Do not permit generic words to be trademarked, say experts

Close on the heels of the Intellectual Property Appellate Board refusing to register the trademark for Snax biscuits, comes another case where an insurance firm has sought a trademark on the word ‘bima’, the Hindi term for insurance.

A little-known Hyderabad-based insurance firm MFL Insurance Services, through its law firm Tricon, has approached the trademark office to register the word bima. However, several insurance firms are up in arms against the proposal.

Experts say generic words, such as windows, bima, snacks, sugar-free and chandanam should not be allowed to be trademarked and commercially exploited.

According to Diljeet Titus, Managing Partner of law firm Titus and Co, “Monopolising such words is not just bad for the industry, it goes against the principles of fair trade.”

“On one side we contest international efforts to register words such as neem and basmati and, on the other, we accept a generic word like bima, which by no yardstick can be monopolised for insurance services. Generic words are and never can be trademarks and should be refused by the Trademark Office without any need for third party opposition,” said Safir Anand, Senior Partner, Anand and Anand.

Snax biscuit

Last week, the IPAB had ruled that the Snax biscuit brand of Britannia Industries cannot be trademarked. “The trademark Snax is phonetically similar to the word snacks. Snacks mean light food. When a trademark has a direct reference to the quality of the goods for which registration is sought for, such mark shall not be granted,” IPAB said in its judgment.

However, this can only be applied in cases where the product is similar to the generic term being sought to be used. Anuradha Salhotra, Managing Partner of IPR law firm Lall, Lahiri & Salhotra, said, “Nobody can appropriate to himself a trademark which is the name of the product or the services for which the trademark is intended to be used. For example, Apple cannot be a trademark for fruits and vegetables but can be a trademark for computers and mobile phones. Similarly, Windows cannot be a trademark for windows but can be a trademark for a computer programme…”

bindu.menon@thehindu.co.in

(This article was published on August 29, 2013)
XThese are links to The Hindu Business Line suggested by Outbrain, which may or may not be relevant to the other content on this page. You can read Outbrain's privacy and cookie policy here.