watering woes in the Indian bottled water industry - creating and protecting an identity (trademark)

Tussle over taming the grandeur of the highest mountain range in the world for a commercial venture has reached the courtrooms. Aquifers nestled in Himalayas have been used by the Tata Group (previously Mount Everest Mineral Water Ltd.) and Bisleri International to source a premium segment of bottled water (enriched in minerals) as a launch-pad to hoist their international flags and towards a niche uber-urban segment.

The trouble brews in the fact that ‘Himalaya’ is a registered TradeMark with the Tatas. The counter argument of Bisleri states that ‘Himalaya’ is a generic name. Both parties accessed the provisions of the Indian Judicial System by raising their respective claims. More specifically, Ramesh Chauhan (chairman, Bisleri International) has sought cancellation of Tata’s Himalaya brand through a rectification application filed with the Intellectual Appellate Board (IPAB), Chennai, based on the Geographical Indications Act which forbids the registration of a geographical name by a private company.

Statistics’ disclosures maintain that ‘Himalaya’ brand mineral water, currently owned by the Tatas was bought over from Dadi Balsam (an NRI from Singapore) in 1991. The bottles formerly had horizontally located circumferential ridges and square cross-sectional bottles. Bisleri, on the other hand kicked off their premium segment edition in December, 2006. They have only recently accelerated their marketing of said product. Visually, the bottles are unribbed/unridged carrying a vertical label called ‘Himalayan’ (and in small descriptive font ‘from the Himalayas’).

While the matter was heard in courts on June 23rd and June 24th, 2008, an interim arrangement has been sought by both parties whereby, Bisleri has agreed to stop using the domain ‘www.bislerihimalayan.com’. It will continue to market water bottles that say ‘from the Himalayas’ as a descriptive mark in small font to denote the origin of the water. It has also agreed to inform its stockists about these arrangements. Come October, and a judgement will hopefully be doled out.

Representative Advocates:
- for Tatas: Fali S. Nariman
- for Bisleri: AS Chandhiok

Crunching Business Parameters:
The numbers game disclosing current and potential marketing trends and statistics are the driving force for either party to assert their dominance, while it is the onus of the courts to simultaneously ensure a level playing field.

Currently pegged at Rs. 1000 – crore, the Indian bottled water industry is projected to grow @ 40% to touch Rs. 5000 – crore by 2010. The ingoing fight over establishing and protecting the identity of the premium bottled water segment is mainly to create an entry into foreign markets and thus define a global presence. e.g. exploiting the US market which is touted to touch US$ 50 billion.

PatentInc.* Viewpoint:
Any registered TradeMark is designed with an aspect to provide the basis, thrust, and most importantly, to impart a unique identity to a commodity (product/service). Infringement of any registered TradeMark is substantiated when it is proved beyond reasonable doubt that the purported infringer has/is caused/causing confusion about the identity of the product, which ought to be protected by the registered TradeMark. Also, an infringement hints at the strength of the registered TradeMark in the market vis-à-vis its identification of the product and seemingly entices potential copiers to piggy-back on an already paved way of the ‘recognised’ commodity. An efficient judicial system enabled by strong laws and defined precedents need to be in place to thwart such ‘piggy-backing’ attempts.

A further objection could be raised wherein, the very identity of the product is threatened i.e. whether a mark/word(s) ought to be the subject matter in the first pace.

Apropos the bottled water industry, visual statistics1 clearly point out the increasing demand in a developing nation like India.


(Visual statistics - 1 - Growth in the bottled water demand in India)


Primarily, for this reason, the cross-tracking attempts and attempts to create well-defined, non-confusing niches within the juxtaposed players of the same market, a non-generic identity mark is of paramount importance.

While it remains clear that ‘Himalaya’ is a generic name and a geographical location (and hence, not a subject matter of a TradeMark registration), it remains to be seen if its derivative factions such as ‘Himalayan’ or the like withstand the turbulence caused in respect of this case, and attract favourable judgement, thereto, thus egging other players to register such TradeMarks, and its plausible complications arising out of methods of distinction of such distinctive marks.

[1 - The structure and economics of the Indian bottled water industry; Chandra Bhushan; FRONTLINE; Volume 23 – Issue 07 :: Apr. 08 – 21, 2006.
*PatentInc. - – a proprietary outfit in the field of Intellectual Property, India.]

harry potter - an ambush for allied work by a tertiary publication

The Plot:

17 years of creative outbursts has propelled J. K. Rowling (author of the Harry Potter novel series fame) to the pinnacle of modern fictional literature. The wizard world of Harry Potter as weaved by J. K. Rowling brought along with it a swarm of ‘new words’ indicative of the various spells, potions, magical devices, and characters. She has seemingly construed and brought into force, an otherwise nullity of characters (rummage of alphabets) to showcase the realms and happenstances of her surreal world.

A prompt disclaimer forms a pre-cursor to her books; the disclaimer reads thus – “no part of this publication may be reproduced, or stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without written permission of the publisher”.

Enter librarian Steven Vander Ark, a 50 year-old librarian from Michigan, a self-confessed Harry Potter fanatic – the doer promoted and pushed by RDR Books.

What started with a fan-based website (www.hp-lexicon.org), to which the content was provided by the librarian, having comprehensively and continuously researched the books for 8 to 9 years; off which he made $6,500 through advertising between 2000 and 2008, turned into a serious money making business when RDR approached the librarian and struck a deal with him in August 2007 to publish the text of the website and market the same to the public.

This decision stung the nerves of J. K. Rowling who flipped and turned her stance from having praised the web-edition of the Lexicon – even sheepishly admitting that she herself sneaked onto the website whilst writing her book(s), to vehemently arguing against the money-making racket off the print version of the same website and further heading towards mentioning the inaccuracies that this Lexicon reportedly provides.

A first hand look at the website suggests a neat and comprehensive ensemble of the resources referenced and cross-referenced from the plurality of books that comprise the entire Harry Potter series, in that it attempts to archive the various factual derivations from the books.

The Facts:

Verbatim reproductions of statements issued in testimony by:

J. K. Rowling – “..the lexicon is useless because its merely an alphabetical rearrangement of my work, with many inaccuracies to boot....”

Steven Vander Ark - “....Its a reference book to a piece of literature, so naturally it refers back to the source material....There are places where we use phrases that are identical or similar...”

Warner and Rowling’s witness: Bruce Harris, a publishing expert to testify the effect of such a companion guide on future publications.

RDR defense witness: Janet Sorenson, a Berkeley English professor and ‘expert on lexicons’ to historically depict the role of Lexicons.

Steven Vander Ark’s attorney:

David Hammer, a solo practitioner in Manhattan, took lead for RDR. He was supported by Lizbeth Hasse, of San Francisco’s Creative Industry Law Group, as well as Stanford Law School’s Anthony Falzone, a former Bingham McCutcheon litigator and the heir apparent to Lawrence Lessig’s Fair Use Project.

The Proceedings:

J. K. Rowling along with Warner Brothers filed a lawsuit at the New York Federal District Court (Judge: MR. Robert Patterson) against RDR Books seeking an injunction against the hard-copy version of the HP Lexicon website compiled by Steve Vander Ark.

The lawsuit states that, “The infringing book is particularly troubling as it is in direct contravention to Ms. Rowling’s repeatedly stated intention to publish her own companion books to the series” (Intention or no intention, it is interesting to see whether the purpose of copyright holds its own lawful ground and the extent to which it prohibits infringers against use.)

The Copyright Act of 1976 allows incorporation of copyrighted material “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship or research”.

The defense team which includes the Fair Use Project at Stanford University Law School, has replied to the suit arguing:

“In support of her position Ms. Rowling appears to claim a monopoly on the right to publish literary reference guides, and other non-academic research, relating to her own fiction. This is a right no court has ever recognized. It has little to recommend it. If accepted, it would dramatically extend the reach of copyright protection, and eliminate an entire genre of literary supplements: third party reference guides to fiction, which for centuries have helped readers better access, understand and enjoy literary works.”

Fair use is a doctrine in the United Stated Copyright Law that allows limited use of copyrighted material without requiring permission from the rights holders such as use for scholarship, review or classroom use. The blur between copyright infringement and free use is showcased by the Fair Use Project, whose pillars of support form the basis on non-infringement of a copyright material.

The 4 pillars of Fair Use Policy:-

1) Purpose and character:

One must demonstrate how it either advances knowledge or the progress of the arts through the addition of something new. A key consideration is the extent to which the use is interpreted as transformative, as opposed to merely derivative. Derivative use rights ought to be the copyrighter’s jurisdiction. RDR’s crux pointing towards transformative use takes cue from its admission that the Lexicon is a valuable tool for organizing the vast work of Harry Potter books that are spread over thousands of pages.

2) Nature of the copied work:

Facts and ideas are separate from copyright; only their particular expression or fixation merits such protection. In contrast, a fictional work merits more protection automatically.

3) Amount and Substantiality:

The quantity or percentage of the original copyrighted work that has been imported into the new work ought to be looked at.

4) Effect upon work’s value:

A measure of the effect that the allegedly infringing use has had on the copyright owner’s ability to exploit her original work. To check whether such use in general, if widespread, would harm the potential marker of the original. Ms. Rowling contests and negates this by her ardent claims of publishing her own lexicon (in future).

The Justice:

Yet to be decided.

PatentInc.* School of Thought Viewpoint:

This case has assumed preposterous peaks because as Anthony Falzone, executive director of the Fair Use Project at Stanford Law School and one of RDR’s lawyers pointed out that, “This is the first time that anybody has argued seriously that folks do not have the right to do that (compile and print Lexicons)” This obviously marks a milestone, then and a precedent in many future similar lawsuits.

Copyright issues in literature arise when one person’s creative ability is compromised in order to merely ‘lift’ an author’s symposium of words and orchestrate the same to be a ‘derivative faction’ of the author’s work, in that, the perpetrator believes that it is ‘his ingenuity’ that has aroused him to spot a specific pattern which is purportedly unknown in the author’s own work.

As a fan, I would testify that I would never even contemplate buying cursory books, merely because of the plausible incongruities. Had it been a J. K. Rowling authored publication, I would be tempted to lay my hands on it. That is the kind of profound effect a writer subjects his/her readers to and prompts loyalty for/towards. Any trespassing/departure on/from that front is bound to be seen as derogatory/inflammatory/prejudicial to the author’s work.

[* PatentInc. – a proprietary outfit in the field of Intellectual Property, India]