India: "Tacking-On"- A Rationale Behind Persistence

A trademark is an asset, value of which increase with each passing day hence the use of a trademark is of great importance. Once a trademark is put to use, the subsequent period is counted as a critical period for the survival and the success of a trademark. At the initial stages of the business, the management takes various business decisions which sometimes have to be revoked keeping in mind the current market position. Sometime various trademarks, which are introduced at the launching of business, have to be revoked or changed as the same does not get success among the public due to the change in the market conditions. For taking the advantage of the initial use of the original trademark, which has to be amended later in order to be in line to the current market conditions, the applicant would file application for the amended trademark taking advantage of the previous use of the similar trademark by them earlier. A legal technicality that allows a trademark owner to make slight alterations in a trademark, without abandoning ownership in the original trademark is known as 'tacking-on' of a trademark.

Tacking as a legal term in the trademark field is not eminent in India but the same is very much in use. An applicant can claim the use of a trademark from the date when he started using the trademark for the very first time even though the appearance of the initial trademark is not same to what is subsequently applied for. Further with the passage of time a trademark is changed to keep pace with the change in time but the use of the same is claimed from the time when the trademark is first used in its initial form.

ORIGIN OF THE CONCEPT:

The 'tacking-on' concept has its roots to the well developed western trademark laws. A number of federal courts have recognized the doctrine of "tackingon" in trademark cases, pursuant to which a trademark owner can claim priority in a mark based on the firstuse date of a similar, but technically distinct mark. Under this constructive-use theory, the trademark owner seeks to tack his first-use date in the earlier mark onto the subsequent mark. 'Tacking-on' as a concept is famous as the same can help a user to claim the use of his trademark from the date on which he has used his previous similar trademark and the amount of time & money invested on that previous trademark can be used for the subsequent trademark. This can prove beneficial to the business in a long run as it can minimize the cost of launching a new mark/business. Tacking does not apply when a plaintiff does not assert priority of use in connection with a new mark. When tacking applies, it provides an effective defense to a claim of abandonment. Sound policy considerations support the notion of tacking by allowing the use of the previously created goodwill of the earlier trademark. Absent the doctrine, a trademark owner's priority in his mark "would be reduced each time he made the slightest alteration to the mark, which would discourage him from altering the mark in response to changing consumer preferences, evolving aesthetic developments, or new advertising and marketing styles. Further, granting a trademark owner the same rights in a new mark that he has in an old mark helps to protect source-identifying trademarks from appropriation by competitors and thus furthers the trademark law's objective of reducing the costs that customers incur in shopping and making purchasing decisions. Courts have frequently specified that the standard for tacking is very strict.

In case of One Industries, LLC v. Jim O'Neal Distributing, Inc1

O'Neal, a leader in the motocross racing industry, began using a stylized "O" as a mark in 1991 and experimented with additional versions in 1992, 1993, 1997 and 2003. In 1999, its competitor One Industries developed and registered the "One Icon," comprising two interlacing number "1"s that form an "O." When O'Neal accused One Industries of infringing GITS 2003 mark, One Industries countered that the One Icon, registered in 1999, was senior to the 2003 mark. On appeal, O'Neal argued that its 2003 mark should have been tacked back to an earlier version, which would establish priority. Because the One Icon was first used in 1999, the court focused on the O'Neal marks that were developed in 1997 (the "Rounded O' mark") and 2003 (the "Angular O' mark"). The court noted that tacking is allowed only in narrow circumstances in which the marks create the "same, continuing commercial impression and the later mark does not materially differ from or alter the character of the mark attempted to be tacked." Here it found that O'Neal's two marks did not satisfy the standard for tacking, because they differed in several material respects. For example, though both consisted of a stylized "O" followed by an apostrophe, the apostrophes were markedly different. In the 1997 mark, the apostrophe was entirely separate from the "O" and appeared as a standard apostrophe. In the2003 mark, the apostrophe was connected to the main image and looked like a triangle. In addition, while the 1997 mark was boxy, the 2003 mark looked like the outline of a lemon.

The court cited cases from other circuits and from the Trademark Trial and Appeal Board confirming that tacking is allowed only if the marks are virtually identical. As the Ninth Circuit drove home, the standard for tacking is "exceedingly strict."

A claimant to trademark or service mark rights may rest its claim, in part, upon use of the same mark at an earlier date for a purpose which permits the earlier use to be "tacked" onto the later use, to give the later use a priority over a competing use by a third party which the later use might not otherwise have.

In a more recent decision in case of In re Nielsen Business Media, Inc2 the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trade Mark Office have refused registration to the mark THE BOLLYWOOD REPORTER for entertainment-related publication. The TTAB, in its precedential decision, held that Nielsen Media (the Applicant) could not rely on its registrations for the mark THE HOLLYWOOD REPORTER to establish rights of acquired distinctiveness over the BOLLYWOOD REPORTER. The applicant claimed "tacking-on" and claimed that it could transfer distinctiveness to the new mark by virtue of its rights in the previously registered marks.

The TTAB refused to entertain these arguments, and pointed out that the marks were not legal equivalents:

"The marks at issue are not legal equivalents because they have different meanings and engender different commercial impressions. "Bollywood" is "the extravagantly theatrical Indian motion picture industry." "Hollywood" is "the center of the American motion picture industry located in Hollywood, California." THE BOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the Indian movie industry while THE HOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the American movie industry."

Hence it is clear that to claim Tacking-on there has to be a similar impression of the new mark to that of old mark. If the new mark is depicting an entirely new idea than claiming tacking would be difficult as the Applicant cannot claim the use of a mark which is not quite similar in nature and ocular expression.

CONSTRUCTIVE USE:

In trade and commerce the initial use of a trademark is according to the prevailing market conditions. The condition may decide the use of the trademark or the promotion of trademark or even the design of a trademark. Even though this initial use of the trademark is according to the prevailing conditions but this use is design to constructively working towards the future use of the trademark. The constructive use of a trademark can said to be done when the present use of a mark is done to take advantage of the same in future. For example the initial use of the brand TATA was in regards to the iron and steel but that initial use has been constructively used till date. Presently TATA is in numerous businesses but the brand is using the goodwill created by it in the past. A new business started under the brand TATA does not need a kind of promotion as needed initially by any other trademark. "Tacking on" of trademark is done to take the advantage of the initial use and constructively using the image and goodwill of a trademark already established.

CONCLUSION

The tacking of trademark is not prevalent in India in express terminology but the same can be deduced from some of the provisions wherein the use of a trademark is given relevance for getting it registered.

Various provision in Indian Trademark Act, 1999 related to the trademark does give preference to the use of the same in past. The use of trademark would help a trademark in acquiring the distinctiveness based upon the use of the trademark known as acquired distinctiveness. The mark use in the beginning of the business may be different sometime from the mark which is applied for the registration.

Proviso to section 9(1) provides that "provided that a trademark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well known trademark"

But more importantly the provision has not been used expressly in Indian Intellectual Property field. Even though scope of using the same is very much present, in order to provide the safeguard to the marks which are used for a long period of time but there has been continuous change in the visual representation of these marks. If the mark would not be protected from the first use of the same then the distinctiveness created by it till that point will go waste. Through the concept of "tacking on", the goodwill created by one mark would also be taken into consideration for another mark which is visually similar to the first mark of the same Applicant.

Footnotes

1 No.08-55316, 2009 (9th Cir)

2 93 USPQ2d 1545 (TTAB 2010).

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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