Part IV: Descriptive Marks – Can They be Protected?
This post was first published on October 16, 2014.
In the final part of this series, we shall conclude the discussion on descriptive marks with an examination of the Indian position on the protection of these marks. Section 9 of the Trademark Act, 1999 which lays down absolute grounds for refusal of registration of trademarks, clearly states that trademarks 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 shall not be registered. This provision applies to marks that are both descriptive and non-distinctive in relation to the goods or services for which protection is sought. While analyzing a mark, one has to look at the word, not in its strict grammatical significance, but as it would represent itself to the public at large who are to look at it and form an opinion of what it connotes, as observed in Keystone Knitting Mills Ltd.’s TM [(1928) 45 RPC 193].
However, said provision is subject to the exception that the marks that are devoid of distinctive character and those of descriptive nature may be registered if they have acquired a distinctive character as a result of its use or if it is a well-known trademark. A descriptive mark may be granted registration if it has acquired a secondary meaning which identifies it with a particular product or as being from a particular source. In this regard, the various factors that are taken into consideration to determine if a particular mark has acquired distinctiveness include, the length of use, volume of goods marketed, extent of service provided, use of an advertising slogan, use in combination of other marks, advertising expenditure, evidence of trade and consumer surveys.
In short, India, like the US and Europe, does not permit the registration of descriptive marks per se, unless the mark has acquired distinctiveness or secondary meaning.