SNAX GOES HOAX!! Today reading newspaper and the food bill news all over, a small corner caught my eye about the “Britannia can’t register biscuit brand “Snax” as a Trade Mark (TM)” for a reason as the Snax word being too generic. Since decades, we have been associating the milk-bikies and snacks time with names Parle and Britannia, hang on! Didn’t I just use the word “Snacks”? Was it associated with Britannia specifically? Nope, I just used it commonly for every other snack item. “Snacks” is an English Generic Word meaning some light food/refreshment. Britannia, the maker of Good Day and Tiger biscuits, has been a prudent market player and has been alert about protecting their brand-names. Obviously, its competitors also play fair monopoly by highlighting; opposing or challenging misin terpreted TMs. Registration of TM gives it a legal enforceability and a liberty to use it. The Intellectual Property Appellate Board (IPAB) In Chennai upheld an earlier order (of year 2006) by the Deputy Registrar of Trade Marks, which allowing the opposition of PepsiCo refused to register the “SNAX” as a TM (applied in August 2002). Aggrieved by the earlier decision, Britannia had moved IPAB against the order. The rationale of judges1 was that the word Snax is not only phonetically equivalent but also visually and structurally equivalent to the English word snacks. Since, TM has a direct reference to the quality of the goods for which registration is sought it was not granted. They noted that the mark Snax alone does not qualify for registration.In 2009, Britannia won a legal victory for use of the “Britannia Snax” together one word as TM against PepsiCo when as a fair competitor had opposed the registration on various grounds. Britannia had applied for “Britannia snax” and “Snax” separately probably anticipating that “snax” will not be granted as a TM. Using Generic term “Snax” would have restricted others from using that word, as the original owner of TM has exclusive and absolute r ight by registration. A generic word or expression is a term already in public domain with same or secondary meaning that cannot form a subject of TM registration. If the mark is the common name/generic for the goods on which the mark is affixed, characterizes a good then cannot be monopolized by any one player. Hence, will not be protected as TM. E.g. the word Snacks/ Snax for snacks category or word “Cars” or “Automobiles” can not be TM for car-making. One may refer the specific interpretation of Genericism in the published Official Journal of the International Trademark Association.2 Few generic terms can get TM protection: a) If a term is generic for one type of product in certain category, can be available as a TM for another kind of product. E.g. “apple”, generic for a certain kind of fruit; yet not generic for personal computers or for record companies. Also, Apple Computer has no claim for TM infringement against farmers and grocers who use “apple” to refer to fruit. b) If a descriptive word is primarily used or recognized by relevant consumers to refer to a single source of a product e.g. THERMOS, COKE. The determination of Generic term depends on the actual language usage of relevant consumers and the time when the term known as generic becaus e something that was generic few years ago may not be generic in future. TM attorneys, legal teams in the corporate houses involved in clearing brand names must keep a conservative approach while coining a term as brand name. _________________________________________________________________________________ [S Usha, acting chairman, and V Ravi, technical member (Trade Marks) of IPAB] The Official Journal of the International Trademark Association Volume 95 /2005, a comprehensive commentary by Mark. C. Levy about analysis of the Generisicm to Trade Mark where he details the concept of De Facto Secondary Meaning Doctrine (DSMD). [Mark. C. Levy is a Partner in the law firm of Preston Gates & Ellis LLP, Associate Member of the International Trademark Association and co-counsel to Microsoft Corporation in Microsoft Corp. v. Lindows, Inc., No. C01-2115C (W.D. Wash.).]
Posted on: Mon, 02 Sep 2013 08:11:25 +0000
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