Part I: Descriptive Marks – Can They be Protected?

This post was published on September 01, 2014.


In India, a Trade Mark means a mark capable of being represented graphically and capable of distinguishing goods or services of one person from those of others. These are the basic requirements for a mark to be eligible for Trade Mark protection laid down under Section 2(1)(zb) of the Trade Marks Act, 1999. Apart from these qualifications, a mark should also not fall under the category of the marks mentioned under Section 9 and 11 of the Trade Marks Act, 1999.

In this category, are Descriptive Marks. One can ask a lot of questions about Descriptive Marks, some of which have easy answers.

What are Descriptive Marks? As per the provision, descriptive marks are those 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 services. Such marks can include words like ‘best’ describing quality of a product, ‘mega’ describing the size etc.

Why do people try to Trademark Descriptive Marks? Such marks are favored by the marketing world since they do not require great expenditures of marketing resources to create an immediate link in the minds of consumers between the mark and the product or its characteristics.

Then come the questions with difficult answers.

Are Descriptive Marks completely excluded from the subject matter of Trademark protection? If the answer is a simple no, what are the circumstances in which a Descriptive Mark can become eligible for Trademark protection?

We shall be exploring the answers to these questions through a series of blog posts on Trademark protection of Descriptive Marks. We shall analyse the legal framework for the protection of Descriptive Marks in India, the US as well as in Europe to make a comparison between the attitudes of these Governments towards Descriptive Marks and their eligibility for Trademark protection.