Bombay Stock Exchange -The SENSEX heavy weight Championship

"SENSEX". This is the term commonly associated with the Bombay Stock Exchange (BSE) "to represent its benchmark 30-share Sensitive Index." See. The Hindu. The trouble brewing is approximately 2 hours from Mumbai, in Pune, where Mr. Deepak Madhukar Mohoni, a stock analyst has laid claim to the coinage of the term dated as far back as 1989. He claims that the BSE did not begin to use this term till 1992-93. He further emphasizes that he has a claim of ownership in the term SENSEX. (Note: the news reports are slightly inconsistent on this). Further, there is the allegation that the unprecedented use by others shows that BSE's cannot claim distinctiveness of the term SENSEX. Thus, BSE should not be permitted to register it. Navi.org has laid down amongnst aother, three significant reasons for refusal of registration of this mark by BSE. Firstly, it contends that the mark is not registrable in India because: (a) the SENSEX is not associated with a product or service, (b) SENSEX is not an indicator of any quality and (c) that the continuous use by BSE is not unique. Further, it claims the the SENSEX is subject to the principle of a "genericized trademark." Section 9(1)(c) of the Trade Mark Act, 1999 of India states that there will be absolute grounds for refusal of a mark "Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade. Shall not be registered." Clearly, one issue will be that of whether the term acquired distinctiveness or simply became part of normal parlance. BSE counter-argued by laying priority by its registration in the USPTO under classes 16 and 36. Navi.org alleges that BSE used BSE-SENSEX instead of SENSEX itself, the latter of which is associated with the general health of the financial market in India. As to ownership, given that the term was registered in the name of the Bombay Stock Exchange, a transfer of ownership warranted by Section 2.171 of the U.S Trademark Law Rules of Practice & Federal Statutes, USPTO, was not complied with and thus BSE cannot claim to be the rightful registrant of the US Trademark of the term SENSEX. According to the India Trade Mark Act of 1999 ("Act"), goods and services shall be classified based on the Nice Classification i.e. international classification which is mirrored by the Indian classification of goods and services. The term could fall into the services category. The SENSEX is often used to describe a sensetive index of 30 largest and the most actively traded stocks on the Bombay Stock Exchange. It is clear that the term is coined. Who can claim prior usage, if at all? Will Mohoni prudently stake no claim and stress more on the fact that BSE has no right to use what is customarily attached to mean the Indian Financial market. Will BSE claim its right through the presentation of satisfactory proof of having "acquired distinctiveness". From statements such as "Patents will mean nobody can use the names without the BSE's permission and it will be able to charge a fee or royalty for such usage." (SeeRediff News) to full fledged 'intellectual property asset realization' wars - it's a great pleasure to see a changing paradigm. Other Reports: Hindu IBN Live Daily News Analysis Rediff News