India Post recently sent a legal notice to Paytm to restrain the mobile wallet company from using the word, ‘postcard’, in its products.
Paytm
subsequently rebranded its product to ‘lifafa’ to signify the tradition
of gifting money in an envelope in India (also known as ‘shagun’).
In
its legal notice, India Post had cited the Indian Post Office Act, 1898
and the rules framed thereunder, to support India Post’s exclusive
right to use the term ‘postcard’. However, under the Indian Trademarks
Act, 1999 generic terms (words used in common parlance) are not
generally capable of trademark registration.
Indian Trademarks Act, 1999:
According to trademark
law, generic names (common names, dictionary words, descriptive words)
are not protected as trademarks. An example of a generic name is ‘rice’-
an individual/company can register the brand name used for selling rice
(such as ‘India Gate’ or ‘Daawat’) but not the word ‘rice’ itself.
Similarly, a restaurant which serves ‘dosa’ cannot trademark the phrase, ‘dosa’, as dosa denotes a popular South Indian dish and is a descriptive term.
Section
9 of the Trademarks Act gives the absolute grounds for refusal of
registration of a trademark. Under Section 9, marks which are “devoid of
any distinctive character” and marks which are commonly used in the
trade cannot be registered. One could argue that ‘postcard’ is a word
which is common in the postal service and therefore, not registrable
under Section 9 of the Trademarks Act.
The reason behind not
allowing generic marks to be registered as trademarks is to prevent
monopoly over common words which must necessarily be used by others in a
particular trade to conduct business.
To illustrate, if a company
which sells rice is allowed to trademark the word ‘rice’ itself, other
companies which sell rice would not be able to use the word ‘rice’ to
describe their goods. Therefore, words which refer to a genus or
category of goods are not trademarked.
Indian courts are reluctant to allow trademark protection to generic marks. In 2013, the Madras High Court in Mr.A.D.Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd vs Aachi Cargo Channels Private Limitedobserved that the term ‘aachi’, a Tamil word, means ‘grandmother’ and therefore, could not be monopolised by any individual/company.
When can generic marks be registered?
There
are certain exceptions which allow for registration of generic marks as
trademarks. If a generic mark is used in relation to a trade where it
is not generic/common, the word may be capable of trademark
registration. An apt example of such a trademark is the word, ‘Apple’,
trademarked by the company, Apple Inc.
Apple uses its eponymous
trademark on computer hardware and the use by the company on its
hardware goods has no connection with the dictionary meaning of apple.
Further, an apple is not common in the business of computer goods. If
Apple were in the business of manufacturing fruit juice, they would
probably not be able to use ‘apple’ as a trademark on their juices
because in the fruit juice scenario, apple would be a generic word in
the trade of manufacturing fruit juices.
Another example of a
generic mark which enjoys trademark protection is ‘Mango’ which sells
women’s apparels in India. Similarly, it may be possible to trademark
‘postcard’ (which is otherwise a common word) for use in a random trade
such as a restaurant service or a fashion label.
Interestingly,
marks which are distinctive originally may become generic over time,
this is known as ‘genericisation’ of a mark. This happens when a
particular trademark becomes so popular that consumers begin to
substitute the trademark with the product itself. ‘Thermos’ and ‘Xerox’
were originally trademarks but due to popular use, these words have now
entered the dictionary and are no longer trademark-protected.
The US Supreme Court is expected to rule
on a petition challenging Google’s trademark over the phrase ‘google’;
the petition has been filed on grounds that ‘google’ (a word which is
recognised by the Oxford English Dictionary and means ‘to search on the
internet’) is a common word and should be treated as a generic mark.
Who has monopoly over ‘postcard’?
India Post relied on the Indian Post Office Act, 1898 and its rules to claim the exclusive right to use ‘postcard’. Neither the 1898 Act nor the Indian Post Office Rules, 1933 expressly states that only India Post shall have the exclusive right to use the term ‘postcard’.
In
the absence of an express legal provision barring an individual/company
from using the term ‘postcard’, Paytm could have fought back on the
basis that generic marks can anyway not be monopolised.
Paytm
could have argued that the right to use the term ‘postcard’ in fact
belongs to the public since the phrase ‘postcard’ has not been coined by
India Post and existed as early as the 19th century.
A
public interest argument for disallowing monopoly over common words is
to permit new words to enter languages, thereby promoting the growth of
languages.
While this argument may not apply to old words such as
postcard, internet slang and social media have spurned a generation of
interesting words which are now officially recognised by dictionaries
worldwide; in fact, some of these words such as ‘selfie’ gained prominence because of their widespread use by the public.
Words can reveal
a lot about the culture of a particular era: The present generation is
marked by words such as ‘Trump’, ‘hashtag’, ‘tweet’ etc. It is
conceivable that the words which have come to define the culture of our
time may never have entered our language if an individual/company was
allowed to trademark these words.
Therefore, it is desirable that
common words are made available for use by the public at large and no
company (including government-run services) is allowed to monopolise
them.
The author is a research fellow at Centre for WTO
Studies, Indian Institute of Foreign Trade. She is also a volunteer at
Strategic Advocacy for Human Rights. Views expressed are personal.
Source : http://www.firstpost.com
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