It may be noted that the primary factor for any successful trade mark or brand is its “distinctiveness” or uniqueness in the minds of public. This also helps in increasing the chances of registration of the said trade mark before the Trade Marks Registry. In other words, if it is noted by the Trade Marks Registry that a particular trade mark is “devoid of distinctiveness”, then it may not be granted registration.
Trade Marks Act, 1999 provides “absolute grounds for refusal” for registration of trademarks. One of the grounds of absolute refusal of a trade mark is “lack of inherent distinctiveness”. This means that the trade mark lacks a distinctive character. Such a trade mark is considered non-registrable by the Trade Marks Registry.
How do we know what is a “distinctive” trade mark? Over a period of time, it has come to denote a trade mark which is “capable of distinguishing goods and services of one trader from another”.
CASE STUDY:
The above can be discussed with the help of the following landmark case of Marica Ltd. v. AgroTech Foods Ltd. by the Delhi High Court. The case below talks about “distinctiveness” in a trade mark under the Trade Marks Act, 1999.
Marico had filed a suit for infringement against AgroTech against use of the term “LOW ABSORB” for edible oils. Marico claimed that the term “LOW ABSORB” had been coined by it first in the year 2001 for the product edible oils. Thus, AgroTech cannot be permitted to use the said term for same products. But, AgroTech challenged the validity and claim of Marico to the use of “LOW ABSORB” as a trade mark. An initial ex-parte injunction had been granted to Marico. But, on an application filed by AgroTech, the Single Judge vacated the injunction granted to Marico earlier. The Single Judge noted that use of the mark “LOW ABSORB” by AgroTech Foods did not infringe Marico’s registered trade marks “LO-SORB” and “LOSORB”.
Marico, then, filed an appeal against order of Single Judge. In the appeal, the Court agreed with the Single Judge and dismissed the appeal filed by Marico. The Court held that Marico cannot claim any exclusive rights over the words “LOW ABSORB”. This was because “LOW ABSORB” is a combination of two common dictionary words and are also descriptive of the goods.
About rights over the mark “LOW ABSORB”, the Court held that the same is not an “inherently distinctive” mark. Thus, it does not qualify as a trade mark in the first place. Hence, no exclusive rights can be claimed over the phrase “LOW ABSORB”. The other two registered trade marks of Marico “LOSORB” and “LO-SORB” were also held invalid by the Court. It was held that the said marks were also a minor variation of the descriptive expression “LOW ABSORB”. Therefore, they are also vulnerable to challenge as a “distinctive” trade mark.
ONLY DISTINCTIVE WORDS GIVEN PREFERENCE FOR REGISTRATION:
It can be seen from above that descriptive words or words which form part of general usage are not considered “distinctive”. In fact, the above also shows that such registrations can even become vulnerable to cancellation in case of non-distinctiveness.
Thus, it can be said that Indian Courts have constantly held that words of common English language, dictionary words and even descriptive words which give away the character of goods and services, are not considered to be “inherently distinctive”. Such words and phrases should also not be allowed to be registered by the Trade Marks Registry.
WHAT IS A “DISTINCTIVE” MARK:
As mentioned in the introduction itself, any trade mark which is capable of distinguishing the goods and services of a trader from another would be considered “distinctive”.
For this process, the Trade Marks Registry or the concerned authority has to observe the mark in isolation from any evidence of use or other circumstances. The authority has to then observe whether the trade mark alone is capable of being distinguishable or not. In other words, whether the trade mark can separate the goods and services of one trader from another in the minds of the general public. If yes, then the trade mark may be considered distinctive.
However, it should also be noted that there is no fixed formula or method to identify a distinctive trade mark. It may be noted that every trade mark and every facts and circumstances should be evaluated on its own merit.
