CAN THE TITLE OF A BOOK BE REGISTERED AS A TRADE MARK?

[Mr. M. GOVINDARAJAN]

Trade Mark

The expression ‘trade mark’ is defined under section 2(zb) of the Trade Marks Act, 1999 (‘Act’ for short) as mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors; and

• in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and
• in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.

The trade mark must be capable of being represented graphically and must be capable of distinguishing the goods of one person from those of others.

Registration of trade marks

The applicant, who requires registration of trade mark, is to choose the trade mark as per his requirement and to confirm whether there is no such trade mark is prevailing at that time.  The application for registration may be made online.   Once the application is filed, an official receipt is immediately issued for future reference.  Then the application will be examined by the examiner for any discrepancy. The examiner might accept the trademark absolutely, conditionally or object.   If accepted unconditionally, the trademark gets published in the Trademark Journal. If not accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned in the examination report and a month's time would be given to fulfill the conditions or response to the objections. 

Once the trade mark is published, objections may be raised against the proposal of registering the trade mark by the Registrar of Trade Marks.   If, after 3-4 months from publication there is no opposition, the trademark proceeds for registration. In case there is opposition, there is a fair hearing and decision is given by the Registrar.   Then a registration certificate under the seal of the Trademark Office is issued. 

The trademark can be renewed perpetually after every 10 years. 

Rejection of trade marks

Section 9 of the Act provides the grounds for rejection of trade marks.  The trade marks-

•  which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
• which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
• which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered.

a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

A mark shall not be registered as a trade mark if-

•  it is of such nature as to deceive the public or cause confusion;
• it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
• it comprises or contains scandalous or obscene matter;
• its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950

Section 11 of the Act provides further grounds on which trade mark may be refused.  A trade mark shall not be registered if, because of-

• its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
•  its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

A trade mark which  is identical with or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.

Section 13 of the Act prohibits the registration of names of chemical elements or international non-proprietary names.

Appeal

Any person aggrieved by an order or decision of the Registrar under this Act, or the rules made there under may prefer an appeal to the High Court within 3 months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal.

Registration of title of a book

The issue to be discussed in this article is whether the title of a book may be registered as trade mark.  The following aspects are to be considered for registration of the title of a book-

• Whether a title of a book is capable enough to distinguish the goods i.e. book of one publisher from that of other publisher?
• Whether a title is descriptive or whether that title of a book has a distinguishing feature or characteristic of a book within the meaning of the provisions of the Act?
• Whether there are sufficient evidences to establish that the title of a book has acquired distinctive character qua that book of which it is a title?

In Anne Frank-Fond's Trade Mark Application reported in (2015) R.P.C. 31 the applicant, a charitable foundation, applied for the registration of book titles namely THE DIARY OF ANNE FRANK and THE DIARY OF A YOUNG GIRL for trade marks in relation to goods and services including ‘printed matter, periodicals; magazines; newspapers and books' in class 16 and ‘arranging of guided tours for cultural or educational purposes'.  

The applicant filed evidence of witness consisting a statement that the role of the applicant as a licensor with regard to reproductions and adaptations of the 'The Diary of a Young Girl' and 'The Diary of Anne Frank' marketed in visual, audio and audio-visual form in the U.K. and elsewhere in the world to satisfy that the provisions of the Section 3(1) of the Act had not come in the way of registration. The applicant also showed that the book under the title 'The Diary of Anne Frank' was fourth in the Top 10 books written by women. It was also shown that the Diaries of Anne Frank were added to the list of documentary heritage of exceptional value on UNESCO's Memory of the World Register along with the other historical records from around the world.

Both applications were rejected under Sections 3 (1) (b) and 3(1) (c) of the U.K. Trade Marks Act 1994 (similar to section 9 of the Indian Trademarks Act, 1999) though the evidence of use was filed to establish distinctiveness.  The reasons for rejection of the applications is that the mark applied for consists exclusively of a sign which may serve, in trade, to designate the   kind, quality, quantity, intended purpose, value, geographical origin, the times of production of goods or of rendering of service or goods i.e. subject matter and is therefore excluded from registration by section 3(1)(c) of the Act. In case of 'The Diary of a Young Girl' and 'The Diary of Anne Frank' the evidence clearly shows that the mark has been used by a number of different publishers to indicate the title of the work. This is not use in trade mark sense. But it is a use indicating to a potential reader the subject matter of the book. The title is not being used to distinguish the goods of one publisher from those of another. No evidence stated that at the date of application, the average consumer had been educated into seeing the sign as indicating the trade origin of the goods or services and therefore, the mark is excluded from acceptance as it fails to qualify under section 3(1)(b) and (c) of the Act.

An appeal was filed against the said order rejecting the application.  The Appellate Authority held that that a sign is liable to be excluded from registration in relation to goods of the kind for which it is descriptive and therefore, the appeal was dismissed.

In AGATHA CHRISTIE LIMITED VERSUS REGISTRAR OF TRADE MARKS [2022 (2) TMI 443 - DELHI HIGH COURT], the appellant, Agatha Christie Limited was established by the famous writer Agatha Christie during 1955.  The said company is presently chaired by her grandson.  One of the top selling books of Agatha Christie is ‘And Then There Were None’ was published on 06.11.1939 as ‘Ten Little Niggets’. 

The appellant filed an application for registration of trade mark ‘AND THEN THERE WERE NONE’ which is the title of the novel written by Agatha Christie, before the Registrar of Trademarks, the respondent herein on 05.12.2017 under classes 9, 16 and 41 of the Schedule to the Trade Marks Act.  At the time of filing the application there was no mark remotely similar to the phrases AND THEN THERE WERE NONE was in use, in relation to the goods or services.

The respondent issued a show cause notice to the appellant proposing the rejection of the trade mark applied by the appellant.  The appellant promptly gave reply to the show cause notice.  The respondent examined the application and forwarded the examination report to the appellant.  The appellant filed reply to the respondent on their objections to the application.  The reply given by the appellant was not satisfied the respondent.  Therefore the respondent rejected the application filed by the appellant.  The respondent held that applied mark is a kind of mark where one needs to educate the people that it’s not just any phrase but a trademark and is intended to be so used.   There is no substantive evidence that the applied mark has been used as a trademark ever.  The rejection order was passed on 14.01.2021. 

Being aggrieved against the order of the Registrar of Trade Marks the appellant filed the present Civil Appeal before the High Court, New Delhi.

The High Court observed that there is no finding or observation, by the author of the impugned order, that the name ‘AND THEN THERE WERE NONE’ is not capable of being represented graphically or is incapable of distinguishing the services being provided, or intended to be provided, by the appellant, from those provided or intended to be provided by others.   The name being the title of the most well-known work of fiction written by Agatha Christie, it is also capable, prima facie, of creating an association between the name and the appellant, which is a company established by Agatha Christie herself. It can, therefore, legitimately be used in the context of services which the said company provides or intends to provide.

There is no obligation, in law, requiring, mandatorily, the name or other insignia, where under goods or services are provided, to be registered under the Trade Marks Act, 1999. If the trademark is not one, the registration of which is inhibited by any of the provisions of the Trade Marks Act, its registration must be allowed.

The High Court further observed that if the mark is distinctive, and is not identical or confusingly or deceptively similar to any earlier mark which is registered or in use from a prior date in respect of similar goods or services, or which results in the passing off, by the applicant, of its goods or services as those of another, registration of the mark is a matter of right.The impugned order denies, without due justification, to the appellant, this right.

The High Court held that the impugned order is liable to be set aside as being unreasoned.   The right to register a mark under which one intends to provide good or services is a valuable right, partaking of the character of Article 19(1)(g) of the Constitution of India. Any decision not to allow registration of a mark has, therefore, to be informed by reasons which should be apparent on the face of the decision. The impugned order, in my view, is bereft of sufficient reasons to justify the decision taken therein. The appellant’s mark would be entitled to registration as sought in respect of the services under Classes 9, 16 and 41.

The High Court set aside the order of the Registrar of Trade Mark.  The High Court remitted the matter to the Registrar of Trade Marks with directions that, if the application of the appellant does not suffer from any other fatal infirmity, the mark ‘AND THEN THERE WERE’ as sought by the appellant.

Conclusion

As per Nice Classification (Class-16, 160095), a book, a book's cover can be considered as trademark. If title of the book is distinctive and becomes the source identifier, it can be registered as a trade mark, provided that a book is considered as goods.   Generally, a title of a book is a source or a key of the description of the book. In that case title cannot be called distinctive and therefore cannot be registered as a trademark.

References:

1. www.mondaq.com
2. www.indiacode.nic.in
3. www.lawyersclub.india.com