CV1-I2-9-INTELLIGENT PROPERTY :Missionaries into Trade(mark)?...

Viral Patel -

Missionaries into Trade(mark)?...

Sunanda Bharti

Sunanda Bharti, Ph.D., Assistant Professor, Faculty of Law, University of Delhi, India

Blue Striped Saree of Missionaries of Charity got the status of a Registered Trade Mark in India  A newspaper report carried by many national dailies in India in the first week of July 2017, declared that the blue-designed border on the sari worn by nuns of Missionaries of Charity, popularised by Mother Teresa, is now recognised as Intellectual Property of The Missionaries of Charity by the Indian Trademark Office. The TM in question was applied for in 2013 and was granted registration in September 2016 and the registration stands valid till 12/12/2023, which is extendable in instalments of ten years till required, as in case of any other registered TM.

Confusion was rife as to whether the Missionary was at all involved in ‘trade’ of those saris and whether the grant of registration in its favour was complying of the fact that a trade mark (TM) cannot exist in vacuum, its proprietor must have some goods or services to offer to the market for active sale and purchase. It is one of the fundamentals of TM law in India. As a clarification, it is important to know that the ‘Missionaries of Charity’ is a Kolkata based Indian registered society. It is registered as a manufacturer and merchant society and also as a service provider, that is, a Trust. It is hence a society dealing in both goods as well as services.

As for the involvement of the Missionary in ‘trade’ is concerned, it is interesting to note that the uniquely bordered saris are woven by leprosy patients at the Gandhiji Prem Niwas, run by the Missionaries of Charity in Titagarh, North 24-Parganas. Nearly 4,000 saris are woven and supplied to Kolkata every year. These are then distributed to nuns across the world. This means catering to a very niche market but it amounts to trade nonetheless.

Registration and its Implications

The registration is in respect of a colour trademark featuring three blue coloured stripes as border of a completely white saree. The TM has been registered in three categories:

  • CLASS 16: Paper, Various Paper Products, Cardboard Printed Matters, Photographs, Stationeries, Office Requisites, Instructional and Teaching Materials.
  • CLASS 24: Textiles and Textiles Goods; and
  • CLASS 45: Social and Charitable Services

Implication of this registration is, that only the Missionaries of charity, being the registered proprietor has the right to use the colour TM (of three unique blue stripes) in relation to the goods and/or services for which it is registered. No one else can use the three blue stripes on Class 16, 24 goods and Class 45 services as the blue border pattern being distinctive of the Missionaries of Charity.

Issues Surrounding the Registration

Extent of protection to the colour TM: One issue that clearly presents itself is that since it is a colour TM, is it the exact shade of blue i.e. the exact Pantone composition that has been protected? If not, then one might use variants of the colour and get away with the misuse. The Defendant may use a different colour altogether to produce a cheap imitation. Deceptive similarity might come in aid of the plaintiff but it may not find favour with the Judiciary for the fear of extending the colour monopoly to other shades. In short, how the colour TM would fare in the infringement arena, only time will decide.

TM dilution: There are tangent concerns about character merchandising and TM dilution, in case the blue striped saree is worn by a commoner or stationary with blue stripes, which has no connection with the Missionaries of Charity finds its way into open markets diluting the distinctive association that those blue stripes have with the registered proprietor- Missionaries of Charity.

Character Merchandising

The threat of character merchandising is also real, as the commercial exploitation of the character or personality of Mother Teresa is now inseparable with that blue striped saree. It is Walt Disney, who usually takes the credit of conceptualizing the idea of character merchandise.  In the instant case also, some meddlesome traders have been selling some stationary bearing the striped colour mark, now distinctive of not only the Missionaries of Charity but also of Mother Teresa (authors opinion). Associating any merchandise or selling the same in the name of, or to tap into the popularity and goodwill of the character “Mother Teresa” would amount to character merchandising.

If this is accepted as an argument, the concept of character merchandising has problems galore of its own. The world is waking up to the idea of character merchandising and its need to be regulated, but India is yet to unequivocally recognize, neither through the judicial nor the legislative route any clear principles on the same. This means that the person or entity owning the rights in a character might be prevented from enforcing his rights in the same.

Also, there is no denying that the TM can always be used by anyone in contravention to the established norms. The main question is whether the Missionaries of Charity, which does not believe making money out of the TM, would want to punish the infringer! If not then the whole purpose of giving exclusive rights would be defeated. It is a suggestion to the Missionary that now that a legal right has been recognized in favour of the society, all due measures must be undertaken to prevent unscrupulous and unfair use of the blue three striped mark across the globe.

Trade and Commercial Exploitation

When company like Walt Disney gets a TM registered for something, they essentially want to declare to the world that if someone wants a share of their billion-dollar licensed products industry, then they better approach them for a valid license. They spend a fortune in being constantly on the lookout for infringers through a carefully planned proactive approach. Whether the Missionaries of Charity would be up for all this or even be inclined to pursue infringers is again yet to be seen. Trade Mark is about commerce, trade and business. A placid reliance on the hope that public should voluntarily deter from infringing the Missionaries’ TM, now that it is registered or just because it is attached to a noble cause, might not have any takers in the cut-throat competitive world.