Descriptive Trademarks: We Got Quoted!

It came as a pleasant surprise to all of us at Inohelp when we got to know that we have been quoted in The Economic Times (ET). Pleasant because ET is India’s largest financial daily, and the world’s second largest in terms of circulation after, The Wall Street Journal. Surprise because we got quoted long back in April, and did n’t come to know till our Mumbai partner, Abhishek, told us about it. The issue of the article related to a recent litigation filed by an Ahmedabad based company, Tirupati Foams, against a Bangalore based company, Peps Industries, for the alleged violation of its trademark “Sweet Dreams”. Peps Industries was using the mark “Greens Dreams” for its Sleep solution products.

Descriptive trademarks have been an area of great debate in the trademark jurisprudence of India. Example of descriptive trademarks include trade names whose dictionary meaning which is used in connection with products or services is directly related to that meaning. In this case, the term “Sweet Dreams” may be considered as a descriptive word for sleep solution products. Time and again various cases have appeared before the various High courts and the Supreme Court where validity of such trademarks, and accordingly, infringement thereof has been challenged. The mandate is to not to give a monopoly on such words to anyone.

Position of Law

1.     Registration of Descriptive Trademarks

The position of law regarding the registration of descriptive marks is unequivocal. Descriptive marks should not be afforded registration under section 9 of the Trademark Act in normal circumstances. However, courts have interpreted that descriptive marks can be afforded a registration only in exceptional circumstances. If a mark has acquired distinctiveness as a result of prolonged use, the mark may be considered for registration by the trademark authorities. Therefore, marks, such as International Business Machine (IBM) for computers, Sharp for television, and Glucon-D for revitalizing beverage, among others, are or may be registered under these exceptional circumstances.

In a recent decision of the Division Bench of Delhi HC in Marico’s case [1], the honorable Delhi HC has held that: “when the descriptive trademark is used only by one person undisturbed for a very long period of time, without anyone else attempting to use the trademark during this long period time, a case can be established of a descriptive word having achieved distinctiveness and a secondary meaning.” This strengthens the aforementioned proposition that descriptive trademarks are not allowed registration until there is a strong case of distinctiveness as a result of prolonged use.

2.     Infringement of Descriptive Trademarks

Remedies provided against infringement of trademarks are essentially deduced from the Trademark Act, in case the trademark has been registered under the act. However, it should be noted that an infringement of an unregistered trademark can still be remedied according to common law rights of a trademark owner to act against any person for passing off goods.

The position of law regarding infringement of descriptive trademarks is also well settled. In general, the courts have always discouraged monopolizing of descriptive marks or descriptive marks in case the mark has not attained a secondary meaning. Accordingly, the courts usually decide against the trademark owner in such cases. In fact, based on the decision of the Marico’s case, the courts can even suo motto go into validity of trade mark where the defendant has not challenged the validity of Plaintiff’s mark.

Other cases where the position of law regarding infringement of descriptive trademarks has been discussed are listed below. It should be noted that the decision of the courts in all these cases have been against the owner of the descriptive trademark.

This is a key learning for any entrepreneur who is taking the step of naming his/her business. The key is to coin a business name whenever possible. Keeping a name, which is descriptive for the product or services, can prove to be detrimental to registration of the name as a trademark. This means loosing out in future in litigation battles, such as the ones described above.
EXAMPLES OF SOME BUSINESS NAMES YOU SHOULD NOT ADOPT FOR YOUR CORRESPONDING GOODS/SERVICES
1. ‘Chinese Kitchen’ for a restaurant selling Chinese cuisine
2. ‘Lactose’ as a brand name for selling Diary products
3. ‘Vitamins’ for orally taken supplement capsules
4. ‘Rasoi’ for groundnut oil
5. “Booze” for a pub serving beverages
6. “COMPUTERLAND” for a computer store
7. “PC NEWS” for a magazine covering IT news
8. “Class” for a fashion label
9. “Acoustics” for a Music store
PS: The name and characteristic of our firm has been incorrect mentioned in the article. We are a private limited company and not a Law firm.

[1] MARICO LIMITED V. AGRO TECH FOODS LIMITED, (OS) No. 352/2010

Kshitij Malhotra

Inohelp IP

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