By Abhijeet Mittal and Pragya Nawandar
The authors are students at Maharashtra National Law University, Aurangabad.
INTRODUCTION
As per the Act, Trademark is defined as 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 a shape of goods, their packaging, and combinations of colours.” Basically, it is a word, phrase or symbol, which is used to give identity to a certain product, while distinguishing the product from the other. Trademark is also used to identify manufacturers by the way of using brand name, and visual symbol which may be a word, name, signature, numbers, label or color combinations.
TRADEMARK GENERICIDE
The word “Genericide”, which emerges from English Culture, is a process in which a brand gradually loses its distinctive value/identity when it is used to refer to certain products, goods and services of a similar kind. This is the process where an owner loses their right over the trademark for the reason that the trademark is already being used generally and indiscriminately to refer to certain goods and services. This process is known as “genericization”. For example, “escalator,” which was built by the company named Otis, was initially a protected trademark to denote the moving stairs, however, due to an unexpected turn of events, the word was eventually used in reference to the basic idea of moving stairs and therefore the company who originally came up with the idea lost its right over the trademark. A few other examples would be Thermos, Aspirin, Band-Aid, Dry Ice etc.
The Trademarks Act, of 1999 also outlines the reasons for the rejection to register a trademark in sections 9 and 11. One of these grounds is that the marks comprise solely of symbols or indications that became common in the current language or in the legitimate and recognized practices of the trade, exceptions to this are the instances in which the trademark has already developed a different character altogether as a consequence of the usage or widespread popularity in the market.
Justification for Genericide must also be considered while dealing with this issue as the very important question which arises here is “What other than ‘thermos’ would today’s competitors use to describe their products?”
CASE LAWS
This entire process of Trademark Genericide is nowhere defined under the Act. But it can be understood from the perspective of case laws. The Australian Court refused to grant protection to the word ‘App Store, which was coined by Apple Incorporation. They registered and acquired the term. The Federal Court of Australia dismissed the appeal filed by Apple and held that “the App Store must not be taken as not being capable of distinguishing the designated services as Apple’s services.”
Google trademark is considered to be the most valuable trademark. The term “Google it” is often referred to search for information on the Internet. Google being aware and proactive in this situation published the rules for the appropriate usage of all its trademarks. Further in 2012, Google registered a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) against the registration filed by the third party for their domain names combined with the term Google along with another term. The bench ruled in the favor of Google and transferred all the domain names to Google. Then a person named Mr. David Elliot approached the District Court of Arizona, US against the registration of trade for the term ‘Google.’ He contended that the word ‘Google’ has developed into a generic word by nature as the public has begun using the word ‘Google’ as a verb and therefore should no longer be protected under the umbrella of a Trademark. The court, however, found in favour of Google, explaining that employing a mark as a verb does not necessarily render the mark generic unless the mark continues to perform its statutory function—that of distinguishing one product or service from others and indicating the source of the goods or service. The court emphasised that even if a mark is employed only as a verb in an indiscriminate meaning, the mark has not become generic if a majority of the consuming public continues to use the mark to distinguish the product or service of choice from those offered by rival companies.
Coming to the observations taken in India, in B.V. Ilango v. Rank Xerox Ltd, Rank Xerox was able to defend its case for the trademark “Xerox” before the Intellectual Property Appellate Board (IPAB). The board observed that if the company has taken extensive steps to ensure the stoppage of incorrect usage of their trademark, for example sending notices and cease, the word won’t be considered generic. In the words of IPAB “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.” Further, the court also stated that “perhaps the respondent has acted just in time to save its mark losing its life….”, this makes it evident that the proprietor must act pro-actively to keep his rights over trademark alive.
In a recent judgement of Sassoon Fab International Pvt. Ltd. v. Sanjay Garg, the dispute appeared when amazon sent the notice to the Petitioner notifying that their product, Respiratory Mask N95, has been removed from the platform after receiving a complaint from the Respondent for breaching their trademark registration of N95 masks. Then, the petitioner filed the rectification petition to remove the Respondent’s trademark on the contentions that the word ‘N95’ is generic in nature and further filed a miscellaneous petition for restraining the respondent from his right over the trademark. Upon considering the pieces of evidence produced by the petitioner, IPAB observed that the Respondent is in breach of Section 9 because N95 is descriptive of a product present in the market. Court further added up that N95 is a generic term, used by people for decades to describe the quality of the masks. The court held that “during the Pandemic Covid-19 crisis, the shameless acts of the Respondent No. 1 in restricting the sales of the N95 Standard masks based on the Registration obtained by him would deprive the general public of accessing the N95 Masks that are declared as an essential commodity by the Government.”
PUBLICI JURIS
Indian Judiciary has, even before the enactment of the Trademarks Act, established the principle of law that a mark is not protected realm of the Trade Marks Act of 1999 (the "TM Act") if it is publici juris or general in character.
High Court of Delhi, in the case of S.B.L. v. Himalaya Drug Company (Himalaya Case), noted the fact, there are around 100 medicines in the world that use the abbreviation "Liv," which is derived from the name of an organ of the human body, known as Liver, as part of the names of pharmaceutical or medical products. Most of these prefixes and suffixes are intended to treat conditions or diseases related to the liver, and it was decided that "Liv" had grown into a generic name and publici juris because it’s descriptive by character and widely used. The bench ruled that even if the rivals Liv-52 and LIV-T share the term "Liv" in their names, purchasers are more likely to focus on the 52 and T's unusual attributes.
Then in 2011, in the case of Jagpin Breweries Ltd v. Shaw Wallace and Company Ltd, IPAB took the opposing stand from the view taken in the case of Himalaya and found that the use of the digit 5000 in Haywards5000 didn’t cause it to turn into a generic term and that the respondents' claim that they only had the right to use it, in this category of goods, has merit. According to the IPAB, the respondents were in the right since there was insufficient evidence to support claims that the numeral was used in commerce and that it described the beer's potency. The IPAB also held that the numeral would have been descriptive if its use as a potency indicator had been proven and that in the absence of evidence it is impossible to interpret the phrase "all other descriptive matter" to include the digit.
CONCLUSION
It is pertinent from the facts and views mentioned herein that the Trademark Genericide comes as a price against fame. A product or service reaches to level after attaining popularity where people start using the product’s name as a synonym for other similar products or services. Companies have used innovative methods to spread awareness among the public for proper usage of trademarks, which in turn has protected their right over the trademark. Therefore, the manufacturer must safeguard its brand name by taking due diligence and protective measures and act effectively in the matter.