Booking.com vs. USPTO: Does dissenting judgement hold more value?
In the recent case of Booking.com vs. USPTO, the Supreme Court with a majority 8:1 decided that booking.com is not a generic mark and can be registered as it has attained secondary distinctiveness. Justice Breyer, the only judge dissenting the judgement argued that registration of such mark will have a negative impact on the other competitive domain names and that registration of such mark will give the user a monopoly in market. Justice Breyer’s Judgement is a futuristic judgement which will prevail in similar matters in the coming years.
PRE-REQUISITES TO SERVE AS TRADEMARK
Trademark is defined in general parlance as a word, phrase, design, symbol or any combination of same that help in identification and distinguishes the one goods and service from that of other. It signifies a distinctive feature of a good or service. Merely by the name of the brand or symbol in the form of logo, it creates an impression in the mind of people regarding a particular product. So a particular good/service is granted registration only if it is distinctive than other goods and services.
Under certain circumstances trademark, may be extended beyond these words, phrase, symbol and design. It sometimes includes packaging, colour and manufacturer. For example, Coca-Cola. The unique shape of the bottle is itself a mark. Trademarks can be categorized as:
1) Arbitrary or Fanciful Marks:
The usage of words is such that they are pre-existing. However, their usages differ entirely, for example, "Apple" Mobile. They are granted protection under trademark law.
2) Suggestive Marks
These marks suggest and give a hint regarding the products that will be distributed. There is an existence of a link between the mark used and product supplied. This link needs to be understood and is not explicit. Suggestive marks are also given protection under trademark law.
3) Descriptive Mark
A descriptive mark is not given protection. They describe the product explicitly, which is traded for Eg. If someone asks 'Biscuits' to be registered as a trademark and it deals in selling Biscuits, then it will not be granted protection. They are protected only if they have secondary meaning. A mark acquires secondary meaning when people in general start associating it with a particular producer, rather than a particular product. For example, Holiday Inn. It is associated with a particular provider of hotel service and not hotel service in general.
4) Generic Marks
Generic marks are stated as those marks which describe the general category to which underlying product belongs. For example, Computer is a generic term for computer equipment. They have not entitled protection under trademark law. The reason behind non-protection is that these generic marks are too simple, regular and useful to identify a particular product. By giving control to single manufacture to use this generic word as Trademark, would give him an unjustified advantage over the competition.
HOW DOMAIN NAME AND TRADEMARKS DIFFER?
A domain name is an internet address. It helps to visit a particular website. Whereas, a trademark is registered to identify and distinguish a good and service from that of others. A domain name is user friendly and easy to remember the internet address. So, it is a type of identity for online businesses. Each website has a domain name which helps in access to the website. Some examples of domain name are .com; .org; .net; gov; etc.
In the case of People Interactive (India) Pvt. Ltd v. Vivek Pahwa & Ors, [i] it was held by Bombay High Court that domain name is the physical address of internet. It takes the user directly to its web page and displays its services.
CAN DOMAIN NAME BE REGISTERED AS TRADEMARK?
A domain name can be registered as a trademark on fulfilling all the pre-requisites required for registration of a trademark. So a domain name that is specific, distinct and capable of identifying itself from that of goods and service of the other and acts as a credible source identifier of particular goods and service on the internet can be registered as a trademark.
In Satyam Infoway Ltd v. Siffynet Solutions [ii], SC of India dealt with the dispute, whether the domain name is capable of being identified as an intellectual property right. The Court ruled that no doubt originally domain name was just used as a web address. However, subsequently, with digitalization, commercial activity increased on the internet. Thus, establishing the identity of the business. So domain name helps to identify a specific internet site and distinguish one business from that of other. The only condition is that the domain name must be unique and peculiar to business. The domain names are registered and protected globally by one entity called ICANN (Internet Cooperation for Assigned Names and Numbers).
DOES GENERIC MARK INCLUSIVE OF DOMAIN NAME GIVE TRADEMARK RIGHT?
A detailed study about the recent case will help to understand every sphere of this heading.
United States Patent and Trademark Office v. Booking.com B.V.
Facts of the case: The respondent filed an application in USPTO for registering Booking.com as a trademark which provides online hotel reservation service. The respondent was operating its business since 2006. The application for registration was filed in the year 2011. The USPTO refused the registration for the same. The ground for rejection was that the term Booking is generic for the kind of service that the respondent was offering. In addition to it, adding of domain name .com will not give it protection. According to Lanham Act, only distinctive marks is eligible for protection. In the present case Booking is a generic term. It then went for review in United States District Court for Eastern District of Virginia. It then held that booking.com is non-generic and is capable of being registered as a trademark. They hold the view that booking.com has acquired secondary meaning. The USPTO appealed it, but Court of appeal for Fourth Circuit affirmed the Court of the first instance. Then writ petition was filed in the SC of USA.
Issue: Does the addition of .com by a business enterprise to otherwise generic term creates a protectable trademark?
Analysis of the Case
The decision was given by the judges in the ratio of 8:1. Majority of judges decided that any term that consists of 'generic.com' is considered a generic name for the given category of goods and services. Thus, it became ineligible for the trademark protection under the law unless it has secondary meaning to consumers. Justice Ginsburg authored the judgment. He held that Booking.com had acquired secondary meaning in the mind of the general public. It was based on the evidence produced at District Court. The Court found that 'consuming public' understand that Booking.com is not a genus. Rather it is descriptive of services of booking available at that particular domain name.[iii] People no longer have perception in mind about Booking.com indicating the class of online hotel reservation. Rather it has become a recognized service that is distinguishable from others. Thus, eligible for trademark protection under the law.
There was no contention among part regarding the word Booking being general. Although, PTO argued that adding a domain name to a generic term would result in generic mark.[iv] The judiciary rejecting this contention added that the given trademark law or policy does not support this particular rule. It is also not reflected by PTO's past practice. For example, PTO has earlier given trademark protection to Dating.com and Art.com. The judiciary has to give a decision by adjudicating only validity of per se rule adopted by PTO.
Justice Breyer gave a dissenting opinion, and he concluded that Booking.com give the impression to the consumer about the essential nature of online hotel booking business. He further added that just by adding a domain name to otherwise generic term is against trademark law. It would also affect the competitive businesses.
WHY DISSENTING OPINION IS MORE SOUND THAN MAJORITY OPINION?
Justice Breyer while dissenting held that booking.com merely informs the customers about its fundamental nature of the business, i.e. online booking services and nothing more and hence cannot be registered. According to Justice Breyer, adding .com to a generic term adds no meaning to the constituent part. A top-level domain name like .com does not have any capacity of its own to identify and distinguish the source of goods and services; it is merely a necessary component of any web address and only conveys that the owner operates through a website. Justice Breyer further stated that there might be an exception to this rule in sporadic cases wherein generic term when combined with a top-level domain produces a meaning distinct from that of terms taken individually.
However, the same is not in the present case as booking.com conveys only a website associated with the booking. Justice Breyer also relied on various judgments wherein the courts have ignored the top-level domain when analyzing the likelihood of confusion. While dissenting with the majority decision, Justice Breyer observed that even though a generic term suggests its association with a specific entity that does not render it non-generic. While accepting the principle of Goodyear's judgement, justice Breyer stated that booking.com is similar to Booking Inc., the later cannot be registered as it signifies only a booking company. Similarly, booking.com merely signifies a booking website, and hence, it also cannot be registered. Further, there will never be evidence that consumers refer to the relevant class of online merchants as "generic.com." Nor "generic.com" terms likely to appear in dictionaries.
It was further observed that Consumer surveys could not be the sole ground for considering a term distinctive. A generic term can achieve such an association either because that producer has enjoyed a period of exclusivity in the marketplace,[v] Alternatively, because it has invested money and effort in securing the public's identification.[vi] Evidence of such an association, no matter how strong, does not negate the generic nature of the term. Moreover, hence survey evidence is generally of little value in separating generic from descriptive terms.[vii]
Justice Breyer believed that granting trademark registration to generic.com will cause severe anti-competitive consequences in the online marketplace. The owners of short, generic domain names enjoy all the advantages of doing business under a generic name. These names are easy to find and remember as they immediately convey the nature of the business; the owner needs to expend less effort and expense educating consumers. Also, a generic business name may create the impression that it is the most authoritative and trustworthy source of the particular good or service not because of the quality of products or goodwill but because of the name. These advantages make it harder for distinctively named businesses to compete.
The Justice went on to say that Booking.com in the present case is registered with an intent to expand its services as otherwise the domain name itself already ensures that competitors cannot appropriate a business's actual domain name. According to Justice Breyer, though the owners have promised not to oppose word similar to booking, the threat of costly litigation will no doubt chill others from using variants on the registered mark and privilege established firms over new entrants to the market. Justice Breyer feared that as the internet grows more abundant, as more and more firms use generic.com to sell their products, this will increase the risk of anti-competitive consequences in the market. Those consequences can nudge the economy in an anti-competitive direction. At the extreme, that direction points towards one firm per product, the opposite of the competitive marketplace that our primary economic laws seek to achieve.
The reasons given by Justice Breyer for non-registration of booking.com seems more convincing than the majority judgement. Justice Breyer has laid down a perfect judgment wherein he has rebutted every point of the majority while giving examples and evidence as to how the reasoning given by majority does not fit in the present case and is faulty. Justice Breyer’s judgement is futuristic and will found a good position in law in future.
TRADEMARK RIGHTS IN INDIA CONCERNING GENERIC MARKS INCLUSIVE OF DOMAIN NAME
In India domain name is given protection under trademark law on one condition. It must be as per the Trademark Act, 1999 and fulfil the entire requirement that is necessary to be registered under the act. Then it will have all the rights of a registered trademark holder.
In People Interactive (India) Pvt. Ltd. v. Vivek Pahwa [viii], there is a dispute between shaadi.com and secondshaadi.com. Bombay High Court ruled in favour of defendants. They held that 'shaadi' is a generic term and descriptive. It would acquire secondary meaning only when in the mind of the public, the primary meaning is lost, and new connotation is established. In the present case, there was no secondary meaning.
Similarly in Bigtree Entertainment v. Brain Seed Sportainment [ix], Delhi High Court rejected interim injection against the defendant. The plaintiff, who is the owner of Bookmyshow.com seek an injunction against the defendant for the use of domain Bookmysports.com. The Court ruled that the prefix Bookmy is descriptive and it has not yet attained secondary meaning or distinctiveness in the public domain. They are thus rejecting the application.
Domain name has attained significant importance for the online businesses. The usefulness of domain name has shown hike with increase in demand and use of online activity. A domain name not only provides the website address to users but gives an identity of particular business. Domain names are protected under trademark law. The only condition is that it must fulfil all the registration requirement of trademark.
Generic marks are not eligible for trademark protection. In the case where domain name is added to generic term, it won’t qualify to be registered as trademark except in one circumstance. Where a generic term has acquired secondary meaning in the public domain and primary meaning lost its significance only then a trademark protection is given. The businesses which are solely based on online platform, protecting domain name become very important. Since domain name knows no territorial boundaries, an international law and individual trademark law on domain names is essential and need of an hour.
However, with the increase in Internet world, registering generic domain names will act as a hindrance for other domain names providing same services. The owner of generic domain name will attain a monopoly and chances are high that it may restrict others from entering the same business with a similar domain name. The decision given by Justice Breyer will hold a great significance in the future world as he has rightly interpreted this confusion.
[i] (2016) 6 AIR Bom R 275.
[ii] (2004) 6 SCC 145.
[iii] Booking.com B.V. v. Matal, 278 F. Supp. 3d 891, 918 (2017).
[iv] Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598 (1888).
[v] Kellogg Co. v. National Biscuit Co., 305 U. S. 111, 118–119 (1938).
[vi] Abercrombie, 537 F. 2d, at 9.
[vii] Schwan’s IP, LLC v. Kraft Pizza Co., 460 F. 3d 971, 975–976 (CA8 2006)
[viii] (2016) 6 AIR Bom R 275.
[ix] CS (COMM) 327/2016.
ABOUT THE AUTHOR
This blog has been authored by Akhil Kumar Goyal who is a 4th Year B.B.A., LL.B. (Hons.) student at Chanakya National Law University, Patna & Ayushi Goyal who is a 3rd Year B.A., LL.B. (Hons.) student at The Rajiv Gandhi National University of Law, Patiala.
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