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Free Riding Behind Veil Of Distinctiveness Of Trademark

As per S.2(1)(zb) of the Trade Marks Act, 1999, a 'trade mark' means, "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 shape of goods, their packaging and combination of colors."

The trademark performs the variety of functions, the most important of them being role of identifying the goods of a particular manufacturer and gives an indication of its origin, or establishes a connection in the course of trade. It in a way assures quality of the product and acts as a symbol representing the goodwill of the business.

In addition to this it also advertises the product and protects the user and/or purchaser from confusion and deception by identifying the source or origin of particular goods and services and distinguishes them from other similar products. Due to this role of the trademark it has acquired the 'source-identifying' property in this age of growing startups.

Now at this juncture it is necessary to note the properties which are required for the any subject matter to qualify as trademark. There are various grounds enumerated in the trademark act which a subject matter must consist and the most important of these grounds is that it has to be distinctive.

In the matter of General Electric Co. v. General Electric Co Ltd., 1 the Court observed that the right [of property in trademark] was an adjunct of the goodwill of a business and was incapable of separate existence dissociated from that goodwill. Therefore distinctiveness became a notion to define the subject-matter protectable as trade mark.

The case of Abercrombie Formulation, developed by the 2nd Circuit Court of Appeals in Abercrombie & Fitch Co. v. Hunting World, Inc., 2 is a good reference for understanding the spectrum of distinctiveness.

Justice Learned Hand has laid down a spectrum which measures distinctiveness on the following categories:
  1. Generic-does not qualify for protection
  2. Descriptive-sometimes qualifies for protection
  3. Suggestive-qualifies for protection
  4. Arbitrary or fanciful-qualifies for protection
  5. Invented affords strongest protection

Recently a case came before court in which the Match Group Inc. accused Muslim-only dating app Muzmatch Ltd. of free riding on its market leading success as part of a copyright infringement case in London.

Match Group, the parent company of Match.com, Tinder and Hinge, accused Muzmatch of trade mark infringement for the use of the word "match" in its name, at the start of a trial on Monday.

"This is a clear case of free riding on the repute of the U.K. market leader in order to become a major player in the online dating and introductions market," Tim Austen, Match Group's lawyer, said in court filings.

Muzmatch was set up by Shahzad Younas in 2011 as a side project from his investment banking job at Morgan Stanley. It was created due to the taboos surrounding casual dating in the Muslim community and aimed to help single Muslims find marriage with a focus on Islamic values, Muzmatch's lawyers said in documents prepared for the hearing.

The public is perfectly well able to distinguish between the two, helped by the distinct markets, they said. "This case is a classic example of a party seeking to monopolize an ordinary descriptive word which is commonly used by consumers and traders."

Match Group has been pursuing the Muslim dating site for some time. It successfully challenged Muzmatch's trademark registrations in the EU and the U.K. since 2016. While Muzmatch was found liable for infringing on Tinder's trademarks in a U.K. court case last year, including referring to itself as the Muslim Tinder.

Match Group made several attempts to buy Muzmatch between 2017 and 2019 all of which were rejected by Younas, the dating app's lawyer, Jessie Bowhill, said during the hearing. A Match Group spokesperson declined to comment on mergers and acquisitions.

This is not the first time the cases like this have came before court. Previously too the court through its various judgments has tried to put deterrence on activities like this.

Recently in case of Guccio Gucci SPA v. Intiyaz Sheikh, the Delhi High Court has granted luxury fashion house Gucci an ex-parte reprieve which restrained a local manufacturer Intiyaz Sheikh of Shipra Overseas, a company based in Delhi, from using the brand's iconic logo on its products.

Gucci, the iconic fashion house based out of Florence Italy, alleges that the defendant was illegally manufacturing, stocking and offering large quantities of counterfeit products including socks and packaging material under the plaintiff's well-known green and red stripes logo and mark "GUCCI" which is accepted the world over as a quality and standard product.

The fashion house claimed to have extensively advertised its products bearing the distinctive mark "GUCCI" and its logo through media, newspapers, magazines, the internet, and trade journals distributed all over the world including India. Additionally, the mark is long-standing and has been extensively used and is hugely popular since its inception in 1921. The mark has its own identity and is recognized to be synonymous with luxury fashion wear. With its popularity and demand being widespread world over including India, GUCCI's sales figures are stated to be substantial, running into several million Euros each year.

After examining the evidence, the Court observed:
I do not find any reason to disbelieve the claim of plaintiff either as regard user of its mark 'GUCCI' and logo since long and also registration of its mark in India. I have also no reason to disbelieve that Plaintiff Company has acquired very high goodwill, exclusivity, distinctiveness and unique identity with respect to the products manufactured by it carrying the impugned mark and logo.

Similarly, in recent case of Gujarat Cooperative Milk Marketing Federation Ltd. and Anr. v Maruti Metals and Ors., Gujarat Cooperative Milk Marketing Federation Ltd (GCMMF), famously known as 'AMUL', had instituted the suit alleging the infringement of trademark and passing off against Maruti Metals, which was stated to have been using the AMUL mark for kitchenware and utensils.

Having passed an interim order in Amul's favour, the court held that "the word AMUL is distinctive, and has no etymological meaning. It is indelibly associated, in the minds of the consuming public, with the products of the plaintiff. Prima facie, any use of the word AMUL as a trademark by any other entity may tantamount to infringement ..."

The above both clearly showcase that how small and new businesses are taking the logos and trademarks on big well know giant companies and businesses and using them to in way associate their own businesses with the one which has a huge brand name in the eyes of the public.

The above two cases in my opinion are only rarest or exceptions of the huge numbers of the cheaters whose case don't even get to the court because of either due to small number of customers they are dealing with or due to the incapability on the part of these big businesses to go to each and every corner of the country and look into that no other small sellers are using their brand to just fool their customers and earn through them by using their popularity.

The main problem also arises due to the fact that it is not necessary to register ones trademark and the business can use it without even going to the registrar who obviously will not allow them to use the mark of popular brands with minor and even sometime no changes.

Hence, we really need to look into this issue more seriously a s it not only harm the reputation of the big companies and in a way make them loose their part of market but also fool of the common man of our country who is not so educated and have knowledge about the various brands due to which they suffer in the hands of these people by paying extra then the quality of the product requires.

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