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REGISTRATION OF DESCRIPTIVE MARKS- THE CHANGING PROSPECTIVE

Introduction

Descriptive marks are considered as an absolute ground for rejection of a trademark. Section 9(1)(b) of the Trade Mark act, expressly prohibits all the marks which are descriptive in nature. Indian courts in Plethora of judgement have rejected the trademark on the ground that the mark is descriptive in nature. But in the recent years the courts have narrowed the scope of Section 9(1)(b) of the Trade Marks Act by registering some of the descriptive marks in special condition.


Descriptive Trademark:

Section 9 of the Trade Mark Act, 1999 deals with absolute ground for refusal of registration of trademark. One such ground given under section 9(1)(b) is that the mark must not be descriptive and must not be in connection with the goods or services which the company or individual wishes to supply. Any word or mark which have the same meaning as that of goods and services supplied, such words or marks cannot be registered as trademark as it will harm the interest of other individuals indulge in the same kind of business. Hence for example, the word “Gehu” cannot be registered as a trademark for a firm involved in any business relating to production, processing or selling of Wheat. The only exception to this rule is that the if the descriptive mark acquire secondary meaning before registration, such mark cannot be refused on the ground of descriptiveness.

The courts in plethora of judgement held that any word or mark which defines the quality, quantity or kind of the good or service which are supplied cannot be registered as trademark and is an absolute ground for refusal of registration of the Mark as a trademark but in the recent years the Courts have taken a very restrictive and specific view on the refusal for registration of trademark when the trademark is descriptive in nature.


  1. Combination of two or more words or marks.

The court in the case of Globe Super Parts vs. Blue Super Films AIR 1986 Del 245 held that two words "SUPER" and "FLAME", which are descriptive dictionary words, the combination of which was declared by the court as coined mark and accordingly protection was granted.

The Court held that both the words "SUPER" and "FLAME" may be individually descriptive and may not be monopolized by any user. But together the combination of words has acquired distinctiveness by virtue of prior, continuous and extensive use and therefore is protected.

Hence, any combination of two or more words which individually are descriptive in nature but the combination of them becomes a newly coined word such new formed words needs to be protected under the Trade Mark Act and such a word cannot be refused on mere ground that the word is a combination of two or more descriptive words.


2. Descriptive word but in different Class.

The Court in the case of J.L. Mehta v. Registrar of Trademarks, AIR 1962 Bom 82, held that Common words of a language/ descriptive words can be trademarked when they are used in relation to a different class of goods. The Facts of the case were that the word "SULEKHA" was being used in relation to fountain pens, nibs, etc which is a descriptive word meaning “a person with good handwriting”. The court held that since the word SULEKHA is used in different classes though being Descriptive is entitled protection under the Trade Mark Act, 1999.

The court through this case limited the scope of Descriptiveness as a ground for refusal of registration of trademark. Accordingly, the descriptiveness of word or mark needs to be seen in the particular class in which the trademark is proposed to be used and not in any classes. If the word though is descriptive but is totally not related with the given class of trademark, the word can be protected under the Trade Mark Act, 1999.


3. Distinctiveness requires no fixed time.

The court in the case of Ishi Khosla v. Anil Aggarwal, 2007 (34) PTC 370 Del. Observed that “to acquire secondary meaning it is not necessary that product is in the market for a number of years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight"

This case law settles the principle of "acquired distinctiveness". The goods associated with a trademark do not have to be in the market for a certain number of years for the trademark to have acquired distinctiveness. A trademark can acquire distinctiveness, even overnight, and therefore, it depends from case to case. There is no fixed time frame for a trademark to have acquired distinctiveness.

The same retreated in the case of ITC Ltd. v. Britannia Industries, CS (COMM) 1128/2016.


4. Descriptive marks not in common Usage.

In the recent landmark case of SUNIL MITTAL & ANR V. DARZI ON CALL CS (COMM) 1381/2016 The court held that the trademark which consists exclusively of the mark to designate the services rendered, shall not be registered but the court further elaborated that the words or marks which though are descriptive but are not in common usage of general public can be registered and protected under the Trade Mark Act, 1999.

The court held that, the word ―DARZI appears to be describing the services of tailoring. However, the phrase may serve to designate the rendering of services should be construed properly. There might be various words in the dictionary, which would describe goods or services. However, not all such words would become un-registrable under Section 9(1)(b).

The decision of the Hon‘ble High Court has rendered a significant standard in establishing the principle that if a particular trade name though a common name has not been in existence then it should not be denied the registration.


Conclusion

The courts with time have narrowed the scope of section 9(1)(b) of the trademark act, wherein the court have interpreted the section very strictly and have allowed the registration of marks which are even descriptive. The descriptiveness depends from case to case and hence, a strict criteria cannot be established for determining descriptiveness of a mark. However, the liability lies on the person registering such a mark. The burden of proof on the person claiming distinctness in favor of a generic or descriptive mark is much higher. The Plaintiff not only would have to show that the mark adopted by the Plaintiff, because of its extensive use has acquired distinctness and is identifiable only with the goods of the Plaintiff but also that the adoption of the mark by the Defendants is identical and deceptively similar to the mark of the Plaintiff.


Author - Akhil Goyal.

Student of Chanakya National Law University, Patna.

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