By, Agneya Gopinath

 

Introduction

Normally, under International Trade Mark Law, generic words cannot be registered as a mark, with India being no exception[i]. This rule has however been deviated from, in cases where the generic terms have over time, gained a ‘secondary meaning’.

With reference to the above principle, the question arises: whether a Generic Term, coupled with a Domain-name suffix like “.com”, would also be generic?

This issue was addressed in the case of United States Patent and Trademark Office Et Al. v. Booking.Com B. V.[ii], which rules strongly in favour of registration of such domain names under the Federal Trade Mark Law, as far as certain conditions are met.

 

Background

‘Booking.com’ is a digital travel company that provides hotel reservations and other services, under their brand name. They had applied for registration of four marks, with all of them showcasing their name ‘Booking.com’ in some or the other way.

Their application was rejected by the Patent and Trade Mark Office (PTO) as well as the Board of Appeal on the ground that ‘Booking.com’ was generic. It was also held that even if the mark was not generic, it lacked a secondary meaning, and was therefore ineligible for registration.

A review was sought before the District Court, wherein survey evidence pertaining to consumer perception was introduced. This resulted in the entire case turning in favour of the Company. Heavily relying on such evidence, the District Court concluded that unlike the word ‘Booking’, ‘Booking.com’ was not generic as it did not refer to a genus, but was descriptive “of services involving ‘booking’, available at that domain name.” This decision was also affirmed by the Court of Appeals for the Fourth Circuit.

Hence, a writ of Certiorari was granted by the Hon’ble Supreme Court, to set aside the decision of the lower Courts.

 

Contentions

The Petitioners strongly contended that such a name was ineligible for registration, irrespective of the consumer perception. The logic used was that if a generic term was combined with a top-level domain name, the resultant combination would also be generic. In support of this argument, they relied on the case of Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.[iii], wherein it was held that addition of a corporate designation such as “Co.”, does not confer trademark eligibility. In essence, the names “Generic and Co.” would be similar to “Generic.com”, and hence would convey no additional meaning.

They further contended that such registrations would have serious implications on the market as it would deprive other competing manufacturers, the right to call an article by its own name, thus resulting in anti-competitive practices. This would lead to conferring a monopoly on the domain owner, as competitors would not be able to describe their goods or services as they are.

They supplemented their contention by stating that owners of such domain names already possessed tremendous market advantages. Therefore, they did not need any additional trademark protection, as they have already seized a name that is easy for consumers to find.

On the other side, the Respondents relied on other similar marks that were previously granted by the PTO, which were generic in nature. Moreover, they heavily cited their consumer surveys, which clearly showed that the majority of the consumers perceived the mark as a distinctive brand (74.8%) and not a common name (23.8%).

Lastly, the Respondents accepted that close similarities with other marks were unlikely to infringe their own and that federal registration would not prevent competitors from using the word ‘Booking’ to describe their own services.

 

The Decision and its Reasoning

In an 8:1 judgement, the Court ruled strongly in favour of the Respondents. Their decision was primarily influenced by the registrations already granted by the PTO to similar descriptive words, such as ‘ART.COM’ (On the Principal Register), which was an online retail store for art products, original art and reproductions & ‘DATING.COM’ (Supplemental Register), which was a platform for dating services. The court found that the PTO’s stand in the present case was inconsistent with the aforesaid registrations, which were already granted.

Additionally, the Court rejected the comparison with the Goodyear case and held that what actually governed the genericity of such marks was their perception by the consumers and not the mere addition of suffixes. Expounding on this proposition, the Court explained that even a ‘generic.com’ may convey a source-identifying characteristic to the consumers, if it has acquired a secondary meaning over time, and was not merely associated with a general class of products or services.

Since a domain name can be owned only by a single entity at a given time, a consumer familiar with the same will always associate ‘Booking.com’ with their specific business. For instance, one will never consider ‘Travelocity’ (another online travel agency) as ‘Booking.com’.

With reference to anti-competitive practices, the Court ruled out the same by stating that what was to be registered was the domain name, i.e. ‘Booking.com’, and not the word ‘Booking’. Hence, the word ‘Booking’ remained free to be used and would not infringe their mark, unless it confused consumers. In cases of similar marks, the consumers would have to be careful with their selections. Such market advantages could by no means deny the domain name owner, protection under the Trade Mark Law[iv].

Moreover, the Doctrine of Fair Use would also protect a person using a similar mark in good faith. Hence, the existence of such doctrines negated the possibility of conferring a monopoly over the generic word, on the owner of the domain name.

A dissenting opinion was delivered by Justice Breyer, who questioned the credibility of customer surveys and held that the owners of such domain names gain an unfair exclusivity in that respective area. On account of such reasons, he held that the mark should not be granted federal registration.

Conclusion:

The United States Supreme Court has served as a role model for other Courts around the world for developing jurisprudence in the field of Intellectual Property. This decision lucidly enunciates what a generic term is, by referring to it as a genus of which, the particular product is a species. Further, to gauge its distinctiveness, its meaning must be viewed as a whole and not in isolation (It must be viewed as ‘Booking.com’ and not just as ‘Booking’). The last, and by far the most important factor for consideration, is the general perception of the mark in question.

One key aspect of this decision lies in the Respondents themselves conceding that there may be other similar marks which may exist, but would not infringe their own. However, this does not hold globally. The exclusive non-enforceability aspect of the decision, as a deterrent for other similar marks, is tough to monitor in other countries.

Indian Law has also taken cognizance of such issues[v], and has adhered to certain rules prohibiting the misuse of domain names so as to prevent what is known as ‘Cyber-squatting’ and to facilitate dispute resolution[vi].

In addition to this, the Indian Courts have also applied the law in a similar fashion. For instance, the Delhi High Court refused to injunct the use of the Defendant’s domain name which was similar to that of the Plaintiff’s[vii], owing to the fact that Kabadibazaar is a word commonly used in Hindi, and it being a descriptive name which has not attained a secondary meaning, was not eligible for any protection (the conflicting domain names were ‘www.kabadibazaar.com’ and  ‘www.kabaribazaar.com’).

Also, in Info Edge (India) Pvt. Ltd. and Ors. vs. Shailesh Gupta and Ors,[viii], an injunction was granted to stop the Defendant from using the domain name ‘Naukari.com’, as it was similar to the Plaintiff’s Domain name ‘Naukri.com’. Even though Naukri was a generic term, it was held that the Plaintiff’s mark had gained a secondary meaning over time.

In conclusion, the decision of the U.S. Supreme Court, and for that matter, even those of the Indian courts, are largely similar in terms of granting protection to generic or descriptive marks. They rightly place utmost reliance on whether the mark is viewed as a source identifier and the meaning that the consumers associate with it, which strikes at the core of Trade Mark Law, in a consumer-centric market.

[i]  The Trade Marks Act, No. 47 of 1999 § 9, §11, Gazette of India (1999), pt. II sec. 1, http://egazette.nic.in.

[ii]  United States Patent and Trademark Office Et Al. v. Booking.Com B. V., 591 U. S. ____ (2020).

[iii] Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888).

[iv] See Lanham Act of 1946 §2, 15 U.S.C. §1052 (2020).

[v] Infra note vii, viii.

[vi] The Internet Corporation for Assigned Names and Numbers, Uniform Domain Name Dispute-Resolution Policy (Oct. 24, 1999).

[vii] Manish Vij And Ors. vs Indra Chugh And Ors., AIR 2002 Delhi 243.

[viii] Info Edge (India) Pvt. Ltd. and Ors. vs. Shailesh Gupta and Ors., (2002) ILR 1 Delhi 220.

Image source: Photo by Markus Winkler on Unsplash