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“DISTINCTIVENESS AS A GROUND FOR REFUSAL TO

REGISTRATION UNDER SECTION-9”

Project submitted to

Mrs. Debmita Mondal

(Faculty: Trademarks law, Hons. II)

Project submitted by

Harish Kumar Salame

Semester IX

Roll no. 55

HIDAYATULLAH NATIONAL LAW UNIVERSITY, RAIPUR, C.G


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Acknowledgement
I would like to take this opportunity to express my deep sense of gratitude towards my course
teacher, Mrs. Debmita Mondal for giving me constant guidance and encouragement throughout
the course of the project.

I would also like to thank the University for providing me the internet and library facilities which
were indispensable for getting relevant content on the subject, as well as subscriptions to online
databases and journals, which were instrumental in writing relevant text.

Harish Kumar Salame

IXthSemester

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Contents

ACKNOWLEDGEMENTS .......................................................... ……………….Error! Bookmark not defined.

OBJECTIVES: ......................................................................................... ….Error! Bookmark not defined.

RESEARCH METHODOLOGY:Error! Bookmark not


defined.....................................................................................................................

Research Question….……………………………………………………………………………………………………………………………

Scope ……………………..…………………………………………………………………………………………………………………………..

INTRODUCTION: ....................................................................................... Error! Bookmark not defined.

Distinctiveness of a mark:: ........................................................................ Error! Bookmark not defined.

Concept of Acquired Distinctivess ........................................................... Error! Bookmark not defined.

FACTORS NECESSARY TO INFLUENCE THE DISTINCTIVENESS OF A MARK ................... Error! Bookmark not defined.

CONCLUSION ............................................................................................... Error! Bookmark not defined.

Bibliography………………………………………………………………………………………………………………………………………..

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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 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 Trademarks Law are
primarily helpful for the completion of this project.

Research Questions

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

SCOPE

The geographical scope of this Project work is mainly limited to India, and also gives a basic
outline about the ideology followed in UK.

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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 tautologous, 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 associate 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 unregistrable, 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

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‘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’).

Stance taken by courts of India & abroad:

(i) 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 trade marks--

(a) 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;

(b) 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

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

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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'.

(ii) 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 recognize 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:

(i) Has the trade mark been used as a trade mark i.e. as a means of identifying trade origin of the
goods?

(ii) Has the applicant promoted the trade mark as a trade mark?

(iii) Does the evidence show, as a matter of fact, that the trade mark is operating in the market
place as an indicator of origin?

(iv) 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?

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. (Case C-108/97).

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(v) (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.

(iii) 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 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'.

(iv) 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.

4
. [1999] ECR II-2383.
5
. C-191/01 P - OHIM v Wrigley.

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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
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.

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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 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.

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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:

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:

(a) Period of Use

(i) 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.

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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.

(ii) 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.

(iii) 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.

(iv) the period of use will be considered in conjunction with turnover figures.

(b) Advertising expenditure

(i) Advertising figures provided should be for a period of 5 or more years prior to the date of
filing.

(ii) The type of advertising should be listed e.g. TV, magazines, posters, newspapers, radio,
billboards, trade publication, trade fair, sponsorships etc.

(iii) The breakdown of advertising figures in relation to each class of goods and services should
be provided, where feasible.

(iv)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.

(v) The importance to be attached to advertising figures depends on the goods/services in issue.

(c) Nature of exhibits

(i) 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.

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(ii) 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.

(iii) 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, 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 Mark6, 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”.

Examples of Three-Dimensional Marks Devoid of Distinctive Character In the decision of


April 3rd 2001of the Maritime and Commercial Court, in the case of Pitney Bowes Inc v.
Neopost Ltd7 the court found that this mark, the shape of a cardboard cylinder, consisted in such
a well-known geometric shape that it could be characterized as a primary form. Therefore, the

6
. [1998] R.P.C. 455.
7
. ECLI:EP:BA:1999.

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court found that “the mark lacked distinctive character and that trademark protection by way of
distinctive character acquired through use had not been obtained either.” This was affirmed in
the appeal. In this case, the office found that “the fact that the illustrated “snack” is slightly
curved or that its surface is grooved does not provide sufficient distinctive character, because
these elements are commonly used for snacks and potato crisps. Nor the fact that the basic shape
of the mark is square provides distinctiveness, because snacks and potato crisps are commonly
formed in simple geometric shapes, such as round, square, oval or triangular.

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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BIBLIOGRAPHY
STATUES:
 Indian trademarks Act, 1999.

Webliography
 www.manupatrafast.in
 https://iiprd.wordpress.com/2012/12/26/analysis-of-the-case-carlsberg-india-pvt-ltd-vs-
radico-khaitan-ltd-on-20-december-2011/
 Cases by ECJ.

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