U.S. PATENT AND TRADE MARK OFFICE VS. BOOKING.COM - COMPARISON WITH INDIAN LAW

A trademark is a word, symbol or a logo which is associated with a particular entity. It is a mark which distinguishes products or services of a company from its competitors in the market. Such trademark, when associated with a particular company, attains recognition over a period of time and becomes identifiable by people as brand.

Attainment of such goodwill is the result of efforts of its owner, his ideas and expressions. Protecting a trademark therefore becomes important to avoid disputes with competitors. Trade mark laws therefore provide for registration of such distinctive marks which is subject to certain limitations as applicable in law of each country.

THE CASE OF BOOKING.COM

Background

Booking.com is a leading online travel company providing hotel/ apartments reservation, flight bookings, car rental services etc. It is a brand owned by Booking Holdings, an American travel company. Very similar to its name, it has a domain name “booking.com”, where it provides services to its customers. Around 2012, Booking.com also came up with its first mobile application to make access to its services easier for the consumers. Over a period of time, Booking.com earned considerable amount of goodwill. Accordingly, it sought to register its domain name under the Trade Mark Laws as applicable in the United States, which came to be rejected.

This article gives a brief overview of the case as decided by the Supreme Court of the U.S and an insight of corresponding law existing and decisions pronounced in India.

Facts

U.S. Patent and Trade Mark Office (“PTO”) rejected the application of Booking.com stating that a generic term like “booking” cannot be registered even if it is followed by suffix “.com”. The established law relating to trademarks in the U.S is that generic terms cannot be protected and if a particular mark is registered and subsequently becomes a generic term, the registration can be cancelled at any time. Booking.com appealed to the Trademark Trial and Appeal Board which confirmed the decision of the PTO. Thereafter, Booking.com approached district court which ruled in its favour. PTO thus sought an appeal to the Supreme Court. The question before the Supreme Court was whether a company can, by adopting a name which is generic and combining it with top-level domain name like ‘.com’, apply for protection and recognition of such name as trademark. The 8:1 decision given by Supreme Court was in favour of Booking.com.

The Law

The law in U.S. provides that a word which is merely descriptive in nature i.e. a term which only describes the nature of goods or services, cannot be protected by a trademark and is not registrable. If such term has however earned goodwill over a period of time and people associate it with the particular brand, it can be said to have acquired secondary meaning and is therefore registrable.

Notable arguments in the course of proceedings

Attorney for the PTO contended that generic terms cannot be protected as trademark solely because it has acquired secondary meaning. They also relied upon old judgment of U.S Supreme Court wherein it was held that a generic term coupled with a designation did not create a protect able trademark. Per contra, attorney for Booking.com argued that statute relating to trademarks in the U.S. provides, that to decide whether term is generic or not, trademark examiners and Court shall seek to understand its significance from customers. They further proved that 74.8 % of the public in general could identify Booking.com as a brand. To this, the attorney for the PTO made a remarkable argument and stated, because a domain name can be used by only one entity at a time, it would be rather easy to prove that majority of the people associate the term with such entity/ brand.

The Judgement

Eventually, Supreme Court ruled in favour of Booking.com. Justice Ginsburg wrote, “Because Booking.com is not a generic term to consumers, it is not generic.” Justice Stephen Breyer passed a dissenting judgement and said, “Terms that merely convey the nature of the producer’s business should remain free for all to use.” 

INDIAN LAW ON DOMAIN NAMES & TRADE MARKS

A domain name is a website developed to show case the products or services offered by the person who owns it. The law relating to trademarks in India is governed by the Trade Marks Act, 1999 (“Act”). Section 2 (1) (m) of the Act defines mark as, “mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” 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 colours.”[1]

Domain name serves the same function as trademark.[2] Thus, domain names are capable of being registered as a trade mark.

Analysis of the judgment in Indian Law

The Indian law on this point is quite similar to the U.S. Section 9 of the Act provides absolute grounds for refusal of registration as trade mark. It is essential for a mark to have a ‘distinctive character’ to be protected by trademark. Proviso to the section states, “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.”

Thus, it can be said that law relating to trade marks in India is well settled and if dispute similar to Booking.com arises, the Courts in India ought to pass similar decision as that of the U.S. Supreme Court, giving due regard to the considerable amount of goodwill and fame earned by Booking.com and fact that it is identifiable as a brand by majority of the people.

Decisions by Indian Courts

Under the Indian Common Law, similar dispute like Booking.com can be found in Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta & Ors.[3] wherein the plaintiff sought injunction against defendant for using the same domain name as that of the plaintiff. Plaintiff was creator and owner of the domain name ‘NAUKRI.COM’ since 1997 and according to plaintiff, it had become one of the leading websites in India. The plaintiff proved the reputation attained by it and contended that, when used with suffix ‘.com’, the word NAUKRI has assumed distinctiveness and secondary meaning. The defendant on the other hand contended that the term ‘NAUKRI’ is generic in nature and incapable of possessing secondary meaning. The defendant also submitted that it is necessary for the plaintiff to prove that his domain name has secondary meaning. The Delhi Court, rejecting the defendant’s argument said, “It is also a settled law that the distinction between the generic word and descriptive word is very thin and such word could also assume a secondary meaning by its long user by a person, who establishes his reputation in the market.”

An entirely different view was taken by the Bombay High Court in People Interactive (India) Private Limited v. Vivek Pahwa[4]. The plaintiff, being the owner of domain name ‘Shaadi.com’, sued the defendants to restrain them from using ‘deceptively similar’ domain name, ‘seconshaadi.com’. ‘Shaadi.com’ provides matrimonial services to people across the nation whereas the defendant’s services involve providing matrimonial services to select class of people viz. those who want to re-marry. The counsel for the plaintiff agreed that the mark ‘Shaadi.com’ is not distinctive. It was however contended that descriptive mark can attain distinctiveness and was therefore eligible to be protected as a trademark. The defendants argued that the term was generic and supported their arguments by submitting names of 29 other websites which used the term in their domain names. The Court held, “It takes a commonly descriptive or generic word and tacks on a technically necessary suffix to it:.com. Every domain name needs some Top Level Domain ("TLD") suffix such as.com,.net,.org,.in,.gov and so on. Without one of these, the website and its related services do not function. These are, therefore, also entirely generic. They have no distinctiveness at all. No one can claim exclusivity in any TLD or any domain suffix of any level (such as.gov.in or.net.in).”

In Sunil Mittal and Ors. vs. Darzi on Call[5] it was held:

A distinction has to be carved between use of a word as descriptive of services provided under a trade name/trade mark and use of that word as trade name/trade mark in itself. A person who for the first time starts using as a trade name/trade mark, a word which in the past has always been used as descriptive of the services, cannot, in my opinion, be denied the protection as available to other proprietors of trademark, on the ground of the word being descriptive of the trade. Protection afforded to intellectual property, to which genre trade names and trademarks belong, in the ultimate analysis, is protection of a novel idea/concept/thought. If none else has in the past thought of adopting as a trade name/trademark, a word which till then has been used as descriptive of services, then the person who has this novel thought/idea deserves protection.

What is ‘secondary meaning’ and how should it be established?

The Courts have also assumed the responsibility of first clarifying what in fact is ‘acquisition of secondary meaning’ before going in to the merits of the case for determining its acquisition. Some striking observations made by courts are discussed below. 

In People Interactive’s case cited above (Shaadi.com case), the Bombay High Court opined, “This must necessarily mean that the primary meaning of the expression, the one with which it began, has been lost. It is left behind. The expression no longer means what it once did. It has assumed a new avatar.” The court further observed that exclusivity on the basis of secondary meaning must be proved by cogent material, producing statement of sales and expenses do not by itself, prove acquisition of secondary meaning.

In Pidilite Industries Limited v. Vilas Nemichand Jain[6], the Bombay High Court said, “mere evidence of extent of use is not enough to show that the use is such that the mark has become distinctive.”

In Nestle India Limited vs. Mood Hospitality Private Limited[7] the Delhi High Court relied on a foreign judgement and quoted: A secondary meaning results when, "in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself."

Conclusion

It cannot be denied that the Judiciary has decided each dispute through logical reasoning. Dispensing justice in such matter largely depends on the facts as well as the claims made and reliefs sought by the plaintiff in each case. Perusal of the judicial pronouncements on law relating to intellectual property rights shows, that heavy reliance is placed on foreign judgments passed across the world. Hence, the decision of the U.S. Supreme Court has set a precedent not only in the U.S but also in India.

References

Booking.com

Supreme Court of the United States Blog

Manupatrafast.com

SCC OnLine

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[1] Trade Marks Act, 1999; Section 2 (zb)

[2] Yahoo.com vs. Akash Arora, 1999 (19) PTC 201

[3] ILR (2002) 1 Del 219

[4] 2016 (68) PTC 225 (Bom)

[5] CS (Comm.) 1381/ 2016

[6] 2015 (64) PTC 185 (Bom)

[7] (2010) ILR 3 Delhi 560