Acquired distinctiveness and secondary meaning plays a significant role in trademark consideration. The trademark distinctiveness of a trademark is a key factor in determining if it can be registered. While some trademarks possess inherent distinctiveness from the outset, others develop it over time.
Certain trademarks are naturally distinctive because they are:
Arbitrary: Trademarks that are not directly related to the goods and services.
Fanciful: Trademarks that are completely invented by the Applicant’s own mind.
Suggestive: Trademarks that gives some hint of the product and services.
Each trademark naturally links the goods it represents with a specific source. The longer a trademark is used, the stronger this association becomes. Eventually, a trademark becomes registered or mentally connected with the product and its source in the minds of consumers as a distinctive sign. This phenomenon is known as “acquired distinctiveness” or “secondary meaning.” It signifies that the trademark has gained significance among the public beyond its ordinary dictionary meaning.
CHANCES OF REGISTRATION
The level of uniqueness that a trademark holds for products and services significantly influences its chances of being successfully registered. If a trademark lacks inherent distinctiveness, it becomes necessary to prove acquired distinctiveness. This procedure can be time-consuming and might not always result in success. When a trademark lacks both inherent distinctiveness and the ability to distinguish the applied goods/services, the application is likely to be turned down.
ELEMENTS FOR PROVING ACQUIRED DISTINCTIVENESS IN INDIA
1. Duration of Use in India:
(i) Evidence of consistent, significant usage over time.
(ii) Shows the mark’s role in identifying goods/services.
2. Advertising and Promotion:
(i) Display efforts to promote the mark within India.
(ii) Highlights brand visibility and recognition efforts.
3. Reputation and Position in the Market:
(i) Provide data on market share and reputation.
(ii) Demonstrates mark’s acceptance among Indian consumers.
4. Consumer Recognition and Association:
(i) Present proof of consumer perception and link with the mark.
(ii) Vital for establishing consumer connection to a specific business.
STATUTORY PROVISION IN TRADEMARK
In the Trade Marks Act, section 9 states the provisions of registration of trademark and if a trademark simply describes the product or service, and are non- distinctive it can’t be registered. This rule aims to maintain uniqueness in trademarks.
However, there are exceptions. If a trademark becomes distinctive through its continuous and extensive use before seeking registration, it can still be registered. This concept is termed “acquired distinctiveness.”
The Act also addresses “well-known” trademarks. These are trademarks widely recognized by the public and indicate a connection between goods/services and the trademark owner. Think of brands like Pepsi, Reebok, and McDonald’s.
Additionally, Section 32 permits the presentation of evidence regarding trademark use during registration or legal proceedings. This provision is pivotal for demonstrating that a trademark has gained significance over time.
CASE LAWS
In the legal case of Living Media India Limited V. Jitender V. Jain and Anr. (2002), the court had to decide if the name and logo “AAJ TAK” were generic terms or if they held specific meaning due to prior use. Despite the individual words being descriptive, their combination had gained uniqueness through continuous use by the plaintiff, preventing others from using it.
In J.L. Mehta v. Registrar of Trademarks, the issue centered on the word “SULEKHA”, which means “good handwriting” in Hindi. While descriptive, it became a valid trademark when used for different items like fountain pens, showing that common words can gain trademark status when linked to other goods.
Metropolitan Trading Company v. Shri Mohanlal Agarwal revealed that one “ZODIAC” trademark gained distinctiveness due to prolonged use, while another with shorter use didn’t qualify. This demonstrated the importance of time in “acquiring distinctiveness.”
Ishi Khosla v. Anil Aggarwal showcased that a trademark needn’t be around for years to gain secondary meaning. An innovative idea can quickly become distinctive, depending on its appeal. This clarified that the time for “acquiring distinctiveness” varies case by case. There’s no fixed period for a trademark to become distinctive.
CONCLUSION
In conclusion, Indian trademark law aligns with international standards by placing restrictions on using common words as trademarks. Opting for everyday words as trademarks can lead to confusion among the public. However, there are instances where such descriptive words gain a unique meaning tied to a particular business. This concept, known as “acquired distinctiveness,” comes into play.
This principle is clearly outlined in Section 9 (1) (b) of the Trademarks Act of 1999 and is widely upheld by the courts. The courts carefully examine the evidence that highlights a trademark’s reputation. As a result, this aspect of the law offers solace to many well-intentioned trademark owners.
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
