BISLERI Indianizes their TradeMark
Trademarkclick .com 6 Sep 2017

BISLERI Indianizes their TradeMark

India’s counterfeit market has been increasing at the rate of 44% a year and was estimated to be worth Rs. 1.05 lakh crore in 2014.[1]  A major impact of these increasing numbers has been on the FMCG (fast-moving consumer goods) industry. With an effort to get a fair share of their brand value and combat counterfeiting, Bisleri International Pvt. Ltd. has launched local labels in different regional languages, stepping up its game in re-establishing its brand in the country. The new marketing strategy, as stated by Anjana Ghosh (Director of Marketing, Bisleri International Pvt. Ltd.) is aimed at connecting with locals in their mother-tongue and simultaneously targeting counterfeit products.

Rule 28 of the Trademark Rules 2017prescribes the procedure for registration of trademarks in regional languages. It states that where a trademark contains one or more words in scripts other than Hindi or English, the applicant has to provide the precise transliteration and translation of each such word in English or Hindi and state the language to which the words belong.

The approval of the application under Rule 28 is subject to a test for the determination of whether the mark can be registered as a regional language trademark or not. In India, this test is loosely based on the US Doctrine of Foreign Equivalents. According to the doctrine, the court translates foreign words into the native or common language of the country to determine whether a mark in the foreign language is registrable or confusingly similar to existing marks. The Indian courts while applying the doctrine have recognized the complexities of a multi-lingual nation and hence tried to inculcate multiple factors in the Registration of Trademarks in regional languages.

One of the earliest cases of the Regional Trademark is TG Balaji Chettiar v Hindustan Lever Ltd. The applicant, a manufacturer and seller of soaps filed an Application for the Registration of a Trademark containing the Tamil word “Surian”. The defendant, Hindustan Lever Ltd. claimed that it held the registration of the words “Sun” and “Sunlight”, in the same category of products since the past six decades.

The issue was whether the use of word Tamil word “Surian” which translates to “Sun” was deceptively similar to the Defendant’s registered trademark?

The Court, ruling in favor of Hindustan Lever Limited (Defendant) stated that the Applicant’s mark was bound to cause confusion among the local Tamil consumers who generically use the term “Surian” for the English word “Sun”.  A purchaser conversant only in Tamil would refer to and ask for HLL’s soap by the name “sun” and in all likelihood, would be given Chettiar’s soap and not the Sunlight soap he intended to buy, hence causing confusion. The word “Surian” being the Tamil equivalent “Sun” was denied registration.

The application of the Doctrine of Foreign Equivalent, however, is still at a nascent stage in India and is largely based on the court’s interpretation of the same. Therefore, it is important for brands like Bisleri to ensure that its move in multi-lingual Indian market is legally permissible and within the framework of the trademark registration procedure and rules of India.

[1] FICCI and KPMG Report (2015)

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