19 May, 2016
In theory, proving that a trademark, such as Choco Treats or Med-Aid, is descriptive of its goods or services sounds easy-done. However, in practice, the recent case Gufic Private Limited and Anr. versus Vasu Healthcare Limited (“Sallaki case”) proved that it is quite the opposite. In setting an evidentiary standard that is higher than any previously used to establish a mark is descriptive, the Sallaki case undoubtedly will have an impact on future descriptive mark cases.
To help us better understand descriptive marks and the affect that the Sallaki case will have moving forward, we spoke with Intellectual Property solicitors at LexOrbis, and here is what they had to say.
Conventus Law: What is a descriptive mark, and are they protectable under India’s trademark laws?
LexOrbis: A descriptive trademark is simply a mark which draws a direct reference to the products or services for which it seeks protection or is already registered. Effectively, if the trademark contains or describes the characteristics or features which directly identify or specify the products or services enlisted under the mark then it is considered to be a descriptive mark. Illustrations of descriptive trade marks would be:
_ CHOCO TREAT in respect of chocolates and chocolate based confectionery;
_ AERO GEAR for sky diving suits, tools and equipment;
_ MED-AID for medical and first-aid services;
_ Image of a hen for poultry-based products.
Descriptive trade marks are generally prohibited from being registered under Section 9 (1) (b) of the Indian Trade Marks Act, 1999 (“the Act”) with the exception to the rule being that the mark in question has acquired distinctiveness or secondary meaning by virtue of long-standing use and the resulting recognition. Illustrations of marks which are clearly descriptive but registered due to acquired distinctiveness are:
_ BEST BUY
_ AMERICAN AIRLINES
_ RED LOBSTER
A descriptive mark, over a sustained period of extensive and uninterrupted usage and substantial promotion may acquire the status of a ‘well-known’ mark under the scope of Section 2 (1) (zg) of the Act and as such, would be considered capable of registration. Some marks which were held as ‘well-known’ by Indian courts are WHIRLPOOL, PEPSI, DUNHILL and LOUIS VUITTON.
CL: In the Sallaki case, the Defendant attempted to prove that the Plaintiff’s mark Sallaki was descriptive because it believed the plant from which the medicine is derived is called SALLAKI in Sanskrit, and to further support the term’s wide use, the Defendant provided sixteen examples of how the mark SALLAKI or its variants were being used by manufacturers in the industry. The Defendant lost on this argument. However, there have been other decisions in India in which a party was able to prove that a mark was descriptive.
What is needed to prove that a mark is in fact descriptive?
LO: The Defendant in Sallaki relied on their contention that the name of the particular Sallaki plant was being used in a number of trademarks. This only furthered the case of the Plaintiff as the court stated that keeping all these names outside the purview of trademarks would not be practical. Besides, Gufic Private Limited’s trademark was also able to establish a secondary meaning to the trademark identifying with its products. Descriptiveness hampers the distinctive character of a trademark and makes it vulnerable, as the mark invariably refers to the nature, quality, characteristics, ingredients, or origin of a product or service. The Cadila Healthcare vs. Gujarat Co-Operative Milk Marketing Federation Ltd judgment shows that ‘sugarfree’ could not be monopolised and was restricted to one product and for any other product, it would be considered descriptive.
Proving descriptiveness was presumably an easier task than what is portrayed with the ‘Sallaki Case’. With this particular case a high level of cogent evidence is now required to prove that the mark was widely in use and that it gained substantial fame. Further, one position that has become clearer by this judgement is that any trademark which has earned goodwill over a number of years cannot be infringed on the mere pretext that it is descriptive. When established goodwill and reputation come into question regarding passing off being justified in the guise of descriptive marks, this judgment would eliminate such casual treatment. The judgment affects the standard of evidence to prove that a mark is descriptive. The judgement would obviously help safeguard registered and unregistered trademarks that have derived distinctiveness through time and usage.
CL: In reaching his decision in Sallaki, Justice Gautam Patel reviewed the evidence on how commonly and widely the term Sallaki was being used. Is proof that a term or mark is being used on the internet to refer to a product or service in general versus to a specific brand sufficient to show that it is descriptive?
LO: In the current case, the usage of internet as a sufficient cause for establishing that the mark was descriptive cannot and should not be taken in the literal sense. Even on the internet, only if a mark specifically identifies with a domain and is so connected to derive a secondary meaning, will the usage be considered to be widespread and extensive. The general use of the term and on websites or webpages would not amount to making the trade mark widely used.
The following case by the Delhi High Court is ample to show that proof of a term or mark which exists online and can sufficiently prove to be distinct is a protected trademark. In re Yahoo Inc. vs. Akash Arora and Another, it is held that in the use of identical or deceptively similar word, the domain word acquires uniqueness and distinctiveness on account of association with its company, and it, is entitled to protection. The domain name had acquired a secondary meaning and was hence protected.
CL: From a business perspective, what can a brand owner do to proactively ensure that its potentially descriptive mark obtain a secondary meaning which identifies it with a particular product or as being from a particular source?
LO: Although, not advisable, but if a descriptive trademark is utilised for a business it can only attain protection by achieving a secondary meaning in relation to the goods or services being provided. Secondary meaning here would mean that the consumer directly relates the trademark to the business despite it prima-facie appearing to be a descriptive word or image or design/device. Such goodwill or reputation needs to be acquired and attached to the business that the trademark can be clearly termed as distinctive to the business and can act as a source identifier for the goods or services being offered. This could be achieved by long term usage, advertising and publicity which would make the business and such trademark synonymous to each other.
The same can be seen in the case of ITC Limited v. Nestle India Limited: “This Court observed from a catena of judgments discussed in [the] instant case that when [a] word was only descriptive of character of goods, no protection can be claimed for use of such word, but if [a] word is known for its distinctiveness secondary meaning, such word is entitled to get protection. In [the]present case, [the] word or mark “Magic Masala” cannot be considered as descriptive word.” The evidence for the descriptive mark should be filed at the earliest. After the trademark has been sustainably used, the position established through large sales, publicity and possibly time evidence should be filed to avoid cancellation.
CL: In looking ahead, while not a landmark case, will the Sallaki case have an impact on future descriptive mark cases, and if yes, how?
LO: The judgment makes a strong case for safeguarding registered and unregistered trademarks that have derived distinctiveness through time and usage. Moreover, the standard set by this judgment would affect future cases wherein stronger evidence would be required for proving descriptiveness of a trademark.
For further information, please contact:
Manisha Singh, Partner, LexOrbis