‘Captain Cool’ is generic, can’t be trademarked solely on fame: Opposition to Dhoni’s bid

A Delhi-based lawyer has formally opposed former Indian cricket captain Mahendra Singh Dhoni’s attempt to trademark the phrase “Captain Cool”..Ashutosh Choudhary has challenged the registrability of the phrase on the grounds that it is generic, descriptive and intrinsically linked to public commentary and sporting culture, rather than to any distinct source or commercial origin.The opposition argued that Dhoni’s celebrity status alone cannot justify a monopoly over a widely used phrase that has been applied to multiple sportspersons over the years. The opposition argued that the mark lacks inherent distinctiveness and fails to meet the statutory requirements under the Trade Marks Act, 1999. .The former Indian cricket team captain's bid to trademark the phrase “Captain Cool” for entertainment and sports-related services recently cleared a key regulatory hurdle, with the Trade Marks Registry formally accepting the application and publishing it in the official journal.Filed under Class 41, the application covers services related to education, entertainment, sporting and cultural activities including coaching and training..The mark was originally submitted for registration on a “proposed to be used” basis and was later amended to include a claim of prior use since 2008. However, the opponent contends that this amendment was made without supporting evidence or an affidavit, and only after the Registry had issued multiple examination reports and hearing notices over nearly two years.“This is a deliberate and mala fide attempt to circumvent objections raised during multiple hearings,” the notice stated..Central to the opposition is the argument that “Captain Cool” is a commonly used, laudatory expression that has historically been associated with other cricketers including Sri Lanka’s Arjuna Ranatunga, and cannot be considered distinctive or capable of signifying a single commercial source.“The term ‘Captain Cool’ is a generic, laudatory expression that has been used for multiple sportspersons. It cannot be monopolised by any individual, regardless of their fame or public persona,” it argued..The opponent also raised serious procedural concerns about the conduct of the Trade Marks Registry. According to the notice, the Registry issued repeated hearing notices before accepting the mark, and the applicant’s claim of prior use was introduced late in the process without formal acceptance. It is further alleged that no provision under the Trade Marks Act permits such an amendment to the nature of the application during the examination phase..The opposition noted that the applicant has claimed acquired distinctiveness, but has not submitted any material proof of consistent or exclusive commercial use. No evidence of the mark being promoted or recognised in the marketplace for sports training services has been provided, the opponent claims. “Persona is not a source of legal right unless supported by actual commercial use and compliance with statutory criteria. Popularity alone does not satisfy the legal threshold,” it stated..Further, the opponent pointed to pending rectification proceedings initiated by the applicant against a conflicting earlier trademark, arguing that the Registry acted prematurely in accepting the application without resolving that dispute or serving proper notice to the proprietor of the cited mark. This, it is alleged, violates procedural safeguards and indicates preferential treatment based on celebrity status.The filing included references to old news articles and cricket coverage showing that “Captain Cool” was used for other international cricketers long before it became associated with Dhoni. It emphasised that the phrase has become part of the sporting vernacular, akin to other public epithets such as “The Wall” or “God of Cricket,” which are descriptive and non-proprietary in nature.“Accordingly, no proprietary rights or exclusivity can be claimed over such a generic phrase, and any attempt to do so is legally unsustainable and contrary to the basic principles of trademark law.".The opponent has urged the Trade Marks Registry to refuse the registration of the mark in favour of Dhoni and preserve the integrity of the trademark system by preventing the appropriation of generic and honorific expressions.The matter will now proceed under opposition proceedings in accordance with Section 21 of the Trade Marks Act, 1999..The opposition was filed through a Delhi-based law firm called KAnalysis Attorneys at law.