Has prolonged popular use converted ‘Xerox’ from a brand name into a synonym for ‘photocopying’? Is there a case for removing ‘Xerox’ from the trademark registry?
The Intellectual Property Appellate Board (IPAB), however, was not impressed with the argument. Holding that ‘Xerox’ is not a generic term, it rejected applications filed against Xerox Corporation, USA, seeking a direction to the Trade Mark Registry, Kolkata, to remove the trademark.
The IPAB, comprising Chairman Justice Prabha Sridevan and member D.P.S. Parmar, said, “After almost 50 years (1963–2009) of continued existence on the register without challenge, and with proof of almost 44 years of use evident (1965-2009), we do not think the mark deserves to be removed.”
The Board noted that when Xerox Corporation took objection to the loose use of the word by government and public sector undertakings, the response came in the form of apologies with assurances to set right the inadvertent error.
“We find, that the High Courts, Port Trust and like institutions, and even the Government of India have agreed to delete the word ‘Xerox’ and use the word ‘photocopying’. Several Governmental organisations have given an undertaking that they will not use the mark in violation of the trademark rights of the respondent,” they added.
Aggrieved over a suit filed by Xerox Corporation, B.V. Elango Himachalapathy, owner of a photocopying shop, filed the present applications.
P. Venugopal, counsel for the applicant, contended that ‘Xerox’ was now a common word and in the minds of the general public, is a synonym for photocopying. As it has come to be used in a generic sense, it has lost its value as a trademark.
Sanjay Jain, Senior counsel for Xerox Corporation, submitted that the US-based company had operations in over 160 countries.
It claimed usage of the mark since 1961, he said, and pointed out that its competitor Canon called its products Canon Photocopiers and not Canon Xerox machines.
Ms. Justice Sridevan, said, “The applicant does not say that the mark was generic at its inception, his case is that by continued use it had become generic… There is no evidence to show that the applicant was in any way affected from pursuing his calling or business.”