Delhi High Court: name of ancient yoga form is not valid trademark

In Institute of Inner Studies v Anderson (January 10 2014), the Delhi High Court has considered the validity of a registered trademark which consisted of the name of an ancient form of yoga.

The mark had been registered by a person who claimed to have contributed significantly to the development and promotion of the yoga technique. The plaintiffs were part of a group that distributed and published books and printed material, and conducted workshops, seminars and lectures, on ‘pranic healing’ across the globe, including India. The defendants conducted courses, issued certificates and sold material (books, audio and video) on pranic healing in India.

The pranic healing technique was developed by Samson Lim Choachuy, aka Master Choa Kuk Sui. Pranic healing is an esoteric science that uses the inherent energy of life in all beings for self-healing. The plaintiffs claimed that Master Choa Kuk Sui was a world-renowned authority in the field of pranic healing, who had adapted and systematised the ancient science of pranic healing. It was established that Master Choa Kuk Sui had registered PRANIC HEALING in Class 16 and Class 41 of the Nice Classification; he had later assigned all his intellectual property, including the trademark PRANIC HEALING, to the plaintiffs.

The plaintiffs argued that the defendants were using the PRANIC HEALING mark without authorisation. They further alleged that, by continuing to use the mark without authorisation, the defendants infringed the trademark and were guilty of the tort of passing off. The plaintiffs sought an interim injunction - based on the prima facie validity of the registered trademark - restraining the defendants from using the mark, followed by a permanent and mandatory injunction to the same effect.

In addition to trademark protection, the plaintiffs argued that they had copyright protection over materials (eg, trade literature and books) referring to the pranic healing techniques, and sought to restrain the defendants from commercially exploiting those techniques.

The plaintiffs put forward the following arguments:

1. The mark was proprietary to them, as Master Choa Kuk Sui had added new techniques to the basic concept of pranic healing and his work was worthy of protection.
2. Even assuming that the concept of pranic healing was in the public domain, the methodologies and principles developed and practiced by the master were unique to him and were not in the public domain. As the master had spent years developing and spreading modern pranic healing, the term 'modern pranic healing' (unregistered trademark) had acquired a secondary meaning and had come to be associated exclusively with the master.
3. In addition to the mark MODERN PRANIC HEALING, the mark PRANIC HEALING had been used by the master, as well as the plaintiffs, for a considerable period of time in India. By virtue of such longstanding use and of the plaintiffs' efforts in popularising the mark, PRANIC HEALING had become associated with the master and his descendants.
4. In relation to copyright, the performance of pranic healing was covered under the head "choreography", and thus merited copyright protection as a “dramatic work” under Section 13(a) of the Copyright Act 1957.

The defendants counter-argued as follows:

1. The term 'pranic healing' was not coined by Master Choa Kuk Sui. It is publici juris and is a generic term. Yogi Ramacharaka and Swami Sivananda wrote books on pranic healing which predate the works of the master.
2. The master acknowledged in his autobiography that most of his works are derivative works.
3. Healing is part of the traditional knowledge of India and has been used by several gurus. Therefore, the expression 'pranic healing' is incapable of distinguishing the services of the plaintiffs from those of others. Consequently, PRANIC HEALING is not a valid trademark within the meaning of the Trademarks Act, as it lacks distinctive character and is a generic expression.
4. The Trademarks Act does not provide any protection to techniques, processes or sequences. Therefore, the plaintiffs cannot claim trademark protection for 'pranic healing'.
5. Wtih regard to copyright protection, 'pranic healing' was part of the traditional knowledge of India, and the plaintiffs had failed to show how the pranic healing techniques, practices and concept amounted to a work of choreography.

The court ruled in favour of the defendants and rejected the plaintiff’s request for interim and permanent injunctions. The court ruled as follows:

1. The plaintiffs could not make a case for infringement of the trademark, as the expression 'pranic healing' is incapable of performing the function of the trademark due to the following reasons:

1. It was evident that it was not Master Choa Kuk Sui or the plaintiffs who had coined the term 'pranic healing'.
2. On the date of application for registration of the mark, the expression 'pranic healing' was prima facie non-distinctive, as it was the name of a concept or technique for doing exercise. The expression was not capable of distinguishing the services of the plaintiff from those of others due to its widespread use in India dating back centuries. Therefore, it had become a generic name that could not be protected, as it was known as the name of a concept of yoga.

2. The plaintiffs had failed to show acquired distinctiveness. As the expression 'pranic healing' had been widely used for centuries, no amount of expenditure or investment in a term that is embedded in the history of India could result in the term acquiring secondary meaning so as to identify a single entity.

The court also held that the pranic healing techniques could not be afforded copyright protection on the following grounds:

1. The techniques were generic per se and had been in the public domain since the ancient ages.
2. The techniques were essentially daily exercises and could not fall under the definition of 'dramatic work' under the Copyright Act, because the element of fixation or pre-determination that is essential to a 'performance' was absent in the practice of the technique. Moreover, the physical movements and postures in the pranic healing techniques were not deemed to be a choreography.

The court concluded that “copyright protection was vested only in the language used to describe the yoga art in the book, the selection and arrangement of the facts or Asanas, and their presence in a sequential manner in the book". The defendants were allowed to print and publish material based on knowledge available in the public domain that did not infringe the plaintiff’s copyright. However, the defendants were restrained from reproducing and selling the contents of the books, CD-ROMs, brochures and other literature, and the material used during workshops and yoga sessions of the plaintiffs.

Anay Shukla and Vivek Kathpalia, Nishith Desai Associates, Mumbai