Engaged in a Waterloo of sorts, the Tata Groups Mount Everest Mineral Water (MEMW) and Bisleri are wrangling over the usage of the trademark ‘Himalaya’.
As the facts of the case go,
MEMW the registered holder of the Trademark ‘Himalaya’ has obtained an interim injuction from the Delhi High Court restraining Bisleri from using its trademark in its packaging.
In turn Bisleri has approached the IPAB in Chennai seeking a rectification of the Himlayan trademark on the grounds that the word is a descriptive word that indicates the source, origin and quality of the water.
The Application further relies on the Geographical Indications of Goods Act 1999 (G.I), stating that the word ‘Himlaya’ bears a geographical connotation and hence comes under seeks the ambit of the G.I Act. The G.I is a collective right that is conferred on a group or community engaged in the manufacture of the product traditionally originating from a specific region, bearing intrinsic characteristics attributable to the geography of a place.
This case would hinge on the ability of MEMW to demonstrate and prove that Himlaya is a “generic” term that is used on a wide array of products and not necessarily on goods from the Himalayan terrain. Whether they would be able to push this argument remains to be seen
This case is likely to be a ticklish one, the first of its kind in India in that as it calls for a reconciliation between a trademark and a G.I. It would also entail a close examination of the issues that could possibly arise in future whenever there is an interface between a trademark and a G.I
However in consonance with TRIPS(Article 22.3) Agreement, the Indian Act also sets forth the following with respect to the relationship between trademarks and GIs:
“Where a trade mark contains or consists of a geographical indication and has been applied for or registered in good faith under the law relating to trade marks for the time being in force, or where the rights to such trade mark have been acquired through use in good faith either—
(a) before the commencement of this Act; or
(b) before the date of filing the application for registration of such geographical indication under this Act;
nothing contained in this Act shall prejudice the registrability or the validity of the registration of such mark under the law relating to the trade marks for the time being in force, or the right to use such trade mark, on the ground that such trade mark is identical with or similar to such geographical indication.”
However the word Himlaya as it stands today is not a registered G.I. The G.I Act that came in to being only in 2003 is a nascent one with few domestic case laws in this area of IPR. EU judicial cases such as that of Anheuser Bush Inc vs. Budweiser Malt Products Corpn lays down some guiding principles in determining issues such as the above.
Amidst all this brouhaha, other thirst quencher biggies like Vijay Mallyas’ UB have nose dived headlong into the watery fray to capitalize on the Himalayan H20 strategy.
‘Having registered this name as its trademark the liquor major is now planning to unleash its natural mineral water sourced from the Himalayas.
“We intend launching our natural mineral water in the next few months and as long as it is sourced from the Himalayas we will be using the word Himalaya for our brand.
“Kingfisher Himalaya Natural water has already been registered as a brand and we will definitely go ahead and use it as long as the source for the mineral water is rightly mentioned,” said a senior UB group official.’
Well, when elephants fight, the ants set out to party!