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
4. http://idioms.thefreedictionary.com/First+come,+first+served
6. https://camel.tobaccopleasure.com/
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.
