The Rights of the Deceased: Moral Rights Incidental to Copyright Law
- Vanshika Agrawal
- 2024-04-25
Loss Of Trademark-Trademarks emerged due to the large scale production and distribution of goods, thereby, resulting in the need for certain marks that will help the manufacturers and consumers distinguish different products and goods. Due to the economic worth of these marks, other manufacturers would feel the need to deceive the consumers by using the names of big brands and passing it off.[1]One of the main functions of a trademark is to help consumers identify the goods of one trader and distinguish it from the goods of the rest. If the trademark fails to perform this primary function, it loses all meaning, thereby resulting in companies losing their trademark. This paper shall deal with two important aspects that lead to brands losing their trademark over their product or good i.e., brand genocide or popularly known as “genericide” and abandonment of the trademark.
Contents hide
1 HOW DO TRADEMARKS BECOME SUBJECT TO GENERICIDE?
1.1 Company lossing their Rights
1.2 Hence they did not lose the trademark. [5]
2 HOW TO AVOID LOSS OF TRADEMARK THROUGH GENERICIDE?2.1 Preventive Measures
3 LOSS OF TRADEMARK DUE TO ABANDONMENT
4 DEFENCES FOR ABANDONMENT OF TRADEMARK
6.1 [9] American Thermos Products Co. v. Aladdin Industries, Inc. (1962) 207 F. Supp. 9.
The main purpose of a trademark is to protect the brand name and to avoid the confusion among the consumers.[2] In few scenarios, it has been found that the trademarks have exceeded their purpose of identifying the brand names with the products and become the other word for the product. For example, “Xerox” has became the word for photocopy and is incorrectly used by consumers. The trademark owner in most cases can be blamed, as they fail to police the usage of their trademarks, thus resulting in the incorrect usage of the word by
the consumers which costs the company the trademark itself.
If the trademark becomes generic, the company loses all the proprietary rights over the mark. The landmark case of Haughton elevator Co v. Seeberger[3]was the famous case where the company lost their trademark over the word “Escalator”, as it became a common word for general public, as well as the engineers and architects. This problem would have not arisen if the Company had branded it as a “moving stairway” rather than “escalator”.[4]
This resulted in the company losing their rights over the trademark. Since the name became the common descriptive name of the product, it lost the significance of being a trademark, and hence cost the trademark holder his rights. The general test to determine whether the trademark has become a generic name for the particular product is the primary significance. If the primary significance is to connote the product and not the producer, the trademark owner loses the rights to the trademark because the mark has become a generic word. In the case of Elliot v Google, Google retained its trademark because the court held that the primary significance of the word “google” to most of the users is the search engine of Google,
The court also held that the mere use of the word “Google” as a verb does not account for genericide. It must also be in connection to the specific good or service. [6] In the case of Marks v Polaroid Corporation, the court held that to prove the genericness of a term, there has to be evidence showing that the consuming public as a whole has lost the trademark significance, which was not the case with Polaroid as a large population still associated it with the source. Unfortunately, despite numerous efforts to protect their trademark, companies
such as Polaroid and XEROX will find themself on the brink of genericide.
As stated above, it is extremely pertinent for the trademark owners to be vigilant when it comes to advertising their products or services. Lots of companies such as “Xerox” and “Johnson and Johnson” started correcting their product promotions by advertising differently in order to be clear about the brand. For example, Johnson and Johnson began defending its trademark of “BAND-AID” by advertising it as “BAND-AID brand”, thereby retaining their proprietary rights even though the word is genericized.[7]It is substantial for a company to proactively defend its trademark, such as Coca cola[8]which has consciously made an attempt to police the trademark. In the case of Coca-Cola Inc v Overland, it was observed that Coca Cola made a conscious attempt in avoiding a Casino bar and
restaurant from passing off another drink as Coca-Cola.
Companies must take preventive measures to protect their trademark. It becomes difficult for a company to protect their mark, if the public as a whole has stopped associating it to the brand, and use the term as a secondary meaning. Escalator could have protected its mark had it advertised it as “moving stairway”, or Bayer Co could have protected their trademark over “Aspirin” if they had branded differently. In the case of Bayer Co. v. United Drug Co, the court stated that the entire public thought of Aspirin as a pain relief drug, therefore it is no more associated to the brand by the public. The inability to control public’s use of the term “thermos” was observe
In the Indian trademark regime, Section 36(1) of the Trademarks Act, 1999[10]states that if a particular mark is extensively used by traders as the name of the article or product, but not as a source identifier, the trademark becomes vulnerable to cancellation, as it is no longer associated with the brand and has lost the purpose of being the trademark. It is the trademark owners duty to ensure that they advertise the source along with the product, and
not merely the product.
Trademarks are not just award on mere registration, but on use of the trademark as well. As per Section 47(1)(b) of the Trademarks Act 1999, a registered trademark may be taken off if the mark has not been a bona fide use of the mark for a period of 5 years post registration, thus
resulting in “abandoning” the Loss Of Trademark .[11]The Supreme Court had relied on section 47(1)(b) in the case of Neon Laboratories Ltd v Medical Technologies Ltd &Ors, stating that even if Neon had registered its mark “ROFOL” in 1992, much before Medical Technologies registered (which was in the year 1998), the mark was not used by Neon Laboratories Ltd for over a period of 5 years,[12] thereby resulting in abandonment of the trademark.[13]
branded their products with the same mark. Therefore the court ruled against Neon, and stated that they abandoned their trademark under Section 47. Therefore, a mere registration shall not prevail, but “first in the market” shall always enjoy the pre-eminence. [14]
A world renowned brand, on the other hand, might be the exception in such a case, as seen in the Indian case of N.R. Dongre v. Whirlpool Corporation[15] , wherein the subsequent user was at an advantage. In this case, the court passed a judgement in favour of Whirlpool Corporation, as consumers already associated the mark to the Company, worldwide, and hence another company using the same mark will qualify as passing off, there
by causing confusion amongst the consumers, thus deceiving.
Companies tend to Loss Of Trademark if they don’t use it. They can avoid losing their trademarks by providing sufficient evidence in Court to support
the fact that the abandonment was unintentional. The case of Hardie Trading Ltd. and Anr. Vs. Addisons Paint & Chemicals Ltd. talk about “special circumstances” under which the court shall not take away the trademark even if they mark was abandon.[16]The special circumstances can only be used as a defence when the abandonment was unintentional.
In order to prove abandonment of trademark, intention plays a major role as discussed in the case of Om Prakash Gupta vs Parveen Kumar And Anr. “The question of abandonment is one of intention to be inferr from the facts of the particular case.”[17] Abandonment of trademark differs from case to case. For instance, in the case of Polson Ltd v Polson Dairy Ltd, the trademark had not been use due to certain restrictions impose by the government, hence the plaintiff was able to retain the trademark, as
the abandonment was not “intentional”. [18] Intentional non-using of the trademark shall qualify for abandonment under Section 47 of theTrademarks act, 1999. Once the owner has abandoned the trademark it becomes difficult for them to contend any other company using their trademark. [19]
On the subject of loss of trademarks, especially in the context of brand genericide and abandonment, the company’s ability in policing the usage of trademarks is test, and the company that fails to perform this efficiently loses the trademark. There is no one to blame rather than the Company itself. A company can avoid brand genocide, by cautiously administering the branding and making sure that the consumers/ general public are identifying the trademark only with respect to the source. On the other hand, the Loss Of Trademark Companies must constantly brand their trademark, so
as to not abandon them, as a mere registration of the trademark shall not suffice. If the consumers do not identify the trademark to the source, then the trademark ceases to exist. It is the sole responsibility of the Company to brand their trademark cautiously.
[1]V.K.Ahuja, Intellectual Property Rights in India, 3rd edition (2015)
[2]Michael G. Walsh, Protecting your brand against the heartbreak of genericide, 56Business Horizons 159 (2013) http://b-ok.org.convey.pro/l/eM9ypZp
[3] Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80, 81 (1950)
[4]John Dwight Ingram, The Genericide of Trademarks, 2 Buffalo Intellectual Property Journal. 154 (2004) https://digitalcommons.law.buffalo.edu/buffaloipjournal/vol2/iss2/4
[5] Elliot v. Google Inc., 860 F.3d 1151, 1155 (9th Cir. 2017)
[6] Alexis L. Morris, Casenote: Elliot V. Google, Inc., Why Google Should have Lost Its Trademark (2018). http://dx.doi.org/10.2139/ssrn.3293029
[7][7]John Dwight Ingram, The Genericide of Trademarks, 2 Buffalo Intellectual Property Journal. 154 (2004) https://digitalcommons.law.buffalo.edu/buffaloipjournal/vol2/iss2/4
[8]Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250, 1252 (9th Cir. 1982).
[10]Trademarks Act, 1999 S36 cl 1
[11]The Trademarks Act 1999 Section 47
https://indiankanoon.org/doc/1551966/
[12]AdheeshNargolkar, India: Prior Registration Of A Mark Is Of No Assistance If The Use Of The Same Is Commenc After Twelve Years (14 October, 2015)
[13] Neon Laboratories Ltd vs Medical Technologies Ltd. &Ors, AIR 2015 (Civil Appeal No 1018 of 2006)
[14]Neon Laboratories Ltd vs Medical Technologies Ltd. &Ors, P9 AIR 2015 (Civil Appeal No 1018 of 2006)
[15] N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714
[16] Hardie Trading Ltd. and Anr. Vs. Addisons Paint & Chemicals Ltd.(2003) 11 SCC 92
[17] Om Prakash Gupta vs Parveen Kumar And Anr.86 (2000) DLT 181
[18]Polson Ltd. v. Polson Dairy Ltd., 1996 PTC 709 (Delhi)
[19]Om Prakash Gupta vs Parveen Kumar And Anr.86 (2000) DLT 181
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