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Royal Tryst with Trademark Law

Royal Tryst with Trademark Law

Royal Symbols often include the royal coat of arms, royal crest, insignias, badges etc., they are distinguishing marks or sign adopted by a person, a family, or an organization.

Most of the Royal Symbols date back to medieval times. These Royal Symbols have been used for identification of knights in battles and kingdoms through the course of history. With the passage of time these Royal Symbols became an important part of the heritage and cultural identity of royal families. The words, names, figures and/or combined symbols were carefully crafted and adopted as per the socio-cultural values and beliefs of that family/organization. They were the original source identifiers.

With development and modernization these Royal Symbols aka trademarks evolved into flags of different countries, presidential seals, medals, and even corporate logos.

Protection under Indian law

Very often third parties use the Royal Symbols in their trade, at fund raiser campaigns, for political gain etc. Since Royal Symbols are deeply intertwined with royal family legacies, they should not be allowed to be used by third parties. Any such use for a commercial or even non-commercial purpose will mislead the public into believing that there is some association and/or endorsement by the said family.

The question then arises, how should this heritage be protected.

Trademarks Act

Since Royal Symbols are akin to trademarks, they enjoy the same level of protection as any other mark capable of distinguishing the goods or services of one person from those of another. Thus, making it open for descendants of royal families to apply for trademark registration of these Royal Symbols.

However, one of the important conditions under Indian Trademark Law is continuous commercial use of the trademark. Even if Royal Symbols are applied for registration there must be an intention to use it commercially. As an illustration, the family crest device of the Royals of Jaipur in their hotel chains is eligible for trademark registration. In a scenario where there is no historical commercial use, but Royal Symbols are applied for registration on a “proposed to be used basis”, with an intention to use it commercially, it must be used within a period of five years. In the event of non-use for five continuous years, it is amenable to rectification proceeding.

For Royal Symbols with no commercial use, an action under the common law remedy of passing off can be initiated. Any third-party using and/or misrepresenting such Royal Symbols to be associated and/or endorsed by the Royal Family can be restrained from use by demonstrating the 3 essential ingredients of passing off action i.e.:

  1. mark is distinctive to the owner and has goodwill,
  2. misrepresentation,
  3. likelihood of injury/damage to goodwill and reputation.

Other Legislations

With the decline of monarchy and emergence of democracy, the government has adopted various family crests (Royal Symbols) as their official coat of arms, insignias in military and government department.

It is pertinent to note that The Emblems and Names (Prevention of Improper Use) Act2 prohibits any person from using or continuing to use such protected emblems and names, for the purpose of trade, business, commerce, profession, or in the title of patent, trademark or design. The insignia or coat of arms used by any such government department are specified in the schedule with the emblems and Names (Prevention of Improper Use) Act. Therefore, any use is liable to attract penalty from the Central government.

“3. Prohibition of improper use of certain emblems and names.—Notwithstanding anything contained in any law for the time being in force, no person shall, except in such cases and under such conditions as may be prescribed by the Central Government, use or continue to use, for the purpose of any trade, business, calling or profession, or in the title of any patent, or in any trade mark or design, any name or emblem specified in the Schedule or any colourable imitation thereof without the previous permission of the Central Government or such officer of Government as may be authorised in this behalf by the Central Government.”

The Schedule categorically mentions

“(4) The name, emblem or official seal of the Government of India or of any State, or any other insignia or coat-of-arms used by any such Government or by a Department of any such Government.”

Other Jurisdictions

In a few countries Royal Symbols are protected under their IP regime and/or under a separate legislation. A case example is United Kingdom, which is one of world’s largest monarchy. The British monarchy has successfully created their Royal Symbols as a global brand with a built-in protection under its trademark laws. Therefore, any use of Royal Symbols in connection with trade, business, or any non-commercial purpose is prohibited under their Trade Marks Act 19943 unless they are expressly permitted. As a matter of fact, the monarchy lends out its brand prestige to endorse other company brands in form of royal warrants. Several products have the right to mark their products with the Royal Arms and the term “By Appointment to His Majesty the King” which implies their endorsement.

International Protection under Paris Convention

Use of Royal Symbols are also protected under Article 6ter4 of the Paris Convention for the Protection of Industrial Property, 1883. India acceded to the Paris Convention for the Protection of Industrial Property, 1883 in the year 19985.

Article 6ter (1) (a) states that:

The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view”.

Conclusion

Use of Royal Symbols raises some very relevant and interesting issues. While the tangible assets like monuments and other cultural heritage sites are preserved and protected by the national governments and national and international bodies like the Archaeological Survey of India & UNESCO, the intangible assets like Royal Symbols may be protected under The Trademarks Act by Royal descendants through continuous commercial use, provided the same is not falling under the schedule in The Emblems and Names (Prevention of Improper Use) Act.

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