INTRODUCTION
In a recent case, a successful manufacturer of chips approached us after his trademark application with a geographical name for his product was duly objected by the Trade Mark Registry (“TMR”) and he was unable to comprehend the cause of the same. Now, why should a trademark be refused registration merely on the grounds of containing a geographical name for its products or services, is confounding to many. A common trend observed amongst manufacturers of goods is to link the product to the geography of the manufacture or other geographies like a native town or village of the manufacturer. The names of cities, states and countries are often used by businesses to refer to their goods and services and give it some order of differentiation with other traders in the same category. Some well-known examples are British Airways, The New York Times, India Gate, etc. Today as there is increased awareness about the protection of tradenames, trading identities or product names as registration of trademarks, we often find that it is difficult for such geographical names to get past the TMR, as such names constitute an absolute ground of refusal for registration of a trademark.
ABSOLUTE GROUNDS FOR REFUSAL
The reason for the above provision is the utter lack of distinctiveness in the name of the goods or services, on account of them being merely descriptive as above-mentioned.
Section 9 also clarifies 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.”, to clarify that if the name/trademark has already acquired distinctiveness through usage or having already become popular in the market, then such geographical names may be protected.
GEOGRAPHICAL INDICATIONS
The embargo on geographical names emanates from another protected intellectual property right which is called Geographical Indications (“GI”), which is a sign or tag used to identify a product that has a specific geographical origin and qualities that are due to that origin. Essentially, GI is a community intellectual property right, that actually belongs to the realm of trademarks and serves to indicate the ‘source of origin’ of goods, where the peculiar characteristics or attributes of the goods are in some way linked to the geography of claim. GIs can be used on agricultural, natural, or manufactured products and protect the quality, reputation, or other characteristics of a product that are related to its geographical origin.
The TMR’s reluctance to grant geographical name registration is not only to avoid conflict with validly existing GI’s, which would result in public deception and confusion, but also to prevent the traders from falsely riding on the popularity of a particular geography. As per Chapter II: Examination of Applications filed for Registration of Trade Marks of the Trademark Manual, in cases of names of “Geographical origin”, names of places with populations of less than 5000 in India will prima facie be acceptable. However, if the location covers a large area having a reputation in respect of the goods or services, the application may attract objections. In the case of overseas names, the location is considered more important than size. In the case of countries such as the U.S.A., Japan, or Europe, while a population size of 100,000 is considered reasonable for acceptability, it is to be borne in mind that if the location has a reputation for the type of goods or services, the size of the location or its remoteness will not help acceptability of the geographical name as a trademark, for eg. Wall Street Financial Services.
Evidently, from the foregoing, names of cities, states, and countries cannot be monopolized or appropriated as trademarks and cannot be registered. The same is true when the name of a mountain is used for spices and condiments, the name of a river, or sea for fish products or the name of a street for certain financial services. However, names of rivers, mountains, seas, lakes, etc. will be considered prima facie acceptable in respect of goods, not associated with the geographical feature, but in respect of “fish”, names of rivers or seas will not be acceptable, as it would create an impression that the fish comes from the mentioned geographical region, which may be misleading to the consumers, who would then associate the product with the geography.
Trademark examiners are therefore expected to consider whether the name is likely to be seen as a fanciful use of the name or as a plausible indication of geographical origin, before refusing a geographical name. In deciding whether the name is likely to be seen as fanciful examiners should consider:
a) Whether the goods/services are likely to be generally sold/provided from the area concerned; and if so;
b) Whether the use of such a name in relation to the goods/services is likely to indicate the origin of goods/services.
For example, “Rajasthan Dolphins” for say cricket bats, is completely arbitrary and fanciful and can be considered for registration. Last but not least, it must be said that while geographical limitations will not usually overcome objections under Section 9(1)(b) in respect of goods, in the case of service marks, there could be a more liberal approach.
Nonetheless, the Act stipulates in Rule 106, The Trade Marks Rules 2017, that a mark that contains or consists of a 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), can be opposed by any interested person. It becomes imperative to note that as per Section 35, under the Act, no proprietor of a registered trademark can interfere with the bonafide use by a person of the name of the place of business, or of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services. This acts as a big boon for those wishing to register their trademarks in geographical names.
RELEVANT CASE LAWS
1. Geepee Ceval Proteins and Investment Pvt Limited v. Saroj Oil Industry [2003 (27) PTC 190]
“8. … The word ‘Chambal’ is a geographical name and a geographical name can be registered as a trademark if its distinctiveness is proved. Therefore, Section 9 of the Act does not put a blanket ban on the registration of a geographical name as a trademark….. Having regard to the case law cited and the fact of the present case, prima facie, it may be held at this stage that Chambal, although it is a geographical name, is capable of becoming a trademark and action for passing off based on it could be maintained.”
2. Hi-Tech Pipes Ltd. v. Asian Mills Pvt. Ltd, 2006 (32) PTC 192 Del. [2006 (32) PTC 192]
“31. The paragraph referred to by the learned counsel for the defendant from the treatise of McCarthy on Trademarks and Unfair Competition propounds the principle of false advertising, which would arise by geographical designation that is used with the goods which do not come from the place named by the designation. The trademark in question is `Gujarat’. It is general in nature since it cannot be said that the whole of Gujarat is known for any particular business/trade. …. The treatise of P. Narayanan also explains that for purposes of registration, a geographical name may be so registered upon evidence of acquired distinctive character by use of the word as a trademark in relation to particular goods/services. The position is more or less the same with the other examples given by the defendant in relation to the registration of Liverpool Cables, Glastonburys’ slippers, Simla for Tobacco and Cigarettes which have been explained in the judgments referred to above.”
3. Abu Dhabi Global Market v. The Registrar of Trade Marks, Delhi, C.A. (COMM-IPD-TM) 10/2023
The Hon’ble Delhi High Court while remanding the application of device mark “ ” back to the Registry asking it to advertise it in the Trade Marks Journal observed:
“29. Section 9(1)(b) of the Trademarks Act, in its clear and explicit terms, proscribes registration only of trademarks “which consist exclusively of mark or indications, which may serve… geographical origin… of the goods or services”. It is only, therefore, trademarks, which consist exclusively of marks or indications which designate the geographical origin of the goods, which cannot be registered.
30. Composite marks, therefore, stand ipso facto excluded from the scope of Section 9(1)(b), even if part of such marks consists of marks or indications which serve, in trade, to designate the geographical origin of the goods or services in respect of which the mark is registered”.
CONCLUSION
The Hon’ble Section 9(1)(b) of the Trade Marks Act, 1999, prohibits the registration of marks based on geographical origin. However, Section 35 allows the use of a place name in a trademark if used in a bona fide manner to indicate the place of business. Additionally, registration may be possible if the mark has acquired distinctiveness or secondary meaning, as long as it does not describe the origin of the goods. The guidelines permit registration of place names when they lack association with the geographical origin of the goods. 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 the registrability of such marks.
Reference:
https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf
https://www.sc-ip.in/post/what-s-in-a-geographical-name-understanding-use-of-geographical-names-as-trade-marks
