The recent decisions of the Intellectual Property Appellate Board (“IPAB”) have, to a certain extent, clarified the status of descriptive/laudatory trademarks in the Indian context. A mark being descriptive of the goods/services is no longer an absolute bar for registration/protection of such trademarks. The general rule is that descriptive trademarks are not registrable, however, this is subject to certain exceptions that are discussed in this article.

Registration, a prima facie proof of validity - Still a binding principle?

The registration of a mark is considered to be the prima facie proof of its validity. It must however be remembered that the assumption of validity is rebuttable. If registration of a trade mark has not been validly obtained, the registrant of such mark will not be entitled to its exclusive use.

Losorb case

In the case of Marico Limited vs. Agro Tech Foods Limited, decided by a division bench of the Hon’ble Delhi High Court, Marico, the owner of the registered trade mark ‘LOSORB’ and ‘LO-SORB’ in respect of edible oils sought to restrain Agro Tech from using the words/expression ‘LOW ABOSORB TECHNOLOGY’ in relation to Agro Tech’s edible oil product. The Hon’ble Division Bench, while dismissing the suit opined that the mark LOSORB and LO-SORB are descriptive in nature and that Marico cannot claim exclusive right over it.

Exceptions to registration of descriptive marks

If a descriptive word has been used as a trademark for so long that it has acquired distinctiveness, such a mark may still be granted registration.

So how does a mark acquire distinctiveness?

If through years of use, a trademark is so conceived in the eyes of the consuming public to indicate goods/services originating from a particular manufacturer/ service provider, the mark can be said to have acquired distinctiveness in spite of said mark being descriptive.

Champion Case -

While deciding an application for the removal of the laudatory trademark Champion, the IPAB, recently, inter alia, held that the fact that the mark had remained in the Register for the past 40 was a significant ground to allow it to continue to enjoy registration.

Distinctiveness for a particular type of good

In certain cases distinctiveness may only be acquired for one type of good and not others.

Cadila Healthcare vs. Gujarat Co-Operative Milk Marketing Federation Ltd

In the case of Cadila Healthcare vs. Gujarat Co-Operative Milk Marketing Federation Ltd., Cadila were selling and marketing their product (an artificial sweetener) under the trademark ‘SUGARFREE’. Gujarat Co-op Society started marketing their ice cream under the trademark Sugar Free D'lite. The Plaintiffs filed a suit for infringement at the Delhi High Court before a Single Judge who refused to grant interim injunction. The division bench of the Delhi High Court, before whom the appeal lay, inter alia, observed that the mark ‘Sugar Free’ may be distinctive of an artificial sweetener but cannot be distinctive of other goods. The Hon’ble Division Bench held that the mark SUGARFREE is descriptive in nature and the Plaintiff cannot claim exclusive right over it.

Registrability of Laudatory Marks

Laudatory marks are those which praise/commend the goods/services and as a general rule are incapable of registration. The exception to this general rule is when the laudatory trademark acquires distinctiveness.

BEMISAL Case

In the case of P. K. Overseas Pvt. Ltd vs. M/s KRBL Ltd. & Another, the IPAB dealt with an application seeking removal of the trade mark BEMISAL (meaning matchless in Hindi/ Urdu) in respect of rice. The IPAB held, “On a perusal of the invoices filed by the respondent, it is clear that it has massive sales under the impugned mark BEMISAL since 1999 – aggregating domestic sales figure of over Rs. 69 crores…These clearly establish that the impugned mark has acquired secondary significance…The old theory that some trademarks are incapable of distinguishing the goods/services and can never serve as a badge of origin has been now relaxed under the current Act. It is the market place that determines what is a good trademark subject only to the limitation that the name of goods or services can never be regarded as a trademark – example apple for apple (goods) or hotel for hotel (services). The threshold test under Section 9 is very minimal indeed.”

When Should Evidence of Distinctiveness be filed

Trademark practice in India provides an opportunity for a party to file evidence of a trademark attaining distinctiveness/secondary meaning. Evidence of distinctiveness can be filed at the time of responding to an examination report. It may also be filed before such trademark is registered.

Bonafide use-

A registered Descriptive Mark will not be allowed protection if it is used by a person in a bonafide manner. Thus, even if there exists a registered trade mark owned by some person, such trade mark owner will not be entitled to stop any other person from using a trade mark, in a bonafide manner, if such trade mark is such other person’s name, place of business or predominantly describes the character or quality. Let us take an example - One company owns the mark ‘Sea Facing.’ Such owner cannot restrain another person from using the words ‘Sea Facing’ to describe a flat/ building.

Conclusion

Here are a few tips –

  • If you need to adopt a mark, make up a word. A coined or invented word makes the most distinctive of trade marks - prime example ‘Google’ or ‘Kodak’.
  • Even though a descriptive trade mark may have acquired distinctiveness, it may be considered distinctive for one kind of product alone and may not be distinctive in relation to other products. Thus, the exclusive rights obtained in relation to a descriptive trade mark are limited, as opposed to a non descriptive trade mark.
  • If you absolutely need to register a mark which is descriptive, file evidence of its use and distinctiveness at the earliest possible opportunity.
  • If your trade mark is laudatory, apply for registration after it has been sustainably used and there has been a significant volume of sales and advertisement.

Therefore, roses for roses will not be registrable, but in time and with considerable evidence, a proprietor may be able to protect ‘Sweet Smelling’ as a brand for selling roses.