A trademark distinguishes goods and services of one enterprise from its competitors. A definition may be drawn from Article 15(1) of the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement which states, “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs, shall be eligible for registration as trademarks”.
To know what sort of things one might see as a trademark in Bangladesh the definition of ‘mark’ given in section 2(23) of the Trademarks Act 2009 may be read, which says, “Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, symbol, numeral, figurative elements, combination of colours or any combination thereof ”.
Therefore, it is reasonably anticipated that the discipline of trademark shall have a wide range of variety. However, different jurisdictions of the word might differ in application of their laws. Trademarks are taken very seriously in developed countries, but in the least developed parts of the world, trademarks are not always perceived from the true spirit of the ‘mark’ and sometimes are wrongly interpreted. Sometimes a ‘mark’ examiner perceives it wrong and the ‘mark’ owner lacks vision, it is the worst combination and the likely consequence is a poor ‘mark’.
The basic requirement is that the mark has to be distinctive and not descriptive. A ‘mark’ is usually distinctive when it is not descriptive. In order to determine if a ‘mark’ is distinct in nature, the relationship between the meaning of the ‘mark’ and the goods or services offered for sale should be looked into. If it means what it sells, it is not distinctive, rather it is descriptive.
However, it should also be original. Well-known ‘marks’ should not be copied on the excuse that the products and services are different.
Other characteristics a trademark should meet are ;
- The trademark should not be deceptive
- It cannot be misleading
- Any generic term cannot be used
- A ‘mark’ may fail to get registration if it is believed to be contrary to ordre public or morality.
A descriptive mark is no mark; it just describes the product or the service it offers for sale. What if somebody is selling water and names it ‘Pan’i. In Bengali the word for water is ‘paani’. There are however, synonyms. But ‘paani’ is the most commonly used one in Bangladesh. Paradise Food Products Ltd launched a new drinking waterand named it ‘Pani’. However, there is also a Prince’s logo on the bottle that can be seen only if someone looks at it carefully, because the logo is too small.
Whereas ‘Pani’ is written in such big fonts (can be presumed that it is the core part of the mark) that no eye would escape that.
Does it mean that only Prince’s water bottle shall carry the word ‘Pani’ and nobody else? Having a trademark is like owning that ‘mark’. How can one own the very word that describes the product itself? It is incorrect from the trademark’s jurisprudence. However, this is not the only one of its kind in this city. Many products and services that describe themselves by their very name are offered for sale and they make me curious - did they ever bother to consult a trademark expert?
Whatever lacks distinctiveness should not get registration. However, Dhaka is full of twists and turns. The ‘marks’ you will see right from the moment you have moved out of your house until you get inside, many of them describe what they are selling.
Are you hungry? What would you like to have? Most of the city’s Bengali restaurants are named after food. Korai Goshto makes Bengali, Thai and Indian food and their name describes it. Roshona Bilash (luxury of food), is the name of another restaurant. A sign board writes Kok Kok - fried chicken, having an animated picture of a chicken, gives an impression that this place sells chicken which are fried.
By no means would the consumers miss the fact that Kok Kok is the sound that chickens make. If you ask a child what is Kok Kok, he would inevitably reply- chicken.
Modhubon sells sweets and the meaning of the word is ‘forest of honey’. Sweets are sweet and honey is also sweet. But the jurisprudence of trademark suggests that whatever sweet (particularly edible things) is not a distinct ‘mark’ for selling sweets.
The refreshing fruit juice market is very juicy. Take a few examples - Mangolee (for mango juice), Frutika, Fruto etc.
More or less, these words lead the average consumers to what they are selling inside the bottles which means they are very descriptive. It is not that only the food industry has got this fever.
Fashion and accessories, hospitals and other services are not free from this addiction. ‘Kloset’ for clothing and fashion accessories, despite its wrong spelling, is not distinct.
Sometimes wrong spellings are used to create new words and ‘mark’ owners try making it distinct that way. But from the phonetic point of view, when one customer tells another the name of the shop, she/he does not spell it, rather says it.
Pronouncing ‘Kloset’ and ‘closet’ would be the same. So he/she would quickly relate the word with a ‘wardrobe’.
The first thing that comes in mind, if one says ‘kloset/closet’, is furniture used for keeping clothes and accessories. When ‘Kloset’ sells garments and accessories, it really is descriptive.
However, there are many ‘closets’ in Dhaka that sells fashion wears. Closet, Closet Window and Kloset are the ones that can be mentioned.
‘Kids and Moms’ and ‘Mother’s Care’ sell products for pregnant mothers and their babies. They nicely describe what they are selling but when it comes to trademark law, they are absolutely not distinct marks.
However, trademarks like Pizza Hut are actually not a descriptive mark, though it sounds like one. There are few marks like that. They do not write their details on the sign board regarding their registration. There is something called a ‘disclaimer’. Pizza Hut owns monopoly over the word ‘Hut’ not ‘Pizza’. They delimited their right over the mark by disclaiming ‘pizza’, therefore, Pizza Palace, Pizza Casa, if subsequently named for restaurants would not amount to an infringement, if the overall impression of the subsequent ‘mark’ does not create confusion with Pizza Hut.
A Malaysian entrepreneur in restaurant business, Andrew Seow opened a new Cantonese restaurant in Road 11, Banani and named it Shing Heong. Once I asked him, “What is the meaning of Shing Heong?.“Abundant Fragrance”, he replied. A good ‘mark’ for a restaurant, I thought. The first thing that comes in mind is perfume, not food. So, as a name for restaurant, it should be ok.
Going back to the descriptive ‘mark’, a descriptive ‘mark’ cannot be protected against infringement. So after years of promoting your ‘mark’, which is descriptive, might turn out to be a loss for you because competitors can ride your reputation for free.
The story was first published in INTELLECT Issue no.2, dated July 2012.