Juris Centre

Revaluation of Descriptive/Laudatory Marks and the Acquired Secondary Meaning

A great trademark is appropriate, dynamic, distinctive, memorable and unique.

–Primo Angeli

  • INTRODUCTION

A trademark is an intellectual property that is used by a manufacturer to identify a product by using a visual symbol, label, sign, or design. It assists clients in differentiating one company’s goods or services from the competition.

Section 2(1)(zb) of the Trademark Act, 1999, says that a trademark must be a mark which includes a device, heading, brand, label, ticket, signature, word, letter, name, numeral, packaging or combination of colours or any combination of the above attributes.[1]

Each trademark identifies the products sold thereunder as coming from a specific source. A particular trademark becomes legally recognised or psychologically associated in the minds of consumers as being distinctive of the product and its source through consistent use over an extended period of time.

Some trademarks are distinctive from the beginning due to ingrained qualities, and they are legally protected as soon as they are used as a trademark. However, other marks receive protection because a secondary meaning that develops over time makes them distinctive from the beginning.

  • MEANING

Descriptive or laudatory marks might pose certain difficulties for trademark protection and subsequent meaning acquisitions. Let’s emphasise these ideas:

  • Descriptive Marks: It is a term or phrase that specifically describe the products or services being provided. They often consist of words that are common or generic and explain a feature, quality, component, or goal of the good or service. The terms “Soft Cotton” for garments or “Delicious Bakery” for baked goods are examples of descriptive marks.

Given that they do not necessarily indicate where the products or services came from, descriptive marks are typically seen as being weak and do not automatically confer trademark protection. Thus, a descriptive mark when applied to goods and services, it is not registrable unless there is proof of acquired distinctiveness, which the responder must provide at the time of registration application. The obstacle of proving uniqueness does not arise if the mark is intended for use on the date of application. However, a descriptive mark may qualify for trademark protection if it has a secondary meaning.

The section 9 of the Trade Marks Act, 1999 provides for absolute ground for refusal of registration by trade mark authority. The section 9(1) of the Trade Marks Act, 1999 specifically deals with refusal of trade mark registration for word or expression indicating “Trade Description.”[2]

Many “trade description” phrases and idioms, though, have already been trademarked:

 (1) Which was well known trade mark before the registration

 (2) Using a well-known acronym for a trade description, the trademark owner was able to obtain this registration.

 (3) Through the combination of the “trade description” mark with another trade mark.

  • Laudatory Trademarks: Laudatory trademarks are adjectives that must be established to have a secondary meaning in order to be legally protected. It has been noted that many laudatory markings, however, tend to imply that the product is of high quality or “better” quality than other comparable products rather than truly describing any attribute of the product they are used with.

Even after providing evidence of secondary meaning, registered Laudatory trademarks are typically regarded as weak and only entitled to a limited area of protection. Despite the fact that one may be able to register their laudatory mark, rivals will probably still be able to utilise it because to the different fair use defences.

There must be something unique about the term chosen; it shouldn’t be either laudatory or descriptive since then anyone may use it. Therefore, it would be wise for any trader or producer to adopt a coined or unique word if they anticipate obtaining proprietary rights over it and an injunction against competitors using it. Unless a mark is well-known or has gained distinctiveness through usage, it cannot be registered if it can describe the nature or calibre of the goods. It is not necessary for the Opponent to prove that other traders are actually using such detailed language. It suffices if the trademark conveys one of the qualities that identify the goods.

The first inquiry that the court should make when evaluating the nature of the mark for registration purposes or for passing-off/infringement purposes is to ascertain whether the applicant’s or plaintiff’s mark is original, arbitrary/suggestive, descriptive, or generic. The goods of the plaintiff/applicant are always taken into consideration while determining the mark’s nature.

For example, the Registrar of Trademarks must determine if the trademark “Extra Strong” is laudatory or descriptive of the items for which it is applied, i.e., the applicant’s commodities.

A laudatory trademark that acquires up secondary meaning is a trademark that has established itself as a brand for particular products and services coming from one source. Both direct and circumstantial evidence is used to demonstrate that the general public recognises a trademark as a brand associated with a single source in order to prove that a trademark has acquired secondary meaning.

  • Secondary Meaning: ‘Secondary meaning’ is the process by which a mark acquires a distinctive identity in customers’ minds after initially being devoid of any distinguishing traits. This occurs when the source of the goods or services that a brand represents has more importance to the general public than the product or service it represents.

For instance, if a company uses a certain phrase or symbol as a trademark and over time the public starts to associate that word or symbol with that company and its products, that word or symbol acquires a secondary meaning.

Acquired distinctiveness, often known as acquired secondary meaning, is a concept related to secondary meaning. When a mark is sufficiently distinctive to be recognised as a source identifier, it occurs. To put it another way, when a mark acquires a secondary meaning, the general public can determine the source of the goods or services based on the mark because it is distinctive and exclusive to a particular brand.

In the context of intellectual property, the notions of “secondary meaning” and “acquired distinctiveness” are crucial for determining whether a trademark is legally protected. Section 9 of the Trade Marks Act, 1999 states that if a trademark has acquired distinctiveness through use prior to the date of registration or is a well-known trade mark, registration should not be denied. According to the general criterion of distinctiveness, an identifying mark is distinctive and capable of being protected if it is either innately distinctive or has acquired distinction through secondary meaning.

The subject matter of acquired uniqueness and secondary meaning is relatively indirect in Section 32 of the Act.  According to the Section, a mark that is registered without taking into account the circumstances surrounding the reasons for registration refusal will not be regarded as invalid if, through use, it has developed a distinctive character in relation to the goods for which it is registered after registration and before the beginning of any legal proceedings.[3]

However, the Act lacks clarity regarding the standards that should be used to determine whether a mark has “acquired distinctiveness” or “acquired secondary meaning,” in contrast to the US and other nations that have established guidelines for addressing these legal issues.

“The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are

(1) generic,

(2) descriptive,

(3) suggestive, and

(4) arbitrary or fanciful.

The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product.[4]

  • In the case of Living Media India Limited v. Jitender V. Jain and Anr.,2002 VAD (Delhi) the court had to consider whether the name and style of “AAJ TAK,” as well as its logo, are generic phrases that are not the monopoly of any single person, whether relating the news show or elsewhere. The court ruled that even though the words “AAJ TAK” are descriptive in nature and have a dictionary meaning when used together, they were still created by the plaintiff and have developed a secondary meaning as a result of prior, ongoing, and extensive use. As a result, no one else is permitted to use the words “AAJ TAK” together. Both “AAJ” and “TAK” are independently descriptive words that cannot be monopolised by one person. The word combination has acquired distinctiveness and is therefore protected due to prior, ongoing, and substantial use.[5]
  • In another case of ITC Vs Nestle India Limited (Madras High Court) (C.S. No. 231 of 2013) it was held Plaintiff asserts that Defendant created the “Magical Masala” as a sub-brand by modifying the term “Magic Masala” a little bit and adding the syllable “al” to the term “Magic.” According to the court’s ruling in this particular case, the terms “Magic” and the variant “Magical” are frequently used in the sector. The phrases “Magic” and “Masala,” which are both extensively used in Indian cuisine and the food industry, cannot therefore be attributed to either the plaintiff or the defendant. The court further explained how there is no flavour named Magic, hence the plaintiff did not use the term to describe the flavour. In fact, the plaintiff has identified the flavour in the sachet as Magic. Meanwhile, Plaintiff has used the term “Magic Masala” to laudably advertise the Masala in the sachet. [6]
  • Citing the reasoning from People Interactive (India) Private limited v. Vivek Pahwa, the Single Judge in Capital Foods Private Limited v. Radiant Indus Chem Pvt. Clarified that the markings “SCHEZWAN CHUTNEY” and “SZECHUAN CHUTNEY” were initially dismissed by a single judge bench of the Delhi High Court as descriptive and devoid of secondary significance, only to be eventually recognised as having “secondary significance” by the Division Bench. According to the court, a term acquires on a secondary meaning when it loses its original meaning and gains a new one that only applies to the claimant’s goods. The claimant must also demonstrate that it has been using the phrase continuously for a significant amount of time during this process of obtaining new meaning.[7]
  • The Delhi High Court ruled in Ishi Khosla v. Anil Aggarwal that “it is not necessary for a product to stay in the market for several years to acquire secondary meaning.” If a new concept is intriguing and appealing to consumers, it may become renowned overnight. The case presented here demonstrates the idea of “acquired distinctiveness.” For a trademark to become unique, it is not essential for the associated goods to have been on the market for a specific period of time. It varies from case to case because a trademark might become distinctively its own very immediately. The time frame within which a trademark must have developed distinctiveness is undefined.
  • In the case of BharatBhai Khushalbhai Patel Trading as HariKrishna Vs. Deluxe Bearing Ltd. At the Gujarat High Court, 2012,  it was held that according to a random dictionary the term “luxury” was first used in French as DELUXE (the contested mark is SUPER DELUX). The word’s definition in English is “opulent,” “rich,” “special,” “brilliant,” and “superior in quality,” as in “DELUX car with rich finishing,” etc. DELUX and DELUXE sound same when spoken phonetically. The definition of SUPER is “beyond comparison, superior to all others, superior quality.” Combining SUPER DELUX is a praiseworthy term that describes the products’ quality as being exceptional. Such phrases cannot be used as a trademark. All consumers and producers have the right to such laudatory expressions. It reflects the exceptional attributes of the items, and there is some disagreement over how it was registered. Even after 100 years of use, five years cannot make something stand out. With any amount of use, it is unable to serve as a trademark. Due to the absolute bar imposed by Section 9(1) of the Trade Mark Act of 1999, the contested marks must be withdrawn for this reason alone.[8]
  • CONCLUSION

Indian trademark law is on par with all other regulations in the world when it comes to limiting the use of descriptive words in a trademark. Adopting a word from everyday speech and applying it as a trademark is a dangerous move because it raises the possibility of consumer confusion. But occasionally, a once-illegal descriptive mark acquires a secondary meaning or distinctiveness and customers associate it with the applicant’s company. The idea of “acquired distinctiveness” is then relevant.

This idea is expressly stated in the Proviso to Section 9 (1) (b) of the Trademarks Act of 1999, and courts frequently uphold it. The courts have been quite meticulous when implementing this rule, and they have also prioritised the presentation of evidence that supports the repute and goodwill of the property. As a result, many innocent trademark owners may find comfort in the proviso to Section 9(1)(b).

[1] Trademark in India, Published by Legaldesk, Site: legaldesk.com Trademark In India: A Brief Introduction Last Visited on 26-5-2023, 22:20PM

[2] Descriptive Trademark In India, Published by B&B Associates, Site: https://bnblegal.com/article/descriptive-trademark-business-evaluation/, Last Visited on 27-5-2022, 14:57PM

[3] Secondary Meaning and Acquired Distinctiveness, Published By Blog IPleaders, Site: Secondary meaning / acquired distinctiveness as criteria for trademark protection – iPleaders, Last Visited on 26-5-2023, 23:23PM

[4] Descriptive and Laudatory Marks, Published on RajnisinghBlogs, site: Descriptive and Laudatory Trade Mark | rajnisinhablog (wordpress.com), Last Visited on 27-5-23

[5] Secondary Meaning and Acquired distinctiveness, Published on Blog IPleaders, Site: Secondary meaning / acquired distinctiveness as criteria for trademark protection – iPleaders, Last Visited on 27-5-23, 22:01PM

[6] Secondary Meaning and Acquired distinctiveness, Published on Blog IPleaders, Site: Secondary meaning / acquired distinctiveness as criteria for trademark protection – iPleaders, Last Visited on 27-5-23, 22:01PM

[7] Delhi HC makes a U Turn on Acquired Distinctiveness, Published by SpicyIP, Site: Delhi High Court makes a U turn on Secondary Meaning and Acquired Distinctiveness – Spicyip, Last Visited on 27-5-23, 10:11PM

[8] Descriptive and Laudatory Marks, Published on RajnisinghBlogs, site: Descriptive and Laudatory Trade Mark | rajnisinhablog (wordpress.com), Last Visited on 27-5-23

Author: Nandini Pathak

Leave a comment