Distinctive over Descriptiveness : Under the regime of Indian Trade Marks Act, 1999

Descriptive marks are prohibited for registration under the Trade Marks Act, 1999. However, a descriptive mark that has acquired distinctive/subordinate meaning through use or is a known mark before the application for registration is an exception to this “absolute prohibition.” In many cases, Indian courts have consistently argued that such marks can only be registered if they are of distinct or secondary significance.

In the case of J.L. Mehta v. Registrar of Trademarks[1], the Court observed that  the  word  “Sulekha”  had  no  bearing  on,  nor  was  it  directly  or indirectly descriptive  of,  the  merits,  quality  or  nature  of  the  pens,  pencils  and  other  goods manufactured  by  the  petitioners  and  that  all  that  it  meant,  if  at  all,  was  that  it  was the name of a female person. The opinion behind this judgment of this court was Common words of a language/descriptive words can be trademarked, when they are used in relation to a different class of goods[2]. In a another case[3], the Delhi High Court ruled two descriptive dictionary terms, “SUPER” and “FLAME,” to be invented words, and granted immunity as a result. The terms “SUPER” and “FLAME” are individually descriptive, according to the court, and cannot be monopolised by any user. However, due to previous, persistent, and extensive use, the combination of words has gained distinctiveness and is thus covered.[4]

Also, in another case[5], the court had to decide if the name and design of “AAJ TAK” and its logo are common terms and, as such, are not the monopoly of any one person, whether in relation to the news programme or otherwise. Even if the words “AAJ TAK” are descriptive in nature and have a dictionary sense, the court stated that they are still a coined word of the plaintiff that has acquired a secondary meaning through previous, continuous, and comprehensive usage, and therefore the combination of the two words “AAJ TAK” cannot be used by any other person.[6] Supreme Court reiterates the view of above mentioned court in case Laxmikant V. Patel v. Chetanbhat Shah and Anr[7], where trademark “MUKTA JEEWAN COLOUR LAB” by virtue of it being a continuous user was held a valid trademark. The other party was injuncted from using a similar mark by coining that together the combination of words has acquired distinctiveness by virtue of prior, continuous and extensive use and is therefore, protected[8].

IPAB in this context also have same view and in the case of M/S P.K. Overseas Pvt. Ltd.v. M/S KRBL Ltd[9]. the Appellate Board remarked that “BEMISAL”, by virtue of it being used continuously and having massive sales figures, had acquired distinctiveness and hence, was a valid trademark and also opined that the “Sales Figures” can be used as a determiner for establishing the goodwill / reputation of the trademark, and in turn establishing whether the trademark has acquired distinctiveness or not. Similarly in another case Metropolitan Trading Company v. Shri Mohanlal Agarwal[10], IPAB held that, Appellant’s trademark “ZODIAC” had acquired distinctiveness as it was in use for more than three decades and therefore, it qualifies for registration.[11] In the case of Ishi Khosla v. Anil Aggarwal[12] and ITC Ltd. v. Britannia Industries.[13], Delhi High court coined that to acquire secondary meaning it is not necessary that product is in the market for number of years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight”[14].

 In the very recent Case ‘Sunil Mittal & Anr v. Darzi On Call, CS (COMM)[15], the court provided a new outlook to the trademark registration of descriptive marks in India. The decision of the Hon‘ble High Court has rendered a significant standard in establishing principle that if a particular trade name though a common name has not been in existence then it should not be denied registration. Further it was also held that the first user of such name shall be allowed registration.[16] The Hon‘ble High Court also established that If a particular trade name though a common name has not been in existence then it should not be denied registration[17].

As a result, trademark law in India is on par with trademark law in every other country in terms of banning the use of descriptive phrases. Adopting a common language term and using it as a trademark is an unfair practise because it creates confusion in the minds of the general public. However, in some cases, the forbidden descriptive mark acquires a secondary meaning/distinctiveness, and consumers become acquainted with the trademark as it relates to the applicant’s business and that’s when the principle of “acquired distinctiveness” triggers in.

The Proviso to Section 9 (1) (b) of the Trade Marks Act, 1999, codified this theory, which has since been generally recognised by the courts. When applying this theory, the courts have looked very carefully. Evidence supporting the trademark’s distinctiveness/goodwill has also been given a lot of weight. Although examining the concept of “acquired distinctiveness,” the Courts have also stated that time should not be a factor in determining whether a mark is reputed or not, and that an idea “may become distinctive overnight.” As a result, the Indian position is that a descriptive mark cannot be registered until it has gained distinctiveness or a secondary significance. In the cases cited above, Indian courts have consistently held that such marks can only be registered if they have acquired distinctiveness or a secondary significance.

[1] J.L. Mehta v. Registrar of Trademarks,AIR1962Bom82.

[2] Id. Para. 11, 12.

[3] Globe Super Parts v. Blue Super Films, AIR1986Delhi245.

[4] Id. Para. 144.

[5] Living Media India Limited v. Jitender V. Jain and Anr., 98(2002)DLT43.

[6] Id. Para 28.

[7] Laxmikant v. Patel v. Chetanbhat Shah and Anr. AIR2002SC2.

[8] Id. Para 10.

[9] M/S P.K. Overseas Pvt. Ltd.v. M/S KRBL Ltd. ORA/161/2011/TM/DEL.

[10] Metropolitan Trading Company v. Shri Mohanlal Agarwal, MIPR2008(1)24

[11] Id, Para 27.

[12] Ishi Khosla v. Anil Aggarwal, (2007)ILR 1Delhi61.

[13] ITC Ltd. v. Britannia Industries. 2016IXAD(Delhi)8.

[14] Supra note 12, para 20, Id. Para 32.

[15] Sunil Mittal & Anr v. Darzi On Call, CS (COMM).

[16] Id. Para 23.

[17] Supra note.15 Para 24.


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