Generic words may be the subject matter of trademarks

Lex Orbis
Manisha Singh Nair
[email protected]

Section 11 of the Trademarks Act, 1999 specifies the relative grounds for refusal to register a trademark if it is found to be identical to an existing trademark or on account of the similarity of goods and services covered by the impugned trademark. However, the similarity of marks is an issue that trademark law in India has consistently dealt with over time, with crucial principles evolving as a result. As per judicial dicta, there should be only one trademark, one source and one proprietor. Thus, it is neither permissible nor advisable to use a mark similar to a registered mark.

The recent case of Kishore Kumar v. L. Chuni Lal Kidarnath and Anr. 2010 (42) PTC 264 (Del.) deals with the aforesaid issue of an identical trademark. Furthermore, the arguments also depicted the role of suffixes, which were generic words, in determining the similarity of the trademark in question. A generic mark is a mark that is used as a synonym for an activity, product or service.

This case entailed three applications viz., ad interim injunction, amendment of the suit, and vacation of the ex-parte injunction. 'Homelite' trademark owner Kishore Kumar developed and used the mark since 1997 and alleged that Eveready was manufacturing goods under an identical trademark. Kumar had an existing trademark registered in respect of rechargeable torches, and the production of invoices was relied upon to establish the usage and advertisement of its trademark. Kumar alleged that Eveready's conduct amounted to malice and an intention to appropriate the mark and goodwill associated with Kumar's product.

Kumar had admitted that in September 2009, when he received the certificate for use in legal proceedings after filing an application asking for the same, he discovered a condition that the suffix 'lite' had to be disclaimed from the trademark 'Homelite'. This, as submitted by Kumar, was not mentioned in the registration certificate.

Eveready was incorporated in 1934, with the mark adopted in 1905. Claiming to be one of the most reputed FMCG companies manufacturing various consumer products – including dry cell batteries and carbon zinc batteries – Eveready stated that they had adopted the suffix 'lite' since 1936 in relation to several brands. It was put forth that Kumar intentionally suppressed the fact that its registered trademark 'Homelite' was in fact granted with an express disclaimer in respect of 'Lite' and thus became disentitled to claim for an injunction. In addition, with the disclaimer of 'Lite' from the mark 'Homelite', there arose no question of reputation as alleged. With the words 'Home' and 'Lite' being generic, the claim for distinctiveness or secondary meaning automatically became weak.

After considering all of the revealed facts, the court recognised that the mark had been used since at least 1999 – with the invoices evidencing Kumar's use of the trademark for 10 years. Eveready's argument that 'Lite' could not be appropriated was irrelevant since it had not itself denied using 'Lite' in relation to a number of marks.

The court became mindful of Midas Hygeine v. Sudhir Bhatia [2004] (3) SCC 90, where it was held that there existed no blanket policy that generic words or common terms cannot be the subject matter of trademarks. A further observance was made that the grant of injunction also became necessary if it prima facie appeared that the adoption of the mark was itself dishonest.

The court held that Kumar had established sufficient elements to show its prior adoption and use of the mark 'Homelite' in relation to electric torches and flashlights. It also held that Eveready did not use the mark until the end of 2008. With regard to the amendment application, Eveready did not contend that the proposed amendment failed to reflect correct facts, or that it would have been prejudiced had it been allowed. On the contrary, it was submitted that Kumar should not be allowed to urge upon the disclaimer whereby an explanation of omission was given before the court that the legal proceeding certificate was not obtained. Therefore, the concerned application was granted. The interim order pronounced was absolute. However, the severity of the injunction order was relieved by a clarification order permitting Eveready to sell the existing stock subject to the condition of the aforesaid order.