Whose Word Is It Anyway?

ISKCON versus ISCON, Tata Sons versus Oktatabyebye, Gap versus Green The Gap… as trademarks are shielded by the law with ever more zeal, are you and I left with no right to use these words and symbols?

About five years ago, when a Delhi-based NGO involved in environmental and social issues decided to start a brand that would retail kitschy apparel and accessories that had been upcycled (created from trash), it had a simple question to address: what to call it?

All of its products, from tea coasters and iPad covers to T-shirts, were to be made from ‘waste’ and created by inhouse tailors and craftsmen. But as, Vimlendu Jha, executive director of the NGO Swechha puts it, no one came up with a good enough name to encapsulate the idea of the project. That’s when it occurred to Jha: ‘How about Green the Gap?’ A few years earlier, Swechha had developed a school-level educational programme called Bridge the Gap. Aimed at getting students to love their environment, it was a success, says Jha. And thus the derivative. “Green the Gap was perfect. It was everything we wanted of a name,” he says. “We were not just teaching, as we did through Bridge the Gap, we were converting waste into valuable commodities, we were providing employment, we were greening the gap.”

Since then, Green the Gap has earned a reputation for itself as a green do-gooder brand. It runs a workshop in Delhi, a couple of stores (in Mumbai and Delhi), and also retails its products at other outlets it has tied up with, apart from selling its wares online.

On 1 March this year, Jha reached the Delhi store to find a letter awaiting him. On first impression, it seemed like an official missive of sorts. As he went through it, he wondered if it was a prank. Only on his second reading did he realise what it was: a threat of legal action. The US retail giant Gap Inc was accusing Swechha of trademark infringement for its use of ‘Gap’.

“I was—how do I put it?—shocked out of my wits.”

Trademark laws in India are governed by The Trade Marks Act, 1999, along with The Trade Marks Rules of 2002. Regarded by many intellectual property lawyers as one of the best trademark laws in the world, these seek to shield marks—or symbols, designs, words or expressions—that identify the products or services of a particular source from mala fide use. The idea is to stamp out fakes that mislead customers into buying what they think is the real thing.

But while firms are entitled to keep others from using their property, there is also another upshot: people lose access to the use of common words, phrases and symbols that are appropriated by businesses. So in a trademarked world, to what extent does an individual have the right to use one of these?

Says Vikrant Rana, managing director of SS Rana & Co, an intellectual property law firm in Delhi, “Like all trademark laws all over the world, complications often arise in India, especially when companies go overboard to protect their trademarks.”

According to IP lawyers, many companies fear that letting others use even a variant of their trademark, however tenuous the link or unrelated their interests, could lead to the dilution of its consumer appeal. This is why they guard their brands with such zeal.

Can common phrases be trademarked?

In 2009, the online travel firm Makemytrip, was asked to relinquish the domain name of a travel recommendations website it had created because it ran into trademark trouble. Makemytrip had started a website called Oktatabyebye.com, which let holidayers share their travel experiences and post reviews of hotels. However, Tata Sons complained that the term ‘tata’ in its domain name was suggestive of its brand and was thus an unfair attempt to leverage its trademark. Says Kamal K Avutapalli, associate director of Makemytrip’s legal department, “We told [Tata Sons] that the term ‘tata’ in our domain name referred to ‘ta-ta’ the informal farewell greeting, and had nothing to do with their trademark. But to them, it was nothing short of trademark infringement.”

Tata Sons took the matter to the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre, a United Nations agency that deliberates on domain disputes, among other things. The agency ruled in favour of Tata Sons and Makemytrip was asked to hand over its ownership of the domain name. The travel company then challenged its decision at the Delhi High Court, which has issued a stay order on the verdict. The case is still underway.

According to Avutapalli, the court’s final decision will set a precedent. “What our case does is also pose a bigger question. Can people and businesses use common and generic words? Or can companies—in this case owning a trademark over a similar name but in a different context—assert their rights over other people’s?”

Makemytrip has also put out an appeal online to garner public support for its stance. Swechha’s Jha has done something similar. Pitching it as a David-versus-Goliath story, an apparel giant bullying a tiny brand promoting sustainable living, Jha started gathering favourable opinions on the internet. “They chose to mess with the wrong guy,” he says.

His online petition said that he would not take this lying down and his story hit the media both here and overseas. “I had to let people know and get them on my side. The more pressure [Gap Inc] put, the more I would let people know. I would make it a big PR disaster for them.”

An interesting trademark case that is currently underway in a civil court in Ahmedabad involves the International Society for Krishna Consciousness (ISKCON). Its temple in the city has filed a lawsuit claiming that its name is being misused by JP Infrastructure Pvt Ltd, a realtor that has put up several structures—including a mall—under the name ISCON.

According to Yashomati Nandan, president of ISKCON Ahmedabad, the mall is what drew the Society’s ire when it was coming up near the temple in the early 2000s. “We approached them many times over the years, and they said they will look into it,” Nandan says, “But they never did. In fact, they started expanding. More and more projects with the name ISCON started coming up.”

ISCON is now a well-known real estate brand in Gujarat, with numerous commercial, retail and residential projects built in that name. Nandan argues that the realtor had first used the name for its ISCON Mega Mall to draw benefits from its proximity to the temple. He claims that the company has an unfair advantage in the resemblance of the name with that of the Krishna Consciousness group. “People get mistaken,” he says. “Many have started believing that the mall is somehow connected to the temple and the ISKCON movement.”

Ignored by the company, the temple approached the court in 2011. In its defence, the real-estate firm argues that there is no question of misuse since the two parties’ interests do not overlap; also, that the name it uses is ‘JP ISCON’ and not simply ‘ISCON’. According to the temple, however, the term ‘JP’ in ‘JP ISCON’ is presented in such tiny type that most people don’t even notice it.

Venkat Ganesan, president of JP ISCON, denies that the term ISCON was drawn from the name of the famous temple. Says he over email: ‘We have coined and adopted our extremely famous house mark ISCON by adopting the first letter ‘I’ from the name Induben, a sister of the present director of the company, second letter ‘S’ from the name Saraswatiben, the mother of the present director of the company, and the last three letters ‘CON’ from the word ‘construction’ as we are engaged in [this] business… Also, even the characters ‘J’ and ‘P’ of the corporate name JP Iscon Ltd, formerly JP Infrastructure Pvt Ltd, are derived from the first letters of the directors’ names—Mr Jayesh Kotak and Mr Pravin Kotak… it is our general practice to adopt the first letters of family names or the business category while coining or adopting a trademark / trade name.’

Also, to settle the matter amicably, contends Ganesan, the firm added the letters ‘JP’ to ‘ISCON’ and changed its name from JP Infrastructure Ltd to JP Iscon Ltd. ‘Our group has completed more than 20 projects in last 13 years with more than 2.5 million square feet of residential, commercial, and retail space in Gujarat…we are very much attached to our brand ISCON, which we have built over the years with a lot of hard work and passion. We would not like to part with it.’

If one goes by a ruling of the Intellectual Property Appellate Board (IPAB) a few years ago, and if the row comes down to the name itself, the temple may stand a fair chance of securing a favourable verdict. Back then, a trademark row had erupted over similar names with different spellings between two dairy cooperatives. In 2001, Ichhamati Co-Operative Milk Producers’ Union Ltd, a dairy cooperative in West Bengal, started selling dairy products in the state under the label Imul, an abbreviation of its name. Three years later, the cooperative put in an application to register the trademark Imul. Guess who objected? The famous Kaira District Co-Operative Milk Producers’ Union Ltd of Anand, Gujarat, which has been selling dairy products under Amul since 1955. According to the latter, a buyer could confuse Imul with Amul.

The Registrar of Trademarks in Kolkata, however, rejected the objection and approved the trademark in 2006 on the grounds that Imul was honest and not deceptively similar; and since it had been selling since 2001 with increasing sales, a termination of the application would be unfair. The Gujarat cooperative appealed against the decision at the IPAB in Kolkata, which ruled in its favour. The phonetic similarity, it judged, was enough to mislead customers. ‘An unwary purchaser with average intelligence and imperfect recollection’, held the Board, would be confused between the two. Sales figures, it added, were no reason to approve of Imul as an independent trademark.

Although Ichhamati Co-Operative Milk Producers’ Union Ltd is still colloquially referred to as ‘Imul’ in the West Bengal locality, it has been ordered against using the brandname.

The trademark law is clear that you cannot use one owned by another company or individual. If you do, you run afoul of it and may be punished accordingly. But does it not also restrict your right to free expression? Can someone, for example, use a brand for the purpose of, say, satire?

Such questions arise from a current case at the Delhi High Court. After the Tata Group and Larsen & Toubro were awarded the Dhamra Port Project in Odisha to develop, Greenpeace began a campaign against the project in 2010.

Environmentalists have long opposed the port’s construction as it lies close to an eco-sensitive area that includes one of the Indian Ocean’s largest nesting grounds of the endangered Olive Ridley turtle. To warn people of the harm it foresaw, Greenpeace put up a game on its website, a variant of PacMan. Titled Turtle vs Tata, gamers had to save a turtle from tiny demons. Not only does the game use the name Tata, its demons bear the group’s insignia: a stylised ‘T’ within a circle.

According to Tata Sons, this amounts to infringement of its trademark and defamation of the business group. Tata approached the High Court for an interim injunction and sought around Rs 10 crore in damages from Greenpeace. “We argued that what we were doing was not trademark infringement, but an attempt to create public awareness through a game. This is accorded to us [by] freedom of speech,” says Divya Ranganathan, a senior campaigner with Greenpeace, which has also claimed that this depiction was a form of parody. Section 29(4) of the Trade Marks Act, 1999, argues Greenpeace, allows the use of a trademark for criticism, fair comment and parody if it is done with due cause.

However, for all those who have the urge, it is advisable to bear in mind that the use of a brand for purposes of parody could prove tricky. It must not be an exact reproduction of the original trademark, and, to establish the legitimacy of your intent, its use should conjure an original work of some sort. If the parody reminds one of the original without adequate distinction, you risk legal trouble.

Greenpeace’s depiction of Tata as demons in its game has specifically been challenged by the business house. “To defend ourselves [on] this issue,” Ranganathan says, “we turned to the concept of hyperbole. We argued in court that portraying Tata as demons was done in an exaggerated and overtly emphatic manner simply to create a strong impression and was not meant in a defamatory manner.” The court found merit in Greenpeace’s arguments and ruled out an injunction against the game in 2011. The broad case of trademark infringement and defamation, however, is still to be settled.

Not everyone has the resources that an organisation like Greenpeace does. Jha, for instance, despite having got Gap Inc to back off by canvassing internet support, lives in fear of a lawsuit around the corner. “Apart from sending me two legal notices, nothing more has come of it. I suppose they don’t want to risk my creating more noise,” he says, “But I keep hearing about their plans [to enter the Indian market]. And if that happens, and they decide to go to court against us, I don’t know if I will be able to take them on.”

Tata Sons and Gap Inc did not respond to Open’s questions for this article

About The Author

Lhendup G Bhutia

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