Geographical Marks: Protection and Registrability:  A Jaunt Across Jurisdictions

Introduction

A question that has popped up multiple times in trade mark matters and has no absolute certainty is as to whether a particular trade mark whose primary or ordinary significance is ‘Geographical’ can be protected. As per a leading treatise on trade marks, i.e., McCarthy on Trademarks and Unfair Competition, it is only when a geographic mark is used as a descriptive term that the law requires proof of secondary meaning which means that when a geographic term is used in an arbitrary manner, taking into consideration the nature of the goods or services in issue, no secondary meaning is required.[1]Thus, a geographical mark applied arbitrary to goods or services in question, having no co-relation with the same, can be registered as a trade mark without any requirement to prove user on the part of the Applicant. However, in the event, if the name of a place or region is being applied for goods or services from which the goods actually originate, the mark may only be registered on the basis that the Applicant was able to establish user of the mark to an extent that the mark had come to be associated with the Applicant alone.

India

In India, marks which in their primary significance are ‘geographical’ were not per se registrable under the Trade and Merchandise Marks Act, 1958 under Section 9 (1) (d). An applicant would have to establish considerable use to enable itself to enjoy the benefits of registration. This position was recognised by the Hon’ble High Court of Calcutta in Imperial Tobacco Co. of India Ltd. vs Registrar of Trade Marks[2]. In this case, the Applicant had applied for the registration of the mark ‘Shimla’ in respect of cigarettes. Finding that the mark had not become distinctive, the mark was refused registration.

Over the years, courts in India have also been called upon to express their opinions on passing off of goods bearing the geographical trade marks and all the Courts have consistently held that geographical names are registrable on evidence of distinctiveness and also that the same can be protected under the common law of passing off, if they are able to satisfy the ingredients for the same. The following marks have been given protection in a passing off actions by the Hon’ble Courts:

1. Bharat[3]
2. Himalaya[4]
3. Hindustan[5]
4. Sunder Nagar[6]
5. Chambal[7]
6. Gujarat[8]

However, the Trade and Merchandise Act, 1958 was repealed in 2003, when Trade Marks Act, 1999 came into force. A perusal of Section 9 (1) (b) of the Trade Marks Act, 1999 demonstrates that currently marks which in their primary significance are ‘geographical’ are not barred from registration merely for the reason that the same are ‘Geographical Marks’. This means that the provision for registrability of geographical marks under Section 9 (1) (b) of the present Trade Marks Act, 1999 has advanced from the earlier provision of Section 9 (1) (d) of the Trade and Merchandise Marks Act, 1958.

Thus, under the 1958 Act, a registration of a geographical name was barred, however, under the current/1999 Act the registration of a geographical mark is only barred when the geographical place indicates the place of origin of the goods/services. Therefore, there is a clear departure in the scheme of the statute. However, it is to be noted that in the event a geographical mark has been applied in a descriptive manner, the same will still require on the part of the Applicant to demonstrate substantial use.  This change in law, was recognised by High Court of Gujarat in Sahkar Seeds Corporation v. Dharti Seeds[9] in respect of the mark ‘Vadhiyar’ sought to be protected for seeds. The Hon’ble High Court recognises that there is nothing to suggests that ‘Vadhiyar’ is known or manufacturing of seeds. Even a perusal of Draft Manual of Trade Marks, Practice and procedure, 10^th March, 2015 followed by the Registry in the matter of registration of trade mark makes it clear that if the name of the place has no relation or association with the goods concerned, the mark may be registered.[10] In the draft manual, there is an underlying principle of assessing reputation of the goods with the Geographical Name. The Trade Marks Office have registered multiple trade marks, which ordinarily have a geographical significance but have been applied fancifully. For example, Amazon[11], Daryaganj[12], Malibu[13], Nilgiri’s[14], Bahamas[15], Alaska Gold[16], Vegas[17], Nicobar[18] etc. 

Recently, on 10^th January, 2023, this question of registrability of geographical marks again came up before the Hon’ble High Court of Delhi in Siddharth Suri v. Registrar of Trade Marks[19]. The mark in question was ‘Andamen’, in respect of goods under Class 18. The Hon’ble High Court of Delhi relied upon the Manual of Trade Marks Practice and Procedures, and observed that registration of a name of place is permissible if the place does not have a reputation or association with geographical origin. The Hon’ble Court found no reputation of ‘Andamen’ in relation to the goods in Class 18 and permitted the mark to proceed for registration.

United Kingdom

In United Kingdom, Section 3 (1) (c) of the Trade Marks Act, 1994 deals with ‘geographical marks’. It is identically worded as Section 9 (1) (b)  of the Trade Marks Act, 1999 of India. In a leading decision titled Windsurfing Chiemse Productions-und Vetriebs GmBH (WSH) v. Boots-und Segelzubehor Walter Huber[20], the Court of Justice of the European Union interpreted Article 3 (1) (c) of the First Council Directive 89/104/EEC of 21^st December 1988 which is identical to Section 3 (1) (c) of the Trade Marks Act, 1994 of UK by holding that:

• Article 3 (1) (c) does not prohibit the registration of geographical names as trade marks solely where the names designate places which are, in the mind of the relevant class of persons, currently associated with the category of goods in question; it also applies to geographical names which are liable to be used in future by the undertakings concerned as an indication of the geographical origin of that category of goods;
• where there is currently no association in the mind of the relevant class of persons between the geographical name and the category of goods in question, the competent authority must assess whether it is reasonable to assume that such a name is, in the mind of the relevant class of persons, capable of designating the geographical origin of that category of goods;
• in making that assessment, particular consideration should be given to the degree of familiarity amongst the relevant class of persons with the geographical name in question, with the characteristics of the place designated by that name, and with the category of goods concerned;
• it is not necessary for the goods to be manufactured in the geographical location in order for them to be associated with it.

Following Windsurfing (Supra), the Intellectual Property Office of United Kingdom in the matter of Cancellation 500096 by Elgin Beverages and Opposition 103965 by Char (UK) Ltd.[21] has upheld the validity of the trade mark ‘Oxford’ for Tea. The Office did not find any association of OXFORD with Tea.

United States

While the statutory language, is quite similar in India and UK, in US the Statute does not uses the term ‘geographical origin’ but refuses registration of a mark if the mark is ‘geographically descriptive’[22] or ‘geographically deceptively misdescriptive’.[23] A ‘geographically deceptively misdescriptive’ trade mark is absolutely barred from registration, having no exception. However, a ‘geographically descriptive’ mark may be registered on the basis of evidence of distinctiveness.[24] It is to be noted that before North American Free Trade Agreement (NAFTA) came into force on January 1, 1994, both categories of geographical marks being ‘geographically descriptive’ or ‘geographically deceptively misdescriptive’ were permitted to proceed for registration on the basis of evidence of distinctiveness. However, to comply with North American Free Trade Agreement, the Lanham Act was amended and thereafter only ‘geographically descriptive’ marks were allowed to proceed for registration, provided the Applicants are able to provide evidence of distinctiveness.[25]

In re Nantucket, Inc.[26] the examiner of trade marks refused registration of the mark ‘Nantucket’ for shirts on the ground that since the shirts do not originate from ‘Nantucket’ the mark is primarily geographically deceptively misdescriptive. The Applicant filed an appeal before US Court of Customs and Patent Appeals. The Court held that the Examiner should have seen the nature of Applicant’s goods and compared it with the mark. Thereafter, the registration could only be denied if the mark is ‘geographically descriptive’ or ‘geographically deceptively misdescriptive’. The Court also observed that the Examiner has not given due weightage to the term ‘deceptively’ in the Statute and held that if the goods do not come from the place named, and the public makes no goods-place association, the public is not deceived and the mark is accordingly not geographically misdescriptive. Accordingly, finding no indication that public would expect Applicant’s shirts to have their origin in Nantucket, the order of the Examiner was overturned. Coming to the issue of protection of the registration, finding the mark ‘Dutch/Dutch Boy’ for paints to be arbitrary, the US Courts of Appeals, 9^th Circuit in National Lead Co. v. Wolfe[27] not only upheld the validity of the trade mark but also injunction was granted.

Conclusion

To conclude, it appears that in India, UK and USA, the position is similar, an arbitrary adoption of geographical mark is registrable without any requirement of secondary meaning. However, in the event the mark indicates geographical origin, the same may be registered on the basis of acquired distinctiveness. Additionally, in USA the Courts have gone into the question of ‘geographically deceptively misdescriptive’ which have been observed to be per se non-registrable, without exceptions. An interpretation of Section 9 (2) (a)[28] of the Trade Marks Act, 1999 of India can be that Section 9 (2) (a) is akin to refusal of ‘geographically deceptively misdescriptive’ marks and India also bars registration of such marks, without exception. It might only be a passage of time that we may have answer to this question from a forum.  

[1] McCarthy on Trademarks and Unfair Competition; Fourth Edition, Volume 2, Chapter 14; Pages 14-11

[2] AIR 1968 Cal 582

[3] Bharat Tiles and Marble Pvt. Ltd. v. Bharat Tiles Mfg. Co.; 1978 GLR 518

[4] Khetu Ram Bishambar Dass v. Bhim Sain; 1983 PTC 313

[5] Hindustan Radiators Co. v. Hindustan Radiators Ltd.; 1987 PTC 73

[6] Sunder Nagar Association Regd. & Anr. v. Welfare Cultural Club (Regd.) & Anr.; 1995 PTC 270

[7] Geepee Ceval Proteins and Investment Pvt. Ltd. v. Saroj Oil Industry; 2003 (27) PTC 190 (DEL)

[8] Hi Tech Pipes Ltd. v. Asian Mills Pvt. Ltd.; 2006 (32) PTC 192 (Del)

[9] 2017 (71) PTC 77 (Gujarat)

[10] Draft Manual of Trade Marks, Practice and procedure, 10th March, 2015, pages 49 -51, available at: https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf, last visited on: 29^th January, 2023

[11] Trade Mark Application No. 916831

[12] Trade Mark Application No. 3777964

[13] Trade Mark Application No. 451439

[14] Trade Mark Application No. 420265

[15] Trade Mark Application No. 2110518

[16] Trade Mark Application No. 4973944

[17] Trade Mark Application No. 2583701

[18] Trade Mark Application No. 3361983

[19] C.A. (COMM.IPD-TM) 77/2021

[20] Windsurfing Chiemsee Produktions – und Vertriebs GmbH (WSC) v. Boots- und Segelzubehör Walter Huber & Franz Attenberger, Cases C 108/97 and C 109/97 (ECJ, May 4, 1999)

[21] Re: Oxford Tea, TM Registration No. 2625960 in the name of Char (UK) Ltd., 6^th October, 2015, UKIPO

[22] Lanham Trade – Mark Act, Section 2 (e) (2), 15 U.S.C.A, Section 1052 (e) (2)

[23] Lanham Trade – Mark Act, Section 2 (e) (3), 15 U.S.C.A, Section 1052 (e) (3)

[24] Lanham Trade – Mark Act, Section 2 (f), 15 U.S.C.A, Section 1052 (f)

[25] In Re California Innovations, Inc, 329 F.3d 1334 (Fed. Cir. 2003)

[26] 677 F.2d 95 (1982)

[27] 223 F.2d 195 (1955) 105 USPQ 462

[28]Section 9 (2) (a) – A mark shall not be registered as a trade mark if— (a) it is of such nature as to deceive the public or cause confusion;