subject: House Mark and Product Identification Mark [print this page] House Mark and Product Identification Mark
House Mark and Product Identification Mark:
House Mark and Product Identification Mark defined:
Proprietors use several trade marks in respect of their goods (known as product mark), besides using a common mark in all his products to indicate the origin of the goods from the enterprise (known as house mark). Though both are trade marks and are registerable as such, each has its own distinct function. While the house mark represents the image of the enterprise from which the goods emanate, the product mark is the means by which goods are identified and purchased in the market place and is the focal point of presentation and advertisement.
In the pharmaceutical business a distinction is made between a house mark and a product mark. The former is used on all the products of the manufacturer. It is usually a device in the form of an emblem, word or both. For each product a separate mark known as a product mark or a brand name is used which is invariably a word or a combination of a word and letter or numeral by which the product is identified and asked for. In respect of all products both the product mark and house mark will appear side by side on all the labels, cartons etc. Goods are ordered only by the product mark or brand name. The house mark serves as an emblem of the manufacturer projecting the image of" the manufacturer generally.
Case laws-
1) Parle Products v. Parle Agro 2009 (39) PTC 405
a) Facts-
Parle Products (plaintiff) and Parle Agro (defendant), parties to the suit are Companies incorporated from a parent company which had been carrying on business in the name of "Parle" as a part of their corporate name in respect of products for which each of these companies obtained registered trademarks, for the use of the word "Parle" singly or in conjunction with other words.
Parle Products deals in biscuits and confectioneries, while Parle Agro is engaged in the business of beverages as also confectioneries which are manufactured and marketed by them.
Both the parties had no grievance on use of the word 'Parle'' by other. Each of these corporations was observed to have used separate names /marks / brands for each of their separate products.
Parle Agro used their product identification mark and brand name "Mintrox" and "Buttercup" in conjunction with the words "Parle" or "Parle Confi" on the labels of the products. There was no agreement between the parties, by which either of the groups was restrained from carrying on business of the other group for any period of time or within any place upon the "exit" of the partners.
b) Arguments-
Plaintiff-
Parle Products did not dispute Parle Agro' right of carrying on business in confectioneries or biscuits. Parle Products' contention was only with respect to the use of the trademark "Parle" singly or in conjunction with its product identification marks such as "Buttercup" or "Mintrox".
Defendant-
Parle Agro contended that Parle was a "house mark" and that the same could be used by members of the family of Parle to denote the lineage for any business confectionery and biscuits or beverages.
They further stated that they could carry on the business of confectioneries and biscuits by virtue of the object clause in its Memorandum of Association. As "The Parle Confi Company" which belonged to the Parle Group of Companies, they contended that use of the word "Parle" for products manufactured by their confectionery division was honest and bona fide.
They also contended that they had acquired enormous reputation and goodwill in its product identification mark under the house mark "Parle" and confusion or likelihood of confusion was said to be absent.
c) Court's observations-
The Court stated that the words "Parle Confi" were merely a reference to the parent company, but the fact that they held a distinct corporate name made it clear that it does not refer to Parle Products or its business.
The Court stated that two concepts i.e. the "product name" or the "brand name" and the "house name" were existent : Parle being the house name is Parle and the different product names being brand names for each of their products. The Court also observed that the mark "Parle Confi" was not deceptively similar to any of the Parle Product's trademarks.
d) Judgment-
The Court stated that the word "Parle" did constitute a house mark and both the parties have a right to use it on their products along with the product identification mark.
2) Astra Pharmaceuticals (P) Ltd. vs. Collector of Central Excise, Chandigarh1995(75)ELT214(SC), JT1995(1)SC276, 1995(1)SCALE17, (1995)2SCC84, [1994]Supp6SCR692
a) Facts-
The appellant manufactured pharmacopoeial and non-pharmacopoeia medicines. One of the items manufactured by the appellant was 20% Dextrose injection. It is a trade name in the Indian pharmacopoeia. It being one of the medicines specified in pharmacopoeia it was wholly exempted from duty under the Central Excises & Salt Act, 1944.
The containers in which this medicine was sold, its cover carries the name 'AP - ASTRA'.
An item which fell under tariff item 68 and was wholly exempt from duty was further exempted from operation of Rule 174 under the Central Excises & Salt Act, 1944 and no central excise licence to manufacture it was required to be taken out.
The appellant, therefore, did not obtain any licence and cleared the Dextrose manufactured by it without paying any duty since the date of manufacture in December 1978 till 23rd January 1982 when notice was served on it for showing cause as to why Dextrose manufactured by it may not be subjected to duty under tariff item 14E as even though it was pharmacopoeial product, yet the label used on the packing and the container bore a monogram which indicated a connection between the medicine and the appellant.
b) Arguments-
Appellant-
The explanation appended to Item 14 E carves out an exception in favour of any pharmacopoeial medicine or medicines which have been mentioned in a publication issued by the Central Government. The appellants manufacture 20% Dextrose injections. 20% Dextrose injections are mentioned in Pharmacopoeia and hence exempted from the tax levied under 14 E.
The explanation appended to Item 14E includes in its ambit as taxable, all those medicines which carry a brand name which is registered under the Trade and Merchandise Act and the manufacturer describes that medicine by any symbol, monogram or label so as to establish a relationship between the manufacture. The cover of medicine has on it the letters AP' is not a trademark or monogram and hence does not fall within the ambit of item 14E.
Respondent-
The entry is in two parts, one the main and other explanatory. The main part though carves out an exception in favour of any pharmacopoeial medicine or medicines which have been mentioned in a publication issued by the Central Government, but it does not exempt those medicines which even though mentioned in pharmacopoeia are identified by a monograph or a symbol, signature or invented words so as to establish a relationship between the producer and the medicine.
The Tribunal found that letters 'AP' do not constitute a monograph because the two letters are not interwoven but they being placed side by side in an artistic manner on the top it made the medicine manufactured by the appellant as a patent or proprietary medicine attracting central excise duty under tariff item 14E.
c) Court's observation-
To determine if the appellant was liable to pay duty on Dextrose injection manufactured by it, it will have to be examined if it fell under tariff item 14E.
On interpretation of 14E court concluded that, a patent or proprietary medicine to attract levy under this tariff item must either be a medicine which was not specified in a Pharmacopoeia or other publication and carried on it or its container name of the produce by symbol or invented name etc. A medicine of which the producer is the proprietor and it is known by its name would be covered in this clause.
Explanation I would attract levy only if its container or packing carried any distinctive marks so as to establish the relation between the medicine and the manufacturer. But the identification of a medicine should not be equated with the produce mark. Identification is compulsory under the Drug Rules. Technically, it is known as 'house mark'.
In Narayan's Book on Trade Marks and Passing-Off, the distinction between 'house mark' and 'product mark' (brand name) is brought out thus,
"677A House mark and product mark (or brand name).
In the pharmaceutical business a distinction is made between a house mark and a product mark. The former is used on all the products of the manufacturer. It is usually a device in the form of an emblem, word or both. For each product a separate mark known as a product mark or a brand name is used which is invariably a word or a combination of a word and letter or numeral by which the product is identified and asked for. In respect of all products both the product mark and house mark will appear side by side on all the labels, cartons etc. Goods are ordered only by the product mark or brand name. The house mark serves as an emblem of the manufacturer projecting the image of "the manufacturer generally."
The 'AP' or 'Astra' on the container or packing was used to project the image of manufacturer generally. It did not establish any relationship between the mark and the medicine. For instance, if the appellant instead of using Dextrose injections would have described it as Astra injections or Astra Dextrose injections then it could be said that a relationship between the monograph and the medicine was established. In the case of appellant it was only a monograph to identify the manufacturer.
d) Judgment-
In the result this appeals succeeds and was allowed. The order passed by the Tribunal was set aside and the question of law raised by the appellant was decided by saying that Dextrose injections manufactured by the appellant in the relevant were not patent and proprietary medicines dutiable under tariff item 14E of the Schedule. No order as to costs was passed.
Footnotes:
[1] Kailasam K.C, Law of Trade Marks & Geographical Indications, 2003 ed., (Wadhwa and Company, 2003), 43
[2] Narayanan.P, Law of Trade Marks & Passing off, 6th ed., (Eastern Law House, 2004), 370
