We often argue that generic words can’t be trademarked because it tends to be used in the same industry by the other proprietors to refer to their products and services and according trademark protection to such generic marks will create a monopoly. And then we have the Abercrombie test as well which categorises the strength of the mark depending upon its nature i.e. whether it is fanciful, arbitrary, suggestive, descriptive or generic.
The generic words are considered as the weakest of all and hence when the applicant proposes to use a generic word as a trademark the application is mostly refused. However, there is a possibility that even a generic mark can be registered as a trademark provided it has acquired secondary meaning over a given time period.
Having said that, it is not that easy to understand and comprehend the possibility of a generic word getting accepted as a trademark before the Trademark Office or the Court of law because of the conflicting decisions not only in India but also in the foreign jurisdictions. The most surprising of all the disputes was that of Microsoft losing its claim over the word ‘WINDOWS’ because as per the court the word WINDOWS was a commonly used term in the industry hence ‘ONCE A GENERIC ALWAYS A GENERIC’ principle was upheld. However, recently the US court sanctioned the term booking.com, a subject matter of federal trademark registration. [This was covered in detail here here here]
Let us now have a look at the status of a few generic mark registration in India vis a vis the USA.
|Mark||Indian Application Number||Status||US Serial Number||Status|
|Bookmyshow||2620828||Opposed||88851991||Office action issued on formal grounds|
|Matrimony.com||2383422||Abandoned||Bharatmatrimony (88170252) KERALAMATRIMONY (88204787) TELUGUMATRIMONY (88157877)||Registered|
Is the term “.com” helping these marks to escape from falling under the generic term? Do let us know your thoughts on this in the comment section below.
I believe precedents create issues which lead to increase in IP Litigation. There is a need for efficient drafting of the IP laws to prevent such scenarios. With regards to the case of booking.com, there may be another filing in the name of reservation.com. Merely combining 2 generic names of which one being ‘.com’ is a short term strategy as one day it is may be a victim of opposition followed by Trademark Genericide. It is the uniqueness which ensures long term benefits. For example ‘bookmyshow’ in itself is unique and does not require ‘.com’ for public recognition. On the other hand if the proprietor(s) of booking.com would register their word mark along with domain as ‘startbooking.com’ or ‘roombooking.com’ there shall be less possibilities of opposition.
Shaadi user since 1996, Jeevansathi since 1998, games.com multiclass application (aggressive use), Naukri since 1997. The prior use (reputaion, goodwill, market reach, targetted consumers) of a mark definitely plays important role in getting it secured not to mention the “representatives” of the applicant too.
I’ve seen trademarks like Jai Bajrang with device of Hanumanji Class 29 and trademarks using word “Photography (without any limitation) with device of a camera” (not descriptive at all..huh?) registered with Indian TMOs.
This raises number of questions on examination procedure of TMO and genting trademarks registered. So using .co, .co.in, .org etc gives another reason for passing a mark with proper ‘reach’ since the reason of “you have to look at a mark in whole and not in part” is always available while accepting the mark.