Posted: February 21st, 2011
By Tiffany R. Johnson *
Imagine a sausage manufacturer taking the famous Triangle K symbol and plastering it on millions of packages of non-kosher links. The Triangle K symbol is a visual indicator of the word “kashrut” – or kosher – and functionally brands food products. In the U.S., regardless of the common usage of the word kosher, unauthorized use of the Triangle K symbol would undoubtedly constitute infringement of the trademark. Similar branding practices in India, however, may not have as much teeth under the High Court’s latest interpretation of the Indian Trademark Act, 1999.
On January 19, 2011, the High Court in New Delhi refused to give exclusive trademark rights of the word “Krishna” to an Indian milk manufacturer, Bhole Baba Milk Food Industries. According to the Times of India, Bhole Baba accused a butter producer, Parul Food Specialties Ltd., of infringing on its trademark “Krishna” brand. Justice Rajiv Shakdar refused to grant injunctive relief to stop Parul Food’s usage of the Krishna branding, but suggested that Parul edit the image it uses with its trademark (“Parul’s Lord Krishna” ) which is the same image used by Bhole Baba. Bhole Baba, arguing something similar to trademark dilution, has used the Krishna brand presumably since the company started in 1991. Because of its prominence in the market for so long, Bhole Baba argued it had a trademark of the term “krishna” under section 2(zg) of the Trademarks Act of 1999, which provides protection to “well known” marks.
However, in determining what is “well known,” the Act specifically excludes, in section 11(9)(v), analysis of whether the mark is well-known to the public at large in India. Factors the Act directs the court to consider are:
(1) The number of actual or potential consumers of the goods or services
(2) The number of persons involved in the channels of distribution of the goods or services
(3) The business circles dealing with the goods or services
Trademark Act 1999, 11(7)(i)-(iii). Seemingly disregarding the factors enumerated in the Act, the court reasoned that Krishna is such a common word in India, thereby failing the distinctiveness requirement of the Act. The court likened “Krishna” in India to “John” in western countries. However, this analysis seems to disregard the “well known” provision of the Act. While the Act requires that a mark be both distinctive and non-deceptive, it would seem that the “well known” provision would act as an alternative means of establishing distinctivness rather than a bar to it. By allowing businesses who have well known names and brands – potentially with commonly used words or images – to have trademark protection, the Act effectively addresses the issue of trademark dilution of established brands.
“Krishna” and the image of the deity chosen by Bhole Baba in association with dairy products seems more akin to “kosher” and the Triangle K than to “John.” It seems odd that the High Court would draw reference to Western generic terms, considering the differences between, say, U.S. trademark law and the Indian Trademark Act provision. While the reference to one of the most generic names in Western societies (e.g. consider the use of “John Doe” to label unidentifed persons) was made to illustrate a point, it discounts the importance of local standards of genericness. Let’s go with this comparison of the Indian law to U.S. law for a moment. In the U.S., once distinctive terms can, over time, become so well known that they actually become generic. Once genericized, a trademark can be cancelled and enter the public domain. One example is the Bayer Co. v. United Drug Co. case, which explained how aspirin had, over time, become generic to consumers. Meanwhile in India, well known terms can achieve trademark protection the longer they are used and recognized in the industry. Essentially, as terms become genericized in the U.S., they become well known in India; thus, making a comparison to generic Western terms is an unfortunate comparison of apples to oranges. The High Court’s conclusion in this case may take the teeth out of the 2(zg) provision by attempting to draw a line between “well known” and common, when in reality, the language of the statute would seem to recognize that common terms can be protected because of their well known use by a particular good or service provider. Bhole Baba was attempting to create a brand of dairy products that consumers could readily identify from the mark “Krishna” and the image of the deity. While this may not have been the most distinctive term Bhole Baba could have chosen, its use of the mark and the image for 20 years in the dairy industry likely established a secondary meaning of the word that transformed it from the realm of generic to “well known.”
*Tiffany Johnson is a second-year law student at Wake Forest University School of Law, and works as a Legal Writing and Research teaching assistant. She holds a Bachelor of the Arts in Politics from Princeton University. Upon graduation in May 2012, Ms. Johnson intends to litigate in the private sector.
**Image Source: http://www.harekrsna.de/108krishna.htm
This post was revised by the author on 12/14/2012. The original post read: “Some recent examples include ‘aspirin and xerox.” This was corrected to reflect the fact that Xerox is not a generic term and maintains its federally registered trademark.