This article delves into one of the important trajectories of trademark law, focusing on Section 9[1] of the Trademark Act, 1999, which outlines grounds for the refusal of trademarks. Particularly, it scrutinizes the rejection criteria for descriptive marks. However, a crucial exception within the same section permits registration if a mark has acquired distinctiveness through secondary meaning. The heart of this exploration lies in the diverse judicial interpretations of distinctiveness. Various courts have shaped distinct principles and rules while determining the eligibility of trademarks under this exception. The research navigates through these judgments, unraveling the nuances and significance of the exception, and sheds light on the broader implications and considerations surrounding it. By meticulously examining these legal interpretations, this article aims to contribute to a deeper understanding of how Section 9 shapes the trajectory of trademark registration, offering insights into the multifaceted dimensions of distinctiveness within trademark law.
KEYWORDS:
Intellectual property, Trademark, Descriptive marks, Registration, Section 9, Trademark Act, Grounds for Refusal, Acquiring distinctiveness, Interpretation, Case Laws, Secondary Meaning, High Court, Legal Principles.
INTRODUCTION:
In the dynamic business world, businesses often opt for straightforward names that quickly convey their products or services. However, while enhancing immediate customer understanding, this strategy can collide with trademark laws, notably Section 9 of the Trademark Act. This section lays out grounds for refusing names lacking distinctive character, but intriguingly, it provides an exception for names that gain uniqueness over time. Amidst the rising consciousness about intellectual property rights (IPR), businesses are increasingly concerned about the compliance of their longstanding marks with evolving distinctiveness criteria. Section 9 appears to have been crafted with foresight, acknowledging the anxiety of businesses built on traditional, descriptive marks. As awareness about IPR deepens, businesses find themselves delicately balancing the need for distinctiveness with the preservation of established brand identities. This article explores the intersection of business practices and trademark laws, shedding light on how courts interpret provisions to safeguard enterprises relying on simple, descriptive names. This article aims to bridge the gap, showcasing how the law can rescue businesses reliant on simple, descriptive names.
UNDERSTANDING DESCRIPTIVE MARKS IN THE INDIAN TRADEMARK ACT:
Section 9 of the Trademarks Act serves as the gatekeeper, outlining the absolute grounds for rejecting trademark applications. Notably, Clause b of the subsection in clear terms states that trademarks exclusively comprised of elements describing the kind, quality, quantity, intended purpose, values, geographical origin, or time of production of goods or services are ineligible for registration. Oddly absent from the wording are terms like “descriptive,” “suggestive,” or “generic.” Yet, the law insists on uniqueness, discouraging marks that conjure a clear mental image of the product. Furthermore, Section 9 encourages businesses to go for unique trademarks instead of just using product-related elements. This move toward distinctiveness has a two-fold impact. Firstly, it helps businesses stand out in the market, creating a unique identity. Secondly, it tackles the risk of monopolies that registered marks can bring. When a mark is registered, it shields the owner from others sneakily creating similar marks. To illustrate, imagine someone registers the mark “The Shirt Company” for their shirt-selling business. This not only gives them an unfair advantage over other shirt sellers but also creates a monopoly by claiming exclusivity over each element of the mark, including the word “shirt.” This kind of protection not only sparks creativity but also shields businesses from copycats that could water down their brand impact. Readers may be puzzled: if the Trademarks Act expressly prohibits descriptive marks, how do names like “Burger King,” “Wow! Momo,” or “Cruze Oil” not only survive but thrive in the market? The answer lies in court orders that recognize the coexistence of descriptive marks, offering relief in the form of undertakings. This entails a commitment not to claim exclusivity over individual elements used in the marks or when a mark has been extensively used, gaining a secondary meaning. This secondary meaning allows people to identify it among a sea of other marks easily. As the legal landscape continues to evolve, courts have set out several criteria to figure out if a mark has gained secondary meaning. We’ll explore these criteria in the upcoming discussion.
IS IT POSSIBLE TO REGISTER A MARK THAT IS DESCRIPTIVE, SUGGESTIVE, OR GENERIC?
Before delving into the possibility of registering descriptive, suggestive, or generic marks, it is crucial to understand the distinctions among them. Equally important is understanding which type benefits from the proviso in Section 9, aiding in the acquisition of secondary meaning. The Supreme Court, in T.V. Venugopal versus Ushodaya Enterprises Ltd. and Ors. [2], pointed out that the difference between suggestive and descriptive marks is quite subtle. Various experts, including McCarthy, have introduced the “imagination test” to distinguish between descriptive and suggestive marks. According to this test, if a mark straightforwardly describes a product characteristic without needing any imaginative thought, it falls into the descriptive category. In McCarthy on Trademarks, the author delineates the spectrum of mark distinctiveness into three categories: ‘inherently distinctive,’ ‘non-inherently distinctive,’ and marks with ‘no distinctness.’ Suggestive marks are classified as ‘inherently distinctive,’ whereas descriptive marks fall under the category of ‘non-inherently distinctive marks,’ requiring the establishment of secondary meaning [3]. Further, in the catena of judgments, it is commonly held that the generic mark can never be registered as a trademark. A descriptive mark can be registered if it has acquired a secondary meaning over the period and so far, as suggestive marks are concerned, they are naturally distinctive.
HOW DOES A DESCRIPTIVE MARK ACQUIRE SECONDARY MEANING OR DISTINCTIVENESS?
This proviso in Section 9 of the Trademarks Act provides a pathway for the registration of a mark that has acquired distinctive character before the date of application. The section states, “Provided that a trademark shall not be refused registration if, before the date of the application for registration, it has acquired a distinctive character as a result of the use made of it or is a well-known trademark.” While this provision allows for the registration of a mark that has attained distinctiveness through prior use, it does not explicitly specify the duration of use required for a mark to be considered sufficiently distinctive. Moreover, it lacks clarity on the specific factors to be taken into consideration to determine if a mark has indeed acquired a distinct meaning. Hereinbelow, we will try to answer these questions through important case laws:
By Loss of primary meaning:
In the case of People Interactive (India) Private Limited v. Vivek Pahwa [4], the Bombay High Court addressed a crucial question regarding the term “secondary meaning” in trademark law. The court clarified that when an expression is deemed secondary in the context of trademark law, it signifies that its original or primary meaning has been displaced. The expression no longer carries its initial meaning; instead, it has transformed into a new representation. This evolved meaning now exclusively associates in the public consciousness with the claimant’s products, goods, or services. In other words, there is a clear identification of the mark with the claimant rather than merely with the goods or services themselves. The assertion of a “secondary meaning” implies that the expression originally had a more commonplace, ordinary meaning, which has now been superseded.
By establishing Reputation in the Market:
If a product with a specific nature or composition is sold in a particular area under a descriptive name and builds a reputation there, that name becomes a key identifier, setting it apart from competing products. The right to use that name in that area is protected against deceptive use by competitors. In Erven Warnink vs. J Townend & Sons (Hull) Ltd. [5], it was emphasized that whether the name suggested a product from a particular place or if the goodwill in the name came from the product’s unique ingredients, what mattered most was the product’s reputation in the market due to its recognizable and special qualities. The case centered around a trademark for a spirit-based product named ADVOCAAT, which had gained a reputation and goodwill in the English market. The defendants tried to exploit this name by falsely claiming that their wine-based product was similar to ADVOCAAT.
By high Advertisement and sales figures:
A debate has ensued regarding whether, solely based on advertising expenditures and sales figures, it can be asserted that a mark has acquired secondary meaning. In a ruling by a single bench of the Bombay High Court in People Interactive (I) Pvt. Ltd., it was held that references to sales and promotional expenses can be utilized to establish the acquisition of reputation and goodwill, indicating the popularity of a mark. However, the mere use and presentation of sales and expenses, on their own, do not suffice, the same position was reiterated in IHHR Hospitality Pvt. Ltd v. Bestech India Pvt Ltd [6] In a recent case of Capital Food Private Limited [7] the plaintiff inter-alia prayed for the grant of an ad interim injunction restraining the defendants from utilizing in their mark “SCHEZWAN CHUTNEY” and “SZECHUAN CHUTNEY” in a whatsoever manner, the single judge bench, asserted that significant sales figures or commercial success while establishing goodwill, do not necessarily demonstrate the acquisition of secondary meaning. However, in a subsequent appeal [8] relying on the advertisement expenses, the division bench of the High Court of Delhi set aside the impugned order. Therefore, along with the long and uninterrupted use of the mark, the advertisement and sales figures play a significant role.
When descriptive terms are used in conjunction with other words:
In the Hindustan Pencils Ltd. v. Puma Stationary Ltd. [9] case, the court recognized ‘plasto’ and ‘non dust’ as descriptive terms but stressed evaluating the trademarks as complete entities. Although full protection wasn’t granted and the acquisition of secondary meaning wasn’t acknowledged, the court highlighted the importance of considering the trademarks as a whole. In Natures Essence Private Limited v. Protogreen Retail Solutions [10], the court held that combining the descriptive term “nature” with other words could make the mark distinctive. However, in Capital Food Private Limited, a single judge bench took a different view, stating that the combination of two descriptive words, even though distinct, doesn’t remove their descriptive nature; rather, together, they enhance the descriptive quality in defining the nature and quality of the product.
Coined terms:
In Living Media India Limited [11], addressing a dispute over the descriptive and generic nature of the words “Aaj Tak” and their logo, the court noted that even if the words individually are descriptive and have a dictionary meaning, their combination creates a coined word with a secondary meaning due to prior, continuous, and extensive use. Consequently, the court affirmed that the combination “AAJ TAK” cannot be used by any other user. In a similar vein, Globe Super Parts [12] echoed this perspective, asserting that while the words “SUPER” and “FLAME” may be individually descriptive, their combination has gained distinctiveness through prior, continuous, and extensive use, thus warranting protection against use by others.
Long, uninterrupted and continuous use:
When it comes to registering descriptive marks, the aspect of prior long, uninterrupted, and continuous use holds significant weight. However, there exists a lack of clarity in judicial decisions regarding the specific duration deemed sufficient to establish secondary meaning in the market. Notably, in the case of Ishi Khosla [13], the court adopted a distinctive approach, considering the influence of ideas and technology. It emphasized that in today’s modern world, where information is readily available, unique and out-of-the-box ideas can swiftly gain popularity. In another important judgment in Century Traders [14], the Delhi High Court’s division bench provided noteworthy insights by asserting that the mark’s considerable length of use is not a strict requirement. The court highlighted that a single actual use, coupled with the intent to continue such use immediately, confers trademark rights. The crucial factor lies in the article bearing the mark becoming a vendible product in the market, with the proprietor’s intent to sustain production and sales. The judgment emphasized that the goods don’t need to have acquired a reputation for quality under that mark. The test hinges on the actual use of the mark, demonstrating an intention to adopt and use it as a trademark, rather than the extent or duration of such use. The judgment underscored that mere casual, intermittent, or experimental use might be insufficient to establish the intention to adopt the mark for specific articles or goods.
LEGAL POSITION AFTER REGISTRATION OF A DESCRIPTIVE MARK:
There is no absolute bar over the registration of descriptive marks upon fulfillment of the conditions discussed above. However, despite the registration, these marks may encounter certain limitations in terms of the level of protection afforded. Unlike inherently distinctive marks, which enjoy broader protection, descriptive marks may face challenges in asserting exclusive rights, especially if other businesses use similar descriptive terms in connection with related goods or services. In a dispute over the shared mark “Sanjha Chulah,” involving the appellant, the registered proprietor of the mark, and the respondent, the division bench of the Delhi High Court [15], acknowledged that the term “Sanjha Chulha” is a descriptive term and proprietor of a device mark containing common descriptive words does not necessarily gain exclusive rights to those words. If “Sanjha Chulha” is deemed descriptive of a general Dhaba, as prima facie viewed by the Commercial Court, the appellant may not claim exclusive usage rights solely based on the registration of the device trademarks. In Carlsberg India [16] reiterating the settled position, the court held that the holder of a protectable descriptive mark has no legal claim to an exclusive right in the primary, descriptive meaning of the term; consequently, everyone is free to use the term in its primary, descriptive sense but with a caveat that it should not lead to consumer confusion as to the source of the goods.
Conclusion:
In conclusion, this research article delves into the intricacies surrounding laws related to descriptive marks, unraveling the pivotal role of the proviso under Section 9 in creating a level playing field for businesses that, oblivious of the trademark laws, adopted descriptive marks and allowed their businesses to thrive with a consistent identity. Through a scrutiny of case laws, we witnessed the intense trade battles fought over claiming descriptive marks, recognizing their direct impact on customer perception. The evolution of court interpretations and established principles over time to assess whether a mark has acquired secondary meaning was evident through these cases. The discussion illuminated various challenges surrounding descriptive marks, noting their rapid popularity but also their deficiency in legal protection compared to innovative and arbitrary marks.
This exploration emphasizes the imperative to raise awareness among businesses about trademark laws, aiming to reduce litigation concerning such marks. The need to encourage and promote innovative marks surfaces as a crucial aspect to ensure a diverse and vibrant marketplace. As businesses navigate the trademark landscape, understanding the nuances becomes pivotal in fostering fair competition, protecting intellectual property, and fostering an environment where both descriptive and distinctive marks can coexist harmoniously.
REFERENCES:
[1] The Trade Marks Act, 1999, Section 9, https://www.indiacode.nic.in/bitstream/123456789/1993/1/A1999-47.pdf
[2] (2011) 4 SCC 85
[3] MANU/DE/0446/2023
[4] MANU / MH / 1661 / 2016
[5] Erven Warnink vs. J Townend & Sons (Hull) Ltd. (1979) 2 All ER
[6] 2012 SCC OnLine Del 2713
[7] 2023 LiveLaw (Del) 37
[8] Capital Foods Private Limited v. Radiant Indus Chem Pvt. Ltd., FAO(OS) (COMM) 16/2023 & CAV 62/2023 & CM APPLs.3778-3781/2023, 25 Jan. 2023
[9] MANU/DE/0474/2021
[10] MANU/DE/2810/2005
[11] [98 (2002) Delhi Law Times 430]
[12] AIR 1986 Delhi 245
[13] MANU/DE/7192/2007
[14] AIR 1978 Delhi 250
[16] MANU/DE/6904/20