In this era of fiercely rising competition, companies endeavor to outshine by
imploring and hinging upon various strategies, the most prominent of which is
trade mark adoption. Adoption of a trade mark serves as a tool to gain an edge
over competitors. Companies have been seen to be dependent upon brands to
achieve unmatched success.
Marketing departments of companies often tend to give
approbation to marks that can be easily associated with the underlying product
or service by the general public. This, however, is not the most ideal situation
since the principles of law governing trade marks are exactly perverse.
Section 9 of the Trade Marks Act, 1999 envisages absolute grounds for refusal of
registration to marks which are devoid of distinctiveness; which are descriptive
as to denote the quality, characteristics, nature, etc. of the underlying
product or service; and which are comprised of elements which have become
customary in the current language or in the bona fide and established practices
of trade, unless the applicant is able to prove that such a mark has acquired
distinctiveness as a result of its use or has become well-known.
Companies usually encounter challenges in this aspect broadly on two occasions:
Firstly, at the initial stage, when companies are at the brainstorming stage of
developing the brand or brand image. They tend to adopt terms that can easily be
associated with the underlying product or service by the public or consumers.
Choosing a term closely associable with the respective product or service itself
or from a layman's jargon often appears to be a viable option as marketing the
same becomes effortless and such a term catches the public eye. Such adoption
paves hurdles for companies at the scrutiny stage of trade mark registration.
Secondly, at a later stage, owing to the immense popularity of a trade mark, it
becomes readily identifiable with a particular type or class of goods or
services meaning thereby that the trade mark in question starts drawing
inference to the type or class of goods or services it represents and becomes
generic in nature.
Courts in India, have, in the past been seen to be reluctant to accord exclusive
statutory protection to marks that are found to be foul of the absolute grounds
for refusal in Section of the Trade Marks Act, 1999. In fact, in June 2020, the
Madras High Court exhibited its reluctance to accord exclusive statutory
protection to the phrase 'Magical Masala' by holding that both the terms whether
used together or independently are laudatory and commonly used in trade,
primarily in the culinary and packaging food industry and therefore, cannot be
monopolized by one entity.
The Delhi Court, in a battle of rival trade marks- Delhivery and Deliver-E
has observed that both the marks are tweaked forms of the dictionary word
'delivery' where the former incorporates the letter 'H' and the latter has a
substitution of the letter 'Y' with '-E' and both in essence connote delivery
services. Further, it has been held that the mark "Delhivery is a phonetically
generic word, cannot be registered as as to seek benefit of statutory rights."
The Court cited the decision in Praveen Kumar Jain v. Rajan Seth & Ors., wherein
it was held that, "if the registrations are wrongly granted when applied for in
respect of a completely generic expression, the Court cannot ignore the generic
nature of marks and confer monopoly on the same in favour of any party." 
Takeaways for companies:
- It is advisable for companies to adopt marks that are distinctive,
meaning thereby, the marks may comprise coined terms, stylized elements,
unique features, varied color combinations, thoughtful placement of elements
in the layout, motion marks, and the like. In case the adoption of
descriptive or generic terms is of utmost necessity for a company's business
reasons, one effective strategy could be to use such a mark along with the
company's flagship or house brand.
- Since the onus of strategizing for an attractive brand image is usually
vested with marketing teams of companies who tend to adopt generic terms or
even descriptive or laudatory terms as trade marks, it is quintessential
that the marketing and legal departments of companies work in consonance and
the latter makes the former abreast of potential pitfalls in such adoption.
- Advertisements promoting the brand should aim not only at popularising it but also at creating a distinguished association of the
respective brand to its product or service. For example, The US real estate
company called Compass has the tagline, Let us guide you home.. Another
example is MasterCard, which uses the tagline, There are some things money
can't buy. For everything else, there's MasterCard. This would help in
preventing the trade mark from becoming generic in nature.
- The foremost goal of any company while creating its brand is to bolster
its trade mark to an extent where the general public starts associating that
product or service with its trade mark alone. However, the same needs to be
done very carefully so that the public does not start perceiving the trade
mark as the product or service itself. Thus, to prevent such a scenario, a
company may embark upon educating the public with various means of rebranding
strategies, awareness campaigns, etc.
- ITC Ltd. v. Nestle India Limited (Judgement dated June 10, 2020, in CS
No. 231 of 2013)
- Delhivery Private Limited v. Treasure Vaze Ventures Private Limited
(Judgment dated October 12, 2020, pertaining to I.A. 5109/2020 and 6572/2020
in CS(COMM) 271/2020)
- Praveen Kumar Jain v. Rajan Seth and Ors. 2019 SCC Online 8499