Since childhood, many of us can still recall the iconic advertisement of
Thus, usage of such terms in advertisements and branding in general is certainly an industry-wide practice, which the cement lobby/industry argue, is even a necessity to strengthen brands which are meant to portray strength and stability, such is the nature of the products.
The Trademark Perspective
From a purely trademark perspective though, it is evident that usage of terms such as the ones described above, add descriptiveness to the marks, thus may attract objection under Section 9(1)(b) of the Trade Marks Act, 1999. Such marks also raise the question of whether the Registry should even grant registration to such marks, so as to avoid monopolization of terms such as Water Proof,
But many such marks have indeed attained registration, likely due to the fact that most such marks have been filed as labels or in association with established house marks. Some examples of such trade mark registrations are tabulated below:
Thus, one would assume that such marks, when registered, are granted registration with disclaimers on descriptive terms/elements such as the waterproof, water shield, super-fast, etc. However surprisingly, many such marks appear to have attained registration sans disclaimers.
Circular Issued by BIS (
The
[For more in-depth information about the BIS, please see our earlier article on the BIS athttps://ssrana.in/articles/bis-overview-importance/ . ]
Last year, BIS had issued a circular dated
The BIS circular 'had strictly directed various cement firms across the country against using their registered trademarks on bags and advertisements, pamphlets etc if they contain general terms like 'super', 'strong', 'damp-proof', 'corrosion-proof', 'weather-shield', etc.,' as, reportedly in their opinion, the same could be considered to be misleading2.
Looking at the advertisements as well as registered trade marks of some of the leading cement manufacturers in the country, it is evident that branding and advertising using laudatory/exemplary, to the point of being descriptive, terminology is common to the trade and exercised by many cement manufacturers. Thus, such an order/circular would indeed have a negative effect on the branding and PR strategy of many cement companies, perhaps forcing them to reconsider the same altogether.
New Twist in the Tale - YE DEWAAR TOOT NAHI SAKHTI!
Being aggrieved by such order of the BIS, one of the leading Indian cement companies,
The Hon'ble Court, in this matter, recently passed an interim Order on
It has also been reported that the petitioners had submitted that BIS has no locus or any statutory jurisdiction to interfere with use of registered trade marks by their respective proprietors4. The Hon'ble Court, in the instant case, has accordingly ordered that no coercive step be taken against the petitioner for using the cement bags with its registered trade marks, and has listed the matter after 8 weeks. The Hon'ble Court has also noted that the respondent is free to move an application for vacation of the interim order along with their reply.
Conclusion
The critical question arising out the three afore-mentioned cases is therefore twofold:
- Can such marks, with such descriptive laudatory terms, be allowed registration by the Trade Marks Registry, sans disclaimers? General trade mark law and practice would suggest that such marks may be refused registration under Section 9(1)(b) of the Trade Marks Act, 1999, or may be registered with disclaimers; AND
- Does BIS have any authority to interfere with the use of registered trade marks by their owners, i.e. rights stemming from the Trade Marks Act, 1999? In these cases for examples, the nature of the marks would suggest that the cement manufacturers use such label marks on product packaging, cement bags, etc.
While for now
Whether such marks can be allowed registration sans disclaimers, and whether organizations such as the BIS can restrain registered proprietors from using their registered trade marks, are questions which have considerable ramifications, and not only with respect to the cement manufacturing industry, and may impact the nature and usage trends of trademarks across the board.
Footnotes
1 https://esay.in/singlenews?title=cement-makers-claim-comes-under-the-bis-lens&nid=862; https://www.firstconstructioncouncil.com/cement-industry-news/117960/Cement-makers-claims-under-the-lens-of-BIS
2 https://www.outlookindia.com/newsscroll/amp/raj-hc-stays-bis-circular-against-use-of-trademarks-by-cement-firms/2084858
3 https://services.ecourts.gov.in/ecourtindiaHC/cases/display_pdf.php?filename=U%2BbhtlrLe2adAHN8Tz%2F1dygnCUOTHiTsDHm%2BKwP3Ax7qw179JkCvSuJwnYSGyPQi&caseno=CW/14420/2020&cCode=1&appFlag=
4 Supra Note 2
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