Scott Van Rixel, an American chocolatier, is trying to do something Western businesses have often failed to accomplish: trademark a common Indian word.
Mr. Van Rixel’s product is called “Bhang: The Original Cannabis Chocolate”—or it will be if the trademark application he filed with the U.S. Patent and Trademark Office in May is given the green light. Self-described as a “well-established chocolate master” in New Mexico, in the southwestern U.S., Mr. Van Rixel’s newest chocolaty creation is laced with a form of cannabis, or marijuana, that doesn’t give its user a high.
But some are saying Mr. Van Rixel’s trademark attempt rests on rather high hopes. The U.S. Patent office accepts pot-related trademark applications but has never granted one, according to a Wall Street Journal report on a short-lived medical marijuana-specific trademark category. And then there’s the matter of “the doctrine of foreign equivalence.”
The U.S. can “refuse trademark protection to words that, once translated into English, are generic or merely descriptive of the goods to which they apply,” said Rajiv Luthra, founder and managing partner of Luthra & Luthra, an Indian law firm.
In several Indian languages, bhang refers to a preparation of the leaves and flowers of the cannabis plant, which has been smoked and blended into beverages in India for thousands of years. The substance has even “become synonymous with Holi,” the colorful Indian festival that celebrates spring, says holifestival.org, a site dedicated to the occasion.
“The very intoxicating bhang helps to escalate the spirit of Holi,” the site reads.
Past patent and trademark attempts that have hinged on generic Indian words or goods have run aground under the foreign equivalence doctrine. In 1997, the Indian government successfully challenged a U.S. patent of turmeric as a wound-healing agent because, the government said, the remedy was an Indian discovery. In 2005, the European Patent Office dismissed a patent application for a fungicide derived from the seeds of the neem tree after evidence revealed Indian farmers had been using the tree’s oil as fungicide “for a long time.”
It’s conflicts such as these that the Indian Council of Scientific and Industrial Research, in collaboration with the Ministry of Science and Technology, aimed to avoid with its “traditional knowledge” database of Indian biological and medical practices. In 2006, the Indian government approved providing access to the digital database to international patent offices, according to the database’s Web site.
So far, India’s traditional knowledge database comprises nearly a quarter-million entries. Among them: bhang.
“It is useful in the treatment of orchitis, erysipelas, gout, otalgia, toothache, coryza and cattarh, haemoptysis, mastitis, cough/bronchitis, metralgia, diphtheria, psychosis/insanity/mania,” the entry for bhang reads.
The melting-pot nature of the U.S. may also pose a problem for Mr. Van Rixel. Mr. Luthra said the American’s trademark application could run aground if many of the chocolate’s consumers speak an Indian language, thereby understanding the word’s meaning and mentally translating it into its English equivalent.
“I believe that the registrability of the mark ‘Bhang: The Original Cannabis Chocolate’ would, to a great extent, hinge on the determination of the aforementioned factor [Hindi-speaking Americans],” Mr. Luthra said.
But Mr. Van Rixel, speaking to India Real Time from New Mexico, said his trademark attorneys believe the application won’t be nipped in the bud.
“Because we’re trying to trademark the entire title as a string of words and not simply ‘bhang,’ they said they thought it would be accepted,” he said. “Also, ‘bhang’ is not a commonly-used English word, so I think there are different rules as it applies to that.”
Mr. Van Rixel said the chocolate will be produced in Oakland, Calif., where he has already begun producing T-shirts and baseball caps with the name.
“I think we’ll be protected,” he said. “My trademark would have no value in India.”
– Article from The Wall Street Journal.