India: Protecting Trademarks From Becoming Generic

Last Updated: 31 August 2006
Article by Manisha Singh Nair

The Life cycle of a trademark is a complex one involving the creation, registration, protection and exploitation of the mark. And when the mark is used as a marketing tool and the basis for building a brand image and reputation, its potential as a valuable business asset is looked into. Thus it also becomes a means for catapulting a service or product to popularity.

With immense popularity and success come the issues of passing off, infringement etc. Further these distinctive signs that identify a particular service or product as originating from a particular service provider or producer may also face the risk of becoming genericized.

This genericization occurs when the mark is often used as the colloquial description for a particular type of service or product as a result of popular or cultural usage. The genericized trademark may eventually replace the common term for the service or product and thus become generic.

When people use a mark generically, the unique position it holds is lost eventually. Recently Google, the Internet search giant revealed that it has decided to proceed legally so as to crack down the use of its name as a generic verb. The distinction the company is trying to draw is between using the word ‘Google’ to describe using Google to search the Internet and using the word ‘google’ to generally describe searching the Internet. The claim by the company that this raises serious trademark issues cannot be overlooked since once the mark becomes the term describing the basic search on Internet then their brand name becomes restricted that way. Further Google pertains to much more than basic Internet search.

Currently, the term, "to google", is included in the Oxford English Dictionary. This shows that it has already entered the English language as a word. This further poses a difficult situation to the company in maintaining the exclusivity of the mark.

One of the means of checking such genericization of the mark is by filing a case of infringement. Article 41 of the TRIPS Agreement emphasizes on member countries‘ duty to ensure that enforcement procedures are available under their law so as to permit effective action against any act of infringement of intellectual property rights.

In India, Section 29 of the Trademarks Act of 1999 speaks about infringement of a trademark. The relevant section reads:

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

(4) A registered trademark is infringed by a person who, not being a registered proprietor or a person. using by way of permitted use, uses in the course of trade, a mark which-

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

(5) A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trademark is registered.

(6) For the purposes of this section, a person uses a registered mark, if, in particu1ar, he-

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under. the registered trade mark, or offers or supplies services under the registered trade mark;

(c) imports or exports goods under the mark; or

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-

(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

(b) is detrimental to its distinctive character; or

(c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trademark consist of or include words, the trademark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.

As one analyses the provision it seems that all kinds of infringement are dealt hereunder. But in a situation as the one faced by Google it would be pertinent to note that much depends on the interpretation of the law by the court.

Herein pertaining to the instant case, it should also be noted that once new words enter into common usage it becomes difficult to stop their use. Further while filing infringement actions there are limitations like the while the mark is used in a normal circumstance by common people enforcement becomes difficult.

Against all odds Google as a company by moving the court is excersing the duty of a vigilant trademark owner. This could also be a means to preemptively protect the mark from being used by others inclusive of the media and Google’s competitor’s, giving rise to infringement issues. Thus it can be said that trying and enforcing its exclusive rights as the owner of the mark would provide a strong legal backing to the company when serious cases where imposters try to pass-off their services as that of Google’s arise. And in this regard procuring a favorable judicial pronouncement assumes significance.

© Lex Orbis 2006

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.

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