Wednesday, February 27, 2013

Not a Holy War...

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.

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.

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