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Courts' take on translated marks: An analysis of Mr. A D Padamsingh Issac and M/s Aachi Masala v.

Mr. A D Padamsingh Issac & M/s Aachi Masala v/s Aachi Cargo Channels (P) Ltd.

Citation: AIR 2014 Mad 2
Quorum: Satish K. Agnihotri and M.M. Sundresh, JJ.

Word/Mark Argued To Be Generic: Aachi, a Tamil word which is translated to mean grandmother.

Arguments of The Appellants:
The submission of the appellants was with respect to being the registered proprietor and therefore having the exclusive right to use the word Aachi and that the respondents cannot use the word regardless of being in a completely different service/business. In pursuance of this they relied on two judgments- Caterpillar Inc., Illinois USA, V. Jorange and another (O.S.A. No. 166/1997 in C.S. No. 785 of 1996 decided on 01.10.1997); and Daimler Benz Aktiegesellschaft and another V. Hybo Hindustan (AIR 1994 Delhi 239).

Arguments of The Respondent
The learned counsel appearing for the respondent has submitted that admittedly the appellants and the respondent are operating in two different and distinct fields having no connection whatsoever with each other. There is no similarity of goods manufactured and the service rendered by the parties. There is no likelihood of causing any confusion in the minds of the public that the business of the respondent is that of the appellants.

Decision of The Court
The opinion of the court was that, in a suit for infringement, the Courts are primarily concerned with the label as a whole which may also contain the name. The label reflecting the masalas and spices of the appellants has nothing to do with the service being rendered by the respondent as cargo operators. Therefore, on this ground they refused to grant injunction in favor of the appellants.

To discuss the scope and ambit of sections 28, 29 and 30 of the Trademarks Act, 1999, the court relied on the case of Orchid Chemicals & Pharmaceuticals Ltd., v. Wockhardt Limited (2013) 3 CTC 841 where each of the sections were discussed.

With respect to section 28, its applicability relies on two conditions:
"subject to other provisions of the Act" and subject to its "validity".

Section 29 which deals with infringement of a registered trademark by an unregistered proprietor makes it clear through its text that it is meant to be used against the person, who is not entitled to use the said trade mark under "law". This is required to constitute an infringement. Lastly, a perusal of Section 30 of the Act would show that Section 29 of the Act is subjected to it. Therefore, Section 30 of the Act is an overriding provision to Section 29.

The reason the Madras High Court discussed the three provisions in the Orchid Chemicals case was to apply it to the facts to determine whether "METOPROLAL", a chemical component, is a "publici juris". The court found out that there are number of registered proprietors having the prefix "METO". All of them are identified with the common name, in view of the chemical component. Hence, it is not as if the respondent has infringed the said word "METO". It is already in the public domain, even much prior to the application of the appellant. Applying the said facts when we read Section 29 of the Act, it can be concluded that the limits on effect of the registered trade mark under Section 30 of the Trade Marks Act, 1999, would apply with all force.

In the case on hand, the bench concurred with the single judge that the 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 be used in any other product than the one they are doing business.

Analysis:
Trademark law protects marks of a proprietor in order to distinguish their product or service from that of others’. However not every mark falling within section 2(m) of the Trademarks Act, 1999 can be protected. A word which is general or generic and is used in common parlance cannot be trademarked because granting protection to such words under the Act would mean that the proprietor has the monopoly over that word which is used by all.

Hence, a generic term unlike arbitrary, suggestive or even a descriptive mark which has gained secondary meaning, cannot be registered. It can so happen that an arbitrary or fanciful mark may become generic due to unregulated use and consequent dilution of the mark such as Xerox or Dettol.

Proprietors give generic terms to their brand which makes it vulnerable to infringement even if they have been given registration under the Act. It is easy to determine whether words like Krishna can be protected as in the case Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd (Delhi High Court), because it is so common and cannot acquire a secondary meaning hence cannot be accorded the same protection an arbitrary mark would get.

But what happens when a proprietor uses a word mark which is generic in another language but not in English?
This was what was dealt in brief by the Madras High Court in the Aachi case where the appellants used Aachi for masala and spices whereas the respondents used Aachi for cargo services. The word Aachi means grandmother in Tamil and is a common word in Tamil. In my opinion, the court was right not to grant injunction in favor of the appellants because even though the word is registered, a common word or phrase cannot be monopolized by one. If it is already in public domain then it cannot attract section 29 of the Act.

It may be noticed that different jurisdictions have different take on this issue. The Madras High Court relies on a strict interpretation of the law and does not allow suits for infringement for generic words even if they are translated, as long as it is generic in that language and has not acquired a secondary meaning. The court looks at whether the word is in public domain by checking how many such registrations already exist. Delhi High Court on the other hand is more liberal in this matter as can be seen in the case of Sunil Mittal v. Darzi on Call, 2017.

This particular revolved around the word Darzi which was used by two proprietors in the same business that is of tailoring. The court held that the disputed word is not generic to the trade and injuncted the defendants.

They came to this conclusion by looking at the territorial nature of the business and the word generally used at that place. The business is undertaken in Delhi, considering this, in my opinion, the court has erred in its decision because Darzi is tailor in Hindi/Urdu. The court also did not look at the mark as a whole and considered only the word even though the way it is written and the logo with the word are completely different from each others’. The court did not consider section 9(1)(c) which clear lays down that for a generic mark there cannot be registration under the Act.

The Supreme Court in T V Venugopal v. Ushodaya Enterprise, (2011) Vol 4 SCC 85, also took a similar view when the question put forth was regarding the term Eenadu. The plaintiff used the word for incense sticks whereas the respondents used it for newspapers printed in Telugu. Eenadu means this land or our land in Kannada, Tamil and/or Malayalam. The court reached its conclusion that the word is generic and only the respondents are allowed to use the word by relying on how much imagination does it take by a consumer about qualities characteristics, effects, purpose or ingredient of the product or source.

The primary difference between the Delhi High Court case and the Madras High Court case is that in the former instance, the proprietors undertake the same service so there may have been a likelihood of confusion. However, the Madras High Court case involves two completely different services. But, in the case of Eenadu it was clear to the court that the there exists a secondary meaning to the common word at least in Telugu speaking states. But if common words are given protection then it goes against the absolute grounds laid down under Section 9(1)(c).

Thus it may be concluded that, the decision of the Madras High Court in the Aachi case, upholds the whole purpose and objective of section 28 to 30 of the Act unlike the above two cases.

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