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CASE DETAILS
The Plaintiff for this case: B V Ilango
The Defendant for this case: Rank Xerox Ltd. & Ors.
Court: IPAB
Decision Date: 21st September of 2012
INTRODUCTION
Bigger are the brands, greater is the need for protection from not just infringement and falsification but also “trademark genericide”. This concept isn’t much talked about but this problem exists more than it is thought to be. For example- nowadays if one wants to search something, “Google it” is a common phrase used in day to day conversations. Similarly Zipper, Aspirin, Frisbee, sellotape etc. they all share a common fate of being mistaken as the product itself rather than identifying the Source. This is exactly what trademark genericide is.
While “Google” has held on to their trademark and have avoided genericide in the case of “Elliott v. Google Inc.”. In 2017, Google had to actually face intense proceedings to prove that their customers in the market still identify them as search engine and that their mark is still relevant and hasn’t become synonymous to “surfing the internet”. In this case it was observed that a trademarks don’t become generic just like that. In fact only the courts can declare it to be generic. A certain David Elliot tried to register 763 domain names which included the search engine “Google”. He filed a suit stating that Google is primarily a substitute for “internet searching”. Thus, it’s generic.
Eventually the jury was not convinced that Google had become generic as Google won the UDRP proceedings. They won on various grounds including the evidence of that fact that the domains were being registered in bad faith. Google presented public surveys to the Court in order to show that that the public still perceived it as one of the search engines. In the Indian context “Xerox” happens to be a glaring example of trademark genericide. This article attempts to explore this case.
BACKDROP OF THE XEROX CASE
Xerox is actually a proper trademark and is not synonymous to photocopying process. The Company name is Rank Xerox Ltd. this company has faced a long running battle to stop its name from being declared as generic. This trademark is registered worldwide. But sadly it seems to have become a victim of its own fame as it was understood as a common verb in some parts of the world. This company actually just manufactured the machines used to photocopy and print material. However, in 2003 this company was faced with great deal of difficulty when it realised that its brand is diminishing in value. That is exactly what the early stages of trademark genericide looks like.
Firstly, the brand value diminishes as the general public start using it in their everyday speeches and overtime there is an absolute decline in terms of recognition of the brand name at all. Finally, the brand name becomes synonymous to the product or process it used to identify the source of and loses its distinctiveness, the very character that made it distinct in the first place. The most interesting part of this case was that the IPAB was faced with the issue that “Whether a seemingly generic term like Xerox remain a registered trademark under the Trade Marks Act, 1999 or not?”
It is also rather imperative to note that the owners of the company put in legitimate efforts to prevent “Xerox” from being declared as generic. They made efforts since 2003. We shall find out in the course of this article that result of these efforts.
FACTS
A few rectification applications were filed seeking the removal of “XEROX” as a trademark. The applicant went as far has filing several volumes of papers including rulings of various High Courts, cause lists etc. from foreign jurisdictions and even Indian circulars to show evidence of their claim that “Xerox” has become generic. The registered proprietor on the other hand filed various evidences to show that it had arrested the genericide by preventing the inappropriate use of the word “Xerox”. They issued a number of Cease and Desist Notices to various shops and even Government Departments. The interesting turn came when the Government departments responded saying it was an “inadvertent mistake”. This shows how far the public didn’t know the background “Xerox” held. The owners of the mark held numerous campaigns in order to establish amongst the public that they hold trademark over “Xerox” and that it is not synonymous to photocopying.
ARGUMENTS PRESENTED
The applicant filed voluminous evidences to support their claims. The IPAB in fact appreciated the effort taken by the applicant as all evidences were legitimate and relevant. The applicant relied on the “Enrique Bernat FSA v. Guadalajara Inc.”, where a person wasn’t permitted to monopolise the term “Chupa”, which meant “lollipop” in Spanish. The point they stated was that since Xerox’s situation corresponds to that of “Chupa”, it must be declared as generic.
The proprietor objected to the same and stated that in no way this applied to the case as an alternative word “photocopy” was still understood and existed. Thus, failing the test of “Publici Juris”. Additionally, the respondent also proved their sincere efforts to maintain the distinguishability of the mark. They produced various responses of their Cease and Desist Notices by Government departments and Port Trusts who agreed to delete the word “XEROX” and instead include “photocopy”.
IPAB’S DECISION
The IPAB came up with interesting views with regard to the applicant’s argument which included reliance on the Enrique Bernat case. It held that this case was inapplicable on facts. The IPAB stated that “Chupa Chups” case, giving exclusivity to ‘Chupa’ or lollipop would only prevent makers of lollipop in the market from entering the market with “chupa” as name of their company or product. On the other hand in the Xerox case none of the competitors ever complained about the existence of the mark till date.
The IPAB actually accepted the arguments of the respondent regard the existing word (photocopy) and also noted that it was still used and understood separately by competitors which weighed against the arguments of the applicant.
Thus, it failed the test of “Publici Juris” which means the mark still sustains. There were 3 main points that gave Xerox a clear cut win. Firstly, the Exclusive rights of the trademark held by the Respondents (Xerox) were publicly accepted. Secondly, the mark existed on the Register for long which shows the efforts made to renew the trademarks from time to time. Lastly, the presence of the original names and its separate understanding amongst the public.
The IPAB also recognised the fact the Xerox had taken sincere efforts by using methods like “Trademark Policing”. Policing unauthorized uses of their trademark really helped their case. The background of this case gives us an interesting proposition that Genericide can be battled through trademark Policing and prevention of naked licensing. However, does it guarantee a long term solution? This question still remains unanswered. As Xerox sets an example that only constant efforts to maintain a trademark can guarantee its distinguished recognition. Additionally companies must avoid naked policing and frivolous distributors who would misuse their mark and reputation. Cease and desist notices can also help greatly. Surveys and campaigns was a unique evidence placed by Xerox which worked well in their favour.
However, there is one thing that is quite baffling. The lack of legal provisions in the entire judgement. The framework of the Trade Marks Act, 1999 was not even spoken of once. This rather leads to an uncomfortable conclusion that perhaps the IPAB (now dissolved) only perused through the voluminous evidences and forgot to consider the provisions of law. I believe the absolute grounds of refusal under Section 9 would have been discussed along with the doctrines followed by Indian jurisprudence related to trademarks. Unfortunately the IPAB didn’t consider it important to discuss these leaving room for criticism from the legal community. Yet on a brighter note XEROX sustained its status as a registered mark. But the reality today still remains close to what it was in 2012, i.e. there still exists local shops which simply use Xerox as a synonym to photocopying. A realistic perusal of the market today would probably render “Xerox” as a generic mark.