owner, the Trademark is the most valuable asset. A Trademark gives your product an identity, it facilitates communication between your Company and the consumer.  It is always an endeavor of every marketing and sales personnel to make sure that the Trademark for a product is as special and unique as the product.[9] Distinctiveness may be inherent in the mark itself as in the case of invented words, non descriptive words, and devices. It can also be acquired by user in case of suggestive and descriptive words, surnames etc. depending upon extent of use, nature of the goods etc.

Surnames are treated this way because, theoretically, everyone should be able to use his or her own name to promote their own business or product.[10] In practice, however, as soon as someone establishes secondary meaning for a surname, it becomes off-limits for all uses that might cause consumer confusion. Del Monte, Disney, Spiegel, and Johnson & Johnson are just a few of the hundreds of surnames that have become effective marks over time.[11]

In a case at Delhi High Court it was contended by the petitioner, “The word AGGARWAL cannot be registered as a trademark unless distinctiveness is established on the part of the applicant. The provisions of Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as “the 1958 Act”) were referred to by the petitioner to indicate that without distinctiveness, the word AGGARWAL, because it was both a surname and the name of a sect or caste, could not be registered[12].”

Also in various Supreme Court judgment it has been indicated that one cannot trademark their surname, the surname need to attend a different meaning or people should recognize the surname with the product also it shouldn’t be a common surname. In the words of McCarthy “A trademark owner may use a plurality of marks with a common prefix, suffix or syllable. It has the opportunity to establish that it has a family of marks, all of which have a common “surname”. It relies on this to argue that defendant’s mark, which incorporates the “family surname”, is confusingly similar to the total “family group”. In effect, the family “surname” or distinguishing element is recognized by customers as an identifying trademark in and of itself when it appears in a composite…..”

The case of Voltas[13] was an appeal filed against the decision of the Intellectual Property Appellate Board, where the petitioner filed for registration of a trade mark VOLMAX in Class 5 of the Schedule I of the Trade Mark Act 1999. The Respondent Voltas Limited established that it has been using a family of marks having the common element VOL namely, VOLTAS, VOLFRUIT, VOLFARM, VOLPUMP, VOLDRILL, VOLITA, VOLTRION, VOLDRUM, VOLLAM, VOLRAM, VOLBIT, VOL-SEAFOOD, VOLFAN and VOLPHOR. The Assistant Registrar concluded that keeping in view of the series of trademarks owned by the opponents consisting of common prefix VOL, if the trade mark in dispute is grated registration, it is likely to confuse or cause deception in the mind of a customer who is already familiar with the opponent’s trademarks bearing the prefix VOL, The Delhi High Court observed that impugned order of the IPAB does not seem to have conducted any such detailed assessment of the two competing marks at all. Thus set aside order of IPAB and ordered the tribunal to decide the matter afresh.

The suit was filed by Tata Sons Ltd (plaintiff no.1) and its subsidiary, Tata Infotech Ltd (plaintiff no. 2). It was submitted that the mark “TATA” is derived from the surname of its founder Mr. Jamsetji Nusserwanji Tata. It was submitted that “the mark “TATA” has consistently been associated with and exclusively denotes the conglomeration of companies forming the Tata group, which is known for high quality of products manufactured and/or services rendered by it under the trademark/name TATA”.[14]

In another famous case[15], IPAB held that “We in the Board at first got the impression that the respondent was an affiliate or subsidiary company of the applicant and not a competing business rival.  There is little doubt in our mind that the presence of the respondent mark ‘Reddy’  is bound to cause material confusion and deception in the market.” Thereby, ruling out the contention of the respondent of there being no likelihood of confusion. The IPAB did not examine any another evidence to come to this conclusion, even though the question on ‘likelihood of confusion’ is a mixed question of law and fact.

The IPAB then observed that the Registrar of Companies should not have registered the respondent’s name as this was in contravention of S. 20(2) of the Companies Act which prohibits the use of someone else’s trademark as part of a corporate name.[16] There is not one stand on the issue of using surname as trademark, it depends on the facts of the case.

 

 Can you own God??

One may trademark a religious symbol so long as the mark does not consist of, or comprise, matter that may disparage, bring into contempt or disrepute persons, institutions, beliefs, or national symbols.[17] For example, the courts have held that when the application of a mark to a product would offend the sensibilities of a religious group, the mark should be refused on the basis that the matter is disparaging to the members of the group.

If you utilize a religious symbol to brand a product or service in a way that is not offensive or insulting to the religion which it represents, you will be allowed to trademark it. If you successfully trademark a religious symbol, the legal protection will only serve to prevent your competitors from using the religious symbol in a way that would cause consumers to be confused as to where the goods or services are coming from. The trademark would not prevent individuals from using the symbol in non-competitive ways, nor would it prevent the associated religion from using the symbol in worship.[18]

The fundamental question that emerges is whether the pictorial representation of the deity ought to be regarded as a subject of trademark at all or not.  Section 2(1) (zb) under the TM  Act 1999 defines the term “trademark” as follows:
“Trademark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colours”. A literal reading of the section suggests that in principle, “pictures are not register able as such” for a trademark, while graphical representation acting as a “mark” (but including combination of colours) is permitted. Further, it indicates the existence of a connection in the course of trade between the services or goods and a person having the right as proprietor/permitted user[19]. Now, since the Trust obtained registration for temple services, social services, welfare services and cultural activities can it be considered as one which has exclusive right or title over the said services? Legally speaking, it cannot be. The Supreme Court held that “religious practices or performances of acts in pursuance of religious belief are as much a part of religion as faith or belief in particular doctrines[20].” A Trust cannot claim exclusive title over temple services, social services, welfare services and cultural activities carried out pursuant to the religious faith. The devotees have as much stake as the Trust has in the said services. Therefore, the Trust is not a proprietor of the said services and therefore, cannot claim exclusive right over the picture of the deity and the title for the said services.

Section 9(2) (b) of the Trade Marks Act 1999, which deals with Absolute grounds for refusal of registration. This section mandates that a mark shall not be registered as a trade mark if it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India. Keeping in mind the point mentioned above, precluding people from using the image(s) of the deity may lead to a build up of religious tension. The word “Ramayan” was refused registration for the same very reasons. Also, the trademark granted commercializes a religious symbol, setting a dangerous precedent that other money spinning religious trusts would also soon exploit for their own commercial gains. This is also likely to injure the faith of the people in temples and religious places as a whole. Therefore, a dangerous negligence has been shown to Section 9(2) (b) of the Trade Marks Act, 1999 in the registration of this trademark.

 

CONCLUSION

Use of surname as trademark depends upon arious circumstances and the authority should be very specific and reasonable while giving them the status of registred trademark. Also, there should be some guidelines in which circumstances the surnames will be allowed as trademark because the belief that everyone has a right to use the surname as trademark is falling hard on people, and this belief still exsist in the society. While granting surname as registered trademark can be taken less strictly, a strict view should be maintained while granting trademark to religious symbols or sect views because that can lead to anarchy in the society.

If the trademark registration is maintained, in future, we may see trademark applications being granted on many popular images in the public domain i.e. Images of various deities, religious symbols or who knows, even the Asoka Chakra and Stambh[21]. In my view, the Registry was quick to jump the gun, without realizing the implications of such a registration. Furthermore, in such situations the motives of the Trust should also come into question – If they are a charitable and divine organization, why do they attempt to commercialize? Such organizations are granted tax exemptions by government in the name of spiritual things even though they act like business enterprises all the time and sometimes even earn more than world’s top businesses. For the time being, all we can do is hope that the Kerala High Court will order against the registration because otherwise, it could really be a dangerous and preoccupying precedent.

 

 

 

 

 

[1]Trademark, Intellectual Property Office, Published on: 16th May, 2014, Retrived from: https://www.gov.uk/unacceptable-trade-marks
[2]“Some Well-Known U.S. Trademarks Celebrate One Hundred Years”. U.S. PTO Press Release no. 00-38. U.S. Patent and Trademark Office. June 15, 2000. Retrieved November 4, 2014
[3]Imperial Tobacco Co. of India Ltd. v. Registrar of Trademarks, AIR 1977 Cal 413
[4]Law relating to Intellectual Property, Wadhera B.L, Universal Law Publishing Co., Fifth Edition
[5]ibid
[6]Gary Richardson, Brand Names Before the Industrial Revolution, National Bureau of Economic Research
[7]    N. R. Dongre v. Whirlpool Corporation 1996 (16) PTC 583
[8]Strength of Trademark, Bitlaw, Retrived from: http://www.bitlaw.com/trademark/degrees.html

Retrieved on: November 7, 2014
[9]Law relating to Intellectual Property, Wadhera B.L, Universal Law Publishing Co., Fifth Edition
[10]ibid
[11]Surnames as trademark, Nolo, Retrieved from: http://www.nolo.com/legal-encyclopedia/using-surname family-name-trademark.html Retrieved on November 7, 2014
[12]  Rajinder Kumar Aggarwal vs Union Of India (Uoi) And Anr [147 (2008) DLT 104]
[13]  Glaxo Group Limited v Union of India, Voltas Limited and Others
[14]Delhi High Court on Trade-mark Protection, Mathew P. George, Retrieved from: http://spicyip.com/2013/04/delhi-hc-on-trademark-protection-for.html Retrieved on: November 7, 2014
[15]Dr. Reddy case
[16]Dr. Reddy: Honest and Concurrent use, Aprajitha Leth, Retrieved from: http://spicyip.com/2013/11/dr-reddy-honest-and-concurrent-use.html, Retrieved on: November 7, 2014
[17]Strength of Trademark, Bitlaw, Retrived from: http://www.bitlaw.com/trademark/degrees.html Retrived on: November 7, 2014
[18]Secure your trademark, Admin, Retrieved from: http://secureyourtrademark.com/can-you-trademark/trademark-a-religious-symbol/ Retrieved on: November 7, 2014
[19] Commercialisation of god, Retrieved from: http://www.selvamandselvam.in/owning-your-god-trademark-protection-for-   deities/#sthash.DeBMn64j.dpuf Retrieved on: November 7, 2014
[20] Ratilal Panachand Gandhi v. State of Bombay
[21]Commercialisation of god, Retrieved from: http://www.selvamandselvam.in/owning-your-god-trademark-protection-for-   deities/#sthash.DeBMn64j.dpuf Retrieved on: November 7, 2014


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