IPAB directs removal of AYUR from the Registry

The IPAB, disposing four miscellaneous petitions in M/s. ITC Ltd v. M/s. Three-N Products Pvt Ltd (dated 28 June 2013) concerning goods in the classes 29 - 32, ordered for the removal of the mark “AYUR” from the Registry. Coming down heavily on the Registrar, the Order noted as follows: “18. It is indeed unfortunate that the Registrar who registered the first mark AYUR for the respondent, had not endorsed that the respondent will not have an exclusive right to AYUR. If he had done that, the respondent may have come up with modifications. Further, with such a registration, the respondent would not have ventured to launch an attack on anyone who ‘dared’ to use AYUR anywhere in their marks. If the respondent had not attacked others and had dealt with the mark as a label mark, claiming no exclusive right to the letters A, Y, U & R perhaps this mark would not have been challenged. The Registrars who are vested with the important duty of deciding which marks are registrable should make their decision wisely and correctly. We doubt if anyone in India can plead ignorance of the meaning of the words Ayu or Ayur. It is very unfortunate that by casually granting this registration, the Registrar has generated unwarranted litigation.” 

Facts and Arguments 

The applicant obtained registration for the marks "AYURVIBHA", "AYURUVAR" and "AYURBHO". In May 2004, the respondent instituted C.S. No. 124/2004 in the Hon'ble Calcutta High Court for restraining the applicant from using the above marks “or any other marks with the word "AYUR" as a prefix or suffix.” On 10th June, 2004, ex parte injunction was granted against the applicant. On knowing that the respondent had obtained registration for the trade mark "AYUR" in class 29, 30, 31 and 32 in Nos. 536257B to 536260B respectively, the applicant filed the petitions for rectification. 

The applicant contended that “AYUR” per se is generic. It is neither distinctive nor inherently capable of distinguishing the respondent’s goods. Further, the mark “AYUR” is not a well-known mark. It was submitted that the claim to a well-known mark must be proved by the production of evidence to satisfy the Court that the mark is a well-known mark 

The respondent filed his counter statement claiming that they had been engaged in the manufacture of cosmetic products, ayurvedic formulas, body case and health care products since 1984 under the trade mark "AYUR". According to the respondent, the trade mark "AYUR" is an invented word as there was no other mark "AYUR" when the respondent adopted the mark. Further, it was contended that the mark is a well-known mark. 

Order ("Instant Order") 

IPAB considered the High Court judgments which held that "AYU" and "AYUR" cannot be said to be invented words. [We blogged on the Calcutta High Court judgment in Three-N Products v. Emami Ltd here.] IPAB also considered its earlier Order (TRA/138/2004/TM/DEL - IPAB Order No. 117 of 2012) in Hindustan Unilever Ltd v. M/s. Three – N Products (P) Ltd and Anr concerning Classes 3 and 5. IPAB noted that “We had held there that Ayur is a generic word and in public interest, it cannot be monopolized by anyone. We had held in that case that in public interest the respondent cannot be allowed to monopolise the words Ayu and Ayur. Ayush, in fact, is a Department of the Government under the Ministry of Health, exclusively devoted to alternative medicine and systems (Ayurveda, Unani, Sidha and Homeopathy). The words Ayu or Ayur cannot claim to have acquired secondary significance when there are so many traditional connotations signifying healthy long life, etc." IPAB re-affirmed the aforesaid position in the Instant Order. 

IPAB made some significant remarks regarding well-known marks. In the context of Section 11(8) of Trade Marks Act, 1999 ("Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any Court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act."), it was held that a reference or an observation in an interlocutory application by a Court will not amount to a determination under S. 11(8). Further, “the well known label cannot be granted for the asking. There must be strong evidence to prove the case of the person claiming that his mark is a well-known mark….Therefore, the determination that the mark is well known will be arrived at only on strong and unimpeachable evidence that the mark is in fact a well known mark.” 

The respondent offered to modify the impugned mark. Terming the aforesaid gesture as a late concession, the IPAB rejected it. The rectification petitions were, therefore, allowed. 

Comments 

I had earlier blogged on IPAB order in M/s. Three-N-Products Pvt. Ltd v. M/s. Alex Resorts and Hotels Pvt. Ltd. In the aforesaid Order, IPAB affirmed the removal of the mark “AYUR” while deciding on an appeal against the impugned Order of the Registry granting registration for the trademark “AYURTHEERAM” in favour of the respondent for the services “Ayurveda Hospital and Resorts” (included in Class 42) subject to confining the services in the States of Kerala and Karnataka. 

I agree with the position laid down by IPAB. In fact, the conclusion arrived at the Instant Order in M/s. ITC Ltd v. M/s. Three-N Products Pvt Ltd could have been predicted in the aftermath of IPAB order in M/s. Three-N-Products Pvt. Ltd v. M/s. Alex Resorts and Hotels Pvt. Ltd (dated 18 May 2012). As I had earlier stated in my post on Ayur, the Sanskrit word “AYUR” means ‘giving life’ or ‘giving longevity’. It is well-settled that a dictionary word cannot be registered as a trade mark unless it has acquired a distinctive character. The generic name of a product cannot function as a trademark. An acronym of a generic name, which still conveys the original generic connotation of the abbreviated name, is generic. Even misspelt generic name is generic if it does not change the generic significance to the buyer [Mc.Carthy on Trade Marks and Unfair Competition (Third Edn. Vol 2) cited by Delhi HC in S.B.L Ltd v. Himalaya Drug Co. AIR 1998 Del 126]. Considering this legal position, the mark "AYUR" in case of other classes of goods may also face a similar fate (if challenged). 

The Instant Order also serves as a stern warning to the Registry. In fact, the Instant Order went to the extent of saying that the casual grant of registration by the Registry resulted in an unwarranted litigation. Hopefully, this stern warning will preclude any further mindless grant of registrations.