question Generic Word + Country

[blogspotter]

Can someone trademark a generic word and a country name
Like CarsAustralia ?

I have a domain name that is a Singular+country

Now the naming convention is that you name it like keyword+place or Place+keyword(s)
If keyword comes before the place, it sounds a lot better if it is plural.

So let us assume the domain is ApplesAustralia. com and I own AppleAustralia. com

There is a Multi Million dollar company. They raised more than 10 Million in series C a few years back and are still going strong and profitable

I have never had any inbound request, so i think an outbound would make sense.

I am not sure how to go about it?
Fun fact. My domain was originally registered about 3 months before they did. The company was launched 3 years after the first registration, so I hope I am in the clear even if they are trademarked,

But can they trademark a Generic Name.
It is not Like Apple where Apple sells computers.
They are apples and selling apples.

It is not on Justia since it is an Indian Based company


How would you have go about it?
Cold call the CEO?

 

[karthick55]

In india ,Generic industry words cannot be trademarked for the same class of products & services even if allowed , it might have been allowed for particular use and not exclusive rights over the industry general word. Country names also not allowed in trademark particularly in india. I am advocate from india. Thanks

 

[blogspotter]

In india ,Generic industry words cannot be trademarked for the same class of products & services even if allowed , it might have been allowed for particular use and not exclusive rights over the industry general word. Country names also not allowed in trademark particularly in india. I am advocate from india. Thanks

This is interesting.
SO if there is a company called IndiaCar dot com who deals in cars, I can go ahead and start another company called IndiaCars dot com and deal with cars, because IndiaCar cannot be trademarked.

But I can trademark Cars.com for use as a computer brand and trademark it?

 

[karthick55]

This is interesting.
SO if there is a company called IndiaCar dot com who deals in cars, I can go ahead and start another company called IndiaCars dot com and deal with cars, because IndiaCar cannot be trademarked.
But I can trademark Cars.com for use as a computer brand and trademark it?

Absolute grounds Section 9 of the Trademarks Act provides the following absolute grounds for refusal of a trademark:

The mark consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service or other characteristics of the goods or service.

In this case Even if trademark allowed by registry , it may be for a particular use and not exclusive use as it is prohibited by indian trademark law. So any other person can easily start a new business with industry general words and domains.

 

[karthick55]

But , though one can do business with identical domain names ,the legal company name through which one do business activities should not be identical to a existing company name ( pvt ltd or public ltd ) or registered llp under companies act 2013 or llp act. Though remedy here is one can register same name as a proprietorship or partnership not under llp act . Or through a different legal company name altogether with similar domain names.

 

[jberryhill]

Can someone trademark a generic word and a country name

It would be really great if people stopped using "trademark" as a verb.

Have you ever heard of any of the following:

American Airlines

US Steel

Korean Air

Tour de France

Norwegian Cruise Line

British Petroleum

Swiss Army

Canada Dry

There are many well-known trademarks which consist of a country name (or demonym) and another word, and you know many of them.

 

[jberryhill]

Country names also not allowed in trademark particularly in india.

That's simply not true.

https://en.wikipedia.org/wiki/IndiaMART

https://en.wikipedia.org/wiki/Air_India

https://en.wikipedia.org/wiki/Incredible_India

These are all registered trade marks (of hundreds) in India:

INDIA
Registered
1879440
B-2 MOTOR COMPANY (INDIA) PRIVATE LIMITED,
03/11/2009

INDIA
Registered
218380
SEN & PANDIT PRIVATE LIMITED.
11/10/1963

inDIA
Registered
1961470
MANOJ KUMA
06/05/2010

INDIA
Registered
296615
SANTA SINGH

03/06/1974

India T
Registered
2025823
EDIPRESSE ASIA LIMITED
20/09/2010

INDIA AF
Registered
3370309
A B GOPALAMURUGAN
22/09/2016

INDIA TV
Registered
1262555
INDEPENDENT NEWS SERVICES PVT.LTD.
22/01/2004

India VIX
Registered
1651768
NATIONAL STOCK EXCHANGE OF INDIA LIMITED
08/02/2008

India VIX
Registered
1651754
NATIONAL STOCK EXCHANGE OF INDIA LIMITED
08/02/2008

India VIX
Registered
1651778
NATIONAL STOCK EXCHANGE OF INDIA LIMITED
08/02/2008

India VIX
Registered
1651744
NATIONAL STOCK EXCHANGE OF INDIA LIMITED
08/02/2008


Of course India allows country names in registered trademarks, just like anywhere else.
India Now
Registered
3421982
BENNETT, COLEMAN & COMPANY LIMITED
29/11/2016

INDIA LIX
Registered
1982494
NATIONAL STOCK EXCHANGE OF INDIA LIMITED
21/06/2010

INDIA LIX
Registered
1982492
NATIONAL STOCK EXCHANGE OF INDIA LIMITED
21/06/2010

India LIX
Registered
1982493
NATIONAL STOCK EXCHANGE OF INDIA LIMITED
21/06/2010

INDIA LIX
Registered
1982491
NATIONAL STOCK EXCHANGE OF INDIA LIMITED
21/06/2010

INDIA A2Z
Registered
1596954
INDIA VISION NEWS AND ENTERTAINMENT
31/08/2007

INDIA TOP
Registered
702135
MAHESH KUMAR
18/03/1996

INDIA PAY
Registered
1988861
NATIONAL PAYMENTS CORPORATION OF INDIA
05/07/2010

INDIA KING
Registered
997024
CRYSTAL PLASTICS AND METALIZING PRIVATE LIMITED
16/03/2001

INDIA LAND
Registered
1870291
INDIA LAND HOTELS MUMBAI (P) LTD
06/10/2009

india wide
Registered
2298523
XENON HOSPITALITY PRIVATE LIMITED
13/03/2012

 

[karthick55]

Though it might have been allowed for by registry, it may be for a particular use and not exclusive use. As no one can have a monopoly over geographical names.
Absolute grounds Section 9 of the Trademarks Act provides the following absolute grounds for refusal of a trademark:

The mark consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin.

 

[karthick55]

One classic case for which a trademark for word 'Ayur' which was allowed by registry and after 20 years of usage by some x party . Y party approached trademark appellate board saying ayur was a industry general word for ayurveda . Appeal allowed and ordered to remove tradmark from register, saying no one can have exclusive use for industry general words.one can read about this on net.
As section 9 of the act clearly mentions the absolute grounds for refusal. Any trademark registered after the act was in force, it should be in compliance with the act . And any trademarks even if allowed by registry for a particular use, it can be challenged and removed if it is against the provisions of law which are clear.

 

[jberryhill]

As no one can have a monopoly over geographical names.

That's wonderful. That also has nothing to do with the question that was asked:

Can someone trademark a generic word and a country name
Like CarsAustralia ?

I have a domain name that is a Singular+country

Nobody was asking whether someone can have an outright monopoly over geographical names.

The question was whether someone could have a trademark that is of the form "word+country". Of course they can. There are many trademarks like that.

Go register AirIndia.tld and see what happens.

What do you suppose, without looking, was the outcome of these UDRP proceedings:

https://www.wipo.int/amc/en/domains/search/case.jsp?case=D2019-0221
Domain name(s) missindia.com

https://www.wipo.int/amc/en/domains/search/case.jsp?case=DTV2011-0003
Domain name(s )indiamart.tv

https://www.wipo.int/amc/en/domains/search/case.jsp?case=D2010-2002
Domain name(s) indianoil.net

https://www.wipo.int/amc/en/domains/search/case.jsp?case=D2000-0973
Domain name(s) indiatoday.com

Now, in each one of those disputes, the domain name consisted of "India" plus another word.

The general refusal of geographic terms per se has nothing to do with whether marks containing or even consisting of terms which have either (a) acquired distinctiveness or (b) are not solely geographically descriptive can be registered. Of course they can be registered.

So if someone registers "Air India" in some tld, nobody is going to believe that they registered it because they are really interested how the air is in India. It's obvious that someone registering "Air India" is doing so because it is the trademark of a well known international airline based in India. Telling them something like, "Oh, you can't register marks with geographical terms in them in India" is not accurate, and could get someone into real trouble.

 

[karthick55]

What does section 9 says ?

 

[jberryhill]

What does section 9 says ?

Nobody cares. It wasn't the question asked.

It says the same thing as Article 4 of the European Trademark Directive:

https://eur-lex.europa.eu/legal-content/EN/TXT/HTML/?uri=CELEX:32015L2436&from=EN

Article 4


Absolute grounds for refusal or invalidity


(c)


trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;

----

It is an extremely common principle of trademark registration systems around the world, which is why so many countries use the identical language for it, whether India, Europe, and the United States, which puts it this way in 15 USC 1052(e):

-----

(e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them...

-------

However, it has nothing to do with the question at hand, and it is not anywhere near as broad as you think. Let's look at some well-known trademarks in India...

I have had many acquaintances who graduated from the Indian Institute of Technology Bombay (and who have great stories about the Mood Indigo festival). It is perfectly clear that "Indian Institute of Technology Bombay" is an institute of technology in Mumbai, India. It is completely geographically descriptive of what it is. However, it has acquired distinctiveness as a mark having secondary meaning as a PARTICULAR institute of technology in Mubai, India.

For that reason, "Indian Institute of Technology Bombay" is not "exclusively" geographically descriptive. It has acquired secondary meaning as reference to a particular school.

The same is true of such things as Air India, Times of India, Indiamart, and many other trademarks in India which, sure on the surface, appear to be geographically descriptive terms or otherwise consist of common words combined with "India".

This is a basic concept in trademark law, and it is by no means exclusive to India. The same provision and in nearly the same language, is included in the trademark laws of many countries and regions.

BUT IT SIMPLY IS NOT RELEVANT TO THE QUESTION ASKED IN THIS THREAD, and it is irresponsible to suggest to domainers that there can be no marks of the form "word + country" - even in India.

 

[karthick55]

I believe section 9 of indian trademarks act includes the answer for this thread . Hence answered query of domainer. As so many seniors are there in this forum with good experience in trademarks, will understand the things from all of them. No issues in learning things from seniors.

 

[blogspotter]

You two argue. I will quitely listen.

Please go ahead. Seriously. This is very interesting.
And Karthic, please add more inputs, like interpreting section 9 for the layman.
This thread can be a trademark gold.