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An Analysis of Generic/Descriptive Trademark Acquiring Distinctiveness

A trademark is created when a new meaning is added to the existing word or when a new word is invented in order to establish the source of a product, so as to avoid consumer confusion in the market & also to identify the origin of the goods & services. Therefore, it has a two-fold purpose.

Generic Trademark

Descriptive Trademarks or generic are those trademarks or services that denotes and just portray the items or services to which they are connected. Trademarks that are simply spellbinding are not ensured or agreed on trademark rights. This is on the grounds that they don't recognize the wellspring of items or services. Trademarks that are non -distinct are additionally not ensured and aren’t allowed to be registered. E.g. Using trademark “Agni” for a fire extinguisher.

Statutory provision in this regard

Under section 9(1) (b) of the Trademark Act, 1999 that sets out the justification for total refusal of registration of trademark and incorporates the mark descriptive of goods and services implied to be sold under it can't be registered. It additionally bars registration of trademarks which have turned out to be standard in the present language or in true blue. And set up practices of exchange, in any case, the segment gives a significant exception to the trademarks that have obtained particular character because of their utilization possibly enlisted and had acquired a distinctive meaning over a period of time.

Test of Distinctiveness-

Section 32 of trademarks act talks about when the mark has been registered against section (9) (1) of trademarks act 1999 the same is entitled to protection when the same is being registered but before any legal proceeding had acquired an distinctive character in relation to goods and services it was dealing in.

Genericide

This is the recent concept in trademark law, the marks that were registered for a particular product in earlier times over a period had gained such association with the type of product that the same is being used as the name to that type of product. For e.g. - Xerox for photocopying, band-aid for adhesive bandages and many more.

Judicial Approach- Indian Scenario

Judgement Held Court of law Observation
Ishi Khosla v/s. Anil Aggarwal[1] In this case the Delhi high court observed that it is not necessary for a trademark to acquire distinctiveness over a period of time it can be acquired in one day as well. Delhi High Court The court observed that time period isn’t a consideration for considering a trademark acquiring a secondary meaning.
Godfrey Philips India Ltd. v/s. Girnar Food and Beverages Pvt. Ltd[2]. The court held that a descriptive mark may be entitled to protection if it has assumed a secondary meaning which identifies it with the particular product as being originated from the particular source only. Supreme Court of India Common word common language and descriptive words can be registered as a trademark when they have acquired distinctiveness and secondary meaning.
Info edge (India) Pvt. Ltd.v/s. Shailesh Gupta &Anr.[3] The Court held that if an item is promoted in a specific region or spot under an expressive name and has increased notoriety there under, that name which recognized it from contending items; it will be secured against distinct use. Delhi high Court The court held that if the product is marketed in a particular area under a descriptive name and had gained reputation. The name which distinguished it from competing product will be protected against descriptive use.
Pidilite industries ltd. and anr. v/s. Vilas Nemichand Jain and Anr[4] The court held that if both the parties are using the same mark and working on the same type of product then the distinct use and prior use can be shown to succeed in the action of passing off. But when the mark is descriptive it must be shown that the mark was having an extensive and prior use. Bombay High Court The test of acquiring distinctiveness is to be proved on the basis that the same leads to the prejudice and irreparable loss to the plaintiff and will result in irreparable damage. While the sales record and the advertising cost itself provides the information about the use of mark and this information can be obtained via sale and other records only.
T.V. Venogopal v/s. Ushodaya Enterprises Ltd. & Anr[5] The court restrained the respondents from selling the product because the same had acquired a secondary meaning with regard to plaintiff product. Supreme Court The court in this case studied a lot of judgement and provided a lengthy judgement where in my opinion also, it is concluded no one has the right to encroach upon the goodwill and reputation of another person and get the benefit out of it.
Cadilla Healthcare Ltd.v/s.Gujarat Co-operative Milk Marketing Federation Ltd. and Ors[6]. The Court granted the observation of single judge and held that if the font size of mark is Delhi High Court While giving the reason the court it was held that the mark or indication which serves to designate the quality of goods and services dealt in it would be an absolute ground of refusal unless same had acquired distinctive character and a secondary meaning.
Jain Riceland Pvt. Ltd. v/s. Sagar Overseas[7] The Delhi high court in the present case had discussed the principle laid down in Cadilla judgement supra the court held that the generic term is only entitled to protection on the ground that it had acquired a distinctive character in the minds of customers and had acquired a well known  same will be depending upon case to case. And the generic mark is not entitled to protection Delhi High Court The court pointed out the lacunas in the plaintiffs case and pointed that plaintiff had failed to prove the case on the ground that the mark had acquired distinctiveness. The court had also mentioned that the generic word cannot acquire distinctiveness.

Conclusion
For the above mentioned points and decisions pronounced by various courts with respect to generic trademark, it is hereby being concluded that in order to avail the protection against any infringement, or passing off the generic mark should acquire distinctive meaning, though establishing whether the mark had acquired distinctiveness and Secondary meaning is very difficult.


End-Notes:

  1. Manu/DE/7192/2007
  2. Manu/SC/0541/2004
  3. Manu/DE/0735/2002
  4. Manu/MH/2394/2015
  5. Manu/SC/0169/2011
  6. Manu/DE/2282/2009
  7. Manu/DE/3430/2017

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