Can a Common Word Become a Protected Trademark?
Introduction
The
intersection of language, commerce, and intellectual property often gives rise
to disputes of profound complexity. When a word drawn from everyday vernacular
acquires such deep commercial resonance that it becomes synonymous with a
business enterprise, its unauthorised use by another trader raises questions
that go to the heart of fair competition and consumer protection. The Supreme
Court of India's judgment in T.V. Venugopal v. Ushodaya Enterprises Ltd. and
Anr., decided on 3rd March 2011, is a landmark ruling that grapples
with precisely these tensions. The case explores whether the word 'Eenadu', a
common word in the Telugu language meaning 'Today' or 'This Day', could be
monopolised by a newspaper house, and whether its use by an incense stick manufacturer
in a different state and a different product category amounted to the tort of
passing off.
The
judgment, delivered by the Supreme Court affirmed the High Court's ruling in
favour of the respondent newspaper company, holding that the adoption of the
mark 'Eenadu' by the appellant was fraudulent and mala fide from inception,
designed to ride upon the extraordinary goodwill and reputation that the Respondent
company had built over decades in the State of Andhra Pradesh.
The
case is essentially about this: if a word has become so strongly associated
with one business in the minds of the public in a particular region, can
another trader use that same word even for an entirely different product? The
Supreme Court's answer, in the specific facts of this case, was an emphatic no.
Factual and Procedural Background
The
appellant, T.V. Venugopal, was the sole proprietor of a Bangalore-based
firm called Ashika Incense Incorporated, engaged in the manufacture and
sale of incense sticks commonly known as agarbathis. He started his business in
the year 1988 and, according to his own account, adopted the trade mark
'Ashika's Eenadu' for his product. He claimed that the word 'Eenadu' in Kannada
language means 'this land' and in Telugu it means 'Today', and that he adopted
it to signify the daily use of agarbathis, which are commonly used in daily
religious worship.
The
appellant applied for registration of his trade mark label on 10th February
1994, bearing Application No. 619177. He further made an application to the
Registrar of Trade Marks for a certificate under the proviso to Section 45(1)
of the Copyright Act, 1957, and obtained the certificate on 7th March 1996.
An application for registration of copyright was subsequently made on 14th
March 1997. The appellant's business grew substantially, and by the time of
the appeal before the Supreme Court, his annual turnover from agarbathi sales
was approximately Rupees Eleven Crores per annum.
On
the other side, the respondent, Ushodaya Enterprises Ltd., was an Andhra
Pradesh-based media and business conglomerate. It was the publisher of the
Telugu newspaper 'Eenadu', one of the largest regional dailies in India,
and was reportedly the largest-circulated newspaper in Andhra Pradesh. The
respondent company also had interests in television broadcasting under the ETV
brand, along with other business activities.
In
1995, the respondent company served a cease and desist notice upon the
appellant. The appellant replied on 8th March 1995. Despite this notice,
the appellant continued to sell his agarbathis, and his sales reportedly grew
from approximately Rupees Two Crores to close to Rupees Ten Crores in the years
following the notice, largely from markets within the State of Andhra Pradesh.
In 1999, the respondent company filed a civil suit [O.S. No. 555
of 1999] in the Court of Second
Additional Chief Judge, City Civil Court, Hyderabad, seeking an injunction
against the appellant for infringement of copyright and passing off of the
trade mark 'Eenadu'.
On
24th November 1999, the trial court granted an ex-parte ad interim
injunction restraining the appellant from using the word 'Eenadu'. This was
confirmed on 27th December 1999. The High Court of Andhra Pradesh, on an
appeal by the appellant, suspended the injunction but permitted the appellant
to sell only finished stock worth Rupees One Crore and goods in the process of
manufacture worth Rupees 78 Lakhs.
The
trial court partially decreed the suit on 24th July 2000, injuncting the
appellant from using the word 'Eenadu' only within the State of Andhra Pradesh,
while permitting its use elsewhere in India. Both parties appealed. A learned
Single Judge of the Andhra Pradesh High Court, on 29th December 2000,
allowed the appellant's appeal and dismissed the respondent's appeal.
Aggrieved, the respondent company filed Letters Patent Appeals before a
Division Bench of the Andhra Pradesh High Court, which allowed the appeals on 15th
June 2001, fully decreeing the suit in favour of the respondent company.
The appellant then approached the Supreme Court of India, leading to the Civil
Appeal Nos. 6314-15 of 2001.
The Dispute
The
central question before the Supreme Court was whether the use of the word
'Eenadu' by the appellant on his agarbathi products amounted to passing off the
goods of the respondent company, even though the two businesses were operating
in entirely different product categories , one being a newspaper and media
house and the other being a manufacturer of incense sticks.
The
appellant's core argument was that 'Eenadu' is a common Telugu word meaning
'Today' or 'This Day', and that no trader can claim a monopoly over such a
commonly understood, descriptive, and generic word. He pointed to the
widespread use of the word 'Eenadu' by numerous third parties across Andhra
Pradesh and Karnataka , for products like turmeric powder, matchsticks, playing
cards, ayurvedic soaps, dresses, chilly powder, washing powder, coffee,
tobacco, and even a Telugu feature film released by UTV Productions , to
demonstrate that the word had not acquired exclusivity in favour of any single
trader. He argued that the mark at best had secondary meaning only in relation
to newspapers, not across all product categories, and certainly not in relation
to agarbathis, for which the word 'Eenadu' was entirely arbitrary and had no
descriptive significance whatsoever.
The
appellant also raised important procedural and doctrinal challenges. He
contended that the suit was governed by the older Trade and Merchandise Marks
Act, 1958, and not the Trade Marks Act, 1999, since the litigation was already
pending when the new Act came into force on 15th September 2003. This was
relevant because certain advanced doctrines such as the protection of
well-known marks and dilution, which are statutorily recognised under the Trade
Marks Act, 1999, were not part of the statutory framework under the old law. He
further argued that the respondent company had been aware of the appellant's
use since at least February 1995 but filed the suit only in 1999, indicating
either acquiescence or undue delay, which should disentitle it to relief.
The
respondent company countered that 'Eenadu' had acquired an extraordinary
secondary meaning and was so thoroughly associated with the respondent
company's business in the minds of the Telugu-speaking public of Andhra Pradesh
that its use by anyone else for any product would cause confusion as to source,
ride upon the respondent's goodwill, and damage its reputation. The respondent
submitted that the group was collectively known as the 'Eenadu Margadarshi
Group', that the ETV television channel was also part of the 'Eenadu' family of
enterprises, and that the word 'Eenadu' had become a household name in Andhra
Pradesh in the widest possible sense.
Reasoning and Analysis of the Court:
The
Supreme Court's analysis drew upon a rich tapestry of Indian and English
decisions on the law of passing off, secondary meaning, goodwill, and the scope
of protection available to well-known marks. What follows is a discussion of
how the court reasoned through the legal issues with reference to the
authorities it considered.
On
the Nature of the Mark and Secondary Meaning: The court acknowledged that 'Eenadu' is a descriptive word in the
Telugu language, meaning 'Today'. However, the court held that even a
descriptive word can acquire a secondary meaning through long and extensive
use, such that in the minds of consumers it becomes identified with a
particular trader rather than with its literal meaning. This principle was
drawn from the celebrated English case of Reddaway and Co. and Anr. v.
Banham and Co. and Anr., (1895-99) All ER 133, where the House of Lords
held that the term 'camel hair' had acquired a secondary meaning in the trade
to signify goods manufactured by the plaintiff, even though its primary meaning
was merely descriptive of the material. The court in Venugopal applied this
reasoning to hold that in the State of Andhra Pradesh, 'Eenadu' had come to mean
not merely 'Today' but specifically the products and services emanating from
the respondent company's house.
Similarly,
the court relied on the passage from Halsbury's Laws of England, Volume 48,
4th Edition, page 190, which states that it is possible for a wholly
descriptive word to become so associated with one trader's goods that its use
by another would amount to a misrepresentation that the goods are those of the
first trader. It also noted the position in McCarthy on Trademarks and
Unfair Competition, Volume 2, 3rd Edition, paragraph 12.5(2), which holds
that a user of a generic term must prove some false or confusing usage above
and beyond the mere use of the generic name to obtain relief in a passing off
claim.
On
the Classic Elements of Passing Off: The court extensively cited the three-part test for passing off as laid
down by the House of Lords in Reckitt and Colman Products Ltd. v. Borden
Inc. and Ors., (1990) 1 All ER 873. This test requires the plaintiff to
establish: (i) that its goods have acquired a reputation or goodwill in the
market; (ii) that the defendant has made a misrepresentation to the public,
whether intentional or not, which is likely to lead the public to believe that
the defendant's goods are those of the plaintiff; and (iii) that the plaintiff
has suffered or is likely to suffer damage from such erroneous belief. The
court held that all three elements were satisfied in the present case,
particularly given the extraordinary reputation of 'Eenadu' in Andhra Pradesh
and the fact that the appellant had deliberately adopted the same word, same
artistic script, same font, and same method of writing the name.
The
court also referred to the basic principle of passing off as stated in Perry
v. Truefitt, (1842) 6 Beav. 66, 73, where Lord Langdale summarised the law
in one sentence: 'A man is not to sell his own goods under the pretence that
they are the goods of another man.' This foundational principle was confirmed
as the bedrock of the respondent's case.
On
Goodwill Extending Beyond the Direct Field of Activity: One of the most significant aspects of the
case was the argument that the businesses of the appellant and the respondent
were entirely different , one sold agarbathis and the other published
newspapers and ran television channels. The appellant contended that there
could be no passing off when there is no common field of activity. The court
rejected this rigid interpretation by relying on several authorities.
In
Laxmikant V. Patel v. Chetanbhai Shah and Anr., (2002) 3 SCC 65, this
Court had held that the law does not permit any person to carry on business in
such a way as to persuade customers into believing that the goods or services
belong to someone else, whether the deception is fraudulent or not. The court
noted that the propensity of diverting customers and causing injury to the
original trader was sufficient.
The
court referred to Satyam Infoway Ltd. v. Sifynet Solutions (P) Limited,
(2004) 6 SCC 145, where it had been held that a passing off action is
available to the owner of a distinctive trademark to safeguard against the
defendant deceiving the public into thinking the defendant's goods are the
plaintiff's. The court noted the importance of prior use and the volume of
sales and advertising in establishing reputation.
The
court drew upon the principle of extended passing off from the Champagne cases
in English law. In Taittinger and Ors. v. Allbev Limited and Ors., (1994) 4
All ER 75, the English Court of Appeal granted an injunction to champagne
houses restraining the defendant from using the word 'champagne' in connection
with elderflower-based drinks, on the ground that permitting such use would
erode the distinctiveness of the word 'champagne' and damage the goodwill of
the champagne houses. The court held that erosion of distinctiveness itself
constitutes a form of damage to goodwill, even without direct competition in
the same field.
The
landmark ruling in Harrods Limited v. R. Harrod Limited, (1924) RPC 74,
was also cited to show that a well-known 'fancy name' cannot be adopted by any
person if its only purpose is to pass off as the well-known business. In that
case, a company formed for moneylending was restrained from using the name 'R.
Harrod Limited' because the name 'Harrods' was already a famous name in
commerce and the adoption could lead to deception even though the fields of
business were different.
The
principle that a well-known name like Benz, Mahindra, Honda, or Harrods enjoys
broad protection regardless of the field of activity was underscored by
reference to Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan, AIR
1994 Delhi 239. In that case, the Delhi High Court had held that even a
small trader who uses the name 'Benz' for unrelated goods like undergarments
commits a dilution of a world-famous mark and cannot be permitted to do so. The
court held that the Trade Mark law is not intended to protect those who
deliberately take the benefit of someone else's reputation.
In
Honda Motors Company Limited v. Charanjit Singh and Ors., (2002) 101 DLT 359,
the Delhi High Court had held that the globally renowned mark 'Honda', used by
the defendant for pressure cookers, would mislead the public into believing
that the pressure cookers also came from the House of Honda, and this use was
held to dilute and debase the goodwill of the plaintiff. The Supreme Court
found this reasoning applicable to the Eenadu situation in Andhra Pradesh.
The
court also referred to Mahendra and Mahendra Paper Mills Limited v. Mahindra
and Mahindra Limited, (2002) 2 SCC 147, where this Court had held that the
name 'Mahindra' had acquired distinctiveness and a secondary meaning over five
decades such that any attempt by another person to use it would create an
impression of connection with the Mahindra group. The court confirmed that this
test was applicable to the facts in the present case as well.
On
Dishonest Adoption: A
critical finding of the Supreme Court was that the appellant's adoption of the
word 'Eenadu' was not innocent. The court noted several indicia of dishonest
conduct. First, the appellant, a Karnataka-based company, chose to use the exact
same artistic script, font, and method of writing the word 'Eenadu' as used by
the respondent company's newspaper , a
fact that was regarded as no coincidence. Second, after adopting the name
'Eenadu', the appellant's agarbathi sales from Andhra Pradesh shot up to
account for 90% of his total business — suggesting that the mark's commercial
power in that state was being harvested by the appellant. Third, the appellant
applied for registration of the trade mark 'Eenadu' not merely for incense
sticks but across as many as 34 classes of goods under the Trade Marks
Act, which revealed an intent far beyond the legitimate requirements of his
agarbathi business. The court relied on Midas Hygiene Industries (P) Ltd.
and Anr. v. Sudhir Bhatia and Ors., (2004) 3 SCC 90, which had held that
where the adoption of a mark is itself dishonest, the grant of an injunction
becomes necessary and mere delay in bringing the action does not defeat the
plaintiff's claim.
The
court also discussed the ruling in Madhubhan Holiday Inn v. Holiday Inn
Inc., (2002) 100 DLT 306 (DB), In that case, the Division Bench had held
that the adoption of the words 'Holiday Inn' was ex facie fraudulent and mala
fide, made for the purpose of riding on the global reputation of the
respondent. The Supreme Court found striking parallels between that case and
the present one.
On
Delay and Acquiescence: The
appellant argued that the respondent company knew of his use since at least
1995 but filed the suit only in 1999, and that this delay and acquiescence
should disentitle it to equitable relief. The court, relying on M/s. Bengal
Waterproof Limited v. Bombay Waterproof Manufacturing Company and Anr., (1997)
1 SCC 99, held that passing off is a continuing tort, and therefore at
every moment the wrongful use continues, a fresh cause of action arises. As the
act of passing off is a recurring act of deceit, Section 22 of the Limitation
Act, 1963 provides that in the case of a continuing tort, a fresh period of
limitation begins to run at every moment of the tort's continuation. The court
in Bengal Waterproof had held that bar under Order 2 Rule 2(3) of the Code of
Civil Procedure also cannot be invoked in cases of continuous or recurring
causes of action.
The
court also relied on Ramdev Food Products (P) Limited v. Arvindbhai Rambhai
Patel and Ors., (2006) 8 SCC 726, to clarify the principle of acquiescence,
which requires positive acts of assent or 'laying by' and not merely silence or
inaction. Since the respondent company had not positively assented to the
appellant's continued use, there was no acquiescence. Similarly, Heinz
Italia and Anr. v. Dabur India Limited, (2007) 6 SCC 1 was cited to
reiterate that once there is a dishonest intention on the part of the
defendant, an injunction should ordinarily follow and mere delay does not
defeat the plaintiff's case.
On
Use of Wikipedia as Evidence:
An interesting evidentiary point arose in this case. The respondent company
produced printouts from Wikipedia dated 13th April 2009 to show that 'Eenadu'
was a household name. The appellant challenged this, relying on two American
judicial decisions: Taylor Mary Campbell v. Secretary of Health and Human
Services, 69 Fed. Cl. 775 (2006), decided by the United States Court of
Federal Claims, and Lamilem Badasa v. Michael B. Mukasey, 540 F.3d 909,
decided by the United States Court of Appeals, both of which had held that
Wikipedia does not have evidentiary value in court proceedings. While the
Supreme Court did not expressly rule on whether Wikipedia was admissible in
Indian courts, it implicitly proceeded on the basis of the totality of facts
and findings recorded by the courts below rather than on the Wikipedia evidence
alone.
Final Decision of the Court
The
Supreme Court dismissed the appeals filed by T.V. Venugopal and confirmed the
judgment of the Division Bench of the Andhra Pradesh High Court. The court made
the following principal findings and conclusions. The respondent company's mark
'Eenadu' had acquired extraordinary reputation and goodwill in the State of
Andhra Pradesh, and was so thoroughly identified with the respondent company
that it effectively meant, in popular understanding, the products and services
of the respondent company. The appellant could therefore not be termed an
honest concurrent user of the mark. The adoption of the word 'Eenadu' by the
appellant was ex facie fraudulent and mala fide from inception, designed to
ride upon the respondent's goodwill. Permitting the appellant to continue would
amount to the court placing a seal of approval on dishonest and illegal
conduct. The appellant's continued use of the mark 'Eenadu' in Andhra Pradesh
was calculated to make consumers believe that the agarbathis originated from
the respondent company's house, amounting to fraud on consumers and an invasion
of the respondent's proprietary rights. Such use would also erode the
extraordinary goodwill acquired by the respondent over decades. Honesty and
fair play ought to be the foundation of trade and business. Accordingly, the
court fully upheld the injunction granted by the Division Bench of the Andhra
Pradesh High Court restraining the appellant from using the word 'Eenadu' for
his agarbathi products.
Point of Law Settled
This
judgment settles and clarifies several important principles of intellectual
property and unfair competition law in India. Even a common, descriptive, or
generic word can acquire such a powerful secondary meaning through long and
extensive use in a particular territory that it becomes exclusively associated
with one trader in the minds of the public in that region. When this happens,
any other trader's use of the same word, even for entirely different goods, can
constitute the tort of passing off, provided the necessary elements of
goodwill, misrepresentation, and damage are established.
The
court affirmed that a passing off action does not require the plaintiff and
defendant to be operating in the same field of business. The modern law of
passing off is broad enough to protect a trader's goodwill even against use in
an unrelated product category, provided the plaintiff's mark is sufficiently
well known and the use by the defendant is such as to suggest a false
association or origin.
The
court also clarified that dishonest adoption of a mark is a weighty factor that
tilts the balance decisively in favour of granting an injunction, and that mere
delay in instituting legal proceedings does not defeat the plaintiff's case
where the wrong being committed is a continuing one. The court further confirmed
that in cases of continuing torts like passing off, a fresh cause of action
accrues at every moment of the continued wrong, and the limitation provisions
of Section 22 of the Limitation Act, 1963 apply.
Finally,
the judgment draws a practical distinction between the law of passing off
applicable under the Trade and Merchandise Marks Act, 1958, and the newer
statutory concept of dilution under the Trade Marks Act, 1999, making clear
that even under the old law, strong enough goodwill in a distinctive name justifies
protection across product categories through the common law remedy of passing
off, without needing to invoke the statutory dilution provisions of the new
Act.
Case
Title: T.V. Venugopal v.
Ushodaya Enterprises Ltd. and Anr.
Date
of Order: 3rd March 2011
Case
Number: Civil Appeal Nos.
6314-15 of 2001
Citation:
(2011) 4 SCC 85
Court:
Supreme Court of India
Coram:
Justice Dalveer Bhandari
and Justice K.S. Panicker Radhakrishnan
Disclaimer:
Readers
are advised not to treat this as substitute for legal advice as it may contain
errors in perception, interpretation, and presentation.
Written
By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney],
High Court of Delhi
Suggested
SEO Titles
1.
Passing Off and Regional
Goodwill: Supreme Court Ruling in T.V. Venugopal v. Ushodaya Enterprises
(Eenadu Case) 2011
2.
Can a Common Word Become a
Protected Trademark? Lessons from the Eenadu Agarbathi Passing Off Case
3.
Secondary Meaning,
Dishonest Adoption, and the Law of Passing Off: Analysis of Venugopal v.
Ushodaya Enterprises Ltd.
4.
Trademark Passing Off
Without Competing Products: India's Supreme Court on Cross-Category Brand
Protection
5.
Eenadu Trademark Dispute: A
Deep Dive into Goodwill, Misrepresentation and the Modern Law of Passing Off in
India
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Headnote
Trade
Marks — Passing Off — Descriptive Word Acquiring Secondary Meaning — Dishonest
Adoption — Cross-Category Protection — Continuing Tort — Limitation
Held,
that even a common, descriptive word used in everyday language can acquire
secondary meaning through long, extensive, and exclusive association with one
trader in a particular territory, such that its use by any other trader for any
product — even in a wholly different product category — constitutes the tort of
passing off. The Supreme Court confirmed that the modern law of passing off
does not require the parties to be in direct competition with each other; it
suffices that the defendant's use of the plaintiff's mark or name is likely to
mislead the public into believing that the defendant's goods emanate from or are
associated with the plaintiff. Where the adoption of the offending mark is
dishonest and mala fide, evidenced by the deliberate use of the same script,
font, and presentation as the plaintiff's mark with the object of riding upon
the plaintiff's extraordinary goodwill, an injunction must follow. Delay in
filing the suit does not defeat the plaintiff's claim because passing off is a
continuing tort and a fresh cause of action accrues at every moment of the
continued wrong by operation of Section 22 of the Limitation Act, 1963.
Wikipedia printouts carry limited evidentiary weight in legal proceedings. The
extraordinary goodwill of the 'Eenadu' brand in Andhra Pradesh, built by
Ushodaya Enterprises Ltd. over decades through publishing the Eenadu newspaper
and through allied broadcasting activities, was fully established on record,
and the adoption of the identical word, script, and font by the Karnataka-based
agarbathi manufacturer T.V. Venugopal was held to be ex facie fraudulent and
mala fide, entitling the respondent company to a permanent injunction.
