flIPstaan: ‘ANGREZI MEDIUM’ AND THE NECESSITY OF MAINTAINING STRONG BRANDS
SEASON 1
EPISODE 3 – 27th September, 2020
“Aur Jahaan Tak Mhaari Beti Ka Sawaal Hai Wo To Trueford University Jaakar Rahegi, Nahi To Main Ghasiteram Todarmal Ko Par-Poto Nahi”
– Champak Bansal, Angrezi Medium
Introduction
The above quoted dialogue could be loosely translated as “And so far as my daughter is concerned, she will surely go to Trueford University, otherwise I am not the great grand son of Ghasiteram Todarmal.”
It is very clear from this dialogue of Champak Bansal (Irrfan Khan), that he derives a great sense of pride in the name “Ghasiteram Todarmal”.
This begs for a question. Who was Ghasiteram?
Ghasiteram Todarmal Bansal as per the film ‘Angrezi Medium’ was a businessman who started a sweet and snacks (namkeen) shop in the city of Udaipur, Rajasthan in the year 1920 under the trade mark ‘Ghasiteram’ which had become world famous so much so that the same was also mentioned in the popular travel magazine, ‘Lonely Planet’.
Title Dispute over the trade mark ‘Ghasiteram’
The brand had a 100 year legacy. However, unfortunately the great grandfather had died without signing the will and assigning/bequeathing the trade mark. As a result we see a pending title dispute between the family members over the brand name ‘Ghaisteram’.
As the parties to the trade mark dispute fail to reach any settlement, the Hon’ble Court relies on the last prepared unsigned will and gives the title in the trade mark ‘Ghasiteram’ to the descendant Gopi Bansal.
All others, whether brothers or relatives, including Gopi’s brother Champak Bansal were directed not to use the trade mark.
The Brand and its Use
As understandable, the trade mark involved herein is ‘Ghasiteram’ used for sweets and namkeens having a user claim of 100 years with a spill over goodwill abroad and interestingly, 127 descendants to the claim of part ownership.
However, due to its wide popularity and multiple descendants claiming usage of the said trade mark for their shops, non-descendants who were not family members of ‘Ghasiteram Todarmal Bansal’ had also started using the said mark for their sweets shops and the usage was to suchan extent that that the original claimant, Mr. Champak Bansal, had to state on his shop “FIRST ORIGINAL” in order to distinguish his shop.
At that stage, Champak Bansal made a very interesting and pertinent remark against such third party use being:
“Pata ni kaun kaun dukaan ke naam par kabza kare baitha hai”
translating into
“Don’t know, who all have been using the brand name for the shop.”
The Problem of ‘Common to Trade’ marks
The situation, where someone starts using an identical or deceptively similar trade mark to a trade mark for identical or similar goods/services, may be both infringement of trade mark and passing off, depending upon the fact whether the trade mark is registered or not. In any event, remedy of injunction claiming passing off is available to owners of trade marks irrespective of registration of trade mark. Thus, it was permissible for Gopi Bansal to sue entities using the mark ‘Ghasiteram’. However, we do not see in the film a suit against non-family members but instead within the family members themselves.
The family members on the other hand, use ‘FIRST ORIGINAL’ or claim ‘TRUE OWNERS’ (as in the images above) so as to distinguish themselves from violators.
The consequences of not suing violators of trade mark rights are grave for the brands in the long run. In the short run, the owners of famous marks believe that the brand is selling well and the location of their store is the king. However, with passage of times as multiple copycats start appearing, the brand starts to loose its distinctiveness and resultantly its monetary value. Apart from the same, as the copycats may not be able to maintain quality the brand also takes a hit on its customer attracting power in the long run, this again causes a dent in its value.
It is a settled position in trade mark jurisprudence that if a mark becomes ‘common to trade’, there is a great decrease in the ability for that mark to claim exclusivity. A mark becoming ‘common to trade’ and thus capable of being used by anyone is a recognised defence in trade mark actions. In Skyline Education Institute (Pvt.) Ltd. V. S.L. Vaswani & Anr., a full bench of the Supreme Court decided not to grant a temporary injunction as `Skyline’ was being used as trade name by various companies / organizations / business concerns.[1]
In some cases, the Defendant(s) even claim/s that the mark has become completely generic for the goods/services in question.
It is true that merely raising a defence of mark being ‘common to trade’ is not sufficient and the Defendant(s) in such case(s) would have to prove that use by other persons is substantial so much so that there are multiple third parties having a significant business turnover.[2] Further, the business realities also could not be denied that the Plaintiff is not expected to sue each and every infringer and thereby remain involved in litigation at the cost of its business time. [3]However, on finding multiple third parties using the same, the Hon’ble Courts desist themselves from granting injunction.
One or two infringers/violators may not constitute or make a ground that the mark has become ‘common to trade’ as they may be limited in their number and even the extent of their business may be limited. Thus, not prejudicing the distinctiveness of the mark.[4] If the impugned infringement is too trivial or insignificant and is not capable of harming business interests, it might not be considered as common to trade.[5] However, not suing initial infringers and letting others crop up in the long run may make the mark vulnerable to not only being incapable of protection but also invalidation. A new generation dependant upon internet may not be able to trace out the original shop/store. A leeway of too trivial or insignificant violations given by the Courts to protect Plaintiff may not be helpful then.
Value of Trade Mark and the Necessity to protect it
Some of the world’s biggest Companies’ most valuable asset is the value of their trade marks. This value should not be allowed to be lowered and should be protected in every possible way. Thus, there is an inherent need of constantly creating strong trade mark rights and also continuously enforcing the same so as to ensure distinctiveness in the marks, protecting their goodwill, ensuring increased monetary returns and thus retaining their commercial value.
A robust cease and desist campaign against violators combined with effective litigation strategy helps in clearing the market and bolstering stronger trade mark rights. Litigation also helps in increasing the revenue of Intellectual Property owners as Courts grant damages as well as cost of litigation.[6]
A brand owner should not only register his/her/its trade marks in the jurisdiction they are being used but at the same time also in jurisdictions they are intended to be used. All possible variations should be applied for statutory protection. If it ensures better protection, the marks should be applied as series trade marks, associated trade marks etc. as well as in unconventional forms such as sound, motion, colour combination etc. to create a strong wall of protection around the brand.
In today’s times, when Companies are valued, the IP Due diligence team of the acquiring/investing Company looks at the user of the marks as well as statutory rights in the mark. Stronger the statutory and common law rights, stronger the trade mark value leading to stronger Company valuation.
Apart from creating statutory rights, trade mark owners should ensure effective protection of the same for the reasons mentioned above. This will also ensure a higher valuation for the brand. Further, it is to be noted that a brand may not only be susceptible to sale but also licensing. Creating and maintaining strong trade mark rights ensure higher returns in licensing and franchising over the years. However, if a brand cannot be adequately protected it may be difficult to license it as well as franchise it thus having a restricted recurring stream of revenue. No brand owner would want that.
What happened to the claim of Champak Bansal in the early part of the movie?
Though Mr. Champak Bansal in the pride of his great-grandfather’s name made a commitment to teach his daughter at Trueford University, London, but he had no money by himself to fund that education. At the end, what comes to his rescue is the trade mark value of brand ‘Ghasiteram’. To help fund his niece’s education Mr. Gopi Bansal, assigns the mark to another competitor for a value of Rs. 3,00,00,000/- (Rs. Three Crore Only).
However, being emotionally attached to the brand name of their great grand father, the daughter gives up on studying at the University and plans to make her great grandfather’s brand an International brand. (Yes, we do understand that the brand has been sold but a fictional world has its creative liberties). The family decides to retain the brand name on each of their shops and wait to together contest any passing off/breach of contract suit by the assignee.
They all together hail the great grandfather at the end and shout in chorus “Ghasiteram Todarmal Bansal ki Jai”.
Conclusion
Thus, we see if the brand ‘Ghasiteram’ would have had exclusive use it may have been able to fetch a higher sum on assignment. However, a three crore value of a brand name alone (without selling the business as a running/going concern) is sufficient to demonstrate that a strong trade mark is a wonderful business asset which is to be guarded zealously. Sometimes, we have seen family disputes ruining popular trade marks and their value. Family members end up fighting amongst themselves and this gives an advantage to a third party to use the mark and claim the defence that within the alleged original owners the title to trade marks is not clear. In major cities, tier – 2 cities, towns as well as villages it is a common sight to see the words ‘Original’ or ‘First or ”Since so and so year’ or ‘We have no other branch’ on stores. This is nothing but either a result of family dispute or a third party use where the said party continues to use the mark and cause cofusion in the market.
Family run businesses are vulnerable to such problems as they do not have a thought out pre-determined plan in respect of such issues. However, Hon’ble Courts have been quite considerate and understanding of family arrangements and protecting the family members to use family owned marks by coming up with some sort of suggestions. Though in the film, the Hon’ble Court rules in favour of Gopi Bansal but it has been held that one member of the family cannot, without something more being shown to the contrary, claim exclusive ownership of the mark.[7] As per the Hon’ble Court, all the heirs of the person who first adopted a mark and put the same to use and earned goodwill and reputation shall, prima facie, have equal rights to adopt and use the same.[8] Further, in Sri Krishna Sweets Pvt. Ltd. v. Mr. M. Murali[9], the Hon’ble Court made it clear that in the trade mark dispute between family members, the dispute should not be treated as a trade mark dispute but must be looked as a family dispute.[10]
The need to maintain strong brand value is for every business. At the end, it is the brand that is first recollected in the mind of the consuming public and is instrumental in attracting it to a particular outlet. A weak brand or a strong brand where an investment is not made on its protection will not only drive away the consumers but will eventually wither away. The need is real and a strategy is indispensable.
[1] 2010 (42) PTC 217 (SC)
[2] Shri Pankaj Goel v. Dabur India Ltd., 2008 (38) PTC 49 (Del)
[3] Dr. Reddy’s Laboratories v. Reddy Pharmaceuticals Limited; 2004 (29) PTC 435 (Del)
[4] National Bell Co. v. Metal Goods Mfg. Co. (P) Ltd. and Anr., (AIR) 1971 SC 898
[5] Supra note 3
[6] Ankit Rastogi, “Commercial Exploitation of Intellectual Property Rights”, available at: https://indiancaselaws.wordpress.com/2020/05/16/commercial-exploitation-of-intellectual-property-rights/#:~:text=Indirect%20exploitation%20can%20be%20in,or%20license%20of%20the%20rights.&text=%5B16%5D%20This%20method%20can%20be,in%20favour%20of%20the%20assignee, last visited on 26th September, 2020.
[7] Shri Ram Education Trust v. SRF Foundation, 2016 SCC OnLine Del 472
[8] Ibid.
[9] (2017) 8 Mad LJ 588
[10] AM Legal, “Dispute of a Family Trademark not a Trademark Dispute but a Family Dispute”
, available at: https://amlegals.com/dispute-of-a-family-trademark-not-a-trademark-dispute-but-a-family-dispute/, last visited on 26th September, 2020