Trademarks in serving the purpose of "identification" and "brand-establishment" often become the bone of contention as regards attainment of the status of a generic word. While the issue of deceptive similarity may also cloud such a matter, rival impress upon holders of trademarks opposition and cancellation applications. It is indeed interesting to note how procedural formalities laid down in the statute-books may gain prominence over issues of deceptive similarity and attainment of common knowledge to the public. Witnessing such a development of viewpoint is the case of Bata India Ltd. v. Khadim Holdings Pvt. Ltd. {2008 (37) PTC 171 (CB)}.
Bata India, holders of over three hundred trademarks including Bata Hawai, Bata Hawai Wedges and Hawaiana had filed an application for rectification as under Section 50 of the Copyright Act, 1957. Following this, a notice of caution against the wrongful usage of the mark(s) was published by them in leading newspapers. Khadim Holdings, responded to this notice of caution vide an application filed at the High Court for cancellation of the Bata's trademark. Bata prior to Khadim's registrations being granted had instituted a suit against Khadim, in pursuance to its grievance of wrongful usage of the marks containing "Hawai". Khadim, in spite of such a pending suit, obtained copyright registrations for its marks including Khadim Hero Hawaii, Khadim's 820 Hawai, Khadim's Halka Hawai , so on and so forth.
Bata, in the present suit, propounded that the incumbent formality of serving copies of the application for registration under S. 16(3) of the 1957 Act had been left unfulfilled. Khadim, in its averments contended that the term 'Hawai Chappals' had become synonymous with rubber chappals and consequently, not a subject matter over which proprietary rights be claimed. Bata India refuted the arguments saying that they had registered the word 'hawai' for the first time, and that the same was made use of by Khadim indicating the product, rather than as a trademark.
The Copyright Board,deciding in favour of the petitioner, relied solely on the written submissions. The Board seemed to be inclined towards ensuring that procedural formalities as laid down in the statute-book be complied with, irrespective of registration under copyright or trademark law. The Board here seemed to opine that in order to maintain the "purity of the Register", no limitations as to time period were existent, and duly ordered the Registrar to expunge from the Register, the entries related to Khadim's marks. The Board also voiced that equity and balance between public and private interest be maintained, and that in this very aid, legal propositions to ensure effective mechanism and synchronization with socio-economic benefits of a time, had been laid down.
The decision of the Board however, is silent on the count of Bata's mark having become a word of generic usage or not. The Board seemed to lay stress upon the requirement to fulfill the procedural requirements, while remaining silent on the established concepts of deceptive similarity or wrongful usage marks.
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