Generic terms are not protected by trademark law, either in India or outside India In fact, one of the most important limitations on the legal protection of a word adopted as a trademark is that it cannot be a term that refers or has come to be primarily understood by the public as referring to a ‘product category’. For example, the term “Computer” is a generic term used to describe a desktop or laptop or any computer equipment. Thus, a manufacturer selling “Computer” brand computers will have no exclusive right to use that term with respect to that product.
Under some circumstances, terms that are not originally generic can become generic over time (a process called “genericity”), and thus become unprotected. Take the case of ‘Xerox’, ‘Dalda’ and ‘Dettol’ which were highly distinctive trade marks to begin with, which however, due to unregulated use and consequent significant dilution of the terms, have now become generic terms so much so that even while purchasing other brand’s goods or availing other brand’s services, the terms are used to describe the product itself. The issue of genericity or genericide deserves a different post for itself. However, the case we are discussing here pertains more to claiming exclusive use of a generic term as a part of the trade mark, which has been disallowed from the beginning of time with respect to trade mark law.
The Trade Marks Act, 1999 (“Act”), accords registration to only those trade marks that are ‘distinctive’ in nature. Sections 9 & 11 of the Act make it abundantly clear that only those trade marks that are sufficiently distinctive enough to differentiate the goods of one person from those of others are capable of registration. In certain cases, where a person is able to demonstrate that his mark has acquired distinctiveness due to continuous use and basis this secondary meaning, registrations are granted to trade marks which originally lacked distinctiveness. However, the Delhi High Court as early as in the year 1972 refused registration of the trade mark “JANTA” (meaning cheap in Hindi) where it held that even if marks that lack distinctiveness are used intensively and may have acquired a secondary meaning, they cannot be registered since, in view of the absolute need of the trade to be able to use them, they must not be monopolized.
To cite a few more examples, the Madras High Court in the case of Mr.A.D.Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd vs Aachi Cargo Channels Private Limited, dismissed the infringement suit and stated that that the term “Aachi” – translating to mean “grandmother” in Tamil – “is of general use” and therefore, it could not be monopolised by Aachi Masala Foods alone. Similarly, in 2011, in the Delhi High Court, in the case of Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd, held that the word Krishna was as common as “the name John in the West” and that the same does not provide any secondary distinctiveness[1], even though the trade mark was registered.
Combining a generic term with other terms may sometimes result in a protectable composite mark. However, the problem arises when proprietors of such composite marks try to claim exclusivity with respect to the generic term in their composite mark. Also, giving a single manufacturer/entity control over use of a generic term in their trademark would give such manufacturer/entity too great a competitive advantage in the market. Therefore, courts all around the world have rejected claims relating to exclusive use of generic term and have upheld the principle that generic terms cannot be accorded trademark protection.
This issue was recently tested and examined by the Supreme Court of India in the case of Parakh Vanijya Private Limited Vs. Baroma Agro Product and Others.
In this blog post, we attempt to analyse the judgment passed by the Supreme Court of India in the abovementioned case with regard to the exclusive right to use the term “MALABAR” (which is a generic term and refers to a specific region in south-west India).
The Malabar Battle Background:
The dispute between the parties started in the year 2012 when Parakh Vanijya Private Limited (“Parakh”) filed a suit for infringement and passing off against Baroma Agro Product and Others (“Baroma”) before the High Court of Calcutta for using the mark “MALABAR GOLD” in relation to selling special biryani rice. Parakh alleged that Baroma’s use of the mark “MALABAR GOLD” is deceptively similar to their trade mark “MALABAR” registered under the Act. Further, Parakh claimed the use of its mark “MALABAR” since 2001.
In this matter, a single judge bench of the Calcutta High Court granted an interim injunction in favour of Parakh considering the similarity between the marks “MALABAR” and “MALABAR GOLD”.
During the pendency of the suit for temporary injunction, Baroma filed an application for vacating the order, claiming that Parakh was relying on fabricated documents and that Parakh cannot claim exclusive use of the word “MALABAR”. Subsequently, with the consent of both the parties, the Single Judge allowed Baroma to file a supplementary affidavit to clearly indicate the mark that they proposed to use. Accordingly, Baroma filed a supplementary affidavit and submitted a mark “BAROMA MALABAR” which it proposed to use. Pursuant to this, the single judge bench of the Calcutta High Court altered the interim injunction order to allow Baroma to use the trade mark “BAROMA MALABAR” where the font size of the term “MALABAR” cannot be more than 25% bigger than other words/letters of the mark.
Aggrieved by the said decision, Parakh appealed before a division bench of the Calcutta High Court. The appeal was subsequently rejected, and it was held that the single judge bench of the Calcutta High Court had passed the order balancing the interest of the parties who were having a substantial turn over in their respective business. Subsequently, Parakh approached the Supreme Court in this matter.
What did the Supreme Court hold?
The Supreme Court dismissed the appeal made by Parakh and upheld the order of the Calcutta High Court. The Supreme Court observed that:
- The registration of Parakh’s trade mark in Class 30 has a specific disclaimer stating that the company has no right over the exclusive use of the word “MALABAR”.
- Several trade marks with the term “MALABAR” in conjunction with other terms/words existed on the register of trade marks. Some of the marks that were considered in this regard are: (i) “MALABAR MONSOON” granted in favour of Amalgamated Bean Coffee Trading Company Limited with respect to Coffee Cream, Coffee included in Class 30; and (ii) “MALABAR COAST” granted in favour of Tropical Retreats Private Limited with respect to Coffee, Tea, Cocoa, Sugar etc., also included in Class 30.
- Baroma’s trade mark containing the words “BAROMA”, “MALABAR” and “GOLD” have a different get up from that of Parakh’s trade mark, and on the basis of comparing the two marks, it was observed that there is no similarity, let alone, deceptive similarity.
Review of the Judgement:
The Supreme Court’s reliance on the limitation/condition imposed on the registration of Parakh’s trade mark is duly backed by Section 28 and Section 30 of the Trade Marks Act, 1999 (“Act”) which effectively establish the following:
- In case the Registry allows a trade mark to be registered subject to certain limitations or conditions, the rights conferred by such registration will always be subject to such limitation or condition. For instance, in case the limitation is that the registration confers exclusive use in a specific state only (say Maharashtra) and does not extend to other states, then in other states (for instance in Tamil Nadu or Kerala), the registration does not hold any value.
- A third party’s use of a registered trade mark may not amount to infringement of the registered trade mark having regard to the limitation or condition imposed on the registration. For instance, in the example cited above, with respect to the limitation of registration in other states, if A used B’s registered trade mark in the state of Tamil Nadu where such registration does not hold any value, the same would not amount to infringement. However, if A uses B’s registered trade mark in the state of Maharashtra, the same would amount to infringement.
While the above-mentioned provisions are pertinent to the issue at hand, the Supreme Court seems to have failed to refer to them and show that the Act in fact, has specific direct provisions dealing with this matter. Nevertheless, even though the judgement of the Supreme Court does not discuss these provisions, the same is duly backed by the same and in our opinion, the Supreme Court has rightly held that Parakh cannot claim exclusive use to the word “MALABAR” especially when its registration is subject to a limitation to that effect.
We further believe that Trade Marks Registries must be extremely cautious while granting registration for composite marks containing generic terms. In the case of Parakh, the Registry had taken notice of the generic term and rightly imposed a limitation to the registration granted to clarify that no exclusive use is being given to the generic term, “MALABAR”. Apart from imposing limitations to this effect, the Registries must also reject applications from applicants who claim that the registration is for a composite mark, but would essentially intend to register a generic term.
Time and again, we have advised our clients in choosing distinctive trade marks for their business. However, entrepreneurs tend to choose trade marks that identify their goods/services or that directly relate to their goods/services, even if such trade marks or names are generic in nature. Such businesses, therefore, risk losing their right over their trade mark if the same is generic. Even distinctive and strong trade marks may become generic and lose their trade mark protection when commonly used to refer to a particular goods/services. Therefore, proprietors should regulate the use of their trade mark so that the same does not become generic over a period of time and thereby losing their rights to their mark.
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[1] Secondary distinctiveness or acquired distinctiveness essentially implies that the usage of the term reminds people of the product or its source. And, overtime the usage has entailed it such distinctiveness to be a trademark.