Radhika M
Customers identify their favourite product or a business entity with the help of some labels. That label may be in the form of a name or packaging or colour or shape or tagline. This label distinguishes a product from other similar goods which are manufactured by competitors. So, any label which distinguishes a product from similar goods is a trademark.
Trademark carries the goodwill and reputation of a business or a trade. It is the identity of a product and a factor which indicates the credibility of the manufacturer. Trademark is an intellectual property. The infringement of a trademark is actionable before court of law.
In India, Trademarks are protected by Trademarks Act,1999 (hereinafter called Act). The Act provides for the registration, assignment, transmission, and infringement of trademarks. Section 2 (zb) of the Act mandates that a trademark must be capable of being represented graphically and it must distinguish the products or services from other similar products.
So, it is a mark used or proposed to be used in relation to goods or trade conducted or carried out by a proprietor. Only the proprietor of a Trademark has the right to use and assign it. Anyone who uses a Trademark without authorisation or makes products or services deceptively like trademark bearing products or services, will be liable for infringement.
Even under the Common Law they are liable for passing off. When a product is deceptively like an already existing product (by its name or packaging or colour or shape or tagline) and the former being manufactured with an intention to confuse people with the original product, it is called passing off.
As per section 27 of the Act , the proprietor of an unregistered trademark cannot maintain a suit for infringement under provisions of the Act. But such a proprietor can seek the common law remedy against passing off.
Recently the High Court of Madras in the case of M/s ITC Ltd v. Nestle India Ltd[1] held that trademark can be claimed only for distinctive terms. Laudatory words cannot be granted protection of law and no one has the right to monopolise such words. Terms which are common to an industry cannot be monopolised by any manufacturer.
It is common nowadays that International Brands are fighting for the Patent, Copyright, Design and Trademark rights. Such claims make huge headlines and often set judicial precedents. The complexity and extensiveness of businesses have secured trademarks right over every distinct term used by them. It is not confined to a brand name, but also extends to the tag lines used by them. And the infringement of such trade slogans was scrutinised by the courts. One such case was Reebok India Company v. Gomzi Active[2], where the infringement of a trade slogan was discussed.
Summary of the case is as discussed below.
Reebok India Company v. Gomzi Active
The controversy started when Gomzi Active filed a suit against Reebok India for passing off their trade slogan “I AM WHAT I AM”. Gomzi Active (hereinafter called as Respondents) claimed that they have been using the slogan “I AM WHAT I AM”, since 1998 for their fashion apparels. Later in the year of 2005 the Reebok India (hereinafter called as Appellants) started to use the slogan for their products which allegedly to have violated the trademark rights of the Respondents. So, the Respondents prayed for an injunction against the Appellants from using their trade slogans.
The Trial Court granted an injunction but at the same time it observed that Respondents has not registered the trade slogan with the Trademark Registry as per the Act. Further it also opined that the Respondents were carrying out the business under the name “GOMZI” not as “I AM WHAT I AM”.
Thus, the appellants preferred an appeal to the High Court of Karnataka against the injunction passed by the Trial court.
The issues before the High Court were:
- Whether the Trial Court has committed any illegality or perversity by granting an injunction against the appellants?
- Whether the Respondents can claim rights over the trade slogan “I AM WHAT I AM”?
The main argument put forward by the Appellants was that the Respondents are claiming rights over an unregistered trademark. Even though it is claimed by the Respondents that they were using the trademark since 1998, there are no material particulars to prove the same. Further it is not registered with Trademarks Registry as required by law.
So, the Respondents have no right whatsoever regarding the slogan “I AM WHAT I AM’. It was further contended that if the Respondents want to rely on the alleged goodwill, they should prove it with the sales figures, market outcomes etc. Further there should be a continuous use of the alleged slogan to claim the derivation of trademark.
The slogan “I AM WHAT I AM” has not become a distinctive term relating to the products of the Respondents. Here the Respondents filed an application for registering the trademark only in the year of 2005 that is, when they came to know about the usage of the same by Appellants.
The Appellants have already filed application for registering the slogan in various foreign nations. Further it was submitted that they also spent a huge amount in advertisements and for such registration process, so if the injunction continues in place, they will suffer irreparable loss.
On the other hand, the Respondents contended that they were the first users of the slogan “I AM WHAT I AM”. So the first users of slogan, shall be given protection of law as a matter of practice. Respondents produced the copy of an advertisement published in a magazine in the year of 2002, which contained the phrase “I AM WHAT I AM” along with their registered trademark GOMZI.
Respondents also contended that their customers will be confused by usage of the same term by the Appellants, which will cause them an immense lose.
After hearing both parties, the High court observed that while granting injunction one must be cautious. The courts should ensure that there is a prima facie case, balance of convenience and irreparable loss on the part of applicant.
The balance of convenience must be favouring the applicant and irreparable injury will be caused to them in the absence of an injunction. The court should also ensure that, it would not do injustice to the party against whom the order is passed. Here the court opined that the Respondents failed to show these elements in their case.
Apart from the advertisements made in the year of 2002, there is no other evidence to show that they have been in the continuous use of the slogan since 1998. Also, the parties are conducting business under different trademarks, that is, REEBOK and GOMZI. Their trademarks are different, so a prudent customer would not be confused by the slogan “I AM WHAT I AM”.
Further the Respondents cannot avail the remedies under the Trademarks Act, 1999 since they have not registered the same. All they have is to seek the common law remedy for passing off. And to grant a remedy for passing off, the Appellant’s goods must be deceptively like the Respondents.
And they should have carried out the business with the intention to deceive the customers making use of the goodwill of the Respondents. In this case, such elements are missing. Also, the Respondents failed to show the nature of irreparable injury that may occur to them in the absence of injunction.
Also, the court commented that the slogan “I AM WHAT I AM” is a generic phrase. It is something common to the industry. The slogan has not acquired a distinctiveness relating to the products belonging to the Respondents. So, it cannot be said the phrase carries the goodwill of the company. The court further opined that since an application has already been filed with the Trademarks Registry for registering the same, it would not be appropriate to interfere.
So, the High Court vacated the injunction granted by the Trial Court and directed to dispose the case expeditiously.
Even though the Respondents preferred an appeal to Supreme Court, it refused to interfere.
Conclusion
So, the position regarding the protection of trade slogans, it must be registered under the Act. An unregistered trademark or slogan will not get any benefit of the Act. No infringement suit can be maintained against the use of an unregistered trademark.
Further, distinctiveness of the intended ‘trademark or slogan’ must be proved. The applicant must show that the phrase or term relates to his business and his products only. It must not be a term common to the industry as whole.