This post is the first post in a series of new posts relating to Frequently Asked Questions.
Can someone register word GANDHI as a trademark in various classes, after obtaining consent from legal heirs of Mahatama Gandhi?
No, he cannot register the word GANDHI since it will qualify as an absolute grounds for refusal by the Registrar. Since under § 9 (2) (c) of the Trade Marks Act, 1999 a mark may be refused registration if the use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
- 3 r/w § 10 (9A) of The Emblems and Names Act, 1950 prohibits the use (the rights of personality and publicity of a national figure, and deriving financial benefit from such a person’s name and likeliness) of the name or pictorial representation of Mahatma Gandhi, Pundit Jawaharlal Nehru, Chhatrapati Shivaji Maharaj or the Prime Minister of India.
The other reason being that since the word GANDHI belongs to Mahatma Gandhi, also known as the father of the nation, the name, and image, is one of the most highly revered and the highest national symbol of India. Furthermore, it is also an icon of spirituality in India. [In 2013, the Ecuador Trade Mark Registry refused to register a trademark, “ARROZ GANDHI” for aged or old rice, on the aforesaid grounds.]
Moreover, this surname is not very distinctive, this would only be registrable if before the date of application of registration the mark for the particular class, has acquired a distinctive character as a result of its use or if the mark is a well-known mark.
Only the surnames that are rare can be registered as a trademark without the need to prove “acquired distinctiveness”.
Whether the trademark RAMAYAN can be registered in respect of Incense Sticks?
The trademark RAMAYAN cannot be registered in respect of Incense Sticks because it is descriptive in nature. It is describing the nature of the use of the product. Since incense sticks are generally used for religious prayers and Ramayan is one of the ancient religious texts of Hindus in India.
The Supreme Court in the case of Lal Babu Priyadarshi v/s Amritpal Singh has held that no one can claim trademark right on holy books and scriptures like Ramayana. The reason being that allowing such trademarks could offend “people’s sensibilities”. The Apex Court while coming to the verdict placed its reliance on the 8th Report on the Trade Marks Bill, 1993 submitted by a Parliamentary Standing Committee, which said that “any symbol relating to gods or places of worship should not be ordinarily be registered as a trademark.” Another reason for refusal was that no individual can be given an exclusive right over gods and holy books, especially to make profits.
This TM may not be capable of being registered in India because of its descriptive nature but may be registrable elsewhere (outside India), since trademarks are territorial and transboundary in nature.
Whether the trademark RASOI can be registered in respect of Cooking Oil?
The word RASOI cannot be registered since it is descriptive of the character of the goods.
In the landmark case of Hindustan Corporation Development v/s Deputy Registrar of Trade Marks, AIR 1955 Cal 519 the question of whether the term “Rasoi” for hydrogenated groundnut oil (Cooking Oil) is registrable as a Trade Mark or not was considered by the Calcutta HC.
The Calcutta HC while finding the term “Rasoi” to be descriptive, held that to people in the trade and to the consumers, the word “Rasoi” would imply a direct reference to the character of the goods since the normal use of hydrogenated ground-nut oil is for cooking purposes. The use of the commodity as intended or adapted undoubtedly forms part of its character.
The Court also held that the word “Rasoi” is a common word or ordinary word and no trader can have a monopoly over a common word, therefore, the word “Rasoi” for Cooking Oil is ineligible for registration.
Image from here.