Tuesday 5 September 2017

Trademark debate: The conflict between Paytm, India Post shows why everything can't have copyright

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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