Trademark as an intellectual property right gives businesses the rights that
they ought to have in order to protect their business from getting misused or
exploited from other competitors in the market, the whole purpose of trademark
protection is to give businesses shelter to stand alone in the market, but what
if those businesses are build on trademark names which are generic, common in
nature and the mark itself describes the quality, feature, shape,
characteristics of the services or products that particular business provides or
offers, are these businesses protected under the law of Trademark?
The answer to this question is no these aren't protected in fact these
trademarks cannot be registered as a legitimate trademark and can be opposed to
or rejected by the registrar offices for the purpose of registration, but the
law does not ignore such trademarks completely , there are relevant defences in
case if the trademarks get infringed or opposed to. We'll be discussing those
defences in our article in detail.
Trademarks Must Be Distinctive And Not Descriptive:
A distinctive mark distinguishes a brand from other competitors in the market,
this is an essential ingredient to get a trademark registered, s.9(1)(a) of the
trademarks act 1999 prohibits the registration of trademark which lack
distinctiveness, it is important for an individual to do their research before
hand and find out whether the mark is capable of being registered or not and if
it falls within certain characteristics that makes the mark distinctive.
The characteristics that make a trademark distinctive are as follows:
- Those trademark which differentiate its brand name from other comparable
and highly well known brands in the market.
- Marks that are not based on commonly used names or generic terms.
- Those businesses which do not describe the quality , shape, features of
the products and services they sell through their trademark. The trademarks
do not include visual description of the products and services.
Classification Of Distinctiveness:
There are certain classification from which one can ascertain if the mark falls
under distinctive category or not, those are as follows:
- Arbitrary Marks
Arbitrary marks are far from being descriptive marks these marks do not consist
anything that has to do with the products or services the business provides,
there is not even a slight hint of the product or service attributes in the mark
that the business advertises or promotes, arbitrary marks are words or
combination of words that have some meaning and are commonly used but are highly
distinctive as they are in no way inlined or connected with the product, these
marks get registered quickly and the only catch is that the mark should not be
identical to the well known marks in the market for eg. if a start-up who's
business revolves around real estate cannot keep its brand name Philip's as
there is already a well known brand in market that is named Philip's which
produces light bulbs and other electronic products, the start-up is refrained
from using the name Philips as it is already existing and recognized brand name.
An arbitrary mark is itself a strong mark the only thing is that word used
should have meaning and be unique at the same time, the word used should in no
way be associated with the products and services the business provides. an eg.
for this could be a company named Camlin which sells stationary products the
word Camlin is derived from an animal name that is a camel, the name Camlin in
no way represents stationary , this is an classic example of an arbitrary mark.
Brands likes Apple, Dove, Puma, Black Berry, and Blue Diamond are all common names
but have been registered as arbitrary marks for their reputable image.
- Fanciful Marks
Fanciful markings are those that are innately different from ordinary terms,
made up of words that aren't even used in the English language or any other
language and aren't usually found in dictionaries. As the name implies, the
words used under these marks are innovative and creative. The whole point of a
fanciful mark is that it should be something that the average person would never
think of or consider.
Popular and well known brands like Google, Xerox, Kodak, Rolex, Nike, Dell,
Adidas, pepsi and Indian brands such as Nyka, Myntra, lakme are a great example
of fanciful mark.
Fanciful trademarks are highly protected from any sort of infringement as they
have not acquired or inherited distinctiveness overtime but are unique from the
very beginning, unlike arbitrary marks which have acquired distinctiveness over
a period of time.
- Suggestive Marks
Suggestive marks are those marks which basically give an overall idea about what
product or services company or businesses offer, its not truly descriptive as it
slightly indicates the true nature of a product or service , a company may keep
a suggestive mark so that it can create an awareness among the consumer's in
general and keep out from all the competitors with same business model.
Consumers sometimes are unaware of the brands a particular business possess but
with the help of suggestive mark people can imagine or visualise the product.
registration of suggestive mark is a bit difficult as it is slightly descriptive
in nature and the law prohibits descriptive marks to be registered. Suggestive
marks are a mix of both descriptiveness as well as distinctiveness as a result
this marks are permitted to be registered.
While suggestive marks are most commonly used mark in the world it comes with
some drawbacks, differentiating a suggestive mark and a descriptive mark could
be quite challenging, theoretical a suggestive mark is distinguishable but it is
quite debatable practically as while registering a mark the evaluator may get
confused with the two.
If a restaurant or food service company names its products Appetite or
Foodilicious, it is obvious that the former name is more suggestive and
emphasises the idea of being appetising while the latter is more descriptive and
includes terms like food and delicious. Some examples of suggestive trademarks
are Netflix, Microsoft, Tesla, Jaguar, Facebook, PayPal, Funfoods, and Burger
Classification Of Descriptiveness
- Descriptive Mark
Descriptive marks are those marks which identifies some of the features of the
product or services a company provides, it can be in relation to the physical
attributes such as shape , size, and colour of the product as well as qualities
which cannot be seen but could be understood. For eg.a company named Chilled
drinks sells cold coffee or juices, the company is being descriptive by using
common words like chilled and drinks. Descriptive marks use common marks as
arbitrary marks but the only difference in arbitrary marks is that it uses
common names for a different line of product and on the other hand descriptive
marks completely associates it with the product it sells.
Generally descriptive marks are not registered but if they do get registered
somehow by acquiring secondary meaning they are still claimed to be weak as they
seem very arduous to defend in a lawsuit if they get infringed. If we look at
the legal aspect of these marks they are hard to protect but are quite easy to
market, there is always a tussle between marketing and legal department as the
company may go out of the way to promote its product but they fail to understand
the legal consequences , companies successfully build big businesses using
descriptive marks but then end up losing legal battles in the court.
- Generic Mark
Generic Marks are made up of terms which an individual uses in his day to day
course, these are frequently used terms or names in general. A generic mark has
no chance in the world of ever being registered and cannot be given monopoly.
Generic marks are not allowed to be registered because the terms they contain
are so widely used that it is impossible to register them. Since these terms are
freely used by everyone, a company cannot prevent others from using them if its
mark is generic.
Names of animals, birds, plants ,non living things verbs and
nouns cannot be registered if they are used solely like,Sun,Moon,food etc. Lord
Herscells committee report has laid down that "Words of description are the
property of all mankind and it would not be right for any individual to
monopolise them and exclude others from their use"
A generic mark can only become registerable if two generic terms are combined
together forming a new and unique term for eg. If a business intends to use
combination of words like Coffee and treats for its brand logo and wants to
register the logo as trademark it can successfully do so as the combination of
generic words like Coffee and treats makes it a new phrase altogether, but even
if the words are registered it is impossible to protect it from getting
infringed or exploited .
Brands like cafe coffee day, Band-Aid, American Tourister, and Burger king are
examples of combined generic marks.
Indian courts have ruled out that distinctiveness of a trademark is an exception
to descriptiveness of the trademark, it is established by the courts that even
if the use of descriptive mark is prohibited the registration of it cannot be
refused if it has acquired a distinctive character before the date of
application of the trademark, which results in it being a very well known
trademark, this in itself a loophole as the law indirectly permits the
registration of descriptive trademark by giving an individual the chance to
acquire distinctiveness or give a secondary meaning to its mark before the date
This simply means that the business should earn reputation and
goodwill if their marks are based on commonly used terms or generic names.
Brands such as Apple, Aquafina, Super glu, Zoom have kept generic names but have
managed to get their marks registered as they have established brand name in the
Trademark Act 1999 restricts registration of descriptive marks under s.9(1)(a) ,
it states that " if a mark is not capable of distinguishing the goods and/or
services of one person from another, then it is considered non-distinctive and
descriptive in nature, and cannot be registered".
There are some exception to this provisions those are as follows:
- Common words and names from languages can be registered if the mark
succeeds in acquiring a distinctive Character or a secondary meaning.
- Time period is not a bar to acquire a distinctive character or a
secondary meaning for the sake of registration.
- If a product is marketed by forming combination of two generic names and
forming something new it can be registered.
- If a product marketed in a particular geographical area has gained
popularity for its generic name, the name which has made the product so
popular may be protected.
In cases where a court needs evidence of proof of the marks distinctive
character section 32 of Trademarks Act 1999 allows for the submission of proof
of trademark usage in court cases involving trademark registration or
Acquired Distinctiveness Or Secondary Meaning As Ground For Defence:
A descriptive trademark is protected if it has gained distinctiveness or
secondary meaning. Secondary meaning can only be said to have been acquired if
it has developed through the constant use of the product by consumers, which
would indicate that the product has positioned itself at the top of the market
and has attracted regular users and devoted customers, for example.
someone uses toothpaste, regardless of brand, they may refer to it as Colgate.
Colgate is a toothpaste brand that has become extremely famous in India, the
same is true with Fevicol and Maggi,every instant noodles in the market are
called or refer to as Maggi in India even its from a different brand, these
brands have acquired distinctiveness as they relate to every actual product of
any other brand in the market.
Gaining secondary meaning in the case of descriptive marks and generic mark is
of utmost importance as its the only ground of defence a company is left with if
the marks are opposed or infringed.
Essential elements that help in development of secondary meaning are as
- Time and duration
A descriptive mark has uniqueness if it has endured and earned market awareness
for an extended length of time; the mark must be continuously used and must
leave an impression on customers' thoughts. When items are in the same category
and the person is required to provide proof to support their position, having a
prior registration of the mark offers them an extra edge.
In the case of Heinz Italia & Anr v. Dabur India Ltd.2007, the issue revolved on
the use of the term Glucon-D for a glucose drink by the defendent , the court
held that Glucon-D has been used by the people for a decade and somehow the term
Glucon-D has gained distinctiveness through that extensive use of glucose drink
by the consumers,so the overall use of the teem g Glucon-D by the defendant was
infringing on the plaintiffs right on the trademark.
- Aggressive marketing by use of promotional tool's and advertising
Time and duration of trademark use are not the only factors that contribute to
the development of secondary meaning; if a mark has been actively promoted by
the company and has become well-known quickly or even overnight, it has
effectively acquired a secondary meaning.
In the case of Mrs.Ishi khosla vs. Anil Agarwal Anr, 2007 the Delhi High court
quoted that "It is not required for a product to stay in the market for several
years to acquire secondary meaning," The related products do not necessarily
need to have been available on the market for a predetermined period of time for
a trademark to become distinctive. As a result, it varies from situation to
situation. A trademark may gain recognition quickly, sometimes even instantly.
Consequently, there is no predetermined time frame within which a trademark must
have developed uniqueness.
Cases in which companies have failed to demonstrate that they have acquired
distinctiveness or secondary meaning:
- Soothe Healthcare Pvt v. Dabur India
A division bench of the Delhi High Court determined that there was no prima
facie evidence against the respondent (Dabur) in the case of Soothe Healthcare
Pvt v. Dabur India because the alleged mark in question was "common and
- M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of
In the case of M/s Hindustan Development Corporation Ltd. v. The Deputy
Registrar of TradeMarks, The Court has ruled that because the mark "RASOI"
discloses the nature of the product, it cannot be registered as a trademark for
edible oils. Given that the phrase RASOI means kitchen in Hindi and is
frequently used in local and regional language, it does not take on a
- Rupee gain Tele Times Pvt Ltd vs. Rupee Times,1995
In this case it was held by the Delhi high court that the word rupee is synonyms
to meaning Indian curency , every financial journal , newspapers, have been
using the term rupee in their write ups , merely because one company has used
the word rupee in their journals and publication it doesn't mean that somebody
else does not have the right to use the word rupee, Rupee is descriptive word
and cannot be monopolised.
Even though descriptive marks are not protected in India, they can be via
acquired distinctiveness and secondary meaning. However, the courts have not yet
established clear criteria for determining whether a mark has acquired secondary
meaning. Indian courts depend on precedents and the presentation of evidence
under Section 32 of the Trademarks Act of 1999.
Unlike the United States, whose
legal system is designed to determine whether a specific mark fits inside the
purview of secondary meaning or not. In order to provide companies a clear
understanding of whether their trademarks belong under the category of secondary
meaning or are merely a generic phrase that anyone can use, Indian courts must
also organise its legislation on secondary meaning. This can aid in decreasing
unwanted cases of infringement.