HIMACHAL PRADESH NATIONAL LAW UNIVERSITY, SHIMLA

DISCIPLINE: - Intellectual Property Rights - I

TOPIC: - Trademark Law and Indigenous Communities in India:

Appropriation and Trademarks

Submitted by: - Submitted to: -

Snehil Ahirwar Dr Chandrika
1120202149 Assistant Professor of Law
B.B.A. LLB 7th Semester
 Declaration by Student

I hereby declare that the assignment entitled “Trademark Law and Indigenous
Communities in India: Appropriation and Trademarks” submitted by me to Himachal
Pradesh National Law University, Shimla is a record of bonafide project work carried out
by me, Snehil Ahirwar, under the guidance of Dr Chandrika. I further declare that the work
reported in this project has not been submitted and will not be submitted, either in part or in
full, for the award of any other degree or diploma in this institute or any other institute or
university.

Snehil Ahirwar

Date: 17-11-2023
Introduction

Trademarks constitute a crucial aspect of intellectual property rights, offering individuals the
means to retain ownership over their inventive products and creative endeavours. The concept
of intellectual property emerged as a result of human labour, and it is delimited by various fees
associated with registration and penalties for infringement. Intellectual property encompasses
several categories, including Trademarks, Copyright, Patents, and Designs.

A trademark, encompassing names, words, or signs, serves to distinguish goods from those of
other enterprises. Utilizing a trademark significantly facilitates the marketing of goods or
services, as it ensures the recognition of a product through its associated trademark. The owner
of a trademark holds the authority to prevent its unauthorized use by competitors.

Functioning as a potent marketing tool, a trademark enhances the financial standing of a

business. It's essential to note that while a trademark is not always synonymous with a brand,
a brand always encompasses a trademark. This distinction is occasionally muddled, as a brand
name can be a symbol or logo, but a trademark serves as a distinctive sign or indicator within
a business organization, carrying broader implications than mere brands. Consumers tend to be
more swayed by a unique trademark that reflects the product's quality, which can manifest as
a logo, picture mark, or slogan1.

For example, let's say you use a logo as a trademark for your small woodworking business to
identify and distinguish your goods or services from others in the woodworking field. This
doesn't mean you can stop others from using a similar logo for non-woodworking related goods
or services. by Google users match the owner's purchased keywords, the bakery's ad will appear
above or next to the search results2.

1
https://www.uspto.gov/trademarks/basics/what-trademark (Last accessed on 18-11-2023).
2
https://www.mckinsey.com/capabilities/people-and-organizational-performance/our-insights/the-five-
trademarks-of-agile-organizations
However, challenges arise when companies decide to buy keywords for advertising, especially
when they purchase their competitors' trademarks as keywords. This strategy enables the
purchasing company's ad to be showcased when consumers search for their competitors'
trademarks. In the example provided, consider a scenario where the new bakery owner wishes
to purchase a competing bakery's trademark as a keyword because it would generate more
internet traffic than the bakery would receive by using its own new and relatively unknown
trademark. Suppose the new bakery buys the keyword "Sprinkles Cupcakes" so that its ad is
displayed on the results page for anyone searching the term "Sprinkles Cupcakes." While this
form of advertising is enticing, questions arise regarding whether it constitutes trademark
infringement under existing law. Furthermore, if it does, the accountability of Google for
selling another company's trademark as a keyword also has to be scrutinised. Additionally,
there is the consideration of whether consumers might be confused if they enter the name or
trademark of the competing bakery and an advertisement for the new bakery appears3.

Problem Profile

Cultural appropriation has become a contentious issue in today's globalized world, particularly
concerning its intersection with trademarks. This study aims to delve into the complexities
surrounding the appropriation of cultural elements within the realm of trademarks, exploring
the impact on various stakeholders and the broader implications for intellectual property rights.

The problem profile includes the challenges posed by the dynamic nature of trademark, the
blurred lines between legitimate competition and infringement, and the inadequacy of existing
legal frameworks to address these issues effectively.

Research Methodology

To address the complexities of trademark, doctrinal research methodology is employed. This

study will utilize a combination of qualitative and quantitative research methods, such as case
studies and legal analysis, providing insights into specific instances of trademark infringement.

3
Id.
Also including data analysis of trends and consumer perceptions, to offer a broader
understanding of the prevalence and impact of keyword-based infringement.

The research will involve an examination of relevant legal statutes, court cases, and industry
practices. Additionally, interpretations of such scenarios by international as well as courts of
law in India is also done to gather diverse perspectives on the issue.

Objectives

The primary objectives of this project work include –

1. To analyse the Study of Cultural Appropriation and Trademark

2. To Understanding the Complex Intersection.
3. To identify potential solutions and best practices for preventing and addressing
trademark.

Research Questions/ Hypotheses

1. What is Cultural Appropriation?

2. How effective are existing legal frameworks in addressing and preventing

trademark infringement?
What is a Trademark?

A trademark serves as a strategic tool to enhance business financing through effective

marketing. It's important to note that while a trademark isn't invariably synonymous with a
brand, every brand is inherently a trademark. The distinction between trademark and brand
occasionally leads to confusion. While a brand name might be a straightforward symbol or
logo, a trademark goes beyond, serving as a distinctive sign or indicator within a business
organization with broader implications than brands. Consumers are particularly swayed by a
distinctive trademark, which acts as a reflection of the product's quality. Trademarks can take
various forms, such as logos, picture marks, or slogans.

The phrase 'cultural appropriation' is defined by the Oxford Dictionary as "the unacknowledged
or inappropriate adoption of the customs, practices, ideas, etc. of one people or society by
members of another and typically more dominant people or society." In the trademark world,
culture and trademarks have always had a rocky relationship. Westernized and European-
centric designers have historically been accused of stealing traditional designs, music, dances
and hair styles for their own use and profit, while the minority groups from whom they took
receive little more than an acknowledgement. Hence, corporations need to be more sensitive
and aware than they have ever been when it comes to applying intellectual property (IP) to a
print, shape, saying, or concept that is associated with a particular set of values, expression,
and/or ethos of a group of people 4.

Three characteristics emerge from dissecting the elements of the definition, which are as
follows:

• A change of cultural context;

• A power imbalance between the taker and the holder; and

• The absence of the holder’s involvement.

In May 2019, Nike’s announcement to sell special edition ‘Air Force 1 Puerto Rico’ (as shown
below) sneakers adorned with mola patterns originating in the Guna culture of Panama (and

4
https://openscholarship.wustl.edu/cgi/viewcontent.cgi?article=1383&context=law_journal_law_policy January
Volume 19 Washington University Journal of law and Policy 2005
wrongly attributed by Nike to Puerto Rican culture) was fiercely opposed by representatives of
the Guna people. Once again, this led to Nike cancelling the launch of sports shoes5.

Prior to 1940, India did not have specific legislation pertaining to trademarks. Issues related
to infringement of both registered and unregistered trademarks were addressed under Section
54 of the Specific Relief Act, 1877, and registration matters were adjudicated under the Indian
Registration Act, 1908. The absence of a dedicated trademark law led to complications, which
prompted the enforcement of the Indian Trademark law in 1940. The demand for trademark
protection surged following significant growth in trade and commerce.

The Trademark law underwent a subsequent transformation with the introduction of the
Trademark and Merchandise Act, 1958. This legislation aimed to offer enhanced protection for
trademarks and prevent the misuse or fraudulent use of marks on merchandise. The Act
facilitated the registration of trademarks, thereby granting legal rights to the owners for
exclusive use.

In a subsequent development, the government of India replaced the earlier Act with the
Trademark Act, 1999. This change aligned with the TRIPS (Trade-Related Aspects of
Intellectual Property Rights) obligations recommended by the World Trade Organization. The
primary objective of the Trademark Act, 1999, is to provide protection to trademark users,
establish conditions for property rights, and furnish legal remedies for the enforcement of
trademark rights.

The Trademark Act, 1999 empowers the police to make arrests in cases of trademark
infringement. The Act includes a comprehensive definition of infringement, a term frequently
used in its provisions. Additionally, it specifies punishments and penalties for offenders. The
Act also extends the duration of registration and encompasses the registration of non-traditional
trademarks.

5
‘The Role of Trademark in Cultural Appropriation, ashish IPR, November 2020),
https://www.kashishipr.com/blog/the-role-of-trademark-in-cultural-appropriation/
Types of Trademarks

Product Mark

Product mark is a mark that is used on a good or on a product rather than on a service.

Service Mark

Service mark is similar to the product mark but a service mark is used to represent a service
rather than a product. The main purpose of the service mark is that it distinguishes its
proprietors from the owners of other services.

Collective Mark

Collective mark is used to inform the public about certain distinguished features of a product
or service used to represent a collective. A group of individuals can use this mark so that they
are collectively protecting a goods or service. The mark holder can be an association or can be
a public institution or can also be a Section 8 Company.

Certification Mark

Certification mark is a sign that denotes a products origin, material, quality or other specific
details which are issued by the proprietor. The main purpose of certification mark is to bring
out the standard of the product and guarantee the product to the customers.

Shape Mark

Shape Mark is exclusively used to protect the shape of the product so that the customers find
it relatable to a certain manufacturer and prefer to buy the product. The shape of a particular
product can be registered once it is recognized to have a noteworthy shape. An example of a
shape is the Coca-Cola bottle or Fanta bottle, which have a distinctive shape identifiable with
the brand.

Pattern Mark

Pattern marks are those products that have specific designed patterns that come out as the
distinguishing factor of the product. Patterns which fail to stand out as a remarkable mark is
generally rejected since it does not serve any purpose. For a pattern to be registered, it has to
show evidence of its uniqueness.
Sound Mark

Sound mark is a sound that can be associated with a product or service originating from a
certain supplier. To be able to register a sound mark, when people hear the sound, they easily
identify that service or product or a shows that the sound represents. Sound logos are called as
audio mnemonic and is most likely to appear at the beginning or end of a commercial. The
most popular sound mark in India is the tune for IPL Companies might use generic terms in
combination with a competitor's trademark, hoping to rank higher in search results for those
generic terms. This strategy can result in their ads being displayed prominently when users
search for the competitor's brand.

Why trademark? Who is an owner?

The owner of a trademark enjoys protection by securing exclusive rights to use the trademark,
identify goods or services, and authorize others to use it in exchange for compensation. It serves
as a legal tool for the registered proprietor to prevent unauthorized use of the trademark by
others, as outlined in Section 28, which delineates the rights conferred by registration.

Validity of trademark registration is contingent upon the certification of ownership to the

rightful owner. The certified owner possesses exclusive rights to utilize the trademark
concerning the registered goods or services. Furthermore, the right to seek redress for
trademark infringement is vested in the trademark holder.

The Trade Marks Act encompasses provisions for the registration of service marks, the
submission of multiclass applications, an extension of the trademark registration term to ten
years, and acknowledgment of the concept of well-known marks, among other aspects. The
Indian judiciary has actively safeguarded trademarks, extending protection to domain names,
as evidenced in landmark cases such as Tata Sons Ltd. v. Manu Kosuri & Ors [90 (2001) DLT
 6
659] and Yahoo Inc. v. Akash Arora[1999 PTC 201]. .

Registration of Trademark

The registration process for trademarks involves submitting an application to the IPO
(Intellectual Property Office). The fee for a physical filing is 10,000 rupees, with a 10 percent
reduction for e-filing. An expedited registration process is available, incurring an additional
fee of 40,000 rupees. Renewal fees for a registered trademark mirror the filing fee, standing at
10,000 rupees for physical filing and 9,000 rupees for e-filing.

Upon filing, the application receives a unique number and date. The examination process
considers factors such as inherent registrability, acquired distinctiveness, and existing rights,
following the order of priority. If no objections arise, the trademark is published in the Trade
Marks Journal, opening the opportunity for opposition from the public. If no objections are
lodged within four months of publication, the registration certificate is issued. The registration
is retroactive to the application date and is renewable every 10 years.

Notably, there's no prerequisite for the mark to have been used in India for eligibility.
Trademarks can be registered on a proposed use basis. However, if the trademark remains
unused for five years, it becomes grounds for removal from the Register of Trade Marks.7.

Section 9 of the Act outlines the absolute grounds for the refusal of trademark registration.
Trademarks lacking distinctive characteristics or consisting solely of marks or signals
indicating characteristics such as kind, quality, quantity, intended purpose, value, or
geographical origin in trade are ineligible for registration.

TRADE MARKS ACT, 1999

[Act No. 47 of Year 1999 dated 30th. December, 1999]

7
https://cleartax.in/s/trademark-registration-procedure-india (Last accessed on 16-11-2023).
Additionally, trademarks exclusively composed of marks or indications that have become
customary in the current language, or those lacking distinctiveness unless proven otherwise
through prior use, cannot be registered. The Act stipulates that a mark shall not be registered if
it:

1. Deceives the public or causes confusion.

2. Contains matter offensive to religious sensibilities.

3. Features obscene or scandalous content.

4. Involves the use of prohibited matter.

Furthermore, the Act specifies that a mark comprised solely of (a) the shape of goods inherent
to their nature, (b) the shape of goods necessary for a technical result, or (c) the shape of goods
conferring substantial value shall not be registered as a trademark.

The appropriation of cultural symbols has been a recurring issue, exemplified by India's 1990s
battle against certain American companies attempting to trademark the name 'Basmati' rice,
even managing to secure a trademark on 'Kasmati' rice. This led to a significant legal and
international effort by the Indian government to safeguard its cultural identity. Similar
challenges arose with the terms 'khadi' and 'yoga,' with a German company almost obtaining
an EU trademark on 'khadi,' necessitating extensive legal efforts to counteract foreign claims.
Surprisingly, the US Patent and Trademark Office has reportedly issued numerous copyrights
and trademarks related to yoga.

In a recent case, Kim Kardashian West faced backlash for naming her shapewear line
"Kimono," a traditional Japanese garment. Despite amending the original trademark
application to omit terms like 'Kimonos' and 'Robes,' the application still includes these generic
terms. In India, such an application could be rejected under Section 9(1)(b) of The Trade Marks
Act, 1999, as it exclusively consists of an indication or characteristic of the goods or services.
This situation serves as a lesson for brand owners, celebrities, and entertainers, emphasizing
that choosing a name from another culture goes beyond its availability and registrability under
trademark laws. Cultural sensitivities and potential reactions in the marketplace, considering
whether the name might be perceived as offensive or inappropriate, should be carefully
considered, as it can impact the brand's reputation and success.

In 2015, UK fashion brand KTZ copied a traditional “Inuit” parka design (as shown below)
onto a men’s sweater with a steep price tag of USD 700. After criticism, KTZ took down the
sweater from the sale and apologized for the unintentional offense but did not offer any
financial compensation to the Inuit community that had developed the traditional parka design.

The intersection between culture and trademarks has been historically complex in the realm
of trademarks. Western and European-centric fashion labels have faced allegations of
appropriating traditional designs, music, dances, and hairstyles for profit without
acknowledging the minority groups from whom they borrowed. This necessitates brands to
exercise heightened sensitivity and awareness when applying trademarks to prints, shapes,
designs, slogans, or concepts associated with specific values, expressions, and ethos of a
particular group.

Attempts to appropriate cultural symbols through trademark registration have been observed.
In the 1990s, India engaged in a persistent battle against American businesses to protect the
name 'Basmati' rice, facing challenges despite critical claims to geographical indications (GI-
tagging). Similar conflicts arose with terms like 'khadi' and 'yoga.' A German company sought
an EU trademark on 'khadi,' leading to a substantial legal battle. The USPTO has recorded
numerous yoga-related copyrights and trademarks.

Trademark law plays a crucial role in preventing cultural appropriation. The primary aim is to
prevent consumer confusion about the source of products or services and protect the goodwill
associated with the trademark. For validity, a trademark must be distinctive enough to serve its
dual functions of identification and distinction. Descriptive marks, like 'Kimono' for a
traditional dress, cannot be registered, serving as a safeguard against complete cultural symbol
appropriation through trademark registration.

Collective Marks and Certification Marks are tools within trademark law to counter cultural
appropriation. Collective marks are used by members of a group or organization, indicating
membership or the products or services provided. Certification marks certify specific features,
characteristics, or attributes of identified goods or services. While collective marks can
potentially act as trademarks, certification marks may be easier to register but cannot function
as trademarks.

In the US, trademark law provides tools for affected groups to combat cultural appropriation
at the USPTO and in courts, including opposition proceedings, cancellation proceedings, and
infringement actions. These mechanisms are available in India as well. Safeguarding cultural
elements from misappropriation through trademark registration involves utilizing tools under
trademark law, such as opposition, cancellation, infringement suits, or collective marks based
on the specific needs of each case.8.

To prevent the appropriation of culture, brands can adopt the following practices:

1. Understanding and Respecting Traditional Cultural Holders:

Brands should prioritize understanding and showing respect for those who hold traditional
cultural expressions.

2. Respectful Transformation and Reinterpretation:

Cultural expressions can be used respectfully through transformation and reinterpretation,

ensuring that they are not exploited or misrepresented.

8
Sharad Vadehra and Aakriti Sharma, ‘Use of a Trademark as a Keyword on Google Ad Program-Infringement
or Not?’, Mondaq, Available at: https://www.mondaq.com/india/trademark/1192864/use-of-a-trademark-as-a-
keyword-on-google-ad-program-infringement-or-not (Last accessed on 15-11-2023).
3. Acknowledgment and Recognition:

Brands should acknowledge and give due recognition to the holders of traditional cultural
expressions, providing credit where it's due.

4. Engagement and Collaboration:

Actively engaging with traditional cultural holders through requests for authorization and
collaborative partnerships can ensure a more inclusive and respectful approach.

Several examples demonstrate successful collaborations where brands actively worked with
traditional cultural expressions. For instance, luxury fashion brand Christian Dior's Cruise 2020
collection paid homage to African creators of wax print fabrics from Uniwax in Ivory Coast,
showcasing awareness and respect for diverse cultures.

Canada Goose's 'Project Atigi'9 collection is another notable example, featuring parka designs
from Inuit seamstresses. This initiative combines traditional skills and designs with modern
materials, with proceeds benefiting the national Inuit representational organization Inuit
Tapiriit Kanatami.

The essential lesson for brands, celebrities, and entertainers is that selecting a name from
another culture goes beyond assessing its availability under trademark law. Consideration
should be given to cultural sensitivities and the potential market reaction to ensure the name is
not offensive or inappropriate. When launching merchandise with cultural elements, a
collaborative effort is recommended, providing due recognition and compensation to the
culture without disrespect.

9
https://www.prnewswire.com/news-releases/canada-goose-partners-with-inuk-designer-victoria-kakuktinniq-
for-third-project-atigi-collection-301466246l
In summary, a thoughtful and collaborative approach is crucial for brands to avoid cultural
appropriation, ensuring that cultural expressions are used respectfully, authentically, and with
the appropriate acknowledgment. 10.

Conclusion and Suggestions

In general, For business owners, it is crucial to grasp the fundamentals of trademarks and the
protection they offer, whether registered or unregistered.

Trademark rights can be obtained through the utilization and/or registration of a mark.
Unregistered trademark rights primarily arise from usage within specific geographic regions.
Suppose you intend to adopt a new trademark on the, and another party has already been using
the same mark in that area for identical goods or services. In such a scenario, there is a risk of
infringing on their established trademark rights.11.

Public policy emphasizes maintaining an Intellectual Property system that fosters innovation
through protective measures, all while ensuring that societal interests are not compromised.
The challenge for the World Intellectual Property Organization (WIPO) lies in integrating the
effects of public policy into initiatives carried out with developing countries. This involves
increasing awareness about flexibilities within existing international intellectual property
treaties.

The concept of Intellectual Property is ubiquitous, regularly discussed in various aspects of

everyday life, be it in movies, books, plant varieties, food items, cosmetics, electrical gadgets,
software, and more. It has become an integral part of our daily existence. The significance of
Intellectual Property is commemorated annually on World Intellectual Property Day, observed
on the 26th of April.

10
‘Keyword Trademark Usage in Google Ads – Delhi High Court Division Bench Affirms Trademark
Infringement’, LexOrbis, Available at: https://www.lexology.com/library/detail.aspx?g=95d61cb8-bea7-4995-
a625-
e3df98b9d7e0#:~:text=In%20a%20recent%20judgement%20of%20August%2010%2C,that%20such%20usage
%20can%20constitute%20trademark%20infringement (Last accessed on 18-11-2023)
11
https://grant.legal/how-to-avoid-trademark-infringement/
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