This is the second part of the two part blogpost. The first part discussed the difference between generic terms and genericide and also discussed the evolution of threshold of genericide in US. The second part of the blogpost will discuss the Indian law of trademark of generic terms. It further discusses loss of trademark over the products by the owners and their duty to protect it.
Can Generic terms be protected?
Under Indian law, Section 9(1) of the Trademark Act, 1999 provides for grounds of refusal of registration of marks or indications that become customary in the current language or in the bona fide and established practices of the trade.[i] Thus generic terms cannot be registered as a trademark. Whereas, Section 36 provides for cancellation of already registered trademark if a mark is widely used as the name of an article (service) and not as a source identifier. Thus Indian laws provide for both generic terms and genericide.[ii]
Indian courts on many instances have denied trademark protection to certain brand name because they are generic. In 2013, an issue regarding the term “aachi” came up in Madras High Court in Mr. A.D .Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd v. Aachi Cargo Channels Private Limited.[iii] In this case, the Masala company sued a cargo company for trademark infringement over the word “Aachi”. The court dismissed the suit while stating that “Aachi” mean grandmother in Tamil and therefore is the term of general use, which cannot be the monopoly of any of these companies. It is necessary to refute trademark protection to such general terms which are almost used daily. Such an action was taken by Delhi High Court in Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd.[iv] by refusing the trademark protection over the word “Krishna.” The court stated as that the word “Krishna is as good as John in the west.” The court held that the word ‘Krishna’ is very common and does not have any secondary distinctiveness. The secondary distinctiveness means that the usage of the term would remind people of product’s source and usage over the time and such usage grants it the trademark protection.[v]
Similar issue arose regarding the term ‘sugarfree’ in Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors[vi]. Cadila argued that “SugarFree” has acquired the distinctiveness as people associate it to Cadila’s product. The court held that the term is commonly used to denote the products which do not contain sugar. It further held that if any trader uses the mark, it is with knowledge that other users might also use the term.[vii]
In contrary, in Reebok India Company v. Gomzi Active[viii] the court granted protection to the tagline “I am what I am” It held that same rule of distinctiveness to imply the source of the product applies to the slogans or the taglines and therefore the phrase was distinct to be protected.[ix]
The issue regarding the movie “Jai Ho” also arose after it was realized that A.R. Rehman had trademarked ‘Jai Ho’ after the success of his song. He claimed that the license is required by the producer for the title to the film as ‘jai-ho’. The term ‘jai ho’ means “Let victory prevail’ and is a commonly used word and war-cry. To gain trademark protection, the term should have a distinctive character or must have a secondary meaning but the term ‘Jai-ho’ fulfilled neither of the two conditions. Thus such term should have not been granted trademark protection.
Losing Trademark- Genericide
The loss of trademark can be attributed to the owners of the trademark as well as to the public. A common test laid to check whether a trademark has become publici juris is to check whether the use of it by a third person can deceive the public or not. If the word has become so generic that the customers cannot be induced in believing that it is a good of particular company, it loses its trademark protection.[x]
Thus, when the trademark owners indulge in extensive advertising and marketing of the product to create an impression among the customers and build up their brand, it results into brand destruction simultaneously. Further, the public contributes to the genericide by language development which results into usage of the trademarks in pluralised and verbalised manner. For example, people use terms like “Googling” instead of searching on google, “do you twitter/tweet” instead of “do you post messages on twitter”, “Xerox” instead of photo-copying on Xerox machine, etc.
Multiple petitions have been filed before Indian IP Appellate Board for removal of Xerox trademarks on ground of it being a generic term. The board rejected the petition, holding that Xerox has acted efficiently, just in time to protect their trademark. Their extensive advertisement campaign since 2003 plays an important role in protection of their trademark. Advertisements clarifying the term like “if you use Xerox, the way you use zipper, our Trademark could be left wide open”, “if you use Xerox the way you use aspirin. We get a headache.” It has further objected to use of term “Xerox” instead of photocopying by government and public institutions. Thus, the government of India, High Court, Port Trust and other similar institutions have deleted the word Xerox and used “photocopy” instead. Thus, Xerox has set a great example of a trademark owner’s endeavours to protect its trademark from genericide.
Duty of Trademark Owners
We come to the conclusion that alertness and activeness of trademark owners plays the huge role in protection of trademark. The owners shall take prudent measures and promote the trademark as an adjective rather as noun or a verb. The use of term as verb or noun becomes a pathway for it to become generic. For example, Johnson &Johnson Co. changed their commercial jingle from “I am stuck on Band-aids, cause band-aid is stuck on me” to “I am stick in Band-aid brand, cause band aid is stick on me.”
Another measure that can be adopted is treating the term in different manner in print either by using it in capital letters, in quotes or by using different fonts. For example using the word ‘registered’ or symbol ® or ™. It can also be protected by trademark policing. This can be done by educating the public and media. It shall take quick action against any misuse like Tiffany & Co. which immediately filed suit against Costco on learning that Costco is using Tiffany’s name. It must also prevent the dictionaries from using the terms like Google did.[xi]
Thus, it to be understood that trademark protection is the duty of the trademark owner. The trademark owner shall be vigilant enough to protect its trademark from genericide.
[This post has been written by Maathangi Hariharan and Jasmine Khan, 4th year and 3rd year law students at WBNUJS, Kolkata respectively and edited by Drishti Das, a 5th year law student at WBNUJS, Kolkata].
[i] S. 9(1)(c), The Trade Marks Act, 1999.
[ii] S. 36, The Trade Marks Act, 1999.
[iii] AIR 2014 Mad 2.
[iv] 2011 (48) PTC 235 (Del).
[vi] Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors., 2009 (8) AD (Delhi) 350.
[viii] 2007 (34) PTC 164 (Karn).
[x] Samta Mehra and Radha Khera, The Price of Fame, Intellectual Property Magazine, (2013), available at https://www.remfry.com/wp-content/uploads/rs-articles/intellectual-property-magazine—genericide-may-2013.pdf, last accessed on 18/09/2017.