The Curious Case Of "Saravanas" And "Aryas": An Analysis Of The Trademark Status Of The Restaurants
It had been a usual practice in my college days to stop at a vegetarian restaurant on the Ernakulam- Palakkad highway in Kerala while going to my hometown. Most of them were named Saravana Bhavan, Aryaas or Arya Bhavan. In the beginning, I used to think about the numerous restaurants these hotel chains have. But, later, I was told that each one was owned by a different proprietor.
Even though there exists a lot of restaurants using such names, there must be a restaurant to which long-term use of the mark can be associated to. If so, why haven't they secured any protection for their trademark till date?
Under the classification of goods and services applied for registration of marks, Class 43 deals with restaurant services. Many have attempted to seek registration for marks stated above or their variations but have not been successful. On the other hand, few marks such as 'Hotel Saravana Bhavan', 'Aryaas' have been granted registration under Class 42 which presently deals with scientific and technological services.
This is due to the reason that earlier there existed only 42 classes under which the applicants could apply for trademark registration. Later on, 3 more classes were added by amending the Trade Mark Rules in 2010. The registry had stated in a previously issued notification that those already registered under Class 42 are given an option for conversion to other classes. In addition, while scrutinizing applications under Class 43 the registry also looks into Class 42 for existing similar marks. However, the fact that while applying under Class 43 one must also look into Class 42 is a lesser-known fact.
Looking into other foreign jurisdictions, we find that different proprietors have secured registrations for such marks irrespective of the fact that they were not the initial users of the mark (See here). One of the possible explanations for the wide and unrestricted use of such names must be that the initial users of such marks were ignorant about the exclusive protection granted by a trademark registration and by the time they had realized the same, such names had become a matter of common usage in the restaurant business. In another sense, these names have become a part of the public domain, which no longer can be propertized by any player in the restaurant business.
Taking the specific case of "Hotel Saravana Bhavan (HSB)", the original use of the name can be traced back to the 1980s by its proprietor P. Rajagopal for his chain of restaurants. Rajagopal was an ardent devotee of Lord Murugan and decided to start his business using the name "Saravana". The rise and fall of Rajagopal is a sensational story but cannot be discussed here since our concern is different. The mark was initially objected to on the ground that it lacked any distinctiveness and that it had been identical with or deceptively similar to the pending trademark applications containing the words "SARAVANA BHAVAN". However, it was granted a device mark registration under Class 42 in the year 2006 with a condition placed by the registry stating that – "REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE ALL DESCRIPTIVE MATTERS APPEARING IN THE LABEL"
All this clearly suggests that the applicant of the mark does not hold any exclusive right over the words "SARAVANA BHAVAN".This points towards a failure on the part of the applicant to diligently protect his mark in spite of its long-term use.
In other foreign jurisdictions, these same chains of restaurants have adopted a different strategy by redesigning their logo, especially by adding an alphabet to their pre-existing mark, naming it as "SARVANAA BHAVAN". This was probably done to stand out from the other set of Saravanas.
Another interesting observation of the Andhra High Court was in the case, Chennai Hotel Saravana Bhavan v. Hotel Saravana Bhavan(2005), which were litigated by totally different parties who were subsequent users of the name "Saravana Bhavan" and did not have any registration in their favour. It was stated in this case that "the word Saravana has become generic and lost its characteristics of distinctiveness and consequently the plaintiff cannot claim exclusivity of this trade name".
This phenomenon is unusual in the current scenario, where huge corporates are keen on aggressively protecting their trademarks. They do not limit their protection to any one class or few classes of goods and services. They try to seek registration in all possible classes of goods and services irrespective of whether they actually have a business presence in those sectors or not. They keep monitoring whether any similar marks come in their way and once they identify any application of a mark with the slightest of resemblance to their mark or any part of their mark, they oppose such marks with all their might.
At times, they threaten those small entities who have just started their business and who are left with no other option than to abandon the usage of their marks, rather than spending huge amounts of money litigating with such corporates even though there exists a provision under the Trade Marks Act 1999 against groundless threats of legal proceedings (S.142). This kind of practice can be termed as "trademark bullying". What is more alarming is that many of the marks for which registration has been sought contain generic or common words which actually are supposed to be part of the public domain.
Even though the generic words are used in combination with other words, they initiate infringement proceedings against third parties who use these generic words. Section 17 of the Act clearly lays down that- "When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole".
Unlike the well-known marks which we are familiar with, these marks have gained strength by spending huge amounts on marketing and advertising which unfortunately are one of the crucial factors relied upon by the trademark registry, since it naturally shows the reach of the mark among the public even though in a short period of time. The case of Big Basket, an online grocery store, moving against Daily Basket which was a small startup, is a classic example of trademark bullying which was widely covered by the media this year. Unfortunately, when it comes to trademark litigations, doctrines such as trademark dilution, tarnishing of trademark work in favour of such corporates.
Coming back to the Saravana scenario, we can conclude by stating that it is a peculiar case of free riding, where a newcomer in the hotel industry always gets an edge by using such names which carry a huge reputation. Players here are more concerned about serving good food and creating their share of loyal customers rather than being aggressive enforcers of their intellectual assets.
This does not imply that it is not important to build your own brand and protect it. This only shows that it is also possible to flourish in the market through co-existence.
So if you wish to enter the restaurant business, you are free to start a "Saravana Bhavan" or "Arya Bhavan" but – be sure to serve good food!
The author is a Research Assistant at DPIIT Chair on IPR at IUCIPRS, CUSAT.
[The opinions expressed in this article are those of the author and is not intended to constitute legal advice. Verdictum does not assume any responsibility or liability for the contents of the article.]