February 02, 2018

India: Delhi High Court says that protection of a generic word requires greater degree of proof

delhi-high-court
Source: www.delhihighcourt.nic.in

The Hon’ble Delhi High Court in its judgement dated January 3, 2013, in the case of M/S Three-N-Products Pvt. Ltd. vs M/S Kairali Exports and Anr., noted that protection of a generic word as a trademark requires a greater degree of proof and a lot more effort from the person claiming trademark rights over the mark.

BRIEF BACKGROUND

  • M/S Three-N-Products Pvt. Ltd. (herein after referred to as ‘the Plaintiff’) is the registered proprietor of the mark “AYUR” in various classes. They claim to be using the mark continuously since 1984. The registration details of the Plaintiff’s trademarks are:

ayur.JPG

  • M/S Kairali Exports (herein after referred to as ‘the Defendant No.1’) claims to be engaged in manufacturing and selling eco-friendly organic handloom fabric, which is dyed using Ayurvedic herbs. The Defendant No. 2 claims to be a society of weavers who make clothes for different agencies including private agencies as well as Central Government and is engaged in the upliftment of the handloom weaver’s community in Kerala.

  • In October 2009, the Plaintiff became aware of the use of the trademark “AYUR” by the Defendants, when Defendant no. 2 made an application seeking registration of the mark “AYURVASTRA”.

  • The Plaintiff claims to have sent a cease and desist notice to the Defendants, in response of which the Defendant no. 2 is alleged to have admitted their improper adoption and agreeing to discontinue the mark ‘AYUR’ and ‘AYURVASTRA’.

  • However, the Plaintiff later on again came across the use of the mark ‘AYURVASTRA’. Therefore, the present suit.

ISSUES

Whether the Defendant committed an act of trademark infringement or passing off by using the mark ‘AYURVASTRA’?

INFRINGING MARKS

ayur-1.JPG

PLAINTIFF’S CONTENTIONS

  • It claims to have been using the mark ‘AYUR’ in respect of its goods and services since the year 1984 extensively and uninterruptedly. In addition, it claimed the mark to be an invented word having meaning whatsoever and is associated only with the goods of the Plaintiff.

  • It has the exclusive rights in respect of the mark ‘AYUR’, as it has the trademark registration for the mark in classes 24 and 25. It also claims to have earned substantial reputation and goodwill because of the use.

  • It contended that it has substantial turnover and has substantially advertised the mark “AYUR” through various media – prints as well as electronic, besides making its goods available online through its website.

  • Claiming its mark to be well known, it contended that the adoption of the mark by the Defendant is an imitation of the trademark of the Plaintiff, as the same comprises of identical and deceptively similar word element ‘AYUR’.

  • It further alleged that the adoption of the mark by the Defendants is malafide and dishonest.

DEFENDANTS CONTENTIONS

  • It contended that the Plaintiff has no exclusive right in the word “AYUR” per se, as the word is of very distinctive character. ‘AYUR’ being an abbreviation of ‘AYURVEDA’ the word “AYUR” signifies healthy life and the word “VEDA” signifies knowledge signifies that the product is of Ayurvedic qualities.

  • Citing Section 17 of the Trademarks Act, the Defendant stated that the Plaintiff cannot obtain exclusive proprietary rights over the word ‘AYUR’.

  • Defendant no. 1 claimed that the mark ‘AYURVASTRA’ is a composite mark comprising of the word ‘AYUR’ derived from the word ‘AYURVEDA’ and the word ‘VASTRA’ meaning clothes.

  • It contended that the word ‘AYUR’ per se is publici juris. It claims to be using the said mark with a unique logo, which is capable of identifying its own independent source of identity.

  • Defendant no. 2 contended that it is neither a necessary nor a proper party to the suit. It claims to be a society of weavers which make clothes of different types of different agencies including private agencies as well as Central Government. The handloom weavers have been calling their clothes ‘AYURVASTRA’ since times immemorial as they were doing herbal dying using Ayurvedic medicinal plants.

  • It further contended that it had initially agreed to the cease and desist notice of the Plaintiff because of the pressure from the attorneys of the Plaintiff and incorrect legal advice.

  • Any working partnership between Defendant no. 1 and Defendant no. 2 is denied, except few contract based jobs.

COURT’S DECISION

  • The Court noted that the Plaintiff has based its suit primarily on the ground that its trademark is an invented word and has no other meaning whatsoever. The entire basis of the claim of the Plaintiff is that it has invented the word ‘AYUR’ and by extensive use of the word ‘AYUR’ and the association thereof with its goods since 1984, the said mark has acquired distinctiveness and is identified with the goods of the Plaintiff alone.

  • Finding the claim of the Plaintiff to incorrect ex-facie, the Court stated that the word ‘AYUR’ finds mentioned in the Hindu Religious Texts i.e. the Vedic Puranas, which has used the word ‘AYURVEDA’. The word “AYUR” signifies healthy life and the word ‘VEDA’ signifies knowledge.

  • The Court held that since the trademark of the Plaintiff i.e. ‘AYUR’ is generic, it has lower level of legal protectability. Therefore, the Plaintiff cannot prima facie claim any proprietorship on the word ‘AYUR’ per se.

  • The Court opined that it is not that a generic or descriptive mark will never have any legal protectability but the burden of proof on the person claiming distinctness in favor of a generic or descriptive mark is much higher. The Plaintiff not only would have to show that the mark adopted by the Plaintiff, because of its extensive use has acquired distinctness and is identifiable only with the goods of the Plaintiff but also that the adoption of the mark by the Defendants is identical and deceptively similar to the mark of the Plaintiff.

  • It was held that the Plaintiff was not able to establish a prima facie case in their favor for grant of an ad-interim injunction. The Court noted that the mere fact that Plaintiff claims to be a prior adopter or has substantial turnover and has spent substantial amount on the development is of no consequence.

Thus, an ad-interim injunction was not granted to the Plaintiff.





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