Trademarks vs. Generic Terms: Can Generic Terms be Trademarked?

INTRODUCTION

Picture a vibrant city where the streets are alive with the sounds of commerce, and each establishment boasts a name plucked from our ‘everyday conversations’. Imagine a place where a tea stall named “Chai Chai Chronicles” warmly invites you to enjoy a cup of tea. Now, while the name sounds quite common for a tea stall, it lacks distinctiveness.

Can their names be officially protected under trademark laws?At first, it might seem a little confusing as Trademarks are like- ‘special signs’ that help us know where products or services come from. But the names of generic terms are different. They usually describe a commonterm that serves as a descriptor, conveying its origin and indicating where it belongs.This is where things get interesting. Trademarks must have a distinguishing capacity and must be ‘distinctive’ in itself. But linguistic wordsare often very common and if used exclusively, will be incapable of distinguishing a particular brand from another, in addition tobeing hit by the provision of Section 9(1)(b) of Trade Marks Act, 1999. For example, lots of things could be from Paris, so Paris in itself cannot set apart any products or services of one person from that of its counterparts.

[Image Sources: Shutterstock]

However, there’s an idea called “Acquired Distinctiveness ” that changes the story. They say that if a name of a place becomes special and means something more than just the place, then it can be a trademark. It’s like turning a simple name into a superhero logo that stands for something amazing.

In some cases, the courts agree with this idea, however its elusive to imagine definitive rulings in such domains as the rulings are based on the circumstances of each case.Henceforth, with the assistance of cases, we will explore how the names we know and the rules of trademarks can come together. It’s a journey that connects our world’s linguistic/common names with the world of laws, showing us how these two things can work together in a unique and interesting way.

The Secondary Meaning Doctrine: Elevating Geographical Names

The principle of Secondary Meaning is also known as ‘‘Acquired Distinctiveness’’. In India, the term “Fevicol” was initially a descriptive term for ‘adhesive products. However, Pidilite Industries successfully established that “Fevicol” had acquired ‘secondary meaning’ over time. Through extensive advertising and widespread use, consumers associated “Fevicol” with Pidilite’s adhesive products specifically. Consequently, the term “Fevicol” gained distinctiveness and was granted trademark protection under the Indian Trademarks Act.[1]

In the case ofLiving Media India Limited v. Jitender V. Jain and Anr., 2002 VAD[2](Delhi) 161, the court deliberated whether the terms “AAJ TAK” and its associated logo were common terms. Despite its descriptive nature, the court found that “AAJ TAK” had acquired secondary meaning through prolonged and widespread usage by the plaintiff, making it a distinctive coined term. Thus, the combination “AAJ TAK” couldn’t be used by others.

The doctrine of Secondary Distinctiveness is an important principle under trademark laws, that serves as a catalyst for transforming geographical terms from generic to distinctive. This doctrine postulates that if a term acquires a new meaning in the minds of consumers, associating it with a specific source, it can be protected as a trademark. Secondary meaning shows how geographical words can become more than just regular words and represent a specific place or thing. For instance,

INDIAN TRADEMARK CASES: INSIGHTS INTO GEOGRAPHICAL TRADEMARKS

1. Trademarks Act, 1999

Though The Trademarks Act of 1999 acts as gatekeeper, yet it also retains a measured deposition towards the concepts of acquired distinctiveness and well-known trademarks. On one hand, Section 9(1)(b), sets boundaries against registering indications to designate generic terms like- quality, value, geographical indications, etc., while on the other hand Section 11(9) serves as a bridge, allowing for the recognition of well-known Trademarks and Acquired Distinctiveness. This harmonious interplay exemplifies the Act’s efficacy with respect to balance.

The following cases illustrates how the Trademarks balance between Section 9(1)(b)& Section 11(9), shaping the landscape of Trademark Protection.

• Nandini Deluxe v. Karnataka Cooperative Milk Producers Union Ltd. &Ors[3].:In this case, the term “Nandini” was initially considered descriptive, falling under Section 9(1)(b) as it referred to a ‘cow’ in Sanskrit. However, the court recognized that due to extensive and consistent use by Karnataka Cooperative Milk Producers Union Ltd., the term had acquired distinctiveness in the context of dairy products. The court ruled that the acquired distinctiveness took precedence over the initial lack of distinctiveness under Section 9(1)(b), granting protection to the “Nandini” trademark for dairy products.
• Indian Shaving Products Ltd. v. Gillette U.K. Ltd.: The term “Supermax” was initially considered merely descriptive, indicating the highest quality or standard. However, evidence presented by Indian Shaving Products Ltd. showed that the term had acquired distinctiveness through its consistent use in the market for shaving products. The court upheld the acquired distinctiveness, granting protection to the “Supermax” trademark.
• Bharat Starch Industries v. Roquette Freres: The term “Maize” was initially regarded as a common English word for ‘corn’ and, hence, non-distinctive. However, the court acknowledged that through sustained and widespread usage, the term had acquired distinctiveness in connection with food products and industrial starch, thereby deserving trademark protection.
• In the case of L. Mehta v. Registrar of Trademarks[4], the focal point was the trademark “SULEKHA,” a Hindi term that signifies “a person with good handwriting.” This term is descriptive in nature, as evidenced by its dictionary definition. Surprisingly, the Court upheld the validity of the “SULEKHA” trademark because it was applied within the context of fountain pens, nibs, and related articles. This case established a precedent wherein ordinary or descriptive words from a language can be registered as trademarks if they are employed for distinct classes of goods, even when their common meaning suggests something else.

1. Geographical Indications Act, 1999

India’s Geographical Indications Act of 1999 seeks to safeguard products with unique geographical origins. This legislation plays a pivotal role in preserving the identity and quality of products connected to specific regions. For instance,

“Malabar Pepper,”, though ‘‘Malabar’’ is geographically located in the former Madras Presidency, and represents geographical location but it was still acknowledged by the IPR’s GI Act because of its renowned distinctive characteristics. This spice is exclusively cultivated within the geographical expanse of the Malabar region and stands out as a warming element, offering a distinctive and unparalleled experience to culinary endeavors. Henceforth it ensures its authenticity and distinctiveness at the same time.

CONCLUSION

In conclusion, the question of whether generic terms can be trademarked is met with an affirmative answer, albeit within the framework of the conditions set forth by the Trademarks Act, 1999. As we’ve explored, these conditions primarily revolve around the concept of acquired distinctiveness, a critical factor that transforms an otherwise generic term into a protected trademark. This approach strikes a balance between encouraging innovation and safeguarding consumer interests.

Author: Samta Sharma, A Student at JIMS School of Law, GGSIPU, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing

REFERENCES:

1. Generic Words & Trademarks, Lexology, https://www.lexology.com/library/detail.aspx?g=15e8fb21-8c4d-4753-9a2d-a8598214aeba
2. Generic Trademark, Wikipedia, https://en.wikipedia.org/wiki/Generic_trademark
3. The Life of Generic Trademarks, Mondaq, https://www.mondaq.com/india/trademark/1194548/lost-in-the-crowd–the-life-of-generic-trademarks
4. Descriptive Trademarks, Legal Services India,https://www.legalserviceindia.com/legal/article-11656-descriptive-trademark-ground-for-opposition-easy-to-advertise-difficult-to-protect.html

[1]https://www.legalserviceindia.com/legal/article-11656-descriptive-trademark-ground-for-opposition-easy-to-advertise-difficult-to-protect.html

[2]https://indiankanoon.org/doc/160904/

[3]https://indiankanoon.org/doc/3173546/

[4]AIR 1962 Bom 82, (1961) 63 BOMLR 642https://indiankanoon.org/doc/438950/#:~:text=In%20answer%20to%20this%20notice,to%20three%20of%20the%20six