This article has been written by Darshni Gala pursuing the Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho. This article has been edited by Smriti Katiyar (Associate, Lawsikho).
Kleenex, Thermos, Aspirin, Zipper, etc. What do all of these have in common? All of these terms were once considered as distinctive trademarks. Now these terms come under the purview of generic trademarks, meaning that the products of the companies were so successful that they became so common and started representing an entire category. A very famous term for this is the ‘Trademark Genericide’. Trademark Genericide can be defined as the loss of trademark rights when a term enters common usage and consumers begin to denote a particular product rather than its source. When a trademark becomes the “common descriptive name” of a certain product, the trademark owner will no longer have an exclusive right to its use. This paper throws light on trademark regulations in different countries and how the term LGBTQ and its symbol is recognised in trademark laws. To understand the root of everything, let’s begin from the basis.
A trademark is a word, term or a phrase used by a business or an organisation to protect their product or service. Trademark is an element of the Intellectual Property Right that is granted for distinguishing a product or a service from another entity, thus attaining the legal presumption of ownership.
According to the Indian Trade Mark Act, 1999, “trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”
Hence, a trademark can be a word, name, logo, phrase, symbol, image, design, or a combination of these elements.
In India, to classify goods and services for registration of their trademarks, rules of the International Classification of Goods and Services India that have been published by World Intellectual Property Organization (WIPO) are followed. The Vienna Agreement is followed by India to classify figurative elements of trademarks. With the increasing competition in the market, a trademark offers a simple protection of securing one’s brand and eliminating competitors from stealing one’s ideas.
It is amazing how anything and everything can be considered to be a registered trademark. However, as we all know, nature provides exceptions to every rule. Along with many grounds of restriction like names and surnames, colours, sound, smell, words that are not distinctive in nature or are generic cannot be protected under trademark.
Can the term LGBTQ be protected under trademark law?
The LGBTQ is a community of individuals that defines as Lesbian, Gay, bisexual, transgender and Queer/ Questioning. This term represents identities, individuality, sexuality and so much more. This term has come into being with many years of changes. It is now an umbrella term to define sexuality and gender identity. Although the term LGBTQ has become very popular and is a well-known initialism to what it represents, what is the Intellectual Property Rights of the term?
Trademark cases in India
In the case of Superon Schweisstechnik India v. Modi Hitech India Ltd, it was said, “in trademarks matters, every case necessarily turns upon and is decided on its own facts including but not limited to the trademark, goods in question, customers, use and all other factors and their intense correlation in each case” It says that the scope of protection for descriptive words—and in particular, abbreviations as trademarks—was extremely limited.
Allowing a solitary organization to command over use of generic terms for a trademark would be against the principles of natural justice and would be unreasonable to the rest.
In Pre-Paid Legal Services, Inc., “the examiner held that the acronym defines only the feature, function, or intent of the services of the applicant is not entitled to be protected under trademark law. A mark consisting of an acronym will be considered substantially synonymous with descriptive wording if:
- The mark proposed is an abbreviation or acronym for specific wording
- The specific wording is merely descriptive of the services of the applicant; and
- A relevant consumer recognizes it as being an equivalent of merely descriptive wording when viewing the acronym with respect to the services of the applicant.”
Trademark case in USA
In an old case in the US history, it was said that “It does not follow, however, that all initials of combinations of descriptive words are ipso facto unregistrable. While each case must be decided on the basis of the particular facts involved, it would seem that, as a general rule, initials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith.”
Throughout the years, courts have used the term “acronym” in a wider sense, thus including its synonym like the term initialisms. The entire principle of a trademark is to show the foundation of goods or services. A generic name is incapable of showing any source. Additionally, the term LGBTQ stands for a community of people, hence it is very ambiguous with what goods and services this term and the community in itself is associated with. In concise, across the period of time, there are three important questions that are to be considered when dealing with the trademark for a term or any other expression-
- First, whether the initials represent a specified word?
- Second, whether the specific word is generic or merely descriptive of the products or services?
- Lastly, whether the people at large will readily recognize the initials as for what its descriptive terms stands for? If the response to these inevitable questions is positive, the registration for trademarks are customarily not granted.
After discussing the term LGBTQ, it is important to recognise the Intellectual Property Rights of its symbol. The LGBTQ community has a symbol that represents self-identification, acceptance, pride and everything they stand for. This world recognised symbol is that of a Rainbow Flag or commonly known as the Pride Flag.
Article 6ter of the Paris Convention provides that ” the countries of the Union agree to refuse or invalidate the registration and to prohibit, by appropriate measures, the use, without authorization from the competent authorities, either as trademarks or as elements of such trademarks, of armorial bearings, flags and other State emblems of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, as well as any imitation from the heraldic point of view.” The Constitution of a State generally defines a state flag.
So State, National and International Flags are generally protected under various agreements and the Constitution but what about the cultural flags like the Pride flag?
Cultural Flags are usually designed by an individual or a private entity. Hence the ownership shall lie with those individuals or a private entity and so shall the right to copyright protection. The bright and beautiful colours of the flag that was designed by Gilbert Baker, a gay right activist in 1978 reflects the diversity of the LGBTQ community. “I thought that we needed that kind of symbol, that we needed as a people something that everyone instantly understands. The Rainbow Flag doesn’t say the word ‘Gay’, and it doesn’t say ‘the United States’ on the American flag, but everyone knows visually what they mean. And that influence really came to me when I decided that we should have a flag, that a flag fit us as a symbol, that we are a people, a tribe if you will.” said Mr. Gilbert Baker.
Mr. Baker could have protected the flag and his interests and licence the limited use of the pride flag as he desired. But that would hamper the entire purpose of “strength in solidarity” such as flags and symbols. Although Baker has moral rights to the flag, his desire to keep the flag as free is evidenced as him waiving off the rights to the flag. The rainbow colours in general have been incorporated in many businesses and companies in forms of their logos, designs and other graphical forms, thus making the spectrum non-distinctive and generic, disabling it to be trademark protected.
What happens when such flags are used in an immoral, inappropriate manner and for commercial gain?
In a huge controversy in USA, BiNet’s IP claimed that they had a copyright over the bisexual pride flag and its colours. There was a huge backlash on this and people all over the world shared their disappointment. After the backlash, BiNet USA deleted their tweets, comments, and even their own website. In the recent statements of Faith Cheltenham who was the organisation’s president, she said on social media there has been a misconstruction of her words and that “the bisexual pride flag is intended for bisexual community use” and said “BiNet USA ceases and desists of all use of the bisexual pride flag”.
The Objective of Article 7(1)(i) of the EU Trade Mark Regulation applies to all other badges, emblems or escutcheons that are not covered under Article 6ter regardless of whether they are the emblems of a state or international intergovernmental organisation or of public bodies or administrations such as provinces or municipalities. This Article is in particular the interest of the public. Hence, any sort of association or organisation that works in the public interest like those for the LGBTQ rights can go against the registration of the LGBTQ symbol when the symbol has a particular connection with the activities of the body or the organization.
“Although pride flags are not listed among the explicitly unprotectable designs, the genre almost as a rule simply includes recognized LGBTQ+ symbols in simple, easily reproduced patterns.” says an intellectual property attorney, Brian J. Winterfeldt. Although obtaining a trademark on the Pride Flag amounts to the exact contrary to what the Pride Flag stands for, it is still unclear as to what shall happen when such flag is used in an inappropriate manner. It has been observed that “naming and shaming” has become much more famous in such matters rather than taking legal actions. Today, the LGBTQ term and its symbol, the Pride Flag is more than just a collection of terms or a logo. It resembles an entire community worldwide. It is a powerful symbol that represents its history of struggles and the future of acceptance. Thus, it is utmost important that such a term and symbol be protected and receive the true pride it deserves.
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