Thursday, February 21, 2008

Trademark cannot be claimed on common English words [India]

The Bombay High Court has ruled that a trademark cannot be claimed on common, descriptive English words.

Division bench of Justices S Radhakrishnan and Anoop Mohta were hearing a petition filed by cigarette giant ITC challenging an order allowing rival GTC Industries to register a trademark in the name of 'Magnum' for a brand of cigarettes and cigars.

"We are of the view that the word 'magnum' is of common usage and purely descriptive," observed the judges in the order. "It can serve as an indication of character or quality or value of the goods since one of its laudatory and descriptive meaning is 'great'. Such words/marks should not be registered (as a trademark)," they held.

ITC has the major share of 65 percent in the market, owns several brands including Insignia, India Kings, Classic, Gold Flake, Silk Cut, Navy Cut, Scissors, Capstan, Berkeley, Bristol and Flake.

GTC Industries Limited (formerly known as the Golden Tobacco Company), a flagship of Dalmia Group, owns brands including Chancellor, Panama, Style, Esquire, Flair and Ms Special Filter cigarette for women. In December 1987, GTC had, for the first time, filed an application for registering a trademark in the name of 'Magnum' for a proposed brand of cigarettes.

In 1992, ITC opposed the grant of trademark, but the assistant registrar of trademarks, who passed an order in favour of GTC, dismissed its challenge.

ITC then approached the high court, where the matter went on for over eight years and in 2002, the court allowed GTC to register 'Magnum' as a trademark, saying it was not a common Indian word.

An appeal against the order was filed by ITC before a division bench.
The ITC advocate referred to English Law, which contained similar provisions as India's Trademarks Act as well as judgements of the European Courts of Justice to argue that laudatory words like 'magnum' could not be registered, which the court accepted.

The court held that purchasers of cigarettes are common men of all ages and include persons with knowledge of the English language.

The word 'magnum', the judges held, could serve as an indication of the characteristics of goods. Also Section 9(1) (b) of the TM Act "contains an absolute bar for registration of any descriptive and laudatory term," the judges stated in the order.

No comments: