One category of trademarks, known as "descriptive trademarks," often faces
challenges in registration due to their inherent nature. However, the concept of
secondary meaning has emerged as a crucial factor in determining the registrability of descriptive marks. This article delves into a recent legal
case, highlighting the significance of secondary significance in the context of
descriptive trademark registration.
In the case of the Appellant, a US Corporation, the trademark 'DATAPAQ' was
sought to be registered in connection with various products, including computer
software for temperature profiling systems in the fields of heavy clay and
ceramics. The application was rejected by the Registrar of Trademarks, citing
Section 9(1)(b) of the Trade Marks Act, 1999, which bars registration of
descriptive marks. The impugned order was cryptic, merely stating that the
trademark is descriptive, and thus refused.
The Appellant's primary grievance was centered around the lack of reasoning in
the impugned order. They contended that the order did not consider whether their
mark 'DATAPAQ' had acquired secondary meaning, a vital aspect that could render
a descriptive mark registrable.
The Hon'ble Court recognized a well-established legal principle that descriptive
marks can indeed be registered if they acquire secondary meaning. The Court
identified the central issue with the impugned order: the absence of
consideration regarding the acquisition of secondary meaning. The order's
reasoning was deemed unsustainable due to its failure to delve into this crucial
The Significance of Secondary Meaning:
Secondary meaning, also known as acquired distinctiveness, refers to a situation
where a descriptive mark, through extensive and continuous use, becomes
associated with a specific source in the minds of consumers. In such cases, the
mark transcends its descriptive nature and attains a distinctiveness that
Appellant's Evidence of Secondary Meaning:
To bolster their case, the Appellant presented compelling evidence. They
demonstrated that 'DATAPAQ' had been in use since 1985 across various countries
and had also been registered in numerous jurisdictions, including the USA.
Additionally, the Appellant's portfolio featured a series of marks, all ending
with 'PAQ,' such as 'COILPAQ,' 'WICKETPAQ,' and others. This consistent series
of marks underpinned the distinctiveness and recognition of the term 'PAQ' in
association with the Appellant.
In light of the evidence presented and the legal precedent emphasizing secondary
meaning, the Court determined that the mark 'DATAPAQ' was deserving of
registration, subject to certain conditions. The Court's order aimed to strike a
balance between the descriptive nature of the mark and its acquired
distinctiveness. Consequently, the registration was confined to the word mark 'DATAPAQ'
as a whole.
The Concluding Note:
The case underscores the importance of secondary meaning in transforming
descriptive marks into registrable ones. The Court's decision aligns with the
broader objective of trademark law - to protect marks that have transcended
their descriptive origins and have become identifiers of specific sources in the
Case Law Discussed:
Case Title: Fluke Corporation Vs Registrar Of Trademarks
Date of Judgement:03.07.2023
Case No. CA Comm IPD TM 47 of 2023
Neutral Citation No: 2023: DHC: 5900
Name of Hon'ble Judge: Prathiba M Singh, H.J.
Name of Court: Delhi High Court
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539