The Author, Sparsh Jain, is a student of 2nd year, BBA.LLB (H), Symbiosis Law School, Pune. He is currently interning with LatestLaws.com.

Introduction

A mark which is capable of being represented graphically; distinguish goods or services of an individual from others is called a trademark. Absolute and relative grounds for refusal of registration of trademark is provided under Section 9 and Section 11 of the Trademarks Act,1999 respectively.

Generic Trademark

Generic terms cannot be registered under trademark law and no protection to proprietor is provided. If any word is to be adopted as a trademark it cannot be a term that is primarily understood by people as referring to a ‘product category’. For Example, the term “Laptop” is a generic term and if there is a manufacturer selling “Laptop” brand computers, he cannot claim exclusive right to use that term with respect to it.

Section 9(1)(b) of the Trademark Act, 1999 prohibits registration of generic trademarks. However, an exception is provided under Section 32 of the Act, which reads as, “where a trade mark is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration acquired a distinctive character in relation to the goods or services for which it is registered.”

To register a Generic trademark - burden is on proprietor to prove to examiner that mark in question has acquired secondary significance or distinctiveness and must be protected under Section 32 of the Act. A single term may be generic with respect to one type of product, but not with respect to others. For example, Apple is generic term for fruits, but not for smartphones.

Issue

Today, if anyone in the restaurant business wishes to purchase pizza.com, you could buy the URL, if it is available. But if that person wants to use “pizza.com” as a service mark and want to disallow others from using confusingly similar mark like AVPizza.com - is it possible?

With respect to this there is a general principle followed all over the World – a company cannot claim a generic term to be its proprietary mark. Every business deserves the right to accurately identify the type of goods or services it sells, if a single company is allowed to claim trademark rights to a generic term - it will be against the principle of “fair competition”.

The common issue in all cases of registration of generic terms is, how to prove that the mark has acquired distinctiveness? Court have often taken into consider various factors while determining whether a generic mark has acquired distinctiveness - it includes, the length of use, volume of goods sold, extent of service provided, use of an advertising slogan, generic term being used in combination of other marks, expense incurred on advertisement, reports of trade and consumer surveys.

Terms becoming generic over time

There are words which are generic from very beginning like using “software” to identify a software product, but in some cases words that were brand names initially, during the passage of time became generic. ‘Colgate’, ‘Dettol’ are examples of cases where these were highly distinctive trademarks initially, but over the course of time have become generic terms; consumers while purchasing toothpaste and soap of other brands often use these terms to describe the product itself.

Other examples are “escalator”, now used to refer to any elevated moving stairway; “cellophane”, plastic wrap; aspirin, any acetylsalicylic acid painkiller, they all initially were distinct marks, but became so widely used that they lost their ability to brand.

International rulings

‘Genericity’ term is recently coined to refer to process by which terms like ‘Xerox’ and ‘Dalda’ which were initially not generic but have become generic over time. From the very inception of trademark law, registration of generic terms is prohibited.

1) When the Hotels.com attempted to register as its service mark the term “hotels.com”, the appeal was rejected by Federal Court of Appeals. The company argued that though the term “hotel” is generic for information and bookings, by adding dot-com suffix, company has eliminated the onus and should be permitted trademarking.

However, Court did not accept the argument and held that mere addition of a domain (dot-com, dot-net, dot-org, etc.) does not remove the genericity from the term.

2) In another case, company named Dial-A-Mattress had attempted to register the “Mattress.com” domain as its service mark. The company contended that “online mattress stores” was truly generic for that services, but it’s “matress.com” domain name was not generic.

The Federal Circuit rejected the grant of registration of mark. It held that, “Any term that the relevant public understands to refer to the genus of ‘online retail store services in the field of mattresses, beds and bedding’ is generic.”

To conclude, in cases of registration of domain as trademarks, not only registration of generic term is prohibited; even by adding indistinct suffix like dot-com, any attempt to register generic terms as trademark or service mark is bound to fail.

‘Genericity’ term is recently coined to refer to process by which terms like ‘Xerox’ and ‘Dalda’ which were initially not generic but have become generic over time.

Judicial Rulings

Instances of registered trademark being disregarded by court

Mr. A.D.Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd v Aachi Cargo Channels Private Limited

In this case, suit was filed by petitioner alleging trademark infringement by respondent with respect to use of word “Aachi”. Madras High Court held that “Aachi” which in Tamil means “grandmother”- “is of general use” and therefore, Aachi Masala Food alone cannot monopolize the term and dismissed the suit.

Proprietor have been successful in protecting composite generic mark- i.e. combining generic term with other terms. But attempts by proprietor trying to claim exclusivity with respect to generic terms in their composite marks have often failed.

Granting a single company control over use of a generic term in their trademark would also be against principle of natural justice; such company would unfairly gain competitive advantage in market over everybody.

Parakh Vanijya Private Limited Vs. Baroma Agro Product and Others. (The Malabar Battle)

The petitioner (“Parakh”) filed a suit for infringement and passing off against respondent (“Baroma”) before the Calcutta High Court for using the mark “Malabar Gold” in relation to selling special biryani rice. Parakh alleged that use of the mark “Malabar Gold” is deceptively similar to their trademark “Malabar” registered under the trademark Act. Parakh claimed the use of “Malabar” since 2001.

After Calcutta High Court granted an interim injunction in favor of Parakh the same was subsequently challenged and supplementary affidavit was filed by Baroma. This decision of Calcutta High Court in subsequent case was upheld by Supreme Court when Parekh again filed case before Supreme Court.

Supreme Court held that registration of Parekh’s trademark mark had a specific disclaimer that company has no right over exclusive use of the word “Malabar”; several trademarks in conjunction with other terms/words existed like “Malabar Coast”. Baroma was thus, allowed to use the trademark “Baroma Malabar” and court found no similarity between it and Parekh’s “Malabar”.

Instances of Generic Trademark being declared distinctive

1) Sunil Mittal v. Darzi

The issue before High Court of Delhi in present case was with respect to term ‘Darzi’. The Plaintiff’s, Mr. Sunil Mittal and Darzi (India) LLP claim to be the registered proprietors of a label containing the words ‘The Darzi: The Suit People, 1981’. Defendant was also in same business as the Plaintiffs (Tailoring business) and has adopted the trademark ‘Darzi on Call’. The plaintiff sued defendant for trademark infringement and passing off.

Area of usage

The principle argument of defendant was ‘Darzi’ could not qualify for trademark protection as it was generic term for tailoring services. Court observed that the term ‘darzi’ to mean ‘tailor’ was only in area such as Delhi; it would not be generic/descriptive in the state of Kerala. Another reasoning of Court was ‘darzi’ was used in language as descriptive of services rendered; it was not used to designate the service of tailoring.

2) Info Edge (India) Pvt. Ltd. v. Shailesh Gupta

Translation of generic terms

In this case, plaintiff adopted the term ‘NAUKRI.COM’ and was carrying his business under this domain name since 1997. The defendant argued that trademark ‘NAUKRI.COM’ of the plaintiff is generic and incapable of achieving any secondary meaning. The domain name ‘NAUKRI.COM’ is clearly descriptive of plaintiff’s business.

Court however, held that, as the plaintiff has adopted a Hindi word with English script – distinctive ness can be attributed to it. Court accepted hundreds of documents including advertisement, journals, press reports and, other write-ups produced by the plaintiff, indicating that domain is of distinctive character and has assumed a reputation in the market.

3) T.V Venugopal v. Ushodaya Enterprises

In above case, issue was with respect to the word ‘Eenadu’. The appellant adopted the mark ‘Eanadu’ in 1993 and sold incense sticks in the market. The respondent company was already engaged in the business of publishing newspapers in Telugu named as ‘Eenadu’.

Now, Eanadu literally means “Today”, appellant argued that the word is not an invention of respondent but is a generic/descriptive word which is commonly used. Further, ‘Eenadu’ was being used by other companies and evidence for same was submitted.

Respondent submitted that ‘Eenadu’ is not in common use in State of Andhra Pradesh and outside this state, it’s just a fancy name. Hence, it submitted ‘Eenadu’ is not generic as it is not used to denote product of respondent.

But, ‘Eenadu’ was a word which was well understood and appeared in all South Indian languages; thus, no absolute monopoly could either be claimed or vest in any singly proprietor.

Court ultimately held that ‘Eenadu’ has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. Respondent company’s product are identified and associated with the word ‘Eenadu’ in the entire state and appellant cannot be allowed to be a concurrent user of the mark ‘Eenadu’.

4) Anil Verma v. R.K. Jewellers SK Group and Ors.

In this case, Plaintiff was proprietor of registered marks “CASH FOR GOLD”, WE BUY GOLD” and “GOLD BUYERS”. They filed trademark infringement suit against Defendant for using the similar mark '24 Karat Cash for Gold', 'Sona Do Paise Lo, '24 Karat Cash for Gold', 'Cash for Gold' and We buy Gold, Silver, Diamonds.'

Now, all three marks of the plaintiff appear to be generic in nature. Court in a previous judgement between parties held plaintiff’s mark “WE BUY GOLD” to be completely generic/descriptive as the term clearly indicate the activities offered.

However, Court did not find the marks “CASH FOR GOLD” and “GOLD BUYERS” to be generic/descriptive. Court based its reasoning on the fact that it does not completely denote the entire range of services offered by the Plaintiff. Thus, court in previous judgement ordered an interim injunction against defendant.

Plaintiff filed the present petition due to alleged continuous infringement of its marks by Defendant even after injunction order was passed. Defendant again argued that plaintiff’s marks were descriptive/ generic and no injunction order should have been granted by court in previous judgement. Court observed that defendant challenge could not be disposed off as being frivolous and without any basis; Court permitted Defendant to file an application before Intellectual Property Appellate Board, Delhi.

5) Royal Dryfruit Range v. Royal Suvidha

In this case, Plaintiff was the registered owner of Trademark “ROYAL DRYFRUIT RANGE”. He also contended that Royal Dry fruit is a trusted name in the dry fruit industry and associated with Plaintiff alone and nobody else. The registration of the plaintiff’s mark contained the word “ROYAL” and is its leading, essential, prominent, distinguishing and distinctive feature under the Trademarks Act in class-29.

Defendant has commenced its business in 2016 and has been using the name “ROYAL SUVIDHA DRYFRUITS”. Defendant argued that the word “Royal” is generic and plaintiff cannot claim exclusivity to the word “ROYAL”.

Court held that, Plaintiff’ has been carrying its business since 2012 using the word “ROYAL” which is much prior to defendant, who started his business in 2016 within 100 yards of plaintiff’s outlet. Also, defendant itself applied for registration of the mark “ROYAL SUVIDHA” where the word ‘Royal’ is prominent and contested against the word ‘Royal’ being distinguishing mark in the present case. It ultimately ordered injunction order against defendant from infringing the plaintiff’s mark.

6) Central Park Estates Pvt. Ltd. and Ors. v. Godrej Skyline Developers Private Limited and Ors.

In above case, Plaintiff were the Real estate developers and have adopted the registered trademark “CENTRAL PARK’ and have been using since 1999. Also, they were the registered proprietor of 30 such word having “Central Park” and according to them was it there most prominent and leading feature. Defendant have been using the mark “GODREJ CENTRAL PARK” and according to plaintiff they have infringed and reproduced its mark.

Defendant contended that “CENTRAL PARK” is highly generic/descriptive having a dictionary meaning and is used globally and thus, is incapable of distinctiveness. The word ‘Central Park’ is publici juris and highly common to trade. Also, there were many Indian and international real estate projects using the ‘Central Park’.

Court opined that trademark of the defendant can prima facie be said to be structurally and phonetically similar to that of plaintiff. The defendant has copied the essential feature of the trademark which is ‘Central Park’. Also, mere adding the prefix GODREJ does not do away the likely deception/confusion.

Court refused to accept the plea of defendant that the trademark of the plaintiff “CENTRAL PARK” is a generic on the basis that defendants have themselves applied for the trademark with the word ‘Central Park’ as an essential feature.

Recommendation and Conclusion

Trademark Genericide is commonly used to refer when trademark rights are loss due to term being commonly used by consumers to denote to a particular product than its source. Every proprietor would want to avoid this situation - as exclusive rights to use the trademark will no longer be available. A proprietor spends capital over acquiring trademark for goods or services and later heavy expenditure is incurred to increase sales and make brand popular; concurrently, chances of trademark dying a generic death is also increased.

Trademark Genericide can be avoided by-

1) not using the trademark as a verb or noun which implies that the word is generic;

2) A product should be given an easily recognizable generic name in addition to the fancy/distinct trademark name;

3) keeping a check on any unauthorized use of trademark;

4) A guideline for usage of trademark should be established and must be strictly complied with.

Adobe is one such example of a company which has established guidelines for use of trademark. The guidelines clearly state the term ‘photoshop’ should not be used as a noun or verb. However, there is limit to which company can control the use of its trademark; it does not have vide powers or capacity to entirely control the use of its trademark by public. ‘Xerox’ and ‘Escalator’ are examples where usage of these terms cannot be monitored.

‘Google’ is another example of a highly valuable trademark and has so far managed to avoid its trademark being declared generic. In 2017, 9th Circuit Court of Appeal found that “googled” may have become a synonym for internet searching, but that doesn’t mean company can’t protect its name.

As the above Judicial analysis of multiple cases also suggests - attempt by companies where they have used generic name of the product along with trademark have been highly successful; it can be used by companies to avoid becoming victim of their own success. For example, using Colgate toothpaste, Apple computers helps trademark to stand out from the surrounding text.

References

1) Mr. A.D.Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd v Aachi Cargo Channels Private Limited, AIR 2014 Mad 2

2) Parakh Vanijya Private Limited Vs. Baroma Agro Product and Others., AIR 2018 SC 3334

3) Sunil Mittal v Darzi, 2017 ( 70 ) PTC 346 ( Del )

4) Info Edge (India) Pvt. Ltd. v. Shailesh Gupta, ( 2002 )ILR 1 Delhi 220

5) T.V Venugopal v. Ushodaya Enterprises, JT 2011 ( 3 ) SC 225

6). Anil Verma v. R.K. Jewellers SK Group and Ors., 2019(78)PTC476(Del)

7) Royal Dryfruit Range v. Royal Suvidha, 2019(80)PTC124(Bom)

8) Central Park Estates Pvt. Ltd. and Ors. v. Godrej Skyline Developers Private Limited and Ors. , MANU/DE/3590/2019

9) India: Trademark Genericide: Victims Of Their Own Success?, Shrabani Rout, 2017