India: Ubiquity Theory Of Trademark Law

INTRODUCTION:

Ubiquity refers to the state or capacity of being everywhere, especially at the same time and also means omnipresence. In terms of trademark law ubiquity has been a myth till date. The ubiquity in trademarks refers to the multiple use of the trademark for the various goods and services. The debate on significance of ubiquity on the loss of distinctivity of a trademark is still a debatable topic. The nature of effect of ubiquity on the trademark is still an unsolved problem after more than 80 years of research and development of trademark law world over.

The real problem which lies in identifying the effect of ubiquity on trademark is that, it is still not clear whether the ubiquity is good or bad for a trademark. There are scholars who had identified ubiquity as a destroyer of the distinctivity of the trademark whereas it is also been said that the omnipresence of trademark is also good for a trademark.

CONCEPT OF UBIQUITY OF TRADEMARK AND ITS ORIGIN

Ubiquity theory owes its origin to the concept of dilution of trademark. In the year 1927 dilution theory was originated in US when an article was published in Harvard Law Review in which author Frank Schechter, written about the concept of dilution in reference to the danger a trademark can have from the use of the same by some other person for unrelated goods for which the original mark is used. In the initial period the courts and scholars were not ready to buy this argument but with the passage of time as the use of trademark developed and so developed the remedies of protection to the trademark. Frank Schechter, who is said to be the originator of the theory of dilution, was in reality talking about the danger of ubiquity which a trademark can have from multiple use of trademark by the owner himself and not about the dilution in which the danger is from the use of trademark by some other person but at that point of time trademark was not seen as a commodity in itself but seen as the instrument which help in recognizing the originator of the product. The author wrote his theory not about all famous trademarks but about some very selective distinctive trademarks that are related to a single product or product class. The theory talks about the loss of identity from which a very distinctive trademark would suffer if the same is used for some unrelated goods by the owner of the trademark himself. For example, trademarks like 'Horlicks', which is famous in Indian as a drink for the children which help them in growing up. This mark is only famous for a single product and if the same is used by the owner for wines or alcoholic drinks it would lead to the disturbance of the myth surrounding the trademark that it helps children in growing up. It is the myth that a very distinctive trademark has, which gives that trademark advantage in the market. Hence a unique or very distinctive trademark posses two kind of association in the mind of the consumer i.e. a source of association with the trademark (Horlicks) and association with the product itself (drink for growing up).

DIFFERENCE BETWEEN UBIQUITY AND DILUTION

Dilution refers to the unauthorized use of a famous trademark by another person for the goods and services that are unrelated to the mark for which it is famous for. The dilution principle is included in the Indian Trademark Act, 1999 under S. 29(4) as:

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-

  1. is identical with or similar to the registered trade mark and
  2. is used in relation to goods or services which are not similar to those for which the trade mark is registered : and
  3. 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.

Dilution is taken as the infringement of the trademarks owners rights. If anybody tries to use a famous trademark without the permission of the owner of the trademark, it is treated as the infringement of the trademark.

Ubiquity theory in relation to a trademark refers to a situation wherein a famous trademark is used for unrelated goods or services by the proprietor of the trademark himself. According the Frank Schechter, ubiquity is not good for a trademark as the same decrease the distinctivity of the trademark in reference to the particular goods/services for which the trademark is used till date. The myth surrounding the trademark which is the most important element of the uniqueness of the trademark is lost due to use of trademark for various products as discussed earlier. But the courts, Judges, lawyers, and even scholars appear to have assumed that trademark owners are incapable of diluting their own trademarks—that trademark owners are perfectly free to engage in acts that, if perpetrated by others, would be held to cause dilution or the likelihood thereof, even under the doctrine as presently applied. As per popular belief the ubiquity adds to the distinctivity of the trademark.

ADVANTAGES AND DISADVANTAGES OF UBIQUITY THEORY

Till date the ubiquity question has not arisen in front of any Indian court in relation to the trademark. Also as per popular belief owner of trademark is not capable of diluting his own trademark due to use of his trademark for the unrelated goods and services. It is only the unauthorized use of the trademark by some other person for some unrelated goods or services that is capable of diluting the image or distinctivity of the trademark hence it is difficult to foresee whether the ubiquity has advantages or disadvantages.

The popular belief till date is that ubiquity has advantages in reference to a trademark. It provides the multifaceted image to a trademark which improves the marketability of a trademark. In the contemporary times the use of trademark is not only for the purpose of recognizing the origin of the trademark but it is also portrayed as a commodity which can individually be sold or purchased. If the trademark assumes the capability of being used for the multiple products then it can also provide the economic benefits in terms of assignment or licensing of trademark. But as the trademark is also attached with the quality of a product hence in case of licensing of the trademark it is important to include the clauses for the quality check. The naked licensing of a trademark should be checked. Various countries have included the provision related to the naked licensing in their enactment so that the ultimate consumer should not be affected by the lack of quality of the product offered to him. The ubiquity of trademark therefore can also give rise to a situation wherein the product offered under a popular trademark by a license holder is of inferior quality in cases wherein the law of country does not have provision related to the naked licensing.

CONCLUSION

Ubiquity theory even though has been in existence since long but the legal effect of the same in terms of Indian Judicial scenario is still not in existence. The theory has to be used and specifically in terms of the effect of the same on the use of a trademark for different goods and services. The theory would be at same time is a lengthy topic of research and discussion for the researchers and trademark experts. Even though till date the multifarious use of the trademark is seen to be good for the distinctivity of a trademark but the theory of ubiquity as described by the Frank Schechter have various elements which are neither used nor interpreted by any Indian Court.

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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