Sunday, July 15, 2012

The Duel between Well-Known marks and the Standard they Represent

As I was drafting a set of pleadings this week, a question came to mind-

Say a mark X has become extremely well-known , such that it is a symbol  of a high quality multi-purpose product that finds application in various industries.  Mark X now moves against Mark XA in a contentious proceeding, such as an opposition. Can Mark X object to XA on the ground that XA in fact misrepresents a certain kind, quality, etc. that the mark X is symbolic of?

The objection I have detailed above, is under S. 9(1)(b) of the Trade Marks Act, 1999, as an absolute ground of refusal to registration of a mark.

One vehement view that came out of an informal discussion was that making such an argument would attract an objection of genericism to the mark X itself. However, I hold a slightly different opinion.

I think, the moment a mark is well-known, all other objections somewhat fade out. In other words, if a mark is so well-known to become symbolic of a certain quality, any other mark that is deceptively similar, would fall in the ambit of S. 9 (1)(b).

Moreover, while Section 9(1)(b) is an absolute ground of refusal, covering various aspects relating to lack of distinctiveness, the fact that a mark is extremely well known, such that it is symbolic of a certain stature, in many ways does append “acquired distinctiveness” to the mark. As well established, distinctiveness attributed to a mark may be either inherent or acquired.

I am not convinced that a well-known mark may not be able to adduce the ground of S. 9 (1)(b) to establish its case. The fact that a mark is well-known, well-protected, and so long as the proprietor of the mark has undertaken every possible effort to prevent the mark from becoming a generic term, to my eyes, such ground must be available.

On the other hand, am sure the opinion is, that if a mark has become symbolic of a standard, it must fall into the public domain, for anyone meeting those standards to use. My reply to that is, wouldn’t such allowable use, result in giving and using an implied naked license, which by itself is voidable (even if not void)??

It must be appreciated that the concept of a well-known trademark arose through the law of passing off and was later incorporated under relative grounds of refusal. Well-known marks, in my view, having acquired immense distinctiveness, must be allowed to take advantage of what they stand for, i.e. the quality and stature they command, and S. 9(1)(b) be allowed to move, as a ground during contentious proceedings.

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