No monopoly over generally used words
While deciding an appeal late last year, a division bench of the Madras High Court (“Madras HC”) held “[T]herefore, such a word, which is of general use, cannot be a monopoly of the appellants alone….” It is awfully difficult to create a list of words in general use in any language. However there are several cases where a generally-used word (or a common word) has become a trademark. This happens easily in at least two situations. One, where a common word which describes the goods or services has achieved secondary meaning by use, i.e., over a period of time, a consumer would associate that word with a particular product only. For instance, Naukri is a well-known job portal in India and naukri in Hindi literally means job. Two, where a common word is unusual in its application, given the goods or services it covers. For instance, apple for computer and related devices.
Aachi Spices and Foods (“Aachi spices”) sought an interim injunction against Aachi Cargo Channels Private Limited (“Aachi cargo”) for using the word “Aachi”. Aachi spices argued infringement owing to their 50 odd registrations for “Aachi” in the form of different labels and packages and they therefore enjoy the exclusive right to use the mark. They also argued that they enjoy immense reputation over their trademark and therefore, Aachi Cargo should not be allowed to use the term “Aachi”.
Aachi cargo argued that the goods and services offered by them were evidently different from those of Aachi spices.
The court observed that though Aachi spices had many registrations, none of them dealt with cargo or related services. Agreeing with Aachi cargo on dissimilarity of services, it held that Aachi spices was not entitled to an injunction.
After denying the injunction, the court considered the issue of infringement. It held against Aachi spices as follows:
“[t]he word “Aachi” in Tamil means “grandmother”. Such term is in common use throughout the State of Tamil Nadu. Therefore, such a word, which is of general use, cannot be a monopoly of the appellants alone (and can) be used in any other product than the one they are doing business”.
This judgment has me confused. While this judgment was pursuant to an appeal against the judgment of a single judge of Madras HC, there was no real narration of facts here to give a better picture of the case. The single judge’s decision throws some more light on the facts. Either way, both judgments conclude on the same note that “Aachi” is a common word and no intellectual property lies in using such a common word.
Aachi is hardly descriptive of goods such as spices. It therefore does not have to satisfy the test of secondary meaning. It most certainly is unusual in its application. It could, by a stretch, be suggestive since grandmother’s recipes are most coveted kitchen secrets. Aachi spices is extremely well-known in Tamil Nadu for its different blends of spices which make every day cooking supposedly easy. So the reputation factor should have been easy to prove. I am not even sure how and why reputation was not taken into account.
Granted that, in India, given the sheer number of languages with varying dialects and overlapping lexicons, it is rather difficult to define what would be a common word. This being said, in a case decided by the Supreme Court, the word “eenadu” which in at least two south Indian languages (Kannada spoken in state of Karnataka and Telugu spoken in the state formerly known as Andhra Pradesh) means “today” was decided to have gained immense reputation to be a well-known mark in the state of Andhra Pradesh. The services covered by the identical marks were different just like the present case.
The Delhi High Court recently denied injunction for use of the mark “today” because it is a common word. In that case though the India Today Group argued that “today” was a mark essentially associated with it for news publication and broadcasting and sought infringement against Alpha Dealcom applied for its trademark “Nation Today” for services such as broadcasting and telecommunication services. However, the parties to the case covered similar or related services and in any event “today” is a term inseparably related to the news and broadcasting industry. Granting monopoly over such a term would be obviously wrong.
While I am yet to make sense of the Madras HC’s judgment, on a lighter note, grandmother’s spices sound plausible in fact it even lends some sort of credibility to a brand. Grandmother’s cargo sounds downright hilarious.