The names of cities, states and countries are often used by
businesses to refer to their goods and services. Some well-known
examples are British Airways, The New York Times, India Gate, etc.
Since names of cities, states and countries cannot be monopolized,
it leads one to wonder whether trade marks which incorporate names
of geographical locations would be considered as an indication of
the goods/services having emerged from a particular region, such as
a geographical indication, and would thereby not be allowed to be
monopolized.
Courts have often held that geographical terms and words used to
designate a locality, a country, or a section of a country cannot
be monopolized as trade marks. However, a geographical name not
used in “geographical sense” to denote the place of
origin but used in an arbitrary or fanciful way to indicate origin
or ownership regardless of location, may be sustained as a valid
trade mark1. This blog delves into this distinction in
detail.
Position in Law and Practice
The trade marks statute makes it abundantly clear that trade
marks which consist exclusively of marks or indications which may
designate, inter alia, the geographical origin of the goods shall
not be registered3. The statute also envisages that a
registered proprietor cannot assert their rights against a
third-party’s bona fide use of the name of a place of business
as a trade mark3. Further, as per the guidelines
governing trade mark filings4, registration of the name
of a place is permissible if the place does not have a reputation
or association with the geographical origin of goods and/or
services covered by the filing.
As such, it is evident that neither in the statute nor in
practice, is the use of geographical terms in trade marks barred.
While determining whether a trade mark is excluded from
registration owing to use of geographical names, credence ought to
be given to ascertaining whether the trade mark consists
exclusively of geographical terms and whether it is capable of
being used by other traders to describe the characteristics of
their goods/services5.
There have been several instances where the Trade Marks Registry
(“Registry”) has taken a favourable stand in cases where
proprietors, with the names of cities/states/countries have applied
for registration of their marks for entirely unrelated
goods/services. For example, CAMBRIDGE for readymade garments,
MONACO for electrical wires, cables, etc., BALI for lingerie, etc.
However, there have also been cases where the Registry has not
applied the statutory tests and has denied registration to marks
that meet the statutory criteria.
In the landmark case of Abu Dhabi Global Market v. The Registrar
of Trade Marks, Delhi6, the Registry’s order
refusing registration of the mark ABU DHABI GLOBAL MARKET Device,
since ABU DHABI is a geographical name and the capital of UAE, the
mark as a whole is non-distinctive, and cannot be monopolised, was
called into question by the Delhi High Court.
It was the plaintiff’s case that the view taken by the
Registry, stating that ABU DHABI is the name of a place and
constitutes the most prominent part of the mark sought to be
registered, was entirely misplaced. In fact, the plaintiff
submitted evidence both before the Registry and the Delhi High
Court showing that the mark was being used with full knowledge of
the UAE government.
The court, while expressing its disagreement with the reasoning
of the Registry, stated that the statute only bars registration of
a mark consisting of words which exclusively designates the
geographical origin of a place. Composite marks, therefore, stand
ipso facto excluded from the scope of this section, even if part of
such marks consist of indicative wording/s. The mark in the present
appeal, being a composite mark, which couples the words ABU DHABI,
GLOBAL and MARKET with a logo cannot be barred from registration.
Further, the court, while refuting the Registry’s contention
that ABU DHABI forms a dominant part of the mark observed that the
principle of “dominant part” is alien to the test of
distinctiveness under the statute. The court, accordingly, remanded
the application back to the Registry asking it to advertise it in
the Trade Marks Journal.
Conclusion
While there is still ambiguity in the way the Registry exercises
its judgement on cases involving geographical names, courts have
reinforced the statutory parameters for determining registrability
of such marks.
In order to secure registration, the way forward is proving that
the geographic names used in trade marks have no relation
whatsoever with the goods for which they are applied. The
proprietor of such mark has to prove that the geographic name is so
unique that no trader would have used such name for the
goods/services applied for and that use of such mark would not lead
the consuming public into believing that the goods/services
originate from that geographical location. Adding to this, the
secondary significance or acquired distinctiveness is also
paramount for registration of a geographical name.
Stakeholders can be rest assured that if their mark is
sufficiently distinctive and meets the paraments under the statue,
registration of marks that include geographical names is easily
achievable in the Indian jurisdiction.
Footnotes
1. Imperial Tobacco Company of India Limited v. The
Registrar of Trade Marks reported, AIR 1977 Calcutta
413.
2. Section 9(1)(b) of the Trade Marks Act,
1999.
3. Section 35 of the Trade Marks Act, 1999.
4. Chapter II: Examination of Applications filed for
Registration of Trade Marks.
5. Double Mint 2004 RPC 18, 327.
6. C.A. (COMM-IPD-TM) 10/2023
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.
#Whats #Geographical #Understanding #Geographical #Names #Trade #Marks #Trademark
