Trademark protection decoding

The Supreme Court recently passed a judgment that trademark law cannot protect the word “Malabar” to sell biryani rice within the country. This judgment assumes significance because it is the first time that the apex court has delivered a ruling that generic marks cannot be protected under Trademark law.

In a trademark dispute between Parakh Vanijya, Kolkata and Baroma Agro Products, West Bengal, the SC held that the former cannot claim exclusive trademark over the word Malabar to sell biryani rice.

Parakh Vanijya, Kolkata claimed that they use the mark ‘MALABAR’ to sell biryani rice from 2001, for which the Trademarks Registry of India accorded them trademarks registration.

However, the only condition was that they cannot claim an exclusive right to use the word, ‘Malabar’. Parakh Vanijya filed a trademark infringement suit against Baroma Agro Products and complained that the latter is selling biryani rice under the mark ‘MALABAR GOLD’, which is deceptively similar to the trademark, ‘MALABAR’.

The court allowed Baroma Agro Products to use the word, ‘MALABAR’ in conjunction with the word ‘BAROMA’ where all the words and letters must be in the same font but the word ‘MALABAR’ may be increased with the font size of not more than 25% that the rest of the words or letters.

However Parakh Vanijya was unsatisfied with the decision and approached the SC. The apex court observed that they cannot claim exclusive right over the use of the word ‘MALABAR’ and Baroma Agro products would be entitled to use the word ‘MALABAR’ in conjunction with ‘BAROMA’ with a different design.

Trademark may be a word, logo, symbol, picture, sound or any other sign used to represent a trade or business. It distinguishes one source of goods or services from the others. A trademark is protected only if it is inherently distinctive or capable of being distinguished from those used by other traders. Trademarks protection is of two kinds.

The first type is granted through legal registration as per the provisions of the Trademarks Act, 1999. The other is for marks that are not yet registered but has acquired significant reputation in the market. In those cases, courts protect such marks through the principle of passing off. A person will be liable for passing off if he misrepresents another trader’s mark to consumers which results in damage to goodwill associated with the trademark.

Under trademark law, a word cannot get trademark protection, if it is generic. For instance, the word ‘bike’ cannot be a trademark for selling bicycle because the word is just a standard term for the type of product it represents. A trademark becomes generic when it no longer identifies a particular manufacturer or source of a product.

When a mark becomes so common that it simply signifies the type of goods it represents, it becomes generic and can no longer be protected under law of trademarks. There are some brands that over the time has become generic, for instance, Escalator, Aspirin and Zipper. All these words now represent a type of product, but at one point in time they indicated a particular maker of that type of product.

Since they became very common and got readily identified with the product, they lost their distinctiveness as a trademark.

In 2012, BV Elango Himachalapathy, owner of a photocopy shop filed an application, to remove the trademark, ‘Xerox’ from Trademark Registry, on the contention that ‘Xerox’ had become synonymous with photocopy in society.

Considering it has come to be used in a generic sense, ‘Xerox’ has lost its value as a trademark. However, the Intellectual Property Appellate Board refused to consider ‘Xerox’ as a generic mark, because it was established that for almost 50 years of continued existence on the Trademark Register without challenge and also with proof of almost 44 years of evident use, the trademark, ‘Xerox’ has not lost its relevance as a trademark and should not be removed from the Trademarks Register.

When trademark protection is granted to a user it is meant to be used in perpetuity. Such trade mark protection prevents a subsequent trader from the use of a deceptively similar mark. What marks should be protected under trade mark law and what should not be protected has always been a subject matter of controversy. To that extent a proper distinction is required between protectable and non-protectable marks in order to facilitate subsequent traders to avail trade mark protections.

The SC has maintained the settled principle of trademark law that common expressions cannot be monopolised by a party and thus for intellectual property protection to be awarded to a phrase it must pass a higher threshold. This proposition of law is accepted by different courts and they have observed that trademark infringement claims cannot be allowed to still the tongue of an entire people.

(The writer is an Assistant Professor with School of Law, CHRIST Deemed to be University, Bangalore)