Introduction
A trade mark creates a new identity for the product which distinguishes it from its other competitors and tries to create a bond between the seller and consumer. It is this mark which the consumers will recognise and relate to in the future. For the purposes of registration of trade marks under the Act, the Registrar has to classify goods and services. The classification has to be, as far as possible, in accordance with the international classification of goods and services and any question as to the class in which any particular goods or services should fall has to be decided by the Registrar.
It is therefore really important to choose an apt trade mark which is distinctive, fancy and easily marked in the minds of the customers. However, all marks cannot be registered as a trade mark under the Trade Marks Act, 19991. The Trade Marks Act, 1999 lays down provisions which state the grounds of refusal of trade marks.
Absolute grounds of refusal of trade marks
The Trade Marks Act, 1999 contains absolute and relative grounds for refusal of registration of a trade mark. The absolute grounds are governed under Section 9 of the Act2 while the relative grounds of refusal are governed under Section 11 of the Act3.
The absolute grounds of refusal are mentioned in 3 sub-sections of Section 9 of the Act.
The first sub-section4 lays down the following grounds of refusal of trade mark:
(a) the mark lacks distinctiveness;
(b) the mark is descriptive of the characteristics of the goods or services; and
(c) the mark consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.
The second sub-section5 says that a trade mark is not to be registered if:
(a) the mark is of such nature as to deceive the public or cause confusion;
(b) the mark is likely to hurt religious sentiments;
(c) the mark comprises scandalous or obscene matter; and
(d) the use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 19506.
The third sub-section7 states that a mark shall not be registered as a trade mark if it consists exclusively of:
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
Distinctiveness is an exception of descriptiveness
A descriptive mark describes the features or characteristic of the goods and services and is prohibited from being registered under Section 9(1) of the Trade Marks Act, 1999. However, Section 9(1) not only lays down absolute prohibition on descriptive marks being registered as trade mark, but also comes with an exception that, trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.8
The Trade Marks Act of 1999 indirectly deals with “acquired distinctiveness” or “secondary meaning” under the proviso to Section 9(1) and Section 32. According to the proviso to Section 9(1) registration of the descriptive mark is possible only if the mark has acquired distinctiveness before the application for registration. Wherein Section 32 enumerates that if any mark has been registered in breach of sub-section (1) of Section 9 of the Act, the mark shall not be declared void, if it has acquired distinctiveness after its registration and before commencement of any legal proceedings challenging the validity of such registration.
Therefore it is well settled that under the Trade Marks Act, 1999, common words or descriptive words or names cannot be trademarked unless these words or names have acquired a great reputation and goodwill in the market and have gained secondary significance.10 This would then be an exception to the absolute grounds refusal of stated under Section 9(1) of the Trade Marks Act.
A mark is said to have acquired distinctiveness or secondary meaning when due to the extensive and substantial use of the mark over a period of time it persuades the consumers to relate the mark with a product or services and therefore acquired distinctiveness under Section 9 is equivalent to being mark well known.11 However in the recent case of ITC Ltd. v. Britannia Industries Ltd.12, the Delhi High Court settled the question as to the time required to gain acquired distinctiveness and said 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.
If the applicant satisfies that he has acquired a secondary meaning or a distinctive character with constant usage for a considerable period of time or the consumers have really fell for the mark then the applicant can obtain exclusive rights to use a particular word with a dictionary meaning as a trade mark. However, the use of the word must be to such an extent that, it has lost its primary meaning and has acquired a distinctive character and so whenever the word is used, it must remind the consumer of the goods of the applicant.
Conclusion
Indian trade mark law is at par with any other law around the world with respect to prohibiting the use of descriptive words in a trade mark. It is a volatile practice to adopt a common language word and use it as a trade mark as it increases the scope of confusion in the minds of public at large. But there are scenarios where, the once prohibited descriptive mark, acquires a secondary meaning/acquires distinctiveness, and the customers associate the trade mark with the applicant’s business. And that’s when the principle of “acquired distinctiveness” kicks in. This principle has been well stated in the proviso to Section 9(1)(b) of the Trade Marks Act, 1999, and has further been widely accepted by the courts. The courts have conducted a strict scrutiny while applying this principle and a lot of weightage has been given to evidence in support of the reputation/goodwill of the trade mark. The courts have been right to say that no cap should be put with respect to “term of use” while applying the principle of “acquired distinctiveness” as time is no barrier to decide whether a mark is reputed or not; and an idea “can become a hit overnight”. It can therefore be said that the proviso to Section 9(1)(b) is a boon to many innocent trade mark owners.
*Advocate, Allahabad High Court. Author can be reached at tejassinghbb@gmail.com
1 Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/FMK1eOD3.
2 Section 9 of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ.
3 Section 11 of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/ClCLanIO.
4 Section 9(1) of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ
5 Section 9(2) of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ
6 Emblems and Names (Prevention of Improper Use) Act, 1950. http://www.scconline.com/DocumentLink/daY3NxYD.
7 Section 9(3) of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ
8 Proviso to sub-section (1) of Section 9 of the Trade Marks Act, 1999. http://www.scconline.com/DocumentLink/944Il1rZ.
10 Living Media (India) Ltd. v. Jitender V. Jain, 2002 SCC OnLine Del 605.
11 Marico Ltd., v. Agrotech, 2010 SCC OnLine Del 3806. http://www.scconline.com/DocumentLink/muVhjtp6
