Can the Buddhist notion of Bodhi be appropriated as a trademark?

Trademarks in connection with religious and spiritual movements can pose a special set of challenges for registration and enforcement. Kat friend Jolena Ang reports on a most interesting instance that took place before the Intellectual Property Office of Singapore.

Enlightenment (“Bodhi”) is known to all Buddhists as the ultimate goal in Buddhism. “Bodhi” is loosely defined as the moment when a Buddhist finds the truth about life and stops being reborn. According to Buddhists, the Buddha, also known as Siddhartha Gautama, reached “Bodhi” while meditating under a sacred fig tree. Given the fundamental significance of the term “Bodhi” amongst Buddhists, the Singapore Registrar of Trade Marks in In the Matter of a Trade Mark Registration in the Name of Kwek Soo Chuan and an Application for Declaration of Invalidity thereof by Eley Trading Sdn Bhd [2017] SGIPOS 15 had to decide if a trade mark registration for “??” (transliterated as “Pu Ti”, which means “Bodhi” in Mandarin Chinese) for Buddhist incense products in Class 3 should be invalidated and free for all traders of incense products to use. The Registrar held that the invalidation should succeed.

Background

Kwek Soo Chuan (“the Proprietor”) was the registered proprietor of the trade mark “??” in Class 3 in relation to “incense; incense sticks, incense coils, incense cones, incense sprays. joss sticks, scented oils, and scented preparations” (“the ‘??’ Mark”). Eley Trading Sdn Bhd (“the Applicant”) applied for the ‘??’ Mark to be declared invalid on the following grounds:

(a) The ‘??’ Mark was devoid of any distinctive character;

(b) The ‘??’ Mark was descriptive of the intended purpose of the goods claimed;

(c) The ‘??’ Mark was applied for in bad faith; and

(d) The ‘??’ Mark was confusingly similar to the Applicant’s earlier mark for, which was registered for incense products.

Although the Applicant failed on grounds (b), (c) and (d) above, the Registrar found that the invalidation under (a) above was made out and that the ‘??’ Mark was devoid of any distinctive character.

The Applicant argued that traders in Singapore and overseas have been referring to their incense products as “???” or “Bodhi Incense” and “???”. These products have been available in Singapore long before the date of application of the ‘??’ Mark. The Applicant also submitted evidence from three other incense traders in Singapore, which included samples of “???” incense products sold by other third party traders. It was not disputed by parties that the burning of incense is an integral part of Buddhism and that practicing Buddhists use incense as offerings to Enlightened Ones and/or the Buddha.

The Registrar’s Decision

In light of the common use of the term “???” by incense traders in Singapore, the Registrar held that the plain words “??” were incapable of distinguishing the Proprietor’s goods without first educating the public that they were a trade mark. More importantly, the Registrar held that even if the words “??” were not commonly used among incense traders, she would nevertheless find that the term “??” was one which other traders might wish to use for legitimate reasons. In coming to her conclusion, she considered how the term “??” would be understood by the average consumers of incense products in Singapore. As the average consumers (Buddhists in Singapore) would likely understand the significance of the term “??” in Buddhism and the term “??” features frequently in Buddhist publications, the ‘??’ Mark should not be monopolised by the Proprietor.

Acquired Distinctiveness

Although the Applicant was successful in invalidating the ‘??’ Mark under (a) above, the Proprietor would have been able to retain his registration of his ‘??’ Mark if he could show that the ‘??’ Mark had in fact acquired a distinctive character as a result of his use. However, after reviewing the evidence submitted by the Proprietor, the Registrar was unable to find that the ‘??’ Mark had acquired distinctiveness. The Proprietor adduced the following documents in support:

(i) Use of the words “??” in his business name, “??????????” (Translated to “Bodhi Buddhism Cultural Relic Wholesale Centre” in English).

(ii) Use of the sign  on his shop’s signboard, company vehicles, name cards, letterheads, invoices, calendars and product packaging.

(iii) The marking his products and advertisements with the words “??”, the sign  and/or the device . (Examples were provided in the judgement at pages 19 and 20, see link above.)

While it appeared that there were some attempts by the Proprietor to use his ‘??’ Mark per se and not in combination with other words or elements, the Registrar held that it was not entirely clear or consistent how the Proprietor wanted to use his ‘??’ Mark. The evidence of use of the words “??”, the signage  and/or the device  on the Proprietor’s products and advertisements did not indicate a clear and consistent message to consumers as to whether they were intended to indicate the origin of the goods or to be discriptive, decorative and/or inspriational. For example, the device on packaging was significantly smaller than other elements found on the packaging. In the face of other elements and marks found on the packaging, the evidence did not suggest that customers would rely on the device as a secondary trade mark for the claimed goods.

Further, most of the evidence submitted pertained to the use of his business name “??????????” , and the use of the sign. The Registrar found that they were used to merely designate the distributor of the products and not the products themselves. Although the Proprietor stated in his oral testimony that he is referred to by his customers as “??”, the Registrar found that this did not necessarily mean that his customers also distinguished his goods by his ‘??’ Mark. This is because it is not a natural consequence that use of a company’s trade name would indicate use of the ‘??’ Mark on the claimed goods. As a result, no acquired distinctiveness was found.

The Registrar’s finding on acquired distinctiveness serves as an important reminder on the need to adopt a consistent approach in the use of its marks and decorative elements in marketing materials and product packaging. Businesses should remember that whether acquired distinctiveness is found depends on the nature of the use of the mark and the effect of such use on the average consumer.

The decision is currently pending on appeal to the High Court of Singapore.

Photo at lower left licensed by David Wilmot under the Creative Commons Attribution-Share Alike 2.0 Generic (https://creativecommons.org/licenses/by-sa/2.0/deed.en) license.