B.A. LL.B.

(INTEGRATED LAW DEGREE COURSE)

INTELLECTUAL PROPERTY LAW (VI SEMESTER)

“PROJECT WORK”

“TRADEMARK”

SUBMISSION TO: SUBMITTED BY:

MR. MEENAKSHI DAHIYA ANIKESH RATHI
FACULTY OF INTELLECTUAL PROPERTY LAW 17RU11002
DESIGNATION: ASSISTANT PROFESSOR SESSION:-2017-2022
SEMESTER:-VI

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 ACKNOWLEDGEMENT

I take this opportunity to express our humble gratitude and personal regards to MISS
MEENAKSHI DAHIYA for inspiring me and guiding me during the course of this project work
and also for her cooperation and guidance from time to time during the course of this project
work on the topic “TRADEMARK”.

Date of Submission: 14-05-2020

Name of Student: ANIKESH RATHI

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 TABLE OF CONTENTS
RESEARCH METHODOLOGY ................................................................................................. 4

RESEARCH OBJECTIVES .................................................................................................... 4

RESEARCH QUESTIONS ..................................................................................................... 4

METHOD OF WRITING....................................................................................................... 4

SOURCES OF DATA ............................................................................................................ 4

ABSTRACT ............................................................................................................................ 5

INTRODUCTION ..................................................................................................................... 6

DISTINCTIVENESS OF A MARK:.............................................................................................. 7

CASES OF INDIA & ABROAD: ................................................................................................. 8

CONCEPT OF ACQUIRED DISTINCTIVENESS:....................................................................... 11

INDIAN POSITION ................................................................................................................ 12

FACTORS REQUISITE TO AN APPLICATION FOR REGISTRATION ON THE GROUNDS OF

DISTINCTIVENESS: .............................................................................................................. 12

PERIOD OF USE ............................................................................................................... 13

ADVERTISING EXPENDITURE ........................................................................................... 13

NATURE OF EXHIBITS ...................................................................................................... 14

CONCLUSION ...................................................................................................................... 15

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RESEARCH METHODOLOGY
This research paper is descriptive & analytical in approach. It is largely based on secondary &
electronic sources. Books & other reference as guided by faculty of Legal Aspects of Business
are primarily helpful for the completion of this project.

RESEARCH OBJECTIVES

 To understand the concept of Distinctiveness under the Indian Trademarks Act.

 To analyze such relevant factors which are capable of influencing the distinctiveness of
a mark.

RESEARCH QUESTIONS

 What is the concept of distinctiveness under Indian Trademarks Act, 1999?

METHOD OF WRITING

The researcher has used both a descriptive and analytical method of writing in order to
understand the issues better. The researcher has also relied on case law, to get an in depth
understanding of the subject. The method of writing followed in the course of this research
project is primarily analytical.

SOURCES OF DATA

The researcher has used secondary sources in order to obtain sufficient data for this project,
namely,
 Online Research Portals
 Articles

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ABSTRACT
This research work on the subject “Law relating to Trademarks in India – A study with Special
reference to Passing Off and Infringement of Trademarks” is of immense importance in view
of the several infirmities and draw backs in implementation of the existing laws. Out of all the
Intellectual Property Rights, the trade mark is the only property which can be retained
permanently as long as it is renewed. World is constantly changing, apart from the physical
phenomenon this change is attributed to various inventions and developments in trade and
commerce. These inventions, advertising materials, books etc., are part of the human minds
backed by the intellectual labour. The products of the great minds are protected throughout the
world by legislations. The necessity and amendments to the existing Trade Mark Act has arisen
due to globalization and in order to curtail the unfair trade practices. Companies spent
enormous amount of money for the promotion of their goods and when the particular products
and brand names become famous, the undersized businessmen and general public try to imitate
the same to encash the goodwill and reputation established by the reputed companies.
Therefore, the brand name becomes famous and more often the product itself becomes
synonym for the brand name. In this research paper, I would like to deal with the concept of
distinctiveness in reference to the Indian trademarks law with prospective inferences.

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INTRODUCTION
In order for a trade mark to fulfil its essential function of acting as a sign that is capable of
distinguishing the goods or services (‘products’) of one ‘undertaking’ or legal trading entity
from another, at the very least it has to be ‘distinctive’.
Although apparently tautologies, the answer to the question, ‘what makes a trade mark
distinctive?’ is whatever makes it capable of distinguishing the goods or services of one
undertaking from those of another.
A mark is distinctive by ‘nature or nurture’ when the prospective purchaser of the product
knows it refers to a particular source and not to another. A made-up or coined name, such as
KODAK for films, is distinctive by nature. No one would have simply seen the name for the
first time and associated it immediately, with films (unlike with a mark such as
TECHNOFILMS which has a direct connection with the goods). Once the connection is made
through, for example, advertising, the mark then is always associated with that or a similar
product. On the other hand, a mark such as ‘BLUE WATERS’ for mineral water presented in
a blue tinged bottle, is per se descriptive for the goods and a very weak mark. However, if a
manufacturer has invested a lot over a long period of time in promoting the connection such
that a substantial section of the mineral water drinking public now associates the name with
the product, then distinctiveness has been earned through use or 'nurture'. It has 'acquired
distinctiveness'. The mark then becomes registrable, other things being equal.
Consider the case of Dettol, Xerox, Dalda where what was originally the brand or name
(trademark) of the entity has been significantly diluted to now bear reference to the product
itself. So much that even while buying a product having a different brand name, the image is
that of ‘dettol’ or ‘dalda’. These illustrations highlight the manner in which marks originally
distinctive in nature have become common reference to the consumers.
In this project, I would like to deal with the concept of distinctiveness in reference to the Indian
trademarks law with prospective inferences.

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DISTINCTIVENESS OF A MARK:
To be eligible for registration, a trademark must possess distinctive characteristics that cause
the public and its consumers to understand that the goods bearing that trademark are different
from goods originating from other sources. Such distinctiveness can manifest itself in the form
of invented words or pictures, but it will not be achieved if generic or vague descriptive terms
are used to describe the trademark in the application for its registration. This form of
distinctiveness is known as “inherent distinctiveness”. This raises the question of whether a
trademark that is not inherently distinctive can still be registered. The answer is yes, but only
if it is proved that the trademark has been used for a long enough time that it is known to the
public and they are able to distinguish goods bearing the mark from the goods of other sources.
This is referred to as “factual distinctiveness.”
If a trademark is void of inherent distinctiveness when the registration application is filed,
evidence of prior use can be submitted to a trademark registrar within 30 days of the date of
filing. But applicants seldom submit evidence of use to demonstrate factual distinctiveness at
this early stage even then; the registrar is likely to consider the trademark as one that lacks
inherent distinctiveness.
Case law helps us conclude that where signs cannot convey a particular message or information
(e.g. the definite or indefinite articles: ‘the’ and ‘a’ or the conjunction ‘and’) these are per se
indistinctive and are non-registrable, subject to the proviso of acquired distinctiveness.
Laudatory words or terms of praise, such as PERFECTION or BRAVO, and also common
slogans, are also usually devoid of distinctiveness. Although practice has now changed, in the
past letter combinations that were not words were usually regarded as non-distinctive, and
likewise with number combinations.
The easiest way to indicate how a mark might be non-distinctive is when it is descriptive - as
with the example given above. If a mark consists exclusively of a sign which serves in trade to
describe a characteristic of a product, then this is necessarily non-distinctive. This prohibition
of registrability also has a public policy aspect of keeping signs free for traders to use. The
European Court of Justice has clarified that it is sufficient that one of the possible meanings of
a word is completely descriptive, even if there might be an additional non-descriptive meaning
(the ‘DOUBLEMINT’ case). The sign might designate kind of product (‘socks’), its quality
(‘all wool’), quantity (‘10 Kilos’), intended purpose (‘dog food’), value (‘top value’),
geographical origin (‘Melton Mowbray pies’), time of production of goods or rendering of
services (‘24/7’), or other characteristics (‘fast’).

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CASES OF INDIA & ABROAD:

1. Amritpal singh v. Lal babu priyadarshini1

As far as the Trademarks Act 1999 is concerned, section 92 of the act eals with the absolute
grounds for refusal to register a trademark on certain grounds. Whereas clause (1) of the
section deals with “Absolute grounds for refusal of registration. --(1) The trademarks—
i) Which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
ii) Which consist exclusively of marks or indications which may serve in trade to designate
the kind, quality, quantity, intended purpose, values, geographical origin or the time of
production of the goods or rendering of the service or other characteristics of the goods
or service;

The Intellectual Property Appellate board of India held in this case that the first respondent's
mark 'RAMAYAN' is not a distinctive mark and is devoid of any distinctive character. The
mark is not capable of distinguishing the goods of one person from those of another person.
'RAMAYAN' word per se is not registrable since it is the name of famous and well known
religious epic hook of Hindus. It carries a large sentimental value for the people and thus no
trader can claim exclusive right to the use of such a word. More than 20 traders in Patna and
many more in different parts of India are using the trade mark 'RAMAYAN' and thus it has
become public juris. The appellant produced photocopies of certain packets with the word
'RAMAYAN' being used by many traders. The use of the mark by first respondent is tainted
with dishonesty as in one of their notice to the appellant dated 19.6.1996 they had alleged
that they are engaged in the manufacture of Dhoop, Agarbati for nearly one decade from
1987 and they had wrongly and willfully alleged in the said notice that they are the registered
proprietors of trade mark 'RAMAYAN'. Large reputation and goodwill had accrued to the
respondent's mark 'RAMAYAN' by reason of advertisement, sales etc. The impugned mark
for which the first respondent is seeking registration is identical with the appellant's mark
'Badshah Ramayan' which is pending registration. The impugned registration will cause
harassment to other traders and purchasing public is bound to be confused and deceived into
buying the goods of the first respondent bearing the trade mark 'RAMAYAN'.

1
2005 (30) PTC 94 IPAB.
2
. Trademarks act, 1999.

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 2. Windsurfing Chiemsee v Boots3

ECJ in this case has laid down a test to identify whether a particular trademark which is
not inherently distinctive can also be registered or not. The evidence necessary to establish
that a trade mark is factually distinctive will vary depending upon the facts of the case.
The burden of establishing factual distinctiveness will generally be proportionate to the
strength of the prima facie objection raised in the trade mark application. The court held
that:
“The test is that the mark must be used in such a way that sufficient amount of the relevant
public recognizes the sign as a distinctive trade mark at the time when the application is
filed.

The evidence submitted should answer the following questions in the affirmative:
a. Has the trade mark been used as a trade mark i.e. as a means of identifying trade origin
of the goods?
b. Has the applicant promoted the trade mark as a trade mark?
c. Does the evidence show, as a matter of fact, that the trade mark is operating in the
market place as an indicator of origin?
d. Has the relevant public (or a significant proportion thereof) come to rely upon the
mark, in the course of trade, as a means of identifying the trade origin of the goods?
e. (Although the applicant need not necessarily have used the mark as the only means of
identifying the trade origin of the product as there is no rule that two or more
trademarks cannot operate alongside each other), the trade mark applied for must, by
itself, come to foster a concrete expectation amongst the relevant public that the goods
bearing that mark originate from, or are under the control of, a single undertaking.

3. BABY-DRY4

The now well-known BABY-DRY case from September 2001 heralded what many
thought was a liberal attitude to the registration of marks. Registration for BABY-DRY
was sought for nappies and was initially refused by the Community Trade Marks Office
(OHIM) on the basis that the mark consisted exclusively of words that were descriptive of
nappies. The Court of First Instance (CFI) upheld the decision since the 'purpose of nappies

3
. (Case C-108/97).
4
. [1999] ECR II-2383.

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 is to be absorbent, in order to keep babies dry'. The CFI concluded that the term BABY-
DRY merely conveyed to consumers the intended purpose of the goods and there were no
additional features to render the sign distinctive.

The European Court of Justice (ECJ) overturned the CFI and allowed the sign to be
registered. One of the questions asked of the ECJ was how descriptiveness should be
assessed in relation to composite marks made up of two separate words. The ECJ said the
test was whether the word combination in question was the normal way of referring to the
goods or services or of representing their essential characteristics in 'common parlance'.
The ECJ found that because of the 'syntactically unusual juxtaposition' of the words ‘baby’
and ‘dry’, BABY-DRY was not a familiar expression in the English language for
describing nappies or describing their essential characteristics. The combination of the
words Baby and Dry were a 'lexical invention bestowing distinctive power on the mark so
formed'.

4. DOUBLEMINT 5

However, following the BABY-DRY decision, the hopes of WM Wrigley Jr Company in

registering the mark DOUBLEMINT for chewing gum were to be dashed.

The DOUBLEMINT application was refused by OHIM on the basis the trade mark
consisted solely of the word 'Doublemint' which was a combination of two English words
with no additional fanciful or imaginative element.

An appeal was made to the CFI on the grounds that 'Doublemint' was not exclusively
descriptive and was 'ambiguous and suggestive'. The CFI considered that for an English
speaker, the numerous meanings of 'Doublemint' (for example, it could mean double the
amount of mint or two kinds of mint) were immediately apparent but for a non-English
speaker, the terms would have a vague and invented meaning. Therefore, as the average
consumer would not immediately detect the description in relation to a characteristic of
the goods, registration could not be refused. The decision was appealed by the OHIM.

In October 2003 the ECJ found that DOUBLEMINT was purely descriptive and the fact
that 'double' and 'mint' in combination gave rise to a variety of possible meanings does not

5
. C-191/01 P - OHIM v Wrigley.

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 automatically mean that the words are not descriptive. The Advocate General, in a
precursor to the ECJ decision, suggested that a proposed trade mark should be assessed as
follows:

 What is the relationship between the mark and the product? - If the mark to be used
is a general description in the particular trade then registration will be refused,

 How immediately is the message conveyed? If the mark quickly conveys the
characteristic of the goods/services then it will not be registrable,

 What is the significance of the characteristics in relation to the product in the

consumer's mind? If the characteristics are intrinsic to the product or the consumer's
choice of product, then the grounds for refusing registration because of the
descriptive element are high.

When applied to the mark DOUBLEMINT there is a tangible reference to mint flavour
which is doubled in some way and therefore is 'readily perceived' as such and the flavour
is a prominent feature of the product. Registration was denied.

The ECJ held that a sign must be refused registration if one of its possible meanings is
capable of designating a characteristic of the goods concerned. It was held that
DOUBLEMINT was less unusual than BABY-DRY and the only lexical invention was
the removal of a space between the words double and mint.

CONCEPT OF ACQUIRED DISTINCTIVENESS:

Every trademark has a tendency to identify the goods sold under them as emanating from a
particular source. This tendency with the efflux of time gets strengthened and a particular
trademark gets registered or mentally associated in the minds of the consumers as distinctive
of the product and its source. It can also be referred as ‘strength’ of the mark. Some trademarks
are distinct from their inception due to their inherent characters and they are given legal
protection immediately upon use as a trademark. Thus there is a correlation between ‘strength’
and ‘secondary meaning’ of a trademark. A non-inherently distinctive mark must have that
quantum of strength or secondary meaning to qualify as trademark. In litigation the
determination of whether there is an infringement requires an evaluation of the strength of that

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trademark hence the secondary meaning for a non-inherently distinctive mark is a threshold
issue of trademark validity.
WHAT IS SECONDARY MEANING?
Secondary meaning can be characterized as that ‘attraction’, ‘drawing power’ or ‘commercial
magnetism’ which acts as a psychological function of the symbols or trademarks. It is a fact
that largely we purchase goods by the marks on them identifying their source and the owner of
a mark exploits this human tendency by making every effort to impregnate the atmosphere of
the market with the drawing power of an amiable symbol. Commercial symbols that require
secondary meaning for legal protection, it is that very ‘drawing power’ and ‘commercial
magnetism’ which is characterized as secondary meaning.
A secondary meaning is acquired when the name and the business becomes synonymous in the
public mind and submerges the primary meaning of the name. Therefore, the prime element of
secondary meaning is a mental association in the minds of purchasers between the alleged mark
and the source of that product.

NECESSITY OF SECONDARY MEANING:

The general rule regarding distinctiveness is that – an identifying mark is distinctive and
capable of being protected if it either [1] is inherently distinctive or [2] has acquired
distinctiveness through secondary meaning. If a given symbol or word is not inherently
distinctive it can be registered or protected as a mark only upon proof that it has become
distinctive. This acquisition of distinctiveness is referred to as ‘secondary meaning’. For
symbols that are not inherently distinctive, acquisition and priority of ownership is determined
by looking to when, where and how secondary meaning was established in the symbol.

INDIAN POSITION
The Indian Trademarks Act of 1999 through section 32, rather indirectly, speaks about acquired
distinctiveness and secondary meaning. The section conveys that when a mark is registered
overlooking the facts in relation to grounds for refusal of registration, it will not be rendered
invalid if as a consequence of its use it has, after registration and before commencement of any
legal proceedings, acquired a distinctive character in relation to the goods for which it is
registered.

FACTORS REQUISITE TO AN APPLICATION FOR REGISTRATION ON THE

GROUNDS OF DISTINCTIVENESS:

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While taking into consideration the various necessities, there are several grounds on which
the registrar has to judge an application, in order to consider such application of mark to be of
distinctive nature:

1. PERIOD OF USE

a. The longer the period of use, the more likely the mark is to have acquired a
distinctive character. Five years of prior use of the trade mark with strong sales is
generally required. Extensive use over a shorter period may well be sufficient,
although use that is less than two years prior to the date of application would very
unlikely be regarded as sufficient.
b. The use of the mark should be continuous. If the use has not been continuous, the
reputation of the trade mark may have been diminished. Therefore, the Registrar
will consider how the break in use may have affected the reputation of the mark
applied for. For example, if the sales were very good before and after the break, it
might suggest to the Registrar that the distinctiveness acquired before the break
had not been lost.
c. If the trade mark has been transferred between owners, details such as the name
of the former owner and date of acquisition of the mark should be indicated.
d. The period of use will be considered in conjunction with turnover figures.

2. ADVERTISING EXPENDITURE

a. Advertising figures provided should be for a period of 5 or more years prior to the date
of filing.
b. The type of advertising should be listed e.g. TV, magazines, posters, newspapers,
radio, billboards, trade publication, trade fair, sponsorships etc.
c. The breakdown of advertising figures in relation to each class of goods and services
should be provided, where feasible.
d. Details of titles of publications and names of TV channels and radio stations used
should be given. Samples of advertisements should be included in the exhibits.
e. The importance to be attached to advertising figures depends on the goods/services in
issue.

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 3. NATURE OF EXHIBITS

a. The exhibits should reflect how the mark has been used in relation to identified
goods/services. All exhibits should be listed in the declaration and clearly cross-
referenced.
b. All exhibits should be dated, or where this is not possible, an estimate of its date of use
should be given. The materials relied upon must precede the filing date.
c. The exhibits must show use of the mark applied for as a trade mark. If the mark is
commonly used with a house mark or in a substantially stylized form, an assessment
will be made to determine whether this constitutes use of the mark applied for. For
example, in the UK case of British Sugar Plc v James Robertson & Sons Ltd6, TREAT
was always accompanied by the established mark SILVER SPOON. Hence, the court
was of the view that it was doubtful if the mark TREAT had acquired distinctiveness
on its own.

However, if the additional matter in the mark is subsidiary, i.e., a background or a decorative
device, the mark may still be distinctive on its own. If the application is for a different typeface
to that actually used, the Registrar may consider if the variant could qualify as a series. If not,
the use would not be sufficient to establish factual distinctiveness. If the evidence shows that
the mark applied for is used only as a subsidiary part of a composite device mark or is used as
part of a longer mark which naturally “hangs together”, such as a known phrase or a full name,
the Registrar may not consider that the evidence is sufficient to establish that the mark applied
for has become factually distinctive.
In WILD CHILD Trade Mark7, Mr Geoffrey Hobbs Q.C. stated “My difficulty with regard to
the use of the words WILD CHILD as part of the overall get-up of sweatshirts is that I would
not expect people to interpret the use of those words in that manner as an indication of trade
origin. I therefore cannot see any basis for the suggestion that people in the world at large will
have been educated by means of such use to infer that “complete articles of outer clothing;
footwear and headgear” supplied under or by reference to the trade mark WILD CHILD are
connected with the course of trade or business with the undertaking responsible for supplying
sweatshirts embellished in the way I have described”.

6
. [1996] R.P.C. 281.
7
. [1998] R.P.C. 455.

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CONCLUSION

Evidence of use is highly important to a trademark owner if his or her trademark is not
inherently distinctive. Trademark owners should collect evidence that shows, prima facie,
acquired distinctiveness based on at least five years of use up to the date the claim is made.
However, the number of required years varies on a case-by-case basis. In some cases, evidence
of use dates back to less than five years after a mark’s filing, but the evidence may nevertheless
be able to demonstrate sufficient distribution or advertising for the mark to become distinctive
through use.
If an applicant is confident that he or she has evidence to prove that a trademark is widely used,
distributed, or advertised to the extent that it has acquired distinctiveness through use, we
advise such applicants to proceed through the courts to obtain trademark protection.
However, the Indian courts have taken a consistent stand that words that are common or generic
amongst the public at large cannot be normally allowed to register unless they have an
additional factor which could add to the distinctiveness of a mark. Unlike ECJ, no concrete
tests have been laid down which could assist the distinctiveness of a mark.

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