Applying for a Trademark Registration of a Book’s Name | IP Attorney in Delhi NCR | IP Lawyer in Delhi NCR |
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Works created by author comes under the ambit of literary works and therefore for the very first instance we assume that it will be protected under the Copyright laws and particularly under the Copyright Act of 1957. Under the copyright laws the works of the author is protected in a whole starting from the content to the cover. But there has been no provision that are dealing with the title of the book getting Intellectual Property (IP) protection individually.
Can I register Trademark on the name of my Book?
There has been no concrete judicial pronouncement regarding the Intellectual Property (IP) protection given to the title of the books per say but then the case of RGV Film Factory and Others vs. Kanungo Media (P) Ltd. [138 (2007) DLT 312] in this case, the Plaintiff claimed ownership of the title of a film called ‘Nisshabd,’ which it had produced and for which it had received numerous awards. The defendants had made a film titled ‘Nishabd.’ The Plaintiff claimed that it owned copyright to the film title, that it had acquired distinctiveness, and that any use of the word “Nisshabd” or a word deceptively similar to it would cause confusion among film fans and the general public. The High Court stated that a literary work requires a name (only after which it can be identified) and held that the term “literary title” encompasses titles of books, periodicals, newspapers, plays, motion pictures, television series, songs, phonograph records, cartoon features, and the like, citing McCarthy on Trademarks and Unfair Competition (Third Edition (1995) Vol. I. The High Court held that copying of a title alone, rather than the plot or other elements of a literary work, is not subject to copyright law, and that copyright on a literary work does not include an exclusive right to use the title on any other work.
Now coming to the other wing of the Intellectual Property Rights (IPR) that can come into the picture is the Trademark protection. As it is known that the whole concept of Trademark deals with the protection of the goodwill that is attached to its product and services.
In order to get one’s mark registered one need to have the element of distinctiveness and uniqueness. It is true that book titles can be unique and distinctive but the question of having its title protected as trademark is still an unchartered area. Under the Nice Classification (NCL) under class 16, 160095 a book cover, title can be registered provided it should have acquired distinctiveness and the title of the book should not be descriptive in nature. For example a famous book written on weight loss and diet which has over a period of time acquired distinctiveness having a title “weight watchers” cannot get trademark registration as the title is descriptive in nature.
The Court also in the above mentioned case of dealing with copyright i.e. RGV Film Factory and Others vs. Kanungo Media (P) Ltd. [138 (2007) DLT 312] also discussed about the Trademark aspect regarding the titles of the book. The Court went ahead and identified two kinds of titles in case if literary works
- Titles pertaining to the series of books: With this regard the Court went ahead and mentioned that a title of series of book can be registered as a trademark as it would be easy for the consumer to identify the original source of the product so in a way if the title of books pertaining to a series is concerned may get trademark registration as they are ultimately acting as a source identifier in the market.
- Titles pertaining to a single book: While dealing with this title the Court answered in negative and mentioned that the title pertaining a single book can be granted trademark protection. But the applicant has to show that the title has acquired secondary meaning and prove that if that if no protection is given to the title, there is a risk of misunderstanding of source, association, endorsement, or relation of potential buyers/audience/viewers in the market.
Another example that we can take to understand the situation is the Anne Frank-Fonds Trade Mark Application (2015, R.P.C.31 (UK)) in this the applicant applied for trademark registration of the book title in the form of “Diary of the Oneng Girl” & “Diary of Anne Frank” even if the book was very popular and had acquired distinctiveness over a period of time still it did not get registered as the title was not unique and descriptive in nature.
To sum it up all together one can register one’s book title as a trademark provided that one have acquired distinctiveness and the title is unique and not descriptive in nature. In case of series one might not have to go through a lot of trouble of proving as in to why one need protection under the trademark laws, but in case of individual title one have to prove that one’s book has secondary meaning attached to it and one’s title is vulnerable to misrepresentation, cause consumer confusion etc. Thus, the author of the book can apply for trademark registration in India.
Authored By: Adv. Anant Sharma & Swayamsiddha Das