Gillette fails to remove CHAMPION marks from register

In M/s Gillette India Ltd v M/s Harbans Lal Malhotra & Sons Pvt Ltd, the Intellectual Property Appellate Board has dismissed applicant Gillette's request for the removal from the Trademark Register of two trademark registrations belonging to respondent M/s Harbans Lal Malhotra & Sons for the mark CHAMPION for "razor blades for exports" and "safety razors".

The action was precipitated by a legal notice served to the applicant by the respondent, alleging infringement of the registered trademark CHAMPION.

The applicant’s case was threefold:

1. The marks should be removed from the register on the ground that they had not been put to genuine for a continuous period of time, as stipulated by the Indian law.
2. The mark CHAMPION was used as a laudatory term for brand imagery. The word 'champion' is public juris and signifies quality and value when used in connection with goods. Therefore, it cannot be monopolised by a single party.
3. The mark CHAMPION is incapable of acquiring distinctiveness and, therefore, it should not have been registered in the first place. The applicant relied on the decision of the High Court (Chancery Division) of England and Wales in British Sons v James Robert (1996 (RPC) 281), in which it was held that, where a  mark is descriptive, extensive use is not sufficient - it must be shown that the mark has become a household word and is recognised by at least 90% of the relevant consumers.

The respondent put forward the typical defence that it was the first to use and register the mark CHAMPION in the country. Interestingly, as the facts unfolded, it turned out that the applicant had offered to take over the respondent’s business. The present action was thus in response to the refusal of that offer.

The IPAB made the following observations:

• On the merits, there was sufficient evidence on the record (ie, annual production, sales, exports and invoices) to demonstrate use of the marks, as stipulated under the law.
• With regard to the argument that the mark should be recognised by 90% of the population, this could be used as a test for determining whether a mark is well known. However, the IPAB was not convinced that this test may be used to remove a mark which has been on the register for a period of at least 40 years. A single use may be sufficient to prevent a mark from being removed from the register.
• The applicant itself admitted that it had attempted to buy out the respondent. In these circumstances, the applicant could not argue that the respondent cannot be the proprietor of the marks, as the applicant was aware of the respondent’s registrations.
• The applicant’s conduct was not in conformity with international commercial standards. While the term ‘champion’ may prima facie be a laudatory expression, it can qualify for registration if and when it acquires secondary meaning.

There are lessons for brand owners to take away from this case. It is important to note that the law, no matter how comprehensive or well-founded, must be applied in conformity with ethical standards. Therefore, parties must ensure that they approach any legal forum with clean hands, having disclosed all relevant and material facts. Further, the case shows that one cannot use the law to its undue advantage - a party is likely to fail if the action is in bad faith or unethical.

Prachi Agarwal, Anand and Anand, New Delhi