CASE STUDY :- XEROXâS BATTLE WITH TRADEMARK GENERICIDE
The Plaintiff for this case: B V IlangoÂ
The Defendant for this case: Rank Xerox Ltd. & Ors.
Decision Date: 21st September of 2012
Bigger are the brands, greater is the need for protection from not just infringement and falsification but also âtrademark genericideâ. This concept isnât much talked about but this problem exists more than it is thought to be. For example- nowadays if one wants to search something, âGoogle itâ 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 âGoogleâ has held on to their trademark and have avoided genericide in the case of âElliott v. Google Inc.â. 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 hasnât become synonymous to âsurfing the internetâ. In this case it was observed that a trademarks donât 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 âGoogleâ. He filed a suit stating that Google is primarily a substitute for âinternet searchingâ. Thus, itâs 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 âXeroxâ 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.Â
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 âWhether a seemingly generic term like Xerox remain a registered trademark under the Trade Marks Act, 1999 or not?âIt is also rather imperative to note that the owners of the company put in legitimate efforts to prevent âXeroxâ 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.
A few rectification applications were filed seeking the removal of âXEROXâ 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 âXeroxâ 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 âXeroxâ. 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 âinadvertent mistakeâ. This shows how far the public didnât know the background âXeroxâ held. The owners of the mark held numerous campaigns in order to establish amongst the public that they hold trademark over âXeroxâ and that it is not synonymous to photocopying.
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 âEnrique Bernat FSA v. Guadalajara Inc.â, where a person wasnât permitted to monopolise the term âChupaâ, which meant âlollipopâ in Spanish.
The point they stated was that since Xeroxâs situation corresponds to that of âChupaâ, 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 âphotocopyâ was still understood and existed. Thus, failing the test of âPublici Jurisâ.
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 âXEROXâ and instead include âphotocopyâ.
The IPAB came up with interesting views with regard to the applicantâs argument which included reliance on the Enrique Bernat case. It held that this case was inapplicable on facts. The IPAB stated that âChupa Chupsâ case, giving exclusivity to âChupaâ or lollipop would only prevent makers of lollipop in the market from entering the market with âchupaâ 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 âPublici Jurisâ 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 âTrademark Policingâ. 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. However, on a personal note I believe there is no one time solution. 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.
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 âXeroxâ as a generic mark.
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