Mark removed from register based on public interest

India

In Hindustan Unilever Limited v Three N Products (TRA/138/2004/TM/DEL (CO 6/2003) TRA/139/2004/TM/DEL (CO 8/2003) TRA/116 TO 118/2004/TM/DEL (CO 9 to 11/2003), May 18 2012), the Intellectual Property Appellate Board (IPAB) has ruled that the mark AYUR should be removed from the Trademarks Register.

The dispute arose in 2003 when respondent Three-N-Products filed suit against applicant Hindustan Unilever Limited in the District Court of Ernakulam (State of Kerala), contending that the applicant’s trademark LEVER AYUSH was deceptively similar to its trademark AYUR. In response, the applicant filed five rectification applications against the respondent’s registered marks. The applicant argued that:

  • 'Ayur' is a commonly used word derived from the word 'Ayurveda', which is a 5,000-year-old form of medicine;
  • it had not been proven that 'Ayur' had a secondary meaning;
  • the respondent could not say that the mark was inherently distinctive or had acquired distinctiveness;
  • the primary association that 'Ayur' conjures in the minds of consumers is that of a ‘system of medicine’ dealing with natural plants, herbs and minerals;
  • the registration of the mark AYUR was blatantly dishonest and constituted an over-reaching attempt to monopolise a generic word;
  • the existence of a registration for AYUR would obstruct the legitimate rights of various traders and manufacturers;
  • such a monopoly would cause confusion and mislead the public; and
  • the respondent’s company profile in one of its publications stated that "'Ayur' means life", which amounted to an admission that the word 'Ayur' is generic.

In its defence, the respondent stated that:

  • the applications for rectification had been filed in bad faith;
  • the registration for AYUR covered cosmetics and pharmaceuticals and, therefore, the mark could not be said to be descriptive;
  • the mark AYUR had nothing to do with ayurvedic products;
  • the respondent had been present on the market for almost two decades;
  • the respondent had owned registrations in virtually all classes for over 25 years;
  • when the applications for rectification were filed, the respondent had used its AYUR mark for 19 years;
  • the respondent had been vigilant in protecting the AYUR mark, had filed 452 oppositions and had secured favourable orders in several court actions; and
  • 'Ayur' had been held to be an invented word by the Delhi High Court.

The IPAB upheld the applications for rectification, primarily on the grounds that:

  • 'Ayur' is not an invented word; and
  • should the mark AYUR remain on the register, the registration would be against the public interest as the word 'Ayur' has been widely used in India for several thousand years.

The IPAB also stated that, if the respondent’s claim that its AYUR mark has nothing to do with ayurvedic products is true, this in itself would amount to deception, as the average consumer would believe that a product bearing the mark AYUR has been made using an ayurvedic formula. On the other hand, if the respondent’s product is actually an ayurvedic preparation, then the AYUR mark is descriptive and cannot be registered. In the IPAB’s words: "It is really a catch-22 situation for the respondent. The mark must go".

The decision is important in that it shows yet again that the Indian courts/tribunals consider the public interest as paramount. From the Glivec case to the first compulsory licence granted under the Patents Act and the present case, Indian courts have increasingly considered the public interest and sought to prevent monopolies. However, the outcome could have been different if the AYUR mark had been applied to products other than cosmetics or medicines.

Mustafa Safiyuddin, Shailendra Bhandare and Meghana Chandorkar, Legasis Partners, Mumbai

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