Op EdsOP. ED.

   

Introduction

Conventional trademarks like words, symbols, logos, devices, and names have been commonly used globally. Non-conventional trademarks go beyond conventional trademarks in terms of their nature, characteristics, and potential. These include both visible marks (colour, shape, holograms, etc.) and non-visible marks (sound, smell, taste, etc).1 Non-conventional trademarks are not yet accepted by most jurisdictions, yet they are very common in the contemporary market sphere.2 The paper primarily focuses on smell, sound, and colour marks.

Trademarks are defined under Article 15 of the TRIPS Agreement3 as any sign or a combination of signs that can distinguish the goods and services from one another.4 Although there is no explicit mention, the ambit of the definition is wide enough to fit non-conventional trademarks. Thus, in order to classify as a non-conventional trademark, a mark must be — inherently distinct, indicate the origin, capable of being represented graphically and capable of distinguishing goods from one another.5

In order to get registered, these trademarks have to comply with statutory provisions that differ across different countries. Several countries, including the EU and India, have extended protection to non-conventional trademarks. In Seickmann v. Deutsches Patent-und Markenamt6, the European Court of Justice (ECJ) held that the graphical representation of the non-conventional trademarks must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”7. The wide recognition of this criteria and the prerequisite of graphical representation has created several problems in extending protection to non-conventional trademarks.

Problems/issues

Due to the prerequisites of graphical representation and distinctiveness, various jurisdictions have followed different approaches to deal with the registration of sound marks. Further, it is crucial to examine whether the consumers perceive it to be exclusive linked to the product.8 In Shield Mark BV v. Joost Kist9, the ECJ dealt with the graphical representation of both musical and non-musical sounds. While a detailed notation of musical sounds was enough, non-musical sounds were deemed to be far more complicated to be registered because a worded description of these would not be “precise”. Thus, the ECJ held that digital recordings along with graphical representation were required for the non-musical sounds due to the variation in the level of intelligibility.10

Further, due to the application of the Seickmann11criteria, it is found that smell marks are theoretically registered, while they cannot be practically registered. In Seickmann case12, a chemical formula of the smell and a description “balsamically fruity with a slight hint of cinnamon” was submitted.13 The ECJ held that although the description was intelligible and easily accessible, it was not object, precise and clear. Further, although the chemical formula was objective, it was not intelligible or self-contained.14 With this, it can be noted that the Seickmann15criteria can only fully be satisfied with marks like words or devices, and not by non-conventional trademarks.

Further, colour marks are most often only registrable if it is a “combination of colours.” There has often been a doubt about whether a colour mark is too abstract to be registered as a trademark. In n Libertel Groep BV v. Benelux-Merkenbureau16, the ECJ held that a colour is merely a property of a thing and cannot be constituted as a sign.17 The Court further emphasised on the existence of the “Pantone Code” that provides for different numerical codes to colour shades for identification. Thus, it came to a conclusion that in order to register a colour mark, a threefold test has to be complied with i.e. functionality, graphical representation, and distinctiveness.18

Further, in Société des Produits Nestle SA v. Cadbury19, there was an application to register the colour purpose as a trademark for Cadbury. The Court held that giving a trademark of a single colour, as opposed to a combination of colours, would lead to Cadbury acquiring a legal monopoly over purple coloured packaging and would give them an unfair advantage over other companies/brands.20

To conclude, the procedural problems lie with the registration of non-conventional trademarks due to the lack of a uniform global practice. It is very often difficult to extend protection to the non-conventional trademarks due to the prerequisites of graphical representation, distinctiveness, and functionality (i.e. the product's function and purpose cannot be the same). Moreover, the open-ended nature of the definitions of the term “trademark” cause ambiguity at a global platform. In order to overcome this issue, there is a need for a more uniform and consistent policy which applies to all the countries under the WTO.

Indian position and conclusion

Fulfilling the obligations of the WTO and complying with the TRIPS Agreement, Section 2(1)(b) of the Trade Marks Act, 199921 provides for a broad definition of trademarks that has given scope to non-conventional trademarks to be included and considered. There have been a lot of trademarks that are successfully registered in India. For instance, Yahoo Inc., Colgate, ICICI Bank, etc. have successfully registered their trademarks.22 However, India, as compared to other countries like the EU and the US, has lesser registrations of non-conventional trademarks due to the rigidity of Indian law, unlike the laws of other countries. Moreover, graphical representation, being the “sine qua non” of trademark registration in India, has caused major difficulties in the registration of the non-conventional trademarks.23

Although the amended Trade Marks Rules24 have permitted digitalised graphical representation, making it relatively easier for these marks to be registered25, there are not enough technological developments that have been incorporated within these rules and other provisions. For instance, the Draft Manual26, expressly adopting the Seickmann criteria27, has emphasised that certain “marks” like the colour, sound, shape, and smell will need a “special consideration”.28 Such provisions have created an ambiguity in Indian law. In order to robust its business and trade-related growth, Indian law and policymakers need to adapt to the latest developments across the world.


*Law graduate, living and working in New Delhi. Author can be reached at <paridhijainx@gmail.com>.

1. Gangjee, Dev, “Non-Conventional Trade Marks in India”, 22.1 NLSI Rev 67 (2010), pp. 67-96, Jacob, Kuruvila M., and Nidhi Kulkarni, “Non-Conventional Trade Marks: Has India Secured an Equal Footing?”, Indian Journal of Intellectual Property Law, Vol. 9 (2018), pp. 47-72.

2. Lukose, Lisa P., “Non-Traditional Trademarks: A Critique,” 57 JILI (2015) 197, pp.197-215.

3. Agreement on Trade-Related Aspects of Intellectual Property Rights, 1995, Art. 15.

4. Agreement on Trade-Related Aspects of Intellectual Property Rights, 1995, Art. 15.

5. Majumdar, Arka, Subhojit Sadhu and Sunandan Majumdar, “The Requirement of Graphical Representability for Non-Conventional Trade Marks”, JIPR Vol. 11(5) (Sep 2006); Jacob, Kuruvila M., and Nidhi Kulkarni, “Non-Conventional Trade Marks: Has India Secured an Equal Footing?”, Indian Journal of Intellectual Property Law, Vol. 9 (2018), pp. 47-72.

6. 2003 Ch 487 : (2003) 3 WLR 424 : (2003) ETMR 37.

7. Seickmann v. Deutsches Patent-und Markenamt, 2003 Ch 487 : (2003) 3 WLR 424 : (2003) ETMR 37.

8. Lukose, Lisa P., “Non-Traditional Trademarks: A Critique,” 57 JILI (2015) 197, pp. 197-215.

9. (2004) RPC 315 (ECJ).

10. Shield Mark BV v. Joost Kist, (2004) RPC 315 (ECJ).

11. Seickmann v. Deutsches Patent-und Markenamt, 2003 Ch 487 : (2003) 3 WLR 424 : (2003) ETMR 37.

12. Seickmann v. Deutsches Patent-und Markenamt, 2003 Ch 487 : (2003) 3 WLR 424 : (2003) ETMR 37.

13. Seickmann v. Deutsches Patent-und Markenamt, 2003 Ch 487 : (2003) 3 WLR 424 : (2003) ETMR 37, para 11.

14. Seickmann v. Deutsches Patent-und Markenamt, 2003 Ch 487 : (2003) 3 WLR 424 : (2003) ETMR 37.

15. Seickmann v. Deutsches Patent-und Markenamt, 2003 Ch 487 : (2003) 3 WLR 424 : (2003) ETMR 37.

16. (2003) ETMR 63 (ECJ).

17. Libertel Groep BV v. Benelux-Merkenbureau, (2003) ETMR 63 (ECJ).

18. Mishra, Neha, “Registration of Non-Traditional Trade Marks”, Journal of Intellectual Property Rights 13(1) (2008); Vatsa, Aishwarya, “Subject-Matter and Prerequisites for Protection of Non-Conventional Trade Mark”, Christ University Law Journal, Vol. 8, Issue 1 (2019), pp. 61-80.

19. Société des Produits Nestle SA v. Cadbury, (2012) EWHC 2637 (Ch).

20. Société des Produits Nestle SA v. Cadbury, (2012) EWHC 2637 (Ch).

21. Trade Marks Act, 1999, S. 2(1)(zb).

22. Vatsa, Aishwarya, “Subject-Matter and Prerequisites for Protection of Non-Conventional Trade Mark”, Christ University Law Journal, Vol. 8, Issue 1 (2019), pp. 61-80.

23. Gangjee, Dev, “Non-Conventional Trade Marks in India”, 22.1 NLSI Rev 67 (2010), pp. 67-96; Jacob, Kuruvila M., and Nidhi Kulkarni,“Non-Conventional Trade Marks: Has India Secured an Equal Footing?” Indian Journal of Intellectual Property Law,  Vol. 9 (2018), pp. 47-72.

24. Trade Marks Rules, 2017, R. 2(k).

25. Trade Marks Rules, 2017, R. 2(k).

26. Draft Manual of Trade Marks Practice and Procedure.

27. Seickmann v. Deutsches Patent-und Markenamt, 2003 Ch 487 : (2003) 3 WLR 424 : (2003) ETMR 37; See Draft Manual of Trade Marks for Practice and Procedure, Ch. 2, at 5.2.2.1.

28. Draft Manual of Trade Marks Practice and Procedure, Ch. 2, at 3.1.

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Introduction

A trade mark creates a new identity for the product which distinguishes it from its other competitors and tries to create a bond between the seller and consumer. It is this mark which the consumers will recognise and relate to in the future. For the purposes of registration of trade marks under the Act, the Registrar has to classify goods and services. The classification has to be, as far as possible, in accordance with the international classification of goods and services and any question as to the class in which  any particular goods or services should fall has to be decided by the Registrar.

It is therefore really important to choose an apt trade mark which is distinctive, fancy and easily marked in the minds of the customers. However, all marks cannot be registered as a trade mark under the Trade Marks Act, 19991. The Trade Marks Act, 1999 lays down provisions which state the grounds of refusal of trade marks.

Absolute grounds of refusal of trade marks

The Trade Marks Act, 1999 contains absolute and relative grounds for refusal of registration of a trade mark. The absolute grounds are governed under Section 9 of the Act2 while the relative grounds of refusal are governed under Section 11 of the Act3.

The absolute grounds of refusal are mentioned in 3 sub-sections of Section 9 of the Act.

The first sub-section4 lays down the following grounds of refusal of trade mark:

(a) the mark lacks distinctiveness;

(b) the mark is descriptive of the characteristics of the goods or services; and

(c) the mark consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

The second sub-section5 says that a trade mark is not to be registered if:

(a) the mark is of such nature as to deceive the public or cause confusion;

(b) the mark is likely to hurt religious sentiments;

(c) the mark comprises scandalous or obscene matter; and

(d) the use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 19506.

The third sub-section7 states that a mark shall not be registered as a trade mark if it consists exclusively of:

(a) the shape of goods which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

Distinctiveness is an exception of descriptiveness

A descriptive mark describes the features or characteristic of the goods and services and is prohibited from being registered under Section 9(1) of the Trade Marks Act, 1999. However, Section 9(1) not only lays down absolute prohibition on descriptive marks being registered as trade mark, but also comes with an exception that, trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.8

The Trade Marks Act of 1999 indirectly deals with “acquired distinctiveness” or “secondary meaning” under the proviso to Section 9(1) and Section 32. According to the proviso to Section 9(1) registration of the descriptive mark is possible only if the mark has acquired distinctiveness before the application for registration. Wherein Section 32 enumerates that if any mark has been registered in breach of sub-section (1) of Section 9 of the Act, the mark shall not be declared void, if it has acquired distinctiveness after its registration and before commencement of any legal proceedings challenging the validity of such registration.

Therefore it is well settled that under the Trade Marks Act, 1999, common words or descriptive words or names cannot be trademarked unless these words or names have acquired a great reputation and goodwill in the market and have gained secondary significance.10 This would then be an exception to the absolute grounds refusal of stated under Section 9(1) of the Trade Marks Act.

A mark is said to have acquired distinctiveness or secondary meaning when due to the extensive and substantial use of the mark over a period of time it persuades the consumers to relate the mark with a product or services and therefore acquired distinctiveness under Section 9 is equivalent to being mark well known.11 However in the recent case of ITC Ltd. v. Britannia Industries Ltd.12, the Delhi High Court settled the question as to the time required to gain acquired distinctiveness and said that to acquire secondary meaning, it is not necessary that product is in the market for number of years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight.

If the applicant satisfies that he has acquired a secondary meaning or a distinctive character with constant usage for a considerable period of time or the consumers have really fell for the mark then the applicant can obtain exclusive rights to use a particular word with a dictionary meaning as a trade mark. However, the use of the word must be to such an extent that, it has lost its primary meaning and has acquired a distinctive character and so whenever the word is used, it must remind the consumer of the goods of the applicant.

Conclusion

Indian trade mark law is at par with any other law around the world with respect to prohibiting the use of descriptive words in a trade mark. It is a volatile practice to adopt a common language word and use it as a trade mark as it increases the scope of confusion in the minds of public at large. But there are scenarios where, the once prohibited descriptive mark, acquires a secondary meaning/acquires distinctiveness, and the customers associate the trade mark with the applicant’s business. And that’s when the principle of “acquired distinctiveness” kicks in. This principle has been well stated in the proviso to Section 9(1)(b) of the Trade Marks Act, 1999, and has further been widely accepted by the courts. The courts have conducted a strict scrutiny while applying this principle and a lot of weightage has been given to evidence in support of the reputation/goodwill of the trade mark. The courts have been right to say that no cap should be put with respect to “term of use” while applying the principle of “acquired distinctiveness” as time is no barrier to decide whether a mark is reputed or not; and an idea “can become a hit overnight”. It can therefore be said that the proviso to Section 9(1)(b) is a boon to many innocent trade mark owners.


*Advocate, Allahabad High Court. Author can be reached at tejassinghbb@gmail.com

1 Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/FMK1eOD3.

2 Section 9 of the Trade Marks Act, 1999.  http://www.scconline.com/DocumentLink/944Il1rZ.

3 Section 11 of the Trade Marks Act, 1999.  http://www.scconline.com/DocumentLink/ClCLanIO.

4 Section 9(1) of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ

5 Section 9(2) of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ

6 Emblems and Names (Prevention of Improper Use) Act, 1950. http://www.scconline.com/DocumentLink/daY3NxYD.

7 Section 9(3) of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ

8 Proviso to sub-section  (1) of Section 9 of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ.

10 Living Media (India) Ltd. v. Jitender V. Jain, 2002 SCC OnLine Del 605.

11 Marico Ltd., v. Agrotech, 2010 SCC OnLine Del 3806. http://www.scconline.com/DocumentLink/muVhjtp6

12 2016 SCC OnLine Del 5004.

Case BriefsHigh Courts

Andhra Pradesh High Court: R. Raghunandan Rao, J., addressed a matter wherein the law relating to Trade Mark and Passing off was highlighted wherein the trademarks of the parties are similar or identical.

Permanent Injunction was sought by the respondent to restrain the appellant from infringing on the trademarks or passing off trademarks held by the respondent and further sought for damages, rendition of accounts under the Trademarks Act, 1999 and infringement of Copy Rights Act, 1957 against the appellant.

Background

Plaintiff had been carrying on the business of manufacture of white lime wash and distributing and selling the same under the flagship brand name Surya and the device mark of “Rising Sun”.

Plaintiff had been using the mark “Surya” in collocation with various other words and in a combination with the device “Rising Sun with seven rays”.

Unique, uncommon and distinctive features of the trademarks “SURYA” and logo “SUN” are an inventive combination.

Plaintiff submitted that under the common law and as a result of extensive prior usage since 1985, vested rights in the Trademark “SUN” as a logo and “SURYA” as a word and to protect the same have already filed Trademark Applications and the same is pending.

Plantiff’s case was that the plaintiff’s mark came to obtain recognition among the general public relating to the standard and quality of the products of the plaintiff and is recognized all over the country.

Hence, plaintiff claimed that its mark “Surya” which is recognized all over the country would be treated as a well known mark defined under Section 2 (zg) of the Trademarks Act, 1999.

Plaintiff filed a criminal complaint against the defendant on knowing that he was indulging in illegal activity by selling its products by adopting the name “Surya Magica White”.

But the stated criminal complaint was not acted upon, which compelled the plaintiff to file a private complaint which again came to be pending, therefore plaintiff approached the Court.

Defendants’ use of the essential features of the plaintiff mark demonstrates that his instent was to utilise the goodwill of the plaintiff by deceiving the general public.

Analysis, Law and Decision

Bench reviewed the law relating to Trade Marks.

While reviewing the same, Court stated that the Act regulates the recognition of trade marks, their registration and protection.

Protection of Trade Marks is defined in Section 2(1)(zb):

“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; and 

(i) in relation to ChapterXII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted use, to use the mark whether with or without any indications of the identity of that person, and includes a certification trade mark or collective mark.

The primary purpose of the a trade mark is to indicate the source of the goods/services that are sold in the market.

Whenever and wherever if there is an attempt to deceive buyers about the source of goods/services with usage of an identical or similar Trade Mark the law would assist the proprietor of the trade mark to protect his identity as the only supplier of the said goods/services.

Section 29. Infringement of registered trademarks:

Bench added to its analysis that there could be a case of infringement where there is similarity in the trade mark or where trademarks are identical, leading to confusion in the mind of the buyer that the goods being purchased by him under the offending trade mark are the goods being produced or sold by the proprietor of the original trade mark.

Test of the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing of actions.

Question that generally needs to be answered by the Court in a Trade Mark case, filed as an action of passing off or an action for infringement:

Whether a buyer would get confused between the goods of the Defendant and the plaintiff because of the usage of the offending trademark by the defendant?

In regard to the instant case, Bench noted that an action for infringement and passing off, both have been sought.

For passing off action, plaintiff failed to produce any evidence of the quantum and length of sales, reputation or goodwill built, therefore no action for passing off can be looked into.

Action for infringement

For the said action, plaintiff has to demonstrate that his trademark is registered and the defendant’s trademark is similar enough to the plaintiff’s trademark which would in result create confusion in the minds of the buyers.

In the present case, the trademark of the plaintiff is registered, both the parties are selling goods which are falling in the same category.

In view of the above, the only question that remains is:

Whether they are creating confusion in the minds of the buyers?

Court stated that the plaintiff has claimed that he has a trade mark in the name “Surya”, which is a generic word which connotes “Sun”.

In the above-stated circumstances, plaintiff/respondent cannot contend that he has a trademark on the name “Surya”.

In the present case, however, the plaintiff submitted that the mark is “Surya” written in a specific style with a specific foreground and background.

Even though, there cannot be a trade mark in the name “Surya” there could always be a trade mark in a particular stylistic way of using the word “Surya”.

Since the trademarks exhibited by plaintiff had been the words “Surya Cem or Surya Agrilline” etc., the trademark would have to be construed as a collocation of both the words Surya and Cem or Surya Lime or mortar etc.

Perusal fo the above discussion would depict that the trade mark of the defendant would show that there are differences in the manner in which the word “Surya” is depicted.

Hence, it can’t be said that the trademarks of the plaintiff and the defendant are identical or totally similar.

Supreme Court’s decision in Ruston & Hornsby Ltd. v. Zamindara Engineering Company, (1969) 2 SCC 727, it was held that in any action for infringement where the defendant’s trade mark is not the exact mark on the register but something similar to it, the test of infringement is the same as in an action for passing off.

Bench added to its observations that in the instant case, there is a possibility of a buyer going to the shop and asking for Surya cem and get confused by the mark of the defendant and accept the product of the defendant as it would be sold as Surya Blue or Surya ujala.

In light of the Delhi High Court decision of Surya Agro Oils Ltd. v. Surya Coconut Oil Industries, 1994 SCC OnLine Del 266, it will be held that there is every likelihood that buyers would tend to get confused and plaintiff would be entitled to an injunction as granted by trial court.

In view of the above, CMA was dismissed. [Gaurav Polymers v. Delight Chemicals (P) Ltd., 2020 SCC OnLine AP 1484, decided on 20-11-2020]


Advocates for the Parties:

Advocate for the petitioner: Advocate, K V Raghu Veer

Advocate for the respondent: Advocate, Ashok Ram Kumar

Case BriefsHigh Courts

Bombay High Court: B.P. Colabawalla, J., granted interim relief in a matter between HUL and Emami over the use of “Glow & Handsome” and held that Emami before initiating any legal proceedings shall give 7 days prior notice to Hindustan Unilever Limited.

Present suit was filed under Section 142 of the Trade Marks Act, 1999 seeking injunction against the defendant from issuing groundless threats to the plaintiff in respect of the use of its trademark “GLOW & HANDSOME”

Plaintiff’s advocate, Hiren Kamod submitted that plaintiff sought limited ad-interim relief, that defendant should give atleast 7 clear days prior written notice before initiating any legal proceedings.

Further it was stated that, after conducting a search in the Register of Trade Marks, the Plaintiff independently and honestly coined and adopted the trade marks ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ in respect of its skin care products.

To secure statutory rights in the ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ marks the Plaintiff filed multiclass applications.

On 2nd July, 2020,

Plaintiff made an official announcement that its trade mark / brand ‘FAIR & LOVELY’ is rebranded as ‘GLOW & LOVELY’ for its skin care range of products and the Plaintiff’s skin care range of FAIR & LOVELY products for men will be called as ‘GLOW & HANDSOME’.

It is stated that the plaintiff was granted its FDA License to manufacture its skin care products under the mark “GLOW & HANDSOME” on 3rd July 2020. Thereafter, the plaintiff immediately issued commercial advertisements in respect of its products bearing the trade mark ‘GLOW & HANDSOME’ not only on social media but also in the newspapers.

Immediately after the plaintiff made announcement on 2nd July 2020, the defendant gave statements in various newspapers inter alia threatening to adopt legal action against the Plaintiff for violating the Defendant’s alleged rights in its mark ‘EMAMI GLOW AND HANDSOME’.

Adding to the above contentions, plaintiff’s advocate submitted that defendant’s claim of proprietorship over the marks ‘GLOW AND HANDSOME’ / ‘EMAMI GLOW AND HANDSOME’ is false and misconceived.

Plaintiff is the prior adopter and user of the trade mark ‘GLOW & HANDSOME’.

Decision

Prima facie it does appear that having filed its trade mark application in September 2018 and subsequently on 25th June 2020 for the mark ‘GLOW & HANDSOME’, the plaintiff is the prior adopter of the said mark, whereas, defendant adopted the ‘GLOW AND HANDSOME’ mark for the first time on 25th June 2020 and has not commercially used it till date.

On considering the facts and circumstances of the case, Court stated that no harm or prejudice would be caused to the defendant if the limited relief as prayed by the plaintiff is granted.

Plaintiff was granted liberty to renew its application for further reliefs on the adjourned date, after giving notice to the defendant. [Hindustan Unilever Limited v. Emami Limited, 2020 SCC OnLine Bom 764 , decided on 06-07-2020]

Hot Off The PressNews

India has joined three WIPO treaties designed to ease the search for trademarks and industrial designs, helping brand owners and designers in their efforts to obtain protection for their own work.

 WIPO Director General Francis Gurry received on 7-06-2019, India’s instruments of accession to the Nice Agreement, Vienna Agreement and the Locarno Agreement from Ambassador Rajiv K. Chander, Permanent Representative of India to the United Nations and other International Organizations in Geneva. The treaties will enter into force for India on 7-09-2019.

  • Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks [India becomes the 34th member of the Vienna Agreement]

  • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks [India becomes the 88th member of the Nice Agreement]

  • Locarno Agreement Establishing an International Classification for Industrial Designs [India becomes the 57th member of the Locarno Agreement]


[News dt. 07-06-2019]

World Intellectual Property Organization

GNLU
Op EdsOP. ED.

“Property is not the bastion of egoism but rather the vehicle of social exchange.”

— Joseph Kohler, German scholar[1]

One cannot negate the steady escalation of technology or dispute its benefits, but the recent trend of protection sought under intellectual property rights, spurred by this monstrous growth is a distress signal. The trend can be labelled in just one term-hashtags. For those who are fortunately (or not) unaware of the hashtag culture, it is a tool to characterise content into groups; by placing a “#” character, also known as the hash symbol, in front of a word or a phrase, the author makes it easier for the reader to locate a work when searched by the specific word or phrase.

Hashtags are all around us. They are online, offline and the term was also announced by Oxford University Press as “Children’s Word of the Year” in 2015.[2] No more a mere symbol on the keypad of a phone, hashtags are serving as investment points for companies wanting to carve a brand niche. It is interesting to learn that popular brand campaigns #HowDoYouKFC and #McDstories, belonging to food giants KFC and McDonald, respectively, the soft drink specialist Coca-Cola company’s #smilewithacoke, the viral fundraiser #IceBucketChallenge and the global phenomenon of #TBT popularised by Instagram, are protected as trade marks. Surprisingly so, by the end of 2015 more than two hundred hashtags were registered as trade marks in the United States of America, while thousands more awaited their chance. An article published in WIPO Magazine last year[3], cites a survey establishing 64% hike in hashtag trade mark applications in 2016 as compared to previous year. Is this not a cause for concern? By according such protection, we may have diluted the concept of IPR rather than expanding it.

In 2013, the United States Patent and Trade marks Office (USPTO) addressed “Hashtag Trade marks” in the Trade mark Manual of Examining Procedure.[4] It recognised that a term containing the hash symbol or the term hashtag may be registered as a trade mark, but “only if it functions as an identifier of the source of the applicant’s goods or services”. It states further, “Generally, the hash symbol and the wording Hashtag do not provide any source-indicating function because they merely facilitate categorisation and searching within online social media … if a mark consists of the hash symbol or the term Hashtag combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.”

What was a modest beginning in the year 2007, a decade later, hashtag has earned a remarkable status. And with an unprecedented growth in social media, hashtags have managed a mind boggling feat. Safe to say, hashtags have engulfed humanity, with not a life remaining untouched (except of course, lives in the remotest parts of the earth). Addressing the concern mentioned in the previous paragraph, it is worrisome to imply gullibility in the IPR regime and the regime needs to be strengthened at a faster pace in order to maintain its sanctity.

Intellectual property rights—A social contract

IPR protection is commonly placed under two major theories—(i) Utilitarian (ii) Natural; the former recognising a creation or an invention thereby incentivising to create or invent further, the latter backing the idea that an individual must be able to protect the result of their creative, inventive or commercial labour. Society has a need for intellectual productions in order to ensure its development and cultural, economic, technological and social progress and therefore grants the creator a reward in the form of an intellectual property right, which enables him to exploit his work and to draw benefits from it. In return, the creator, by rendering his creation accessible to the public, enriches the community. Intellectual property law is thus the product of a type of “social contract” between the author and society.[5]

Apart from the justifications, intellectual property rights too are attached with a social function. The social function which is inherent to any legal rule allows for the rights of the individuals to be weighed against competing rights.[6] Being part of a broader legal system, these rights must always be put in context with other rights of equal value and with collective interests. Thus, works protected as intellectual property are equally important for the society as for the creator and both parties must benefit from works of the intellect. However, looking into the recent trend of according trade mark protection to hashtags, it must occur to the legal minds, to shape the social function of IP in moderation. Where necessary, checks and balances must to be placed on the human expansionist behaviour, under which law is being subjected to unnecessary widening in accordance with technology.

Globally, economies are advancing at a swift rate based on “knowledge products and intangibles”, resulting in rapid expansion of IPRs. Author Christophe Geiger[7] cites the implications of widening the ambit of IPRs, in it that such multiplication is mindless, the consequences of which are not “thought through in advance”.

The ever-growing trade mark unit

Putting in perspective a wide understanding, a trade mark may be one or more words, devices or symbols—or composite of both-that is used to distinguish goods or services of one from others. Most scholars and courts agree that trade marks serve two purposes: to protect consumers from deception and confusion, and to protect the infringed mark as property. Traditionally, courts while deciding whether a trade mark is distinctive or not, will usually place a mark under any of the four categories:

(i) Generic,

(ii) Descriptive,

(iii) Suggestive, or

(iv) Arbitrary/Fanciful.

Such adjudication is based on the relationship between the mark and the good/service it is associated with. Moving further, the trade mark regime was widened to include unconventional categories such as shapes, smells, colours, sounds and so on. Currently, companies also seek to register slogans as trade mark, however, the spectrum of generic-to-arbitrary/fanciful is applicable in this case as to the usual marks.

With reference to the given background, the question that arises is whether hashtags fit in the traditional legal framework for trade mark? When companies can register words, phrases or slogans as trade marks, what difference does a hashtag make?

Outlook at trials

History is witness to the fact that a major shift in provisions of a law calls for the judiciary to decide the fate for the same. So has been the case with hashtag trade marks, however, the judiciary has been divided on whether trade mark protection granted to hashtags is valid. The outcomes have been inconsistent.

In Vahan Eksouzian v. Brett Albanese[8], the Court was to analyse whether the use of a hashtag (#cloudpen) was a violation of a settlement agreement clause that prohibited the use of the terms “cloud” and “pen” in close proximity as a unitary trade mark. The defendant owned the trade marks “Cloud PENS” and “Cloud PENZ” and the agreement prohibited the plaintiff from using “the words Cloud, Cloud V, and/or Cloud Vapes in close association with the words “pen”, “penz”, “fuel”, “pad”… in association with the plaintiff’s products as a unitary trade mark.” The Court held that there was no breach “because hashtags are merely descriptive devices, not trade marks, unitary or otherwise, in and of themselves”. It found that even though the hashtag used the registered mark, “using the hashtag in this manner was not an infringing act likely to cause confusion”.

This decision was further supported in AOP Ventures Inc. v. Steam Distribution LLC[9], where the plaintiffs alleged that the defendants caused infringement of its registered mark DRIP CLUB by using the hashtag #Dripclub in atleast five social media posts. The Court stated that merely using a trade mark as a hashtag does not cause infringement of that mark.[10]

Despite these two cases, there are courts that have looked at hashtag use as supporting a trade mark infringement claim. In TWTB Inc. v. Rampick[11], the Court found the use of hashtags to be relevant to a trade mark claim and considered the use of the hashtags as evidence of a former licensee holding itself out to be the same business as a current licensee. Interestingly, in Fraternity Collection LLC v. Fargnoli[12], the Court refused to dismiss a trade mark claim against a competitor’s use of a trade mark as a hashtag and noted that the use of a competitor’s name or product as a hashtag “could, in certain circumstances, deceive consumers.”

Also supporting the enforceability of trade mark rights against hashtag use is Coca-Cola Co. v. Whois Privacy Protection Service Inc./Thien Le Trieu, Le Trieu Thien[13], where WIPO noted that once a mark was determined to be protectable (or by extension, not protectable) there was no reason to analyse the hashtag version of that same term or mark. It stated, however, that a hashtag mark not based on an existing mark would be treated the same as a non-hashtag mark in analysis, and whether the mark had acquired secondary meaning would determine if it were protectable.

Conclusion

The debate goes on with equal amount of support and dissent for hashtags as trade marks. Not leaning towards procedural aspects, my argument sticks to a singular reservation i.e. the social function of IPR, which is to be beneficial to the individual creator and serve the community, at the same time. A single person or company’s rights must be weighed in harmony with the rights of the society as a whole. If the right is to be used in accordance with its function, it must not be used “anti-socially” i.e. disregarding certain fundamental values and competing rights.[14] To insist on the social functions of IPRs is thus to identify a need for moderation and balance in the conception and implementation of these rights.[15]

With the meteoric percolation of social media into daily lives of people, it becomes increasingly important to limit the philosophical basis of IPR, to not bring in any and everything under the sun within an overcrowded umbrella of IP protection. In doing so, it is necessary that the underline idea behind IP protection is remembered, to give necessary protection to the creator, not a monopoly, thus giving others a chance to create further basing on what is already present. Thus, it is the need of the hour to restrict the tendency of excessiveness and harness the IPR regime to its function in order to maintain the flow of creativity in its purest sense.

The foundational philosophy of intellectual property is not to provide monopoly but competitive property rights; to promote healthy competition and lend help to creativity. However, the flurry with which private corporations take over social media with tools like hashtags, can have a cascading effect on rise in litigations. While lawmakers and judiciary must look into easing the chaos on trade mark registers, to restore strength in the IPR regime, a unanimous global decision on the parameters of IPR protection will certainly aid the situation.

 

*Hetvi Trivedi is Research Associate, GNLU-GUJCOST Research Centre of Excellence in IP Laws, Policies & Practices

[1]  Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[2]  David Sillito, Hashtag is “children’s word of year”, available at <http://www.bbc.com/news/entertainment-arts-32902170>.

[3] Claire Jones, Hashtag Trademarks: what can be protected? WIPO Magazine, October 2017 available at <http://www.wipo.int/wipo_magazine/en/2017/05/article_0009.html>.

[4]USPTO, TMEP §1202.18, available at <https://tmep.uspto.gov/RDMS/TMEP/print?version=Jan2015&href=ch1200_d1ff5e_1b5ad_3bc.html>.

[5] Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[6]  Ibid.

[7]  Id., at 5.

[8]  2015 WL 4720478 (CD Cal 7-8-2015).

[9]  2016 WL 7336730 (CD Cal 11-10-2016).

[10] Prashant Dayal, #Trade marked: Why Hashtag Trade marks should stay, available at <https://www.wisbar.org/aboutus/forlawstudents/Documents/Prashant%20Dayal%20-%20Submission.pdf>.

[11]  152 F Supp 3d 549 (ED La 2016).

[12]  2015 WL 1486375 (SD Miss 31-3-2015).

[13]  2016 WL 692866, Case No. D2015-2078.

[14]  Christophe Geiger, The Social Function of Intellectual Property Rights, Max Planck Institute for Intellectual Property and Competition Law Research Paper No. 13-06 (2013).

[15]  Ibid.

Hot Off The Press

Department of Industrial Policy and Promotion (DIPP) has extended the date for receiving suggestions and objections to the proposed Trade Mark Rules, 2015 to January 1, 2016. Objections or suggestion, if any, may be addressed to the Secretary to the Government of India, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion), Government of India, Udyog Bhawan, New Delhi or by e-mail to Sahni.palka [at] nic.in. – DIPP Website