Recently the Bombay High Court decided a trademark dispute involving tobacco majors like ITC and GTC, a flagship of Dalmia Group as parties. The ruling of the Court in the specific case is that a trademark cannot be claimed on common, descriptive English words. This order has come as a triumph for ITC after a protracted legal battle. Also worth mentioning is a recent decision by the Intellectual Property Appellate Board, again a protracted fight in a trademark dispute.

A division bench allowing a petition by ITC quashed an order allowing rival GTC Industries to register 'Magnum' as a trademark for a brand of cigarettes and cigars. Briefly the history of the dispute is as follows: -

In 1987, GTC filed an application for registering a trademark in the name of 'Magnum' for a proposed brand of cigarettes.

In 1992, ITC opposed the grant of trademark, but its challenge was dismissed by the assistant registrar of trademarks, who passed an order in favour of GTC.

ITC then approached the high court, where the matter went on for over eight years and in 2002, the court agreed with the order to allow GTC to register 'Magnum' as a trademark, saying it was not a common Indian word.

An appeal was then filed by ITC before the division bench.

The division bench held that the word 'magnum' is of common usage and purely descriptive. It can serve as an indication of character or quality or value of the goods since one of its laudatory and descriptive meaning is 'great'. Such words/marks should not be registered as a trademark. The judges further pointed out that the purchasers of cigarettes also include persons with knowledge of English Language and the word 'Magnum' could serve as an indication of the characteristics of goods which ultimately comes under the statutory bar provided under section 9(1)(b) of Trade Marks Act, 1999. There is an absolute bar for registration of any descriptive and laudatory term.

The second instance involves Perfetti Van Melle SPA. It is one of largest candy manufacturers and marketers. The Italian candy maker stood victorious after a protracted legal battle. The Intellectual Property Appellate Board dismissed Candico's demand for cancellation of the Italian company's "Big Babol" registration in India.

Both the companies are in the business of manufacturing and selling candies. Perfetti's Indian Subsidiary has been making and marketing Big Babol chewing gum and Candico uses the words "The Big Bubble" with its chewing gums Loco Poco and Freedom. The legal battle was set off in 1998 with a legal notice from Perfetti to Candico demanding that the company stop using the words "The Big Bubble" as it is confusingly similar to their Big Babol chewing gum. Candico, in turn, filed a case against Perfetti with the district court seeking to restrain the Italian company from using the trademark Big Babol. It even received an interim injunction that was subsequently vacated. Candico appealed in the Bombay High Court, which transferred the plea to the IPAB

The issue of deceptive similarity between the Perfetti's product name and Candico's tag line viz. Big Babol and The Big Bubble was considered by the Board. The application made by Candico was found to be devoid of merits and therefore dismissed. The Board was of the view that Candico failed to prove that the trademark would cause confusion among consumers if it was allowed to continue. Candico could not provide evidence to substantiate its objection. Also relevant is the remark made by The Board that –"In fact it is seen that after a cease and desist notice was issued the applicants (Candico) have only initiated a suit against the first respondents (Perfetti). It is clear that the applicant was not facing any legal threat and so cannot be said to be an aggrieved person."

© Lex Orbis 2008

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