Use of Goa name in mark not prohibited under Emblems Act

In Goenkarancho Ekvot v Union of India (Writ petition 161 of 2003, June 21 2007), the Mumbai High Court has held that a place name does not fall within the ambit of the Emblems and Names (Prevention of Improper Use) Act 1950 and the use of such a name as a trademark cannot be prevented under this statute.

The Indian trademarks statute debars registration of trademarks if their use is prohibited under the Emblems Act. The Emblems Act prohibits use as a trademark of any name or emblem specified in the schedule to that act or any colourable imitation thereof without the approval of the government. The schedule includes the following entries:

"4. The name, emblem or official seal or emblem of the government of India or of any state, or any other insignia or coat of arms used by any such government or by a department of any such government…

7. Any name which may suggest or be calculated to suggest (i) the patronage of the government of India or the government of a state; or (ii) connection with any local authority or any corporation or body constituted by the government under any law for the time being in force."

Goenkarancho Ekvot, a society acting for the welfare of the people of the state of Goa, filed a petition against the Indian government and the registrar of trademarks to cancel and prevent the use of the name Goa in the trademark GOA 1000 GUTKA owned by the fourth respondent - a manufacturer of gutka (a preparation of crushed betel nut, tobacco and sweet or savoury flavourings).

There has been a lot of concern and controversy in India as to whether gutka is harmful and causes cancer. Goenkarancho Ekvot claimed that:

• Goa is an 'expression of prestige' for the Goans;
  
  
• the mark GOA 1000 GUTKA 'instantly invokes images of Goa in the minds of people';
  
  
• it was not in the interest of Goans to be associated with gutka; and
  
  
• the registration of the mark bearing the name Goa and the use thereof is prohibited under the provisions of the Emblems Act.

The court held that Goa is a place name and such names do not fall within the ambit of the schedule to the Emblems Act. Accordingly, the court reasoned, the use of the name Goa cannot be prevented under the Emblems Act. The court held that Clause 4 of the schedule contemplates that the name, emblem or official seal of the government of India or of any state may not be used by any person without the permission of the central government. Goa, the court found, is the name of a state or place, and a state government cannot be synonymous to the name of a place or state. Further, the court held that the public would not understand the use of the name Goa as part of the mark GOA 1000 GUTKA to mean that the government of the state of Goa backs the product to which the mark applies or that the mark is connected with any local authority, corporation or body constituted by the government under any law as contemplated by Clause 7 of the schedule.

Accordingly, the court dismissed Goenkarancho Ekvot's petition as having no merit and being an abuse of the process of law.

Mustafa Safiyuddin, DSK Legal, Mumbai