WAY AROUND SECTION 9(1)(B)- INSTANCES WHERE GEOGRAPHIC NAME AS A TRADEMARK CAN SECURE REGISTRATION

A common question among manufacturers, traders and business owners is- can they name their trademark after a geographic term or after the name of a city?

The Trademark Act, 1999 prohibits naming a trademark on geographical origin-

Section 9(1)(b) clearly lists following under Absolute grounds for refusal of registration.—

(1) The trade marks—

 (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

 

Further Rule 106 of Trademark Rules, 2017 mentions:

106: Refusal or invalidation of registration of a trademark conflicting with a geographical indication.— A request in Form TM-O, may be made to the Registrar for the refusal or invalidation of a registered trademark by an interested party along with a statement of case together with an affidavit and which—

(a) contains or consists of a geographical indication with respect to goods or class or classes of goods not originating in the territory of a country, or a region or locality in that territory which such geographical indication indicates, if the use of such geographical indication in the trademark for such goods, is of such nature as to confuse or mislead the persons as to the true place of origin of such goods or class or classes of goods;

(b) contains or consists of geographical indication identifying goods or class or classes of goods notified under sub-section (2) of section 22 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 (48 of 1999).

However, there are still many trademarks having name of a geographic place and are still accepted by the trademark registry. Herein we will review the instances when such trademarks are accepted as valid trademark.

The first instance could be if the trademark has acquired distinctiveness through use over a period of many years. A registration of a prior used trademark is recognition of its pre-existing right in common law, thus trademark if have been in use through period of many years can be recognized and accepted by the Registrar as a valid mark even if trademark consists of a name of a place, city or a country.  

 

Proviso to section 9(1)(b) mentions that-

Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark." 

If acquired distinctiveness is proved through evidence such as advertisement expense/bills, sales, public survey and public knowledge, the trademark can be accepted, however the bar to prove acquired distinctiveness in pretty high in trademarks that are termed to be descriptive.

 

In Imperial Tobacco Company Limited V. Registrar of Trademark[1]

In this case the dispute between the parties was that the packet of defendants goods shows snow covered hills and word ”Simla” written prominently and thus is descriptive in character. The Deputy registrar held that the evidence of extensive sales and advertisement alone cannot be considered as conclusive on question of acquired distinctiveness. The Division bench of High Court upheld the order and observed that “simla” being a prominent city has geographical significance and is inherently neither distinctive nor adapted to distinguish or capable of distinguishing the goods of appellant from those of others.

The second and most interesting approach to secure registration of such trademark is through proving that geographic name used in trademark has no relation whatsoever with the goods for which it is applied. The proprietor of trademark in such cases has to prove that the adoption of geographic name as a trademark for those particular goods is so unique that none of the traders would have used such name for those goods and the trademark would never lead general public into believing that the goods originate from that geographic place.

In Liverpool Electric Cable Company; Volume XLVI; Reports of Patent, Design, and Trade mark Cases; Page 99[2]. It was held that “the word 'Liverpool' being a geographic name was not capable of distinguishing electric cables of the applicant or becoming distinctive.'Liverpool' was held to describe the common characteristic of vast quantities of goods, namely that they come from Liverpool, and that the phrase 'Liverpool Cables' therefore meant not the cables of the applicant company, but cables manufactured or dealt in at 'Liverpool'. It would not fall in the category of geographical names with inherent distinction as in the case of 'Luxor', which is a place in Egypt and is used as a trade mark for pens. Such a name could never occur to other manufacturers of pen.”

In view of the above and on close reading of the section it is apparent that legislative intent behind the section is to prohibit registration of trademark “that designate the geographical origin of the goods or service”, therefore if the applicant is successful in proving that subject trademark and subject goods have no relation and the public would never be deceived or mislead into believing that the subject goods originates from the particular geographical location, the trademark would be capable of being registered.

In the case of Hi-Tech Pipes Ltd. vs. Asian Mills Pvt. Ltd[3] court observed that Gujarat as a State is not known for it’s steel pipes and therefore the word “Gujrat” by the Defendant is not being used as descriptive of the origin of the goods.

Further, in Geepee Ceval Proteins and Investment Private Limited v. Saroj Oil Industry[4] court observed that Plaintiff has mentioned a number of well-known trademarks like Gwalior Suitings, Ganga Mineral Water, Taj Mahal Tea, Lal Quila Rice, Charminar Cigarette, Hindustan Petroleum, etc which were granted registration by Registrar of trademark and Chambal’, although is a geographical name, is capable of becoming a trademark and action for passing off based on it could be maintainable.

Thus, if trademark is not used to indicate source of origin of goods the trademark is usually not held to be geographically mis-discriptive, however the view on this is not unanimous and usually requires a higher degree of proof.

 

 

[1] Imperial Tobacco Co India Ltd vs Registrar of Trademarks AIR 1977 CAL 413

[2] Liverpool Electric Cable Co. Ltd. , reported in 46 RPC 99,

[3] Hi-Tech Pipes Ltd. vs. Asian Mills Pvt. Ltd, 2006 (32) PTC 192 Del

[4] Geepee Ceval Proteins and Investment Private Limited v. Saroj Oil Industry, 2003 (27) PTC 190 Del