Trademark Law :

Spectrum of
Distinctiveness
 TM : Fundamentals
 What are the functions of Trademark?
 To indicate :
 Origin of the product. (one good can have only one origin.)
 Quality of the product. (goodwill of the business.)
 Differentiate the product. (distinguishes the marked goods or services from those of
the competitors.)

 Is registration necessary for trademark ?

 Life of a trade mark depends on its actual use.
 Sec 47 of the Trade Marks Act 1999 provides that a trade mark may be removed from the Register on
ground of non-use.
 The initial registration of a trademark shall be for a period of ten years but may be renewed from time to
time for an unlimited period by payment of the renewal fees.
TM Register

 Section 6 of the Act requires that a record called the Register of Trade Marks shall be kept at
the head office of Trade Marks Registry.

 Registrar must have the exclusive jurisdiction for the custody and management of the register.

 Administrative convenience : Single register with simple procedure

 The amended Act (year 1999) has done away with the system of maintaining registration with
different legal rights in Parts A and B i.e., with legal rights and distinctiveness requirements at
the same level, thereby facilitating easy Trade Mark registration.
 ‘Distinctiveness’ as the
Registrability criterion for a mark
 Why: to exclude marks that do not even perform the distinguishing function.

 Distinctiveness may be ‘inherent’ or ‘acquired’

 “Some quality in the trademark which earmarks the goods so marked as distinct from those of other products or such goods.”
– Imperial Tobacco v. Registrar, Trade Marks, AIR 1977 Cal 413.

 An ideal trademark is distinctive, non-descriptive, and not generic.

 Eg: Yahoo for a search engine.

 Acquired distinctiveness or Secondary meaning may be assessed based on the following factors:-
 Customer’s perception displaced primary meaning, the exclusivity of use, manner of use, duration of use, the volume of goods marketed,
advertisement, and consumer surveys.
 Principles of Distinctiveness

Judge Learned Hand in Abercrombie & Fitch Co v. Hunting World, laid down the basic principles of
distinctiveness.

Fanciful / Arbitrary>>>Suggestive>>>Descriptive>>>Generic

Very protectable --------------------------------------Not protectable

Arbitrary/Fanciful Marks

 A term that the public recognizes as a symbol or indication of the source of the
goods or services.

 A fanciful trademark is created for the sole purpose of functioning as a trademark.

Eg: KODAK, STARBUCKS, EXXON.

 Arbitrary marks: slightly less strong than fanciful marks are arbitrary marks
which have some meaning to the public but, when used in connection with the
relevant products, do not immediately suggest or describe any product quality.
 Eg: APPLE for computers; Google for internet search engine.
 Suggestive Marks

 A mark is suggestive if it requires :

a. Using imagination, thought, and perception.

b. To conclude as to the nature of the goods.
Suggestive marks, which are weaker but still generally protectable, hint at some quality or
character of the products without actually describing the product.
Eg, JAGUAR for a fast car;
Paytm for payment wallet
 Descriptive Marks
 A mark is descriptive if it forthwith conveys (to one seeing or hearing it):
a. Knowledge of the ingredient.
b. Quality or characteristic of the goods or services.

Descriptive trademarks, are those which describe some aspect, characteristic, or quality of the products
on which they are used.
If a trademark is considered descriptive, it is per se un registrable and un-protectable in a court of law.
Eg: LENSCART for optical lens store; COMPUTERLAND for a computer store.

The aim: to protect the public interest by keeping descriptive signs or indications for use by all traders.
 Generic Marks
 A generic term refers to the genus of which that particular product is a species. –
customary to trade.

 Genericide: However, due to excessive marketing, even an arbitrary name as a noun

concerning a product can become generic and enter the public domain.

 Trademark owners should never use the trademark as a verb or noun, implying the
word is generic.

 Eg: Aspirin, Xerox, Kerosene, Gramophone.

 Absolute Grounds for Refusal
Sec. 9 of Trade Marks Act, 1999 lists the following -
(which relates to the intrinsic qualities of the mark)

(a) The Act provides that the mark should not-

 Be devoid of distinctiveness
 Marks 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 services or other
characteristics of the goods or services.
 Marks which consists exclusively of marks or indications which have become customary in the
current language or in the established practices of the trade.
 Absolute Grounds for Refusal
Sec. 9 of Trade Marks Act, 1999 further provides :

(a) The Act also provides that the mark should not-
Cause confusion or deceive the public
Hurt religious sentiments of any class or sections of citizens of India
Should not contain scandalous or obscene matter
Marks, which are protected under the Emblems and Names (Prevention of Improper
Use) Act, 1950 ought not to be used as trademarks.
 Shape as a TM in India
Section. 9 (3) (c): A mark shall not be registered as a trademark if it consists exclusively of -
(a) The shape of goods which result from the nature of the goods themselves; or
(b) A shape of goods which is necessary to obtain a technical result; or
(c) The shape which gives substantial value to the goods.

Test: will the relevant consumer think of the shape as indicative of the source rather than merely functional or
decorative?
Important: The Indian Trade Mark Registry's Draft Manual of Trade Mark Practice and Procedure provides for the
contextual framework for shape being excluded from trademark registration. Section 2(1)(m) r/w the Draft TM Manual
clarifies that certain categories of marks, such as shapes, colors, sounds, and smells, “will require special consideration.”

Therefore there does exist room for judicial reasoning on the registrability of shape as a trademark in India.
 Sec. 9 of Trade Marks Act, 1999
Sec 9 (1) : Non-descriptive words
“A trademark shall not be registered unless it contains or consists of one or more words having no direct
reference to the character or quality of goods and not being, according to ordinary signification, a
geographical name or a surname or a personal name or any common abbreviation thereof or the name of a
sect, caste or tribe in India.”
Any word is other than an invented word.
It has to be distinctive to be registrable.
No direct reference to the quality or character of goods.
Must be non-laudatory.

Example : ‘Rasoi’ for hydrogenated groundnut oil was held to have a direct reference to the character or
quality of goods under S. 9 (1) (d), as the word means cooking in common hindi parlance. Therefore to
the people in the trade and the ordinary consumer, the word is an indicator of the ‘character’ of the goods
being sold. Character means their nature, quality, or peculiarity and not a composition.-- H.D Corporation v. Dy.
Registrar of Trade Marks, AIR 1955 Cal 519.
 A geographical name

 Sec 9 (1) (d) : A geographical name is prohibited from being registered as a trademark.
 The object of the Legislature was to prevent a trader from acquiring a monopoly in the name of a place,
and from thereby suggesting that the goods had a local origin or local connection, which in fact they
might not have.
 However they may be granted registration upon evidence of acquired distinctiveness.
 Eg: SIMLA as a mark for manufactured tobacco was denied protection in the matter of Imperial Tobacco
v. Registrar, AIR 1968 Cal 582.
Surnames, personal names etcetra

 Surnames, personal names, any common abbreviation thereof or the name of a sect, caste or tribe in
India are :

 Prima facie not registrable as they are common and inherently non-distinctive. However, may be
registered upon proof of distinctiveness.
 Eg: Cadbury is a good example for surname enjoying registrability for confectionary products upon
evidence of distinctiveness.
 Others : Letters, numerals (555 detergent), slogans, portraits of traders (Founder of MDH Masala),
etc may be registered upon proof of distinctiveness.
 Portraits of national leaders (Mahatma Gandhi) or historical monuments cannot be registered as
trademarks.
Relative Grounds for Refusal
 Sec. 11 of Trade Marks Act, 1999 -
 Which relate to conflicts with earlier trademark rights belonging to third parties.

 A mark shall not be registered if there is a “Likelihood of confusion” and “Likelihood of association” by its
 Identity with the earlier TM & Similarity of goods or services caused by the earlier TM
 Similarity to an earlier TM & identity or similarity of the goods or services caused by the earlier TM

 Before rejecting on the relative grounds, three essential questions should be examined:
1. What is an earlier trademark?
2. Does the opponent have an appropriate interest on which to base a challenge?
3. Has the earlier mark been used?
 Relative Grounds for Refusal

 The likelihood of consumer confusion is the hallmark of trademark infringement

 Example:
Nike (?)
Hoffman v. Geoffrey Manners

Facts :

 'PROTOVIT' was registered for one of the vitamin preparations manufactured by the
appellant company.

 Respondent company applied for registration of its mark 'DROPOVIT' in respect of

"medical and pharmaceutical preparations and substances". The application was granted.

 When the appellant came to know about this trademark it asked the respondent to alter it.
 Hoffman v. Geoffrey Manners

The questions that fell for consideration were:

(i) whether the word 'DROPOVIT' was deceptively similar to the word 'PROTOVIT' and thus offended
the provision of s. 12(1) of the Trade and Merchandise Act, 1958;
(ii) whether the word 'DROPOVIT' was an invented or a descriptive word for the purpose of s. 9(1) of
the Act
Held :
(iii) In order that a trademark may be found deceptively similar to another it is not necessary that it 'should
be intended to deceive or intended to cause confusion. It is its probable effect on the ordinary kind of
customers that one has to consider.
(iv) The word 'DROPOVIT' being an invented word was entitled to be registered as a trade mark
(v) In favor of the Respondents.
Relative Grounds Contd…

(3) A trademark shall not be registered if, or to the extent that, its use in India is liable to be prevented -
(a) under any law
in particular, the law of passing off protecting an unregistered trademark used in the course of trade, or
(b) under the law of copyright.
To be noted : (4) Consent of the proprietor of the earlier TM
 (4) Nothing in this section shall prevent the registration of a trademark where the proprietor of
the earlier trademark or other earlier right consents to the registration. In such case, the
Registrar may register the mark under special circumstances under section 12.
 When can a TM not be refused registration ?

To be noted : (4) Consent of the proprietor of the earlier TM

 (4) Nothing in this section shall prevent the registration of a trademark where the proprietor of the earlier trademark or other earlier
right consents to the registration, and in such case, the Registrar may register the mark under special circumstances under section
12.

(3) Unless objection on any of those grounds is raised in opposition proceedings by the proprietor of the
earlier trademark.
 Well Known TM to be protected
(10) While considering an application for registration of a trade mark and opposition filed in respect thereof,
the Registrar shall—

(i) protect a well known trade mark against the identical or similar trade marks;
(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right
relating to the trade mark.

(11) Where a trade mark has been registered in good faith disclosing the material information to the Registrar
of where right to a trade mark has been acquired through use in good faith before the commencement of this
Act, then, nothing in this Act shall prejudice the validity of the registration of the trade mark or right to use
that trade mark on the ground that such trade mark is identical with or similar to a well known trade mark.
 Summary
 Sec. 9 of Trade Marks Act, 1999 lists absolute grounds for refusal for registration of trade marks - which relates to
the intrinsic qualities of the mark. The mark should not be registered -

 If the mark is of a non-distinctive character

 Descriptive
 Generic
 Contrary to public policy or morality
 Likely to deceive public
 Prohibited by law or
 They are in bad faith.
Summary
 Sec. 11 of Trade Marks Act, 1999 lists relative grounds for refusal for registration of
trade marks - which relate to conflicts with earlier trade mark rights belonging to
third parties.

 The mark should not be registered if its use will mislead the public about the origin of the
goods that is purchased or is intended to be purchased.
 Deceptively similar marks are not to be registered.
 If a trader opposes the registration of a particular mark on the grounds of that such a
mark proposed to be used will cause passing off, such a mark would be denied registration.
Summary

 Deceptive similarity :
 Likelihood of confusion :
 The question of comparison of two marks has to be approached from the point of view of a man
of average intelligence and imperfect recollection.
 If your mark is not distinctive, non-descriptive, and not generic, Sec 9 will strike your
registration application down unless you have acquired distinctiveness through marketing and
use.
 If you are a second mover in the market then your mark must not be deceptively similar to the
earlier mark.