India Post recently sent a legal notice to Paytm to restrain the mobile wallet company from using the word, 'postcard', in its products.
Paytm subsequently rebranded its product to 'lifafa' to signify the
tradition of gifting money in an envelope in India (also known as 'shagun').
In its legal notice, India Post had cited the Indian Post Office Act,
1898 and the rules framed thereunder, to support India Post's exclusive
right to use the term 'postcard'. However, under the Indian Trademarks
Act, 1999 generic terms (words used in common parlance) are not
generally capable of trademark registration.
Indian Trademarks Act, 1999:
According to trademark law, generic names (common names, dictionary
words, descriptive words) are not protected as trademarks. An example of
a generic name is 'rice'- an individual/company can register the brand
name used for selling rice (such as 'India Gate' or 'Daawat') but not
the word 'rice' itself.
Similarly, a restaurant which serves 'dosa' cannot trademark the phrase, 'dosa', as dosadenotes a popular South Indian dish and is a descriptive term.
Section 9 of the Trademarks Act gives the absolute grounds for refusal
of registration of a trademark. Under Section 9, marks which are "devoid
of any distinctive character" and marks which are commonly used in the
trade cannot be registered. One could argue that 'postcard' is a word
which is common in the postal service and therefore, not registrable
under Section 9 of the Trademarks Act.
The reason behind not allowing generic marks to be registered as
trademarks is to prevent monopoly over common words which must
necessarily be used by others in a particular trade to conduct business.
To illustrate, if a company which sells rice is allowed to trademark the
word 'rice' itself, other companies which sell rice would not be able
to use the word 'rice' to describe their goods. Therefore, words which
refer to a genus or category of goods are not trademarked.
Indian courts are reluctant to allow trademark protection to generic marks. In 2013, the Madras High Court in Mr.A.D.Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd vs Aachi Cargo Channels Private Limited observed that the term 'aachi', a Tamil word, means 'grandmother' and therefore, could not be monopolised by any individual/company.
When can generic marks be registered?
There are certain exceptions which allow for registration of generic
marks as trademarks. If a generic mark is used in relation to a trade
where it is not generic/common, the word may be capable of trademark
registration. An apt example of such a trademark is the word, 'Apple',
trademarked by the company, Apple Inc.
Apple uses its eponymous trademark on computer hardware and the use by
the company on its hardware goods has no connection with the dictionary
meaning of apple. Further, an apple is not common in the business of
computer goods. If Apple were in the business of manufacturing fruit
juice, they would probably not be able to use 'apple' as a trademark on
their juices because in the fruit juice scenario, apple would be a
generic word in the trade of manufacturing fruit juices.
Another example of a generic mark which enjoys trademark protection is
'Mango' which sells women's apparels in India. Similarly, it may be
possible to trademark 'postcard' (which is otherwise a common word) for
use in a random trade such as a restaurant service or a fashion label.
Interestingly, marks which are distinctive originally may become generic
over time, this is known as 'genericisation' of a mark. This happens
when a particular trademark becomes so popular that consumers begin to
substitute the trademark with the product itself. 'Thermos' and 'Xerox'
were originally trademarks but due to popular use, these words have now
entered the dictionary and are no longer trademark-protected.
The US Supreme Court is expected to rule on
a petition challenging Google's trademark over the phrase 'google'; the
petition has been filed on grounds that 'google' (a word which is
recognised by the Oxford English Dictionary and means 'to search on the
internet') is a common word and should be treated as a generic mark.
Who has monopoly over 'postcard'?
India Post relied on the Indian Post Office Act, 1898 and its rules to claim the exclusive right to use 'postcard'. Neither the 1898 Act nor the Indian Post Office Rules, 1933expressly states that only India Post shall have the exclusive right to use the term 'postcard'.
