An Italian Jeans company based in
the US, which owns a trademark on the name “Jesus”, is currently cracking down
on as many as a dozen apparel companies in the US for trademark infringement.
The company, owned by Basic Net, which also owns the Kappa sportswear brand
says that they are only trying to protect the value of their brand.
The first question that come to
one’s mind is whether the name JESUS itself can be registered as a trademark
and ‘debased’ by its use as a trademark for the said goods.
In 2007, the USPTO registered the
word JESUS as a trademark giving the company exclusive rights to sell
Jesus-themed clothing in the US. While France, Austria, The Netherlands, Italy,
Spain and Belgium have registered the trademark, the application for
registration of the word in countries such as Australia, Cuba, Tajikistan,
Norway and Switzerland, among others, has been rejected.
In particular, it was rejected in
the UK for being ‘morally offensive to public’ under Section 3(3)(a) of their
Trademark Act. The court also held that mark’s primary significance in the UK
was that of the name of a religious figure, and not as an ordinary surname or a
forename, unlike in several other countries.
The USPTO perhaps failed to consider
that when people hear the name JESUS, it is evident that they associate it with
something other than blue jeans. In a country with a majority Christian
population, JESUS is more likely to be associated with JESUS CHRIST than with
an apparel brand. To my mind, the trademark ought not to have been registered
on two considerations. The first being the rationale adopted by the UK court
that it would morally be offensive given it is the ultimate symbol of
Christianity in addition to being a word of common origin in countries where it
is an ordinary surname or forename.
WHAT WOULD HAPPEN IN INDIA?
This brings us to Section 9(2)(b) of
the Trademarks Act, 1999 which states that anything that contains or comprises
of any matter likely to hurt the religious susceptibilities of any class or
section of the citizens of India shall not be registered as a trademark.
In my opinion, the word JESUS would
fall squarely within the ambit of this section. However, the question to be
asked is whether the mere use of the name of a deity would attract the
provisions of the section or if it is applicable in relation to classes of
goods and services, associated with which the use would be offensive.
A similar case came before the
Allahabad High Court in the case of Mangalore Ganesh Biri Works v. Dist.
Judge Meerut and Ors., where the Plaintiff argued
that the use of the image and name of Lord Ganesh for beedis was not
registrable as it had hurt his religious sentiments. The court rejected this
argument and held that the use of the symbol of “Lord Ganesh” in the beedis
manufactured by the petitioner does not hurt the feelings of any Hindu.
The case of Jesus Jeans is different
from the above case in 2 ways. Firstly, Jesus Jeans has no trademark in the
image of Jesus. Secondly, use of the name of a deity by an apparel brand is to
be differentiated from the use of a deity’s name for a brand that manufactures
and sells beedis. To cite another instance, the use of names of deities such as
Lord Ganesh and Lord Krishna on firecrackers was opposed before the Bombay High
Court in Bhau and Anr. V. State of Maharashtra and Ors. on the
ground that when such firecrackers are burst and the photographs thereon
destroyed, it hurt religious sentiments of people practicing the Hindu
religion. The court pointed out that this has been a matter of practice for a
long period of time and since nobody had taken objections to the same before,
the contention of the petitioner does not stand and he is not representative of
society at large.
A relook at Section 9(2)(b) makes it
clear that if religious sentiments of any ‘class’ or ‘section’ of the citizens
of India are hurt, then such trademark shall not be registered. Though there
has been no qualification as to who comprises a class or a section, it is
reasonably understood to mean more than a single individual. If it is extended
to mean that even the opposition by a single individual is to be considered, it
would override the ordinary rights of property vested in a person and would be
subjective and illogical.
Names of deities may not be
registered as trademarks not only on religious considerations but also by
virtue of being words of common origin. The word JESUS is neither a distinctive
mark nor has it become associated in the minds of the public with the goods
manufactured by the proprietor, which are jeans in this case.
For instance, in Bhole Baba Milk Food Industries Ltd. v. Parul
Food Specialties Pvt. Ltd. the Division Bench of the Delhi
high court differed from the Ganesh Beedis case on the point and held
that “KRISHNA”, the name of a deity cannot be used as a trademark as it is of
common origin and an exclusive statutory right in respect of such words cannot
be granted through registration.
Additionally, the court also
considered the fact that the goods being dairy products were closely associated
with the deity. The real question is whether there is a blanket bar on use of
the trademark or the bar applies to specific goods and services from using the
trademark.
Use of the name JESUS as a
trademark, irrespective of this additional consideration, squarely falls under
Section 9(2)(a) of the Act in addition to being a non-distinctive mark that has
not acquired secondary meaning and should thus not be registered in India.
Though there seems to be nothing
offensive arising from the use of the name for jeans in particular, the
opposition ought to stem from the use of the word by itself irrespective of
goods and services in relation to which the mark is registered. To my mind, it
is fairly evident that the word JESUS would first be associated with JESUS
CHRIST rather than placing significance on association with forenames and
surnames, especially in a country like India and should thus not be entitled to
trademark protection.