Supreme Court: name of holy book cannot be registered as a trademark
In Lal Babu Priyadarshi v Amritpal Singh (Civil Appeal No 2138/2006, October 27 2015), the Supreme Court of India, in dismissing the appeal filed by Lal Babu Priyadarshi ('the applicant') against a decision of the Intellectual Property Board (IPAB), has stated that it is not permitted to register the name of a holy or religious book - in the present case Ramayan, the holy book of the Hindu religion - as a trademark.
Pictorial representation of Ramayan
The opponent’s label
The applicant’s label
The dispute arose when the applicant applied to register the trademark RAMAYAN with a crown device in respect of incense sticks and perfume products, among other things. Amritpal Singh ('the opponent'), a dealer of the applicant also trading as Badshah Industries, filed opposition proceedings against the application with the Trademarks Registry. The opposition was based on the following grounds:
The applicant’s trademark, being the name of a religious book, could not be monopolised by an individual;
RAMAYAN is not distinctive and is devoid of any distinctive character; and
The applicant’s trademark is similar to the opponent's earlier mark BADSHAH RAMAYAN.
In its defence, the applicant contended as follows:
- It has sold incense sticks under the mark RAMAYAN extensively since 1981;
- In view of such extensive use, the mark RAMAYAN and the packaging of the goods have become distinctive;
- The opponent was in fact the subsequent user of the mark RAMAYAN, as it had started using the same after his dealership with the applicant was terminated; and
- The mere fact that the trademark is the name of a religious book is not sufficient to refuse registration as a trademark.
After hearing the parties, the Trademarks Registry dismissed the opposition proceedings on the basis that:
- the applicant’s mark RAMAYAN (with a crown device) was capable of distinguishing the applicant’s goods; and
- the mark RAMAYAN was not included in the list of prohibited marks published by the Trademarks Registry.
Aggrieved by the Trademarks Registry’s decision, the opponent appealed to the IPAB. In the appeal, the opponent referred to the Eight Report on the Trademarks Bill 1993 submitted by the Parliamentary Standing Committee ('the parliamentary report'), which mentions that "any symbol relating to religious gods, goddesses and places of worship should not ordinarily be registered as a trademark".
After hearing the opponent’s contentions, the IPAB allowed the appeal and refused registration of the applicant’s trademark. This resulted in the present appeal before the Supreme Court. The applicant, relying on the abovementioned arguments and the allegedly erroneous interpretation made by the IPAB, also contended that the opponent himself claimed use of a similar mark and, therefore, could not object to the registration of the applicant’s trademark.
After hearing the parties, the Supreme Court upheld the decision of the IPAB and dismissed the appeal on the following grounds:
- The parliamentary report did not want to disturb existing registrations, but expected the government to initiate appropriate actions if a party complained that a particular trademark would hurt religious susceptibilities. The applicant’s trademark application was pending registration at the time when the parliamentary report was presented.
- The applicant’s label (which was the subject matter of the trademark application) clearly showed that the applicant sought to take advantage of gods and goddesses, which is not permitted.
India is known for its diverse religions, faiths, castes and communities. The Hindu religion itself has countless gods and goddesses worshipped by different castes and communities, and using names with a religious connotation as brand names is a common practice in India. However, the Trademarks Act 1999 prohibits the registration of marks which might hurt religious susceptibilities, and the Trademarks Registry has published a list of prohibited marks which includes names such as Lord Buddha, but does not include Ramayan (as argued by the applicant). Despite these provisions, the Trademarks Registry may thus continue to accept such marks.
Interestingly, in an earlier case, Praveen Raj v Controller General of Patents, Designs and Trademarks, the High Court of Kerala had allowed a temple trust to register a trademark consisting of a picture of the Attukal deity. It was clarified that registration would not adversely affect the devotees' right to worship, but that the trust could restrain others from providing services under the name of the deity for monetary benefits.
Adheesh Nargolkar and Shailendra Bhandare, Khaitan & Co, Mumbai
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