India: The Three C’s With Regard To Using Animals As Trademarks

Last Updated: 28 November 2013
Article by Ruchika Gohil

What happens when lions, tigers and jaguars need to protect their trademark? First, they roar. Then they allow us to fight over for it. This article makes an attempt to analyse the Competition Controversy and Compromise of using these familiar and catchy animal figures as trademarks.

Introduction

It is a well known fact that, when a company launches itself or any of its products the first thing that runs into its mind is the mechanism to sell the same. Marketing the product and selling it is the main objective behind every step of the company. It is for this same reason that the company uses its trademark or trade logo. These trademarks and logos are designed in a way that they should be catchy and should approach the appropriate class of the society so as to sell their products. The company designs its trademark in such a fashion that apart from being distinctive it also has the element of representing the company itself or the owners in any which way. For this cause the companies put in their best on certain trademarks and logos which are although generic in nature but also can be distinguished from the other trademarks and logos. Animal and plant names tend to be quite memorable and, if used appropriately, can convey a good image while still being distinctive. Apple Computers, Tiger Direct and Ford Mustang are good examples1. So in order to market their products the use of animals as their trademarks has been in fashion ever since the beginning of the trade culture. People easily remember and identify these trademarks, but the companies need to be cautious in their usage because of the "Competition" "controversy" and "compromise" they might have to undergo.

The Competition

The competition amongst the companies with regard to using animals as their trade names or marks can be as; Panda2 being used with several companies like food panda etc but with the use of panda as the logo for WWF3 generates competition amongst the companies using Panda as their trade mark or logo.

Basically the competitive factor amongst the same trade names is twofold: Firstly; to have an animal as your trademark or as your trade logo it is necessary that you should be the first one to use it. Although the same animal can be used by other companies but the policy of the first come first serve4will come into play. If a company is using any particular animal for the first time as their trademark then it will be very easy for the consumer to relate with it. Kiwi polish5 uses the bird Kiwi for the first time ever and it is very obvious for the consumer to relate the bird kiwi with polish every time they see the bird. The second aspect to it is that, Camel6 the hundred year old brand for cigarettes has the generic name of that of an animal "camel". The competition arises when Apachecamel7 comes up with new software or the camel productions8 come up with new materials. Herein the cigarette brand Camel needs to maintain its popularity way higher than these two other brands in order to maintain its independent identity. In other words if people have begun to relate camel as a brand for cigarette then this image should not fade in comparison to the other upcoming brands.

The Controversy

The controversy involved in using animals as their trademarks or logos has been very widespread. The controversy can arise out of every factor as involved with the use of animals as trademarks. It can be with regard to the mis-representation or confusion or similarity or any other possibility. In this respect it is pertinent to mention the dispute between Tony the Kellogg's Tiger and Rory the Bourne Leisure's tiger in the case of Bourne Leisure Limited (BL) v. Kellogg Company (KC)9wherein the BL filed an application for the registration of tiger as their trademark which was opposed by the KC. However the BL contended that its tiger looked different from the KC's tiger as Rory is light orange and black with more curved features whereas Tony is almost red and black with chiseled features and he always wears a red handkerchief around his neck and Rory has no clothes. But having gone into the particulars of similarity of marks and details of average relevant consumer and purchasing process it was held that; there is a possibility for the likelihood of confusion and therefore BL was not allowed to register Rory.

Similar was the case with Tony Kelloggs v. Exxon Tiger10. The controversy or the disputes may also arise merely with names as well. The same happened online retailer Tiger Direct who filed a lawsuit against Apple claiming that the company infringed on its trademark with Mac OS X 10.4 Tiger. The suit, which was filed in the United States District Court for the District of Florida, alleges that Apple "engaged in trademark infringement and unfair trade practices in connection with its recent marketing campaign for the latest version of its Mac OS X operating system," Tiger Direct said in a statement. "As a result of the perceived confusion between the products now being marketed by Apple under the 'Tiger' brand, Tiger Direct has asked for a temporary restraining order and injunction against Apple Computer to stop further damage to Tiger Direct's well-known Tiger brand."11

Another very well known controversy raised with the Jaguar the animal and its name was resolved by the High Court of Ireland in Jaguar Cars Ltd v Controller of Patents, Designs and Trade Marks [2006] IEHC 103;12 wherein; The appellant (J), a car manufacturer and distributor, appealed against the dismissal of its opposition to the registration of a trade mark by the second respondent (M). J was the registered proprietor in Ireland of the trade mark JAGUAR for sports clothing, games, leather goods and spectacles in Classes 25, 28, 18 and 9 as well as for cars. M was the registered proprietor of the trade mark JAGUAR for watches in Class 14 in a number of jurisdictions, and sought to register the trade mark in Ireland. J objected on the grounds that (1) M was not the registered proprietor of the mark; (2) there was a likelihood of confusion arising from the identity of the marks and the similarity of the goods; (3) M's application was made in bad faith and the court should exercise its discretion against granting it. Held, dismissing the appeal, that (1) the test of ownership of a mark was who first used it for the goods in a particular jurisdiction. The use had to be for something that could realistically be called a business, however small. In the instant case, J had failed to establish that it had any business in Ireland concerning the sale of watches bearing the JAGUAR mark prior to the date of its application. (2) In order to determine whether there was a likelihood of confusion, it was necessary to establish whether M's use of the mark in a fair and normal way for watches was likely to lead to confusion in the minds of a substantial number of persons by virtue of J's user in the same jurisdiction, and possibly in other jurisdictions, There was no evidence of J's sale of watches bearing the JAGUAR mark through general retail outlets in Ireland, and so the risk of confusion was minimised in the event of a sale of one of M's products. Furthermore, at the date of the application, the extent in Ireland of J's brand extension from motor cars to watches and similar goods was very limited and largely confined to promotion associated with the sale of automotive products.

It is further to be noted that; in Jaguar Cars Limited, England v Manufacture Des Montres Jaguar S. A, Switzerland and another OA/21/2008/TM/KOL wherein the same issue was debated in the Intellectual Property Appellate Board; the Technical Member dismissed the argument of the Registrar who believed that 'JAGUAR' is a common dictionary word and the name of an animal and therefore no exclusive monopoly rights can be conferred. This reasoning is completely misplaced as in that event how can trade marks like Camel, Caterpillar, Fox, Kiwi, Eagle etc. be regarded as wellknown international brands and therefore allowed the petitioner's application to quash the order of the deputy registrar.

Therefore it can be noticed that, there can be rampant controversy in respect of using animals as the trademarks or logos.

The Compromise

The use of animals as trademarks also comes with another draw-back. The reason being that once the company registers a particular animal as its trademark in any fashion it starts to get recognised by the same mark. However it is pertinent to note here that, the registration of the trademark is specifically done for the particular product so made by the company. In other words it becomes the face of the company. Once the company flourishes and wishes to expand and generate new and different products other than the one it is already into, it will wish to use the same trademark which is already well known in the public. The problem arises when some other company is already using the same animal in a different posture or colour for another business which the first company wants to move into. There can be disputes in using the same trademark and if the same known trademark is not used then the new mark will again take time to become popular amongst the crowd. This is the compromise that a company might have to undergo in case of having animals as their trademarks. For example Pidilite Fevicol13 a company which makes adhesives and Muthoot Finance14 a company which is into finance both use elephant as their trademarks, the problem will arise if either of the two wishes to move or expand into the business of the other. The same can be issue with Sharekhan15 and tiger balm.16

Discussions and Conclusion

Having known that the use of animals as trademarks is very fruitful for the promotion of business, it is essential to know the necessary precautions that need to be taken while choosing any particular animal. There should not be any similarity or confusion or even likely hood of confusion. The consumer should not land up to comparing the trademarks; it should be distinctive on a single glance. Further the class of the usage should also be categorically different17. At the end, as the usage of animals as trademarks brings to more business it though has several disadvantages as mentioned above. However, copyrighting the logo and the trademark can be treated as one of the possible solutions in order to protect your trademark and company image. Further the user of such trademarks should be very vigilant when it comes to the infringement of their rights as the chances for infringement is way higher than the other marks and logos. Though the question which still remains unanswered is; a tiger is a tiger and can be used by anyone as their trademark, so there cannot be any generalized rule for infringement.

Footnotes

1. http://sbinfocanada.about.com/od/trademarks/a/trademarkeb.htm

2. http://www.foodpanda.my/

3. http://worldwildlife.org/

4. http://idioms.thefreedictionary.com/First+come,+first+served

5. http://www.kiwicare.com/

6. https://camel.tobaccopleasure.com/

7. http://camel.apache.org/

8. http://www.camelproductions.com/

9. http://www.ipo.gov.uk/types/tm/t-os/t-find/tchallenge-decision-results/o18108.pdf

10. http://www.eura.com/steffen/jura/aktuelles/texte/tony_kellogs_vs_exxon_tiger.htm

11. http://www.macnews.com/content/apple-sued-overtiger-trademark-injuction-sought

12. [2006] E.T.M.R. 72

13. http://www.pidilite.com/brands/fevicol-1.html

14. http://www.muthootfinance.com/

15. http://www.sharekhan.com/stock-market/11/home.htm

16. http://www.tigerbalm.com/sg

17. http://www.wipo.int/export/sites/www/about-ip/en/iprm/pdf/ch2.pdf

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions