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Descriptive Trademark, Ground For Opposition: Easy To Advertise, Difficult To Protect

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:
  1. 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.
  2. 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.
  3. 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 King.

Classification Of Descriptiveness

  1. 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.
  2. 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 perspective
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 of application.

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 market.

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 infringement.

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.

Every time 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 follows:

  • 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 strategy
    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:

  1. 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 laudatory."
  2. M/s Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trademark
    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 secondary meaning.
  3. 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.

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