India: What's In A Geographical Name?: Understanding Use Of Geographical Names As Trade Marks

The names of cities, states and countries are often used by businesses to refer to their goods and services. Some well-known examples are British Airways, The New York Times, India Gate, etc. Since names of cities, states and countries cannot be monopolized, it leads one to wonder whether trade marks which incorporate names of geographical locations would be considered as an indication of the goods/services having emerged from a particular region, such as a geographical indication, and would thereby not be allowed to be monopolized.

Courts have often held that geographical terms and words used to designate a locality, a country, or a section of a country cannot be monopolized as trade marks. However, a geographical name not used in "geographical sense" to denote the place of origin but used in an arbitrary or fanciful way to indicate origin or ownership regardless of location, may be sustained as a valid trade mark¹. This blog delves into this distinction in detail.

Position in Law and Practice

The trade marks statute makes it abundantly clear that trade marks which consist exclusively of marks or indications which may designate, inter alia, the geographical origin of the goods shall not be registered³. The statute also envisages that a registered proprietor cannot assert their rights against a third-party's bona fide use of the name of a place of business as a trade mark³. Further, as per the guidelines governing trade mark filings⁴, registration of the name of a place is permissible if the place does not have a reputation or association with the geographical origin of goods and/or services covered by the filing.

As such, it is evident that neither in the statute nor in practice, is the use of geographical terms in trade marks barred. While determining whether a trade mark is excluded from registration owing to use of geographical names, credence ought to be given to ascertaining whether the trade mark consists exclusively of geographical terms and whether it is capable of being used by other traders to describe the characteristics of their goods/services⁵.

There have been several instances where the Trade Marks Registry ("Registry") has taken a favourable stand in cases where proprietors, with the names of cities/states/countries have applied for registration of their marks for entirely unrelated goods/services. For example, CAMBRIDGE for readymade garments, MONACO for electrical wires, cables, etc., BALI for lingerie, etc. However, there have also been cases where the Registry has not applied the statutory tests and has denied registration to marks that meet the statutory criteria.

In the landmark case of Abu Dhabi Global Market v. The Registrar of Trade Marks, Delhi⁶, the Registry's order refusing registration of the mark ABU DHABI GLOBAL MARKET Device, since ABU DHABI is a geographical name and the capital of UAE, the mark as a whole is non-distinctive, and cannot be monopolised, was called into question by the Delhi High Court.

It was the plaintiff's case that the view taken by the Registry, stating that ABU DHABI is the name of a place and constitutes the most prominent part of the mark sought to be registered, was entirely misplaced. In fact, the plaintiff submitted evidence both before the Registry and the Delhi High Court showing that the mark was being used with full knowledge of the UAE government.

The court, while expressing its disagreement with the reasoning of the Registry, stated that the statute only bars registration of a mark consisting of words which exclusively designates the geographical origin of a place. Composite marks, therefore, stand ipso facto excluded from the scope of this section, even if part of such marks consist of indicative wording/s. The mark in the present appeal, being a composite mark, which couples the words ABU DHABI, GLOBAL and MARKET with a logo cannot be barred from registration. Further, the court, while refuting the Registry's contention that ABU DHABI forms a dominant part of the mark observed that the principle of "dominant part" is alien to the test of distinctiveness under the statute. The court, accordingly, remanded the application back to the Registry asking it to advertise it in the Trade Marks Journal.

Conclusion

While there is still ambiguity in the way the Registry exercises its judgement on cases involving geographical names, courts have reinforced the statutory parameters for determining registrability of such marks.

In order to secure registration, the way forward is proving that the geographic names used in trade marks have no relation whatsoever with the goods for which they are applied. The proprietor of such mark has to prove that the geographic name is so unique that no trader would have used such name for the goods/services applied for and that use of such mark would not lead the consuming public into believing that the goods/services originate from that geographical location. Adding to this, the secondary significance or acquired distinctiveness is also paramount for registration of a geographical name.

Stakeholders can be rest assured that if their mark is sufficiently distinctive and meets the paraments under the statue, registration of marks that include geographical names is easily achievable in the Indian jurisdiction.

Footnotes

1. Imperial Tobacco Company of India Limited v. The Registrar of Trade Marks reported, AIR 1977 Calcutta 413.

2. Section 9(1)(b) of the Trade Marks Act, 1999.

3. Section 35 of the Trade Marks Act, 1999.

4. Chapter II: Examination of Applications filed for Registration of Trade Marks.

5. Double Mint 2004 RPC 18, 327.

6. C.A. (COMM-IPD-TM) 10/2023

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.