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Names In Publici Juris And Trademark Infringement

A trademark is protected by intellectual property rights and is a sign which distinguishes the goods and services of different enterprises. The trademark can be defined as "a 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 the shape of goods, their packaging and combination of colours" [i]

According to Trademark Act, a mark will include "a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof." [ii]

The term "Publici Juris" derives its origin from the Latin phrase which means 'of public right' or 'belonging to the public' or 'subject to a right of the public to enjoy'. It specifically deals with the cases of intellectual property where it identifies a thing or term or right to be available to everyone in society. The term indicates that the things or rights which reside in the entire community cannot be claimed by an individual or private person and anyone in the community can use their right over the thing.

On different occasions, the judiciary has taken a different approach to the terms under Publici Juris. In SBL Ltd. v. Himalaya Drug Company[iii], the right over the term 'Liv' was claimed by Himalaya Drug Company. The court held that the term 'Liv' is an abbreviation of the term 'Liver' and therefore is a generic term of publici juris and no one can be granted an exclusive right over the term, abbreviation, or acronym.

This case was followed by the judgment given by the Madras High Court in the case of Meto v. Metox where it was held that exclusive right cannot be given to the word 'Meto' as it is derived from the chemical composition of 'Metoprolol' which is a generic term hence it was "Publici Juris".

The court further held in Apex Laboratories Ltd v. Zuventus Health Care Ltd [iv] that if the clear distinction cannot be made out in the nature of the word, then the prefix and suffix of the word or the remaining part thereof may be considered to make a distinction. Here the word 'Zinco' was challenged to be a word of public Juris.

The similarity drawn by the Court in these two cases was, in the case of a pharmaceutical drug which is being sold under a valid prescription, the chances are very rare that people will be deceived or get confused because the same abbreviation of any organ or ailment or chemical component is being used by a different manufacturer.

The importance of prefixes and suffix to derive the distinctiveness of a product when it uses the term which in "Publici Juris" can be collected from the case of J.R. Kapoor v. Micronix India [v] where the 'micro' was in question as the parties in controversy were Micronix India and Microtelematix. The Supreme Court held that the word 'micro' is used in the relevance of the micro-chip technology to define the product and its use. Therefore, the prefix micro will not cause any infringement and distinction can be made out by the suffix of the names of the product.

The Trademark Act 1999 prescribes different situations where a mark may be refused for registration, for instance; When it is of such nature as to deceive the public or cause confusion[vi]; or it's identical with an earlier trade mark[vii] and similar with 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.

In the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories[viii], the court has laid down the principles which are to be followed while dealing with the cases of trademark infringement. The principles largely deal with the onus in these cases as the onus will be on the plaintiff and in a situation where two marks are identical then no further question will arise regarding infringement but where two marks are not similar then the plaintiff would have to establish that the mark used by the defendant so nearly resembles plaintiff's registered trademark as it is likely to confuse or deceive the public at large.

The courts have taken into consideration several times that the words in Publici Juris cannot be allotted exclusively to one person as the right resides in every person in the community. In the case of pharmaceutical companies, when a company uses a trademark with an abbreviation of organ, chemical composition or ailment then the abbreviation or word per se will not be a subject matter of trademark infringement.

Infringement can be said to be done when a product is likely to deceive because of the similarity of names but in a situation where the names of publici juris is there then the weightage is given to the prefix and suffix which is likely to distinguish the products.

  1. Trademark Act 1999, s 2 (zb).
  2. Trademark Act 1999, s 2 (m).
  3. SBL Ltd. v. Himalaya Drug Company [1998] AIR 1998 Delhi 126.
  4. Apex Laborataries Ltd v. Zuventus Health Care Ltd [2006] (33) PTC 492 (Mad.) (DB).
  5. J. R. Kapoor v. Micronix India [1994] 3 Suppl. SCC 215.
  6. Trademark Act 1999, s 9(2).
  7. Trademark Act 1999, s 11.
  8. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1965 AIR 980.

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