Introduction
As the world develops and enters a phase where competition increases at a breakneck speed, a distinguished and unique identity is required. Every company strives for goodwill and that individual identity. This is where a Trademark comes into play because it provides that company with a legally protected mark that represents that company and belongs to that company only.
The realm of Trademarks is governed by the Trade Marks Act, 1999 [“The Act”], it a mark that can be graphically represented and can distinguish the good and services of the owner of the mark from the good and services provided by others.[1] Trademark protection is granted to marks with distinctive character and the distinction is said to be possessed by the marks when they are used extensively, continuously and in an uninterrupted manner.
Secondary Meaning
As per the Act, a Trademark is refused on Generic Words, subject to certain conditions.[2] The Trademark for a Generic Words is only registered when it has acquired a Secondary Meaning and distinct identity associated with the Company it is registered for. This article delves into the different ways companies have tried to register it and the verdict of the Court on such matters.
In the case Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd, the Hon’ble Court ordered that if a Generic Word acquires a Secondary Meaning that identifies it with a product or a particular source of goods and services, such Generic Word maybe entitled to Trademark Protection.[3] Therefore, it is said to be acquired when it is identified with the company providing the goods or services.
Further, to acquire Secondary Meaning in this day and age of advanced technology, there is no need to use the mark extensively, continuously and uninterrupted for a long. As in the case of Ishi Khosla v. Anil Aggarwal, it was held by the Hon’ble Court that if an idea is fascinating enough, it can get hit overnight. The product doesn’t need to be in the market for a number of years.[4]
Attempts by the Companies
- Misspelling of a Generic Word
Misspelling or tweaking the spelling of a Generic Word by adding or removing any letters or characters to create a Generic/Descriptive Mark, does not distinguish it from the original word that such a mark represents. The identity of the original word remains even if the pronunciation sounds different. Hence, as per the settled position of law, such Applied Mark cannot be registered because of Phonetic and Visual Similarities.
Further, in the case Delhivery Private Limited v. Treasure Vase Ventures Private Limited, it was held by the Hon’ble Court that tweaking the words of the English Language is impermissible. Since the argument that the pronunciation is different from the original Generic Word would not be accepted, as the Applied Mark would not be registered for being phonetically similar to the Generic Word. The settled position of law is that a Generic Word cannot be exclusively given to one party to the exclusion of others.[5]
- Adding Prefix/Suffix
There have been various Trademarks where a Prefix/Suffix has been added to the mark for registration; mere addition of a Prefix/Suffix does not qualify the Generic Word as a registered Trademark because the said Generic/ Descriptive Mark needs to have a distinct identity. It should not be a general term descriptive of the services provided. Further, the Generic/Descriptive Mark needs to have a Secondary Meaning associated with the Company.
Further, in the case of Phonepe Private Limited v. Ezy Services & Anr, it was held that if any party proved that their suffix has acquired a distinct and Secondary Meaning to such an extent that the consumers would associate the suffix as relating only to the goods and services provided by the party then such suffix can become a Trademark.[6]
Moreover, in the case of Bigtree Entertainment Pvt. Ltd. v. D. Sharma, the Hon’ble Court held that plaintiff’s Trademark “BOOKMYSHOW” has not acquired any distinctive meaning by stating that the prefix ‘BOOK MY’ is a common and Generic Word. Further, the Applied Mark is descriptive of the services it provides to the public.
- Combination of Generic Words
There are instances when Companies utilize Generic Words in combination when applying for a Trademark. The Generic/Descriptive Mark resulting from such a combination should have a distinct identity to qualify as a Trademark. A Trademark registration is not granted to such Generic/Descriptive Marks.
Further, in the case of Living Media India Limited v. Jitendra V Jain & Anr, it was held that the combination of the Generic Words in the Mark in question can have an individually descriptive and a dictionary meaning, they cannot be monopolized until they prove that there had been a long, prior and continuous use in relation to the goods and services provide by the provided applying such Mark. Similarly, in this case if was held that if a Secondary Meaning exists then a Trademark registration could be granted.[7]
- Religious Words
India is a country of faith and the citizens of India are very religious. Therefore, the provision of Section 9 of the Act restricts any Trademark on words that can hurt the religious sentiments of any class or section of the citizens. Still, the names of all the Gods and Goddesses are not exclusive. The settled position of law is that no one can claim a monopoly over such names.
Further, in the case of Freudenberg Gala Household Ltd v. Gebi Products, it was held that the names of Gods and Goddesses are not exclusive and such words cannot be monopolized by anyone. The claim and protection of a label is very different from claiming monopoly over a common word.[8]
- Arbitrary Marks
When Generic Words do not suggest or describe any quality, ingredient or characteristics of the goods or services they are used for, they are called Arbitrary Marks. They have no association with the goods and services they are used for and are also given a Trademark protection even if the Generic Word has no Secondary Meaning or immense reputation, subject to other provisions of the Act.
In the case Evergreen Sweet House v. Ever Green and Others, it was ruled by the Hon’ble Court that there are categories in which Marks can be classified on the basis of increasing distinctiveness. Suggestive, Arbitrary and Fanciful Marks can be granted Trademark Protection because they are distinct and can help identify a particular source of product while Generic and Descriptive Marks are not registered as a Trademark because they describe a product or do not inherently identify a particular source unless they have acquired a Secondary Meaning.[9]
Conclusion
In an increasingly crowded marketplace, Companies need to have a distinguished Trademark to attract crowds. Such Trademarks require a lot of thought and deliberation because any Generic/Descriptive Marks get refused by the Trademark Registry. No Generic/Descriptive Marks can procure registration unless they have acquired a Secondary Meaning through continuous, extensive and uninterrupted use.
It is evident from the above precedents that no matter in what ways, be it by tweaking or misspelling or adding a suffix/prefix to it or utilizing a combination of Generic/Descriptive Marks. The Trademark is only registered when the proof of a distinguished identity is presented and when it is evident that the consumers link the goods or services provided, exclusively to one source, which is the Company that owns the Trademark. Further, it is also evident that the names of the Gods are not exclusive and no monopoly can be claimed over them.
By contrast, it is also evident that when the Generic/Descriptive Mark is inherently distinct, it can be registered without a proof of Secondary Meaning. Arbitrary Marks that are Generic Words unrelated to the goods and services provided are registered even if there is no proof of any associated Secondary Meaning. Thus, evidence of Secondary Meaning or distinctiveness is required for the registration of Generic words as a Trademark, instead of minor linguistic tweaks.
Authors: Nakul Agrawal
[1] The Trade Marks Act 1999, s 2(zb).
[2] The Trade Marks Act 1999, s 9.
[3] Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd. [2004] 5 SCC 257.
[4] Ishi Khosla v. Anil Aggarwal [2007] 34 PTC 370.
[5] Delhivery Private Limited v. Treasure Vase Ventures Private Limited [2020] SCC OnLine Del 2766.
[6] Phonepe Private Limited v. Ezy Services & Anr [2021] AIROnline Del 647.
[7] Living Media India Limited v. Jitendra V Jain & Anr [2002] SCC OnLine Del 605.
[8] Freudenberg Gala Household Ltd v. Gebi Products MANU/MH/1859/2017.
[9] Evergreen Sweet House v. Ever Green and Others [2008] SCC OnLine Del 1665.
Link to similar articles: https://jpassociates.co.in/importance-of-use-of-trade-mark/
Link to Ipindia’s website: https://ipindia.gov.in
