The perils of adopting and enforcing a generic mark
The Delhi High Court by its recent order set aside an ex-parte injunction that it granted seven years back and which continued until the matter was set down for arguments. The Court order has once again stressed the inherent difficulties in enforcing a generic mark. The Court was adjudicating an injunction application filed by the Plaintiff, Three-N-Products Pvt. Ltd (Three N) against Kairali Exports (Kairali) and another relying on their registered rights in the mark AYUR. Three N had filed the suit alleging infringement of trademark and passing off objecting to Kairali’s use of the mark “AYURVASTRA” so as to safeguard their rights in the registered trademark “AYUR”.
Three N in support of their case contended:
- They are the registered proprietor of the mark “AYUR” in various classes which their predecessor adopted in the year 1984. It is an invented word and the mark has been used continuously and uninterruptedly since then.
- They hold a registration in respect of tissues, (piece goods), bed and table cover, textile article not included in other classes, in class 24 and in respect of clothing including boots, shoes and slippers in class 25.
- The mark and products sold enjoy global reputation and goodwill. They have made huge sales and advertised the mark “AYUR” through various media – print as well as electronic and have exclusive rights over the AYUR mark.
- They became aware of the use of the trademark “AYUR” in October, 2009, when defendant No. 2 made an application seeking registration of the mark “AYURVASTRA”
- Three N issued a cease and desist notice and defendant No. 2 is alleged to have agreed to discontinue use of the mark “AYUR” and “AYURVASTRA”. However, as they continued use the instant suit was filed.
Kairali in its defence argued:
- Three N has no exclusive right in the word “AYUR” per se as the word “AYUR” is an abbreviation of ‘AYURVEDA’ and signifies that the product has Ayurvedic qualities. The word “AYUR” per se is publici juris.
- Three N has failed to produce any evidence of the use of the mark in respect of the goods in class 25.
- Kairali is engaged in manufacturing and selling eco-friendly organic handloom fabric, which is dyed using Ayurvedic herbs. The mark “AYURVASTRA” is a composite mark comprising of the word ‘AYUR’ derived from the word ‘AYURVEDA’ and the word ‘VASTRA’ meaning clothes.
- They are using the mark AYURVASTRA with a unique logo, which is capable of identifying its own independent identity. The Calcutta High Court in a case involving Three N has held that they cannot claim exclusive right over the mark “AYUR” as the same is a generic word.
- Defendant no.2 is a society of weavers in Kerala who make clothes of different types for different agencies. The handloom weavers have been calling their clothes “AYURVASTRA” since times immemorial as they are using Ayurvedic medicinal plants for herbal dying. Defendant No. 2 had initially agreed to the cease and desist notice due to pressure from Three N and incorrect legal advice.
The Court after considering the pleadings and documents held:
- The claim of Three N that AYUR is an invented word and thus, distinctive is incorrect. The word “AYUR” has been used historically and is derived from the Hindu Vedic Texts. The word “AYURVEDA” is a Sanskrit term comprising of two words – ‘AYUR’, which means life or vital power and ‘VEDA’ – which means science or knowledge. Having adopted a generic mark Three N cannot claim protection as of right as the burden of proving distinctiveness is much higher when compared to an arbitrary word. Further, Three N also needs to prove that the other side has adopted a mark which is identical or deceptively similar to AYUR which is not the case.
- Kairali uses the mark AYURVASTRA in a completely different style, design and getup from the way Three N uses the AYUR mark. Moreover, their adoption also seems to be fair considering that “AYURVASTRA” is used on cloth and herbal dying process using Ayurvedic medicinal plants.
In view of the above the Court held that Three N has failed to establish a prima facie case and balance of convenience is not in their favour and accordingly set aside the injunction earlier granted.