In Caterpillar Inc. Vs. Mehtab Ahmed and Others ( 99 (2002) DLT 678) court delineated various categories of words used in a trademark:
- The words or marks can broadly be divided into six categories. The first category of words is “generic”. These words have dictionary meaning and are neither specific nor special. These words belong to genus. Generic name is name of genus which names the species. Such words are neither brand names nor have any protection by a registered trade mark. The words which are directly descriptive or quality of goods belong to second category. Such words are adjective expressing quality or attribute of an article or goods. These are neither patented nor proprietary names. These words are in common parlance known as laudatory epithets.
- Third category is that of directly descriptive words. These words describe the character or the quality or attribute of the goods or articles but without an element of laudation. The words of second and third category if used as a mark acquire secondary meaning on account of constant and long user. Fourth category is of ‘indirectly descriptive words’. These words are those which have indirect or remote reference to the nature or quality of goods. The element of directness is wanting in these words. Such words can be used as a mark or trademark irrespective of the fact whether they acquire secondary meaning or not.
- Words which are fanciful or arbitrarily applied to goods and do not have either direct or remote reference to the nature or quality of goods fall within fifth category. The words belonging to categories two, three and five if used in relation to a particular goods can be protected if attempt is made to pass them off by way of deceptive similarity either in look or sound.
- The last category is of “invented words”. No meaning is attached to these words. These are composed by imagination and are designed for the first time. These words demonstrate or display efforts or skill of imagination, faculty or power of inventing. These words are invented in relation to a particular good. Such words are inherently distinctive and therefore have to be protected in any case. These words are designed or contrived through imagination for the first time wherein ability as well as flight or efforts of imagination is displayed.
- As regards marks or trademarks falling within categories 2 to 5 namely ‘directly descriptive words having laudatory epithets, ‘directly descriptive words without laudatory epithets, indirectly descriptive words and words not being descriptive have also to be protected as some of them over a period acquire secondary meaning while others due to prior and consistent user denote source and origin and if any attempt is made to either mutilate them or simulate them such an attempt amounts to passing off as it demonstrates element of malafideness for cashing upon the reputation and goodwill of such marks. Likelihood of confusion as to source or origin of a particular goods sold under a particular trade mark broadly amounts to an act of passing off.
Further, in case of ABERCROMBIE & FITCH COMPANY v. HUNTING WORLD, INCORPORATED(537 F.2d 4 (2d Cir. 1976)), it was held as follows:
The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others,8 and because the same term may be put to different uses with respect to a single product. In various ways, all of these complications are involved in the instant case.
Laudatory trademarks are adjective words requiring a showing of secondary meaning to be protectable. However, it has been recognized that many laudatory marks do not actually describe any feature of the product it is used with; rather, they tend to suggest that the product is of high quality or “better” quality than other similar products.
Even registered Laudatory trademarks are generally considered weak and entitled to a narrow scope of protection, even after a showing of secondary meaning. One may be able to register their laudatory mark, but competitors are still likely to be able to use that mark under the various fair use defences. The jural messages are clear and unequivocal. If a party chooses to use a generic, descriptive, laudatory or common word, it must realize that it will not be accorded exclusivity in the use of such words. At the most, it may bring a challenge in the nature of passing off and in such an event the Court would look at the rival labels/packagings/trade dresses in order to determine whether a customer possessing a modicum memory and ordinary intelligence may be so confused as to purchase one product believing it to be the other.
In the decision of the European Court of Justice in Proctor & Gamble versus Office of Harmonisation in the International Market (OHIM), (2002) RPC 17 (famously known as “Baby Dry Case”, para 42 & 44), it was noted that the proprietary character could be accorded to expressions which are syntactically unusual. Word combinations like ‘BABY-DRY cannot be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed.
In other words, there must be something unique to the choice of the word; it should neither be descriptive nor laudatory since everyone would be entitled to use such word(s). It would be wise, therefore, for any trader or manufacturer to use a coined or unique word if he expects proprietary right over and a consequent injunction to issue in respect of the user of such trademarks by rivals.
A mark which can indicate the character or quality of the goods cannot be registered unless it is a well-known mark or it has acquired distinctiveness by use. It is not necessary to establish by the Opponent that such descriptive use is in fact is being made by other traders. It is sufficient if the mark has one of the meanings which indicates characteristic of the goods.
While determining the nature of the mark for the purpose of registration or for the purpose of passing-off/infringement, the first inquiry which the court ought to carry out is to determine whether the applicant’s/plaintiff’s mark is invented, arbitrary/suggestive, descriptive or generic. The nature of the mark is always determined with respect to the plaintiff’s/applicant’s goods. For example, if a person applies for a trademark called “Extra Strong”, the Registrar of trade mark has to examine whether the mark is descriptive or laudatory for the goods for which it is applied, i.e., the applicant’s goods. The inquiry does not depend on the person.
Random dictionary states DELUXE (the impugned mark is SUPER DELUX) was originally a French word for luxury. The English meaning of the word is opulent, rich, special, splendid and superior in quality such as DELUX car with rich finishing etc. Phonetically, the pronunciation of DELUX and DELUXE is one and the same. The word SUPER means beyond compare, surpassing all others, superior quality. SUPER DELUX in combination is a laudatory expression eulogizing the quality of the products as something as out of the ordinary. Such words cannot function as a trade mark. Such laudatory expressions are property of all consumers and producers. It is reflective of the superlative qualities of the goods and how it was registered is a matter of debate. Five years user or even 100 years such use cannot make it distinctive. It is incapable of functioning as a trade mark with any length of use. Section 9(1) of the Trade Mark Act, 1999 is, therefore, an absolute bar and the impugned marks needs to be removed on this ground alone.
(BHARATBHAI KHUSHALBHAI PATEL TRADING AS HARIKRISHNA….Petitioner(s) V/S DELUX BEARING LIMITED THE HIGH COURT OF GUJARAT AT AHMEDABAD- SPECIAL CIVIL APPLICATION NO. 12627 of 2012.)
In Mohd.Rafiq & Am. v. Modi Sugar Mills Ltd., Court has held that “the reference to the character and quality” should be direct and plain and not remote and far-fetched. Likewise, the word, which is sought to be construed as laudatory, should have obvious signification of praise and not one out of which an inference of praise has to be spelt out by a laboured process.”
|Laudatory Word||Citation||Court decision|
|SUPER CUP||Godfrey Phillips India Ltd. vs Girnar Food & Beverages Pvt. Ltd. on 1 June, 1997 (1997 (2) ARBLR 559 Delhi)||The trade mark “Super Cup” was descriptive and laudatory of goods of the plaintiff and the plaintiff was not entitled to an injunction.|
|SUPER DELUX||Bharatbhai Khushalbhai Patel … vs Delux Bearing Ltd. (Gujrat High Court SCA-12627 of 2012)||SUPER DELUX in combination is a laudatory expression eulogizing the quality of the products.|
|ULTRA||Indian Shaving Products Ltd. & … vs Gift Pack & Anr. (Delhi High Court, IA 5333/98)||The word ‘ULTRA’ is descriptive and no monopolistic rights can be claimed.|
|SUGAR FREE||Cadila Healthcare Ltd. vs Gujarat Co-Operative Milk (MIPR 2007 (3) 497), Delhi High Court||“SUGAR FREE” is purely descriptive and laudatory expression.|
|IMPERIAL||Rhizome Distilleries P. Ltd & Ors. vs Pernod Ricard S.A. France & Ors. (FAO(OS) No.484/2008 & CM Nos.17352/08, 3429/09) Delhi High Court.||The word “IMPERIAL” is not only in common parlance to be found in every dictionary, but also is laudatory in nature and no exclusive right can be claimed.|
|HOME SOLUTIONS||Asian Paints Limited vs Home Solutions Retail (India) …( 2007 (109) Bom L R 1819)||It is generic and publici juris. “HOME SOLUTIONS” is associated with the nature of services that is in common use in India and abroad.|
|LOSORB and LO-SORB||Marico Limited vs Agro Tech Foods Limited (FAO(OS) No. 352/2010) Delhi High Court.||This coined words have a clear reference to an indicative of the kind, quality, intended purpose and characteristic etc.|
|HOLIDAY INN||Madhubhan Holiday Inn vs Holiday Inn Inc.( 100 (2002) DLT 306), Delhi High Court.||The appellant was actuated by bad faith and dishonest motive by using “Holiday Inn” as a mark.|
SECONDARY MEANING: LAUDATORY TRADE MARK
A Laudatory trademark that has acquired secondary meaning means that the trademark has become recognized as a brand for specific goods and services from a single source. For establishing that a trademark has acquired secondary meaning, both direct and circumstantial evidence are used to show that the consuming public recognizes the trademark as a brand of a single source. Examples of direct evidence include consumer testimony and consumer surveys. Circumstantial evidence of secondary meaning includes evidence relating to the length, manner, and exclusivity of the trademark’s use, advertising expenditures, and amount of sales and number of customers.
A secondary meaning results when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” (Inwood Laboratories, Inc. v. Ives Laboratories, Inc.: 456 U.S. 844, 72 L. Ed. 2d 606).
In the Diamine Case (Leopold Cassella and Co.., (1910) 2 Ch 240, ) Buckley L. J., laid down that some words including laudatory epithets are not capable of being registered but ought to be open to all the world. He found it impossible to say that a laudatory epithet cannot acquire a secondary meaning, but thought it to be incapable of being adapted to distinguish the goods.
TRADE DESCRIPTION: DESCRIPTIVE MARK
A descriptive mark when used in relation to goods and services, it is not a registrable trade mark except upon evidence of acquired distinctiveness, which must be established on the date of application for registration by the respondent. If the mark is proposed to be used on the date of application the issue of establishing distinctiveness does not arise.
The section 9 of the Trade Marks Act, 1999 provides for absolute ground for refusal of registration by trade mark authority. The section 9(1) of the Trade Marks Act, 1999 specifically deals with refusal of trade mark registration for word or expression indicating “Trade Description”:
- Absolute grounds for refusal of registration.—
(1) The trade marks—
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) 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;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
However, many “trade description” words and expressions have been registered as trade mark: (1) which was well known trade mark before the registration (2) The owner of trade mark got such registration by using well known acronym of trade description e.g. G.P. (Synthetic Enamel, Silicone Sealant) for General Purpose etc. (3) By combining the “trade description” mark with other trade mark.
Publici juris: Trade Mark
“Publici juris” is a Latin word, and in the legal parlance, means, “of public right.” The term signifies a thing or a right that is open and exercisable by all persons. It designates things that belong to the entire community, and not to any private party.
“A mark is said to be common to the trade when (1) it is in common use in the trade, or (2) when it is open to the trade to use.
Any symbol, word or get up commonly used by traders in connection with their trade and in respect of which no particular trader can claim an exclusive right to use may be considered common to that particular trade, or public, juris. Further words, expressions or devices which are descriptive of particular goods are open to use by all persons engaged in the trade. Such matters which are generally of a non distinctive character may or may not be in actual use at any particular time. What is important is that the trading public has a right to use them in connection with their business.
2) The decision on the question of likelihood of deception is to be left to the court.
(3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become public juris. In the trade of drugs it is common practice to name a drug, by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being public juris or generic cannot be owned by anyone for use as trade mark.
(4) Whether such feature is public juris or geris is a question of fact.
(S.B.L. Ltd. vs Himalaya Drug Co., 1997 IVAD Delhi 757, AIR 1998 Delhi 126 as cited in Himalaya Drug Co. vs S.B.L Ltd in C.S (OS) N0.-111 of 2006 of Delhi High Court)
In conclusion it can be specifically stated that laudatory and descriptive trade mark can only be permitted if it has attained secondary meaning by virtue of its continuous use or the proposed trade mark per se do not signify or point towards the product for which it is being proposed.
Advocate Bombay High Court