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Trademark Genericide: Burnt by Fame

Contributed by: Samvad Partners

It is a well-settled position of law that when a mark is publici juris or generic in nature, it is not protected under the Trade Marks Act, 1999 (“TM Act”). Sections 9 and 11 of the TM Act also set out the grounds for refusal for registration as a trademark. One of such grounds is when the marks consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, except where the mark has acquired a distinctive character as a result of the use made of it or is a well-known trademark.

It is not uncommon for Courts to allow registration of generic words as trademarks because such words have attained a secondary or distinctive meaning /character.

While per Section 31 of the TM Act, a registered trademark is a prima facie evidence of its validity, Sections 57 and 58 of the TM Act enable the cancellation or variation of registered trademarks. Further, Section 36 of the TM Act states that a registered trademark may be invalidated if it is proved there has been a “well known” and “established” use of the trademark as the name or description of the article or substance or service, not being used in relation to goods and services of the proprietor or registered user of the mark; or that article or substance was formerly manufactured under a patent in respect of which a period of two years or more has expired since the cessation of the patent, and that the word is the only practicable name or description of the article or substance (Rich Products Corporation vs Indo Nippon Food Limited, (2010) 42 PTC 660).

There are several instances where trademarks that successful, unique and distinctive have become synonymous with the product and run the risk of them being classified as “publici juris”. The genericization results in the trademarks becoming customary for use by the public to refer to similar kind of products at large, irrespective of whether they are manufactured by the trademark owner or not. Aspirin, Escalator, Thermos and Yo-Yo are some examples where trademark protection has been lost in some parts of the world due to the genericization of their trademarks. On the other hand, there are other brands whose trademarks have survived the genericization of their trademarks. An example of such brands is Xerox.

It is possible for a mark to continue to be trademark in some countries and publici juris in others (National Starch vs Munn's Patent Maisona (1894) 11 RPC 261; I.T.C Limited vs Golden Tobacco Company Limited Bombay ((1992) 12 PTC 38)).

In India, Rank Xerox Limited (“Xerox”) successfully defended its trademark in B.V. Ilango vs. Rank Xerox Ltd (2012 SCC OnLine IPAB 154) (“Xerox Case”) before the Intellectual Property Appellate Board (“IPAB”). The IPAB held that extensive preventive measures have been taken to ensure the check on the incorrect usage of trademark, it will not be considered as a generic term and stated that “The one factor which leads us in favour of the respondent in this issue, is the uniform acknowledgement of all those who had used the word Xerox, that their use was inadvertent and that they would refrain from doing anything in violation of the Trademark rights of the respondent. This then is the evidence that the public was conscious of the ownership of the Trademark.”

While deciding in favour of Xerox, the IPAB noted that:

  1. Xerox had periodically renewed its trademarks, without any objection or opposition and even its major competitors have not attempted to remove the mark from the Register on the ground of "genericity," until the batch of petitions were filed.

  2. Xerox had taken objection to the loose use of the word Xerox by Government, public sector undertakings etc. and that the response came in the form of apologies with assurances to set right the inadvertent error. The IPAB further observed 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" photocopy" and that several Governmental organizations have also given an undertaking that they will not use the mark in violation of the trademark rights of Xerox.

  3. Xerox had also taken measures to aggressively protect its mark by campaigning with advertisements like “If you use Xerox the way you use Zipper, our Trade mark could be left wide open" and "If you use Xerox the way you use Aspirin, we get a headache".

  4. Since the word photocopier is available for the public to use the goods for which Xerox was first registered as a trademark, the public will not be deprived by the exclusivity granted to Xerox. The IPAB differentiated the facts from the Aspirin case (272 F. 505 (S.D.N.Y. 1921)) and noted that in the Aspirin case, the Court felt that if Aspirin is made exclusive, then the defendants would be deprived of the right to use the word by which alone the public would be able to identify the product. The IPAB further noted that the public is familiar with the word photocopier and that it is available for both commercial and non-commercial use.

  5. The patented invention was for Xerography from which the respondent has evolved Xerox unlike the "cyclostyle' case” (1907-2 Ch. 478).

  6. Competitors of Xerox, like Canon only use the word "photocopier".

  7. Capitalization of the first letter of the trademark is consciously done wherever Xerox is used. The IPAB differentiated the facts from the Escalator case (85 U.S.P.Q. (BNA) 80 (Commr. Pat. 1950)) and noted that in the Escalator case, the proprietors had been using the word escalator with a small 'e' and along with elevator, thereby reducing the trademark strength.

The IPAB stated that “While a trade mark owner may take pride in his mark acquiring a stronghold in the people's minds with relation to the particular goods, if the public stops identifying the mark with the origin namely, the trade mark owner and starts using it as a synonym for the goods or services to which it was originally attached, then the trade mark risks the danger of losing its distinctiveness and ends in trademark death. Examples of such marks are 'Aspirin', 'Zipper', 'Laundromat' etc.”

The issue of genericization of trademarks or trademarks becoming victims of publici juris is not new in India. The Bombay High Court in A.J Von Wulfing vs. D.H Jivandas and Co., (AIR 1926 Bom 200), held that while a trademark may become publici juris, it could still get the benefit of passing off. The Court also emphasised the role of Courts in protection of a trademark and stated, “that a trademark which is distinctive may fall into publici juris. But the Court would require very strong evidence, which would show conclusively that the mark had become to be so public that nobody could be deceived by the use of it and could be induced from the use of it to believe that a person is buying the goods of the original trader, for refusing protection to the trader who was entitled to use of the trademark”.

Indian Courts have acknowledged that test for determining publici juris is laid down in Ford vs. Foster, (1872) 7 Ch A 611 at p. 623 follows:

"....the test must be whether the use of it by other persons is still calculated to deceive the public, whether it may still have the effect of inducing the public to buy goods not made by the original owner, of the trade mark as if they were his goods. If the mark has come to be so public and in such universal use that nobody can be deceived by the use of it, and can be induced from the use of it to believe that he is buying the goods of the original trader, it appears to me, however hard to some extent it may appear on the trader, yet practically, as the right to a trademark is simply a right to prevent the trader from being cheated by other persons' goods being sold at his goods through the fraudulent use of the trade mark, the right to the trade mark must be gone."

The Allahabad High Court in Ram Rakhpal vs Amrit Dhara Pharmacy And Ors. (AIR 1957 All 683) held that a good trade name could lose its character and become publici juris, where the first person using the name does not claim the right to prevent others from using it and allows other persons to use it without complaint. The Court further held a name would not become publici juris so long as the person originally entitled to the use of the name asserts his rights in that respect.

In I.T.C Limited vs Golden Tobacco Company Limited Bombay ((1992) 12 PTC 38), the Deputy Registrar of Trade Mark, Calcutta (“Registrar”) held that whether a matter is or is not common to the trade is a question of fact and that a feature which is common to one trade may not be so to a different trade. The Registrar also held that to succeed in an allegation of the trademark becoming common user, a case of substantial and extensive user by a large number of manufacturers or traders has to be established with total inaction by the proprietors of the mark against the infringers. It further held that the mere presence of a number of trademarks containing a common feature on the register in the name of different persons is not proof that the feature is common to the trade.

The Delhi High Court in S.B.L. Limited vs. Himalaya Drug Company (AIR 1998 Delhi 126) (“Himalaya Case”) observed that there are about 100 drugs in the market using the abbreviation 'Liv' made out of the word Liver an organ of the human body, as a constituent of names of medicinal/pharmaceutical preparations with some prefix or suffix-mostly suffixes meant for treatment of ailments or diseases associated with liver and held that ‘Liv’ had become a generic name and publici juris as it is descriptive in nature and common in usage. The Court stated that though the rival marks of Liv-52 and LIV-T have the word ‘Liv’ in common customers will tend to ignore the common feature and will pay more attention to uncommon features i.e. 52 and T.

The IPAB in Jagpin Breweries Limited vs. Shaw Wallace and Company Limited ([2011] IPAB 48), differentiated from the Himalaya Case and held that the number 5000 when used in Haywards5000 did not become a generic word and that the respondents have been successful in asserting that they alone have the right to use it in this class of goods. The IPAB stated that the lack of evidence to show that there was trade usage of the numeral and that the numeral is descriptive of the potency of the beer, was in favour of the respondents. The IPAB also stated that if the numeral as an indicator of potency had been proved, then the numeral would have been descriptive and that in the absence of evidence, the IPAB cannot read the words "all other descriptive matter" to include the numeral.

A common thread echoed by the Courts in India is that the steps and measures taken by the owner of a trademark in asserting its rights over a trademark, even if the same was widely used by general public in relation to the product or goods, could prevent trademark genercide and the trademark being held to be publici juris.

Contributed by Samvad Partners

The above article has been authored by Ms. Ekta Bahl(Partner), Mr. Pravin Sankalp(Associate) and Ms. Sneha Vardhani(Associate).

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