Introduction
Trademarks are money earners for any economic concern-perhaps the most valuable assets. It hence makes business sense to choose that trademark which is strong, unique, not commonplace and leaves an impact on the minds of the customer/end user. Such a trademark is considered as ‘distinctive’. However, many times new businesses tend to choose marks that are just the opposite—that is marks that are descriptive in nature as Trademarks. This might be conceptualized as good from the marketing perspective but do not augur well for legal protection because of the bar of section 9(1)(a) of the Trademarks Act, 1999 that gives descriptiveness as an absolute ground to the Registrar to refuse registration. This prohibition can be circumvented however, (issue not touched upon here) with the result that often, such Trademarks, which are totally descriptive, end up on the Register.
One drawback of this is that over time, these Trademarks may become generic—that is, become the only description of the product they sell. There is hence a link between descriptive Trademarks and genericity which the Delhi HC had the occasion to consider recently in re ‘Chur Chur Naan’ case. It is pertinent to be mindful of the fact that generic trademarks are not eligible for trademark protection because it would prevent other companies from fairly describing their goods or services.
Though this post explores many aspects, the main aim is twofold–1) to explain how the very definition of Trademark (TM) under section 2(1)(zb) ensures that generic marks are seived from being protected as TMs; and 2) to explain how even the fact of being registered might not allow the proprietor to claim exclusivity of usage, if the Trademark so registered has become generic. For the latter, reliance is placed on the latest case of “Chur Chur Naan”
Relevance of Compeitiors in Trade-Market:
Section 2(1)(zb) of the Trademarks Act, 1999 which gives out the definition of a trademark (TM) has an interesting hidden interpretation. First para of the definition states that ‘a trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of othersand may include shape of goods, their packaging and combination of colours…’
The definition simply points at the two foundational requirements when a ‘mark’ would be considered as a Trademark —1) the capacity to be represented graphically and 2) the capacity to distinguish the goods and services of one from those of the competitors/rivals. If any one of the two requirements remains unfulfilled, the mark, technically and legally speaking, would never acquire the status of a Trademark.
Focusing on point two above, the capacity of a TM to distinguish the goods/services of one person from others can be ‘inherent’ or ‘acquired’ as declared by section 9 of the TMA, 1999. It must however be appreciated that whether it is inherent or acquired, this capacity to distinguish is inextricably linked with and dependent upon the presence of competitors in the market. Hence, the words ‘from those of the others’ (as boldened above in the definition) are of immense importance.
To elaborate, if there are no ‘others’ in the form of competitors in the market, the second condition would remain incomplete resulting in no TM. This scenario may happen in case of a monopoly, where there are no rivals in the market or even in an oligopoly, where the competitors are few/insignificant. In both these market conditions, the mark that is being used as a TM is likely to become generic.
Generic Trademarks and Genericide:
A TM becomes generic when it becomes identified with the product itself.It is almost like the trademark becoming a victim of its own success, ceases to be a source identifier and transforms into just another word in the English lexicon.
In terms of TM law, it spells the death of a trademark. Often it is referred to as Genericide. A classic example of a generic mark is Bandaid by Johnson and Johnson. We ask for Bandaid, when what we actually need is a medicated strip. This situation came to pass because, for a long time there was no brand offering any noteworthy competition to Bandaid in the medicated strip market. Handyplast and Hansaplast arrived as rivals much later and even when they did, one could see chemists passing them off as Bandaid. Bandaid hence became the only way to describe your need for a medicated strip.Likewise, especially in the rural market, Dalda was the synonym for Vanaspati ghee, any toothpaste was/isColgate (brand owned by Colgate Pamolive) and any blue detergent was/is Surf (by Hindustan Unilever). The brand Maggi by Nestle had become almost a synonym for noodles, again for the same reason—that for a significant time, the noodle market was domintated by Nestle; it is only later that Sunfeast’s Yippee, Nissin’s Top Ramen, or Patanjali (now) arrived to give it competition and also enabled Maggi to earn that capacity to distinguish itself from the rivals.
There are brands which have not been that fortunate yet, like Xerox (brand owned by Xerox but used as a synonym for photocopying), Vaseline (by Unilever but used for any petroleum jelly), Escalator (by Otis use for any moving staircase) and Play Dough (used for any moulding clay).
Google Preventing Genericide:
The epitome of TM popularity-’Google’ just about prevented death by genericide when the US Court of Appeals (IXth circuit) in the case of David Elliott v. Google Inc (Elliot 45 F. Supp. 3d 1156 (D. Ariz. 2014)). ruled that, just because the public frequently uses the word ‘Google’ as a verb it does not necessarily render the mark generic as long as the mark continues to perform its statutory function—that of distinguishing a product or service from those of others and to indicate the product’s or service’s source. Google has been making all painstaking efforts at preventing the word ‘Google’ or ‘Googling’ from entering the dictionaries and popular usage as a verb for Internet/web search.
No one Allowed to Claim Excusive Rights in Generic Marks/Expressions—Case of ‘Chur Chur Naan’:
At least for now Google has managed to avert the casualty. But, ‘Chur Chur Naan’ and ‘Amritsari Chur Chur Naan’ of India was not that lucky. Recently in Parveen Kumar Jain v. Rajan Seth & Ors [CS(COMM) 213/2019] the Delhi High Court got the opportunity to elaborate upon the linkage between descriptive TMs and genericity when the plaintiff based in Paharganj claimed exclusive rights in the registered TMs ‘Chur Chur Naan’ and ‘Amritsari Chur Chur Naan’ against the defendant who used a similar expression to sell naans in his food outlet.
The defendants contended that the two marks lacked basic distinctiveness, since a large number of food outlets used the name ‘Chur Chur Naan’ and ‘Amritsari Chur Chur Naan’. This is because the expression ‘chur-chur’ had become generic and hence was capable of describing anynaan that was crushed. The defendant prayed that the Register of TMs was required to be rectified to that effect.
To this, one may add in explanation that (to begin with), when the Trademarks were registered, they might have been only descriptive, but later became descriptive to the extent of being generic.
The HC held that though because of the registrations, the plaintiff had exclusive rights on the two TMs (as per Section 28 of the Act), but section 35 could not be lost sight of in interpreting the scope of the exclusive right. Under section 35 of the Act if the TM, which is registered in the name of the Plaintiff, is used by the defendant as a bonafidedescription of the character or quality of the goods or services that he (the defendant) sells, the Plaintiff cannot be allowed to interfere in the operation of that TM by alleging infringement of his registered trademark.
The court further explained that the word ‘Chur-Chur’ merely meant ‘crushed’ and hence ‘Chur Chur Naan’ was a description for ‘Crushed Naan’ and nothing more. In other words, the expression ‘Chur-Chur Naan’ had become identifiable with the product itself. In para 9, the court succinctly explained that such a TM was incapable of acquiring trade mark signification (because it was a word that had become a common description for crushed) and hence there could not be any monopoly in respect of the expression ‘Chur Chur’.
To quote, ‘expressions such as NAAN, CHUR CHUR NAAN, AMRITSARI CHUR CHUR NAAN are similar to expressions such as Amritsari Kulcha, Malabar Parantha, Hyderabadi Biryani, Kashmiri Dum Aloo, Chettinad Chicken, Murthal ke Paranthe, Mangalore idli, etc., and such other food products which are used in common parlance by the general public.’
So, the defendant could not be prevented from describing his own crushed naans as Chur Chur. He could not however describe his naans as ‘Paharganj Chur Chur Naan’ because that TMwas distinctive of the Plaintiff. So, in para 13 the court declared that ‘the Defendant ought to distinguish themselves from the Plaintiff’s outlet.’
Conclusion:
The above discourse clarifies that it is absolutely critical for the proprietor of popular Trademarks to ensure (perhaps hope and pray as well) that there are sufficient competitors around so that their Trademarks remains functionally relevant and does not become generic. It also gives a lesson in commerce/trade to the proprietor that it is wise not to claim absolute monopoly over those parts of the registered Trademarks that have eventually become non distinctive or generic, as genericity is antithetical to exclusivity.
This article is written by Sunanda Bharti.
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