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C.A.R.T- Can Acronyms be Registered as Trademarks?

January 3, 2022

By Ananyaa Banerjee and Diksha Singh

Acronyms Trademarks- An acronym is an abbreviation constructed using an aggregation of the initial letters or syllables (or combination thereof) of a lengthier name or phrase. They are easier to remember and communicate and are therefore more effective in increasing the reach and value of a brand. For example, the acronyms BCCI for ‘The Board of Control for Cricket in India’, or BMW for ‘Bayerische Motoren Werke’ are well-known and popular due to them being easier to remember than the full form names.

Well-known acronyms have also been granted protection by the Indian courts. For example, in VIT University v Bagaria Education Trust & Ors[1], the Hon’ble Madras High Court held that since the Plaintiff, Vellore Institute of Technology had been using the acronym ‘VIT’ since 2001, it had become well-known, and the Defendant cannot use the mark ‘VIT’ as it would cause great confusion in the minds of the general public.

Further, in a recent ruling of UFO Contemporary INC v Creative Kids Wear (India) Pvt Ltd, a clothing line’s former licensee was restrained from use of the acronym ‘UFO’ which stands for Under Fourteen Only.[2] The Plaintiff, UFO Contemporary INC, had registered the mark ‘UFO’ in India and had been using it since 1982 for its clothing line. The Defendant, Creative Kids Wear (India) Pvt Ltd, had been granted license by the Plaintiff for use of the mark ‘UFO’ for domestic sales, even though full ownership of the mark had not been given to them. Despite the same, the Defendant had proceeded to apply for the mark ‘UFO’ in 2019. The Hon’ble Delhi High Court ruled that the Defendant’s application for the acronym ‘UFO’ was malafide and an attempt to encash upon the goodwill and reputation of the Plaintiff and its well-known mark ‘UFO’, and therefore, passed an injunction against the Defendant.

Protection given to Acronyms and their scope

In order for an individual or an entity to claim statutory rights in an acronym under the Trade Marks Act, 1999, firstly, either the full form of the acronym (original name/phrase) has to be registered as a trademark, or at least be eligible for trademark protection, and secondly, the acronym itself has to be registered as a trademark under the Act. It is important to note that registration of the ‘original name/phrase’ does not automatically include the registration of its acronym under the Trade Marks Act, 1999. However, one possible way to enforce rights in an acronym even if it is not registered per se, is by proving that the acronym has acquired sufficient goodwill and reputation to the extent that members of the public and trade recognize it as the exclusive source of goods/services being provided thereunder. For example, in a foreign case, the acronym ‘NKJV’ which stood for ‘New King James Version’ was granted registration as the applicant was able to prove that it had acquired distinctiveness[3]. Similarly, in India, the acronym ‘KSRTC’ in itself may not be distinctive, however, it has acquired distinctiveness in Kerala and Karnataka for Kerala State Road Transport Corporation and Karnataka State Road Transport Corporation, respectively, and co-exist in both the states.[4]

Generally, while considering whether an acronym is generic or not, the meaning of the acronym itself is also taken into account i.e., if the underlying words are not distinctive whereas the acronym is, then it will not be considered generic and would qualify for protection under the Trade Marks Act, 1999. As per McCarthy on Trade Marks and Unfair Competition (Third Edn Vol. 2), if the acronym is not recognizable as that original generic term, then the acronym is like a fanciful mark, and protectable. However, in some cases, contrary view has been taken wherein it has been observed that acronyms may also be considered descriptive if the resulting word or the underlying words are descriptive. For example, the acronym ‘CV’ for ‘Continuous Vision’ was denied registration as it was descriptive of the function of the goods i.e., trifocal lenses. Therefore, the law appears unsettled on this point.

Once an acronym is registered, the registered proprietor’s chances of success increase manifold in being able to take action against similar/identical acronyms in respect of similar/identical goods or services. However, if the other acronym varies even in one letter, then the chances of success drop as the overall impression of the acronyms and what they stand for will be taken into account. For example, in the case of International Student Identity Card Association & Anr v Abhishek Tiwari & Ors[5], the Plaintiff’s acronym ISIC for ‘International Student Identity Card Association’ and Defendant’s acronym ISID for ‘Indian Student Identity Card’ were in question. The court held “that the letters ID are descriptive of the product — identity cards. Prima facie, the plaintiffs cannot by virtue of registration of the ISIC Mark claim monopoly in the use of the initial letters of the words that are descriptive of the business.” The court further held that Defendant’s mark ‘ISID’ is different and does not violate Plaintiff’s rights. However, a different view was taken in the case of Ram Krishan & Sons v ILM Consulting,[6] wherein the court found Defendant’s acronym ILM to be deceptively similar to Plaintiff’s acronym IILM (standing for ‘Institute for Integrated Learning in Management’) and restrained the Defendant from using it.

Acronyms Trademarks- Possible Issue & Solution

If two entities share acronyms, but different full names, which entity would have valid claim over the acronym? Based on the divergent court opinions as well as lack of specific legislative clarity on this issue, at the moment the claim stands at the court’s interpretation of the facts and circumstances of every unique case. While it is just that an entity with a prior valid claim ought to be given priority, it is not inconceivable that two entities may have equally valid claims, and may be permitted to co-exist (as seen in the KSRTC case), especially if they apply to different contexts.

Read: Abbreviations as Trademarks- Kerala v. Karnataka! #KSRTC

In the case of Science Olympiad Foundation v Shivalik Olympiad Foundation,[7] it was held that Defendant’s mark SOF for the wording Shivalik Olympiad Foundation was identical to Plaintiff’s mark SOF for the wording Science Olympiad Foundation. The Plaintiff had been using the acronym ‘SOF’ since a very long time and had priority of use therefore, court ruled in favor of the Plaintiff.

Conclusion

Despite the fact that the law on registerability of acronyms is not well-defined and is ambiguous, courts both Indian and foreign have given several rulings favoring protection of acronyms as trade marks, and have also held the view that registration of an acronym plays a beneficial role as it is easier to recollect, and can help in identifying the brand effortlessly. However, more clarity on the subject by way of specific and particular legislation in this area may assist or garner acronyms better protection as compared to the present position.

[1][1] O.A.No.576 of 2012 (Madras High Court)

[2] CS (COMM) 375/2020 (Delhi High Court)

[3] In re Thomas Nelson, Inc 97 USPQ2d 1712, 2011, WL 481341 (TTAB 2011)

[4] https://ssrana.in/articles/abbreviations-trademarks-kerala-karnataka-ksrtc/

[5] (2017) SCC Online Del  7301

[6] CS (COMM) 136/2016 (Delhi High Court)

[7] CS(OS) No. 2590/2015 (Delhi High Court)

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Titiksha Sinha, Associate at S.S. Rana & Co. has assisted in the research of this article.

 

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