Secondary meaning/acquired distinctiveness in trademark protection

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A trademark comes under the protection of Intellectual Property Rights. WIPO defines a trademark as a sign which is capable of distinctly distinguishing the goods or services of one individual or enterprise from those of other individuals or enterprises. A trademark is a visual symbol/a distinctive mark or design used by an individual or a company. The trademark helps the consumer identify the products and services of a particular individual/organization/company. They have been in existence as along as trade itself when makers started to “mark” their wares with a word or a symbol to help identify the maker and have been unearthed in excavations from China, India, Persia, Egypt, Rome, Greece, and so on, dating back almost 4000 years. A trademark’s main functions are identification of goods and distinguishing them, signifying source of goods, signifying quality of goods and advertisement of goods. Additionally, trademark protection aims to prevent the use of fraudulent marks. With developments in trade and commerce in the era of globalization, the need for encouragement of investment flows and transfer of technology and the need for harmonization and simplification of the trademark management system, trademarks have today acquired the goodwill and reputation of consumers. In trademark treatises it is usually reported that blacksmiths who made swords in the Roman Empire are thought of as being the first users of trademarks. Other notable trademarks that have been used for a long time include Löwenbräu, which claims use of its lion mark since 1383. The first trademark legislation was passed by the Parliament of England under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold.

The first modern trademark laws emerged in the late 19th century. In France the first comprehensive trademark system in the world was passed into law in 1857 with the "Manufacture and Goods Mark Act". In Britain, the Merchandise Marks Act 1862 made it a criminal offense to imitate another's trade mark 'with intent to defraud or to enable another to defraud'. In 1875, the Trade Marks Registration Act was passed which allowed formal registration of trade marks at the UK Patent Office for the first time. Registration was considered to comprise prima facie evidence of ownership of a trade mark and registration of marks began on 1 January 1876. The 1875 Act defined a registrable trade mark as 'a device, or mark, or name of an individual or firm printed in some particular and distinctive manner; or a written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket'.

In the United States, Congress first attempted to establish a federal trademark regime in 1870. This statute purported to be an exercise of Congress' Copyright Clause powers. However, the Supreme Court struck down the 1870 statute in the Trade-Mark Cases later on in the decade. In 1881, Congress passed a new trademark act, this time pursuant to its Commerce Clause powers. Congress revised the Trademark Act in 1905. The Lanham Act of 1946 updated the law and has served, with several amendments, as the primary federal law on trademarks. The Trade Marks Act 1938 in the United Kingdom set up the first registration system based on the “intent-to-use” principle. The Act also established an application publishing procedure and expanded the rights of the trademark holder to include the barring of trademark use even in cases where confusion remained unlikely. This Act served as a model for similar legislation elsewhere.

• In India, according to the Section 2 (zb) of the Trade Marks Act, 1999, the definition of trademark is not just descriptive but exhaustive as well. The Indian law is very clear on what may be a trademark. There are no stipulations as to what a trademark may not be.

• The Supreme Court in Laxmikant Patel v. Chetanbhat Shah held that the definition of trademark under Indian law is very wide and means a mark which is capable of being represented graphically and is capable of distinguishing the goods or services produced and provided by various persons.

• It, inter alia, includes a name or a word, abbreviation of a word or a name along with shape of goods, their packaging, and combination of colours.

The Section 2 (1) (m) further mentions that “mark” includes – ‘a device, brand, heading label, ticket, name, signature, word letter, numeral shape of goods, packaging or combination of colours or any combination thereof’, making the definition very descriptive and exhaustive. Trademark law in the US is governed by the Lanham Act. Its definition of the term ‘trademark’ is very broad in its description as to what may constitute a mark. It says in Section 1127 that a trademark,

“INCLUDES ANY WORD, NAME, SYMBOL, OR DEVICE, OR ANY COMBINATION THEREOF”.

• This definition, unlike the Indian definition, is only exhaustive as it is not very descriptive compared to the Indian definition. This makes the definition under the Lanham Act much wider than that of the Indian law. This definition is also quite unrestrictive in nature as a symbol or device may be meant to include a wide array of things.

Trademark law in the US is governed by the Lanham Act. Its definition of the term ‘trademark’ is very broad in its description as to what may constitute a mark. It says in Section 1127 that a trademark,

“INCLUDES ANY WORD, NAME, SYMBOL, OR DEVICE, OR ANY COMBINATION THEREOF”.

• This definition, unlike the Indian definition, is only exhaustive as it is not very descriptive compared to the Indian definition. This makes the definition under the Lanham Act much wider than that of the Indian law. This definition is also quite unrestrictive in nature as a symbol or device may be meant to include a wide array of things.

The trademark law followed by the European Union is called the Community Trade Marks (CTM). The CTM does not exclusively define a trademark or state what constitutes a trademark. As compiled from the various regulations, a trademark includes a ‘word mark’ ; and other marks consisting of numerals, letters, and signs for which the applicant does not claim any special graphic representation or colour.

The registration of descriptive trademarks is prohibited under Section 9(1)(b) of the Trade Marks Act, 1999 (hereinafter the Act). However an exception is provided under the Act itself, on the provisions of Section 32 of the Act, which provides that “where a trade mark is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration acquired a distinctive character in relation to the goods or services for which it is registered.

The present case is Overseas Pvt. Ltd. v KRBL Ltd and Anr. The applicants sought to remove the respondent’s registered trade mark ‘BEMISAL’ (868081/class 30). The said mark has been registered in respect of rice as a “proposed to be used” trade mark. A prayer for stay under S. 95 from giving effect to the mark was also asked for. It was contended that even though the mark was descriptive on the date of its adoption, it has acquired distinctiveness on the date of rectification and adjudication. This being the case, the objections raised under S. 9 fails as the mark is now protected by virtue of S. 32. S. 32 creates an exception whereby any mark which has been registered in breach of S. 9 will not be invalid if it has acquired distinctiveness after registration and before legal proceedings challenging its validity are initiated. The IPAB denied removal and held in favour of the respondent’s descriptive mark.

In Wealth Advisors(India) Pvt. Ltd. v. Citibank , the petitioners in a writ petition filed under Art.226 of the Constitution of India wanted to seek exclusivity and monopoly over the term “Wealth Advisors” which the 1st respondent had achieved distinctiveness over. It was held that the two terms are very descriptive and thus no exclusivity and monopoly can be achieved over them. Thus, the writ petition failed.

Yahoo!, Inc. v Akash Arora & Anr  :-

The first decision on the protection of IP rights on the Internet.

In what is known till date as a Landmark judgment in cybersquatting, the Delhi High Court held that a domain name served the same function as a trademark and was therefore entitled to equal protection. As the domain names of the plaintiff ‘Yahoo!’ and defendant ‘Yahoo India!’, were nearly identical and phonetically similar, there was every possibility that internet users would be confused and deceived into believing that the domain names had a common source or a connection. The court further observed that the disclaimer used by the defendants was not sufficient because the nature of the Internet is such that use of a similar domain name cannot be rectified by a disclaimer, and that it did not matter that ‘yahoo’ is a dictionary word. The name had acquired uniqueness and distinctiveness and was associated with the plaintiff. The Bombay High Court, in Rediff Communication v. Cyberbooth & Anr also observed that the value and importance of a domain name is like a corporate asset of a company.

Under the US trademark law, a mark is required to be distinct under four classifications – Arbitrary and Fanciful (the distinctiveness is the strongest), Suggestive (the distinctiveness is medium), Descriptive (the distinctiveness is weak) and Generic (the distinctiveness is the weakest and so no protection is given in such cases).

Under the EU also, it must be seen to it that the mark has a distinctive character. Firstly, a mark can be used in a form where the elements differ and do not alter the distinctive character of the mark in the form in which it was primarily registered. Secondly, a word mark may fall into non-use if the words or figurative elements used affects the mark’s distinctive character. Thirdly, if the mark contains a non-distinctive element, the applicant may disclaim any exclusive right to such element, separately. This exclusive right is also granted under the Section 17 of the Indian Trade Marks Act, 1999.Being a matter of trade and commerce, capable of derailing the entire system, it is important that the nations keep a certain parity while formulating laws on intellectual property protection, and in this case, specifically trademark protection. India, US and the EU, though a little different in their approaches to the trademark law jurisprudence have been adhering to all the important international agreements and conventions and protocols such as the TRIPs Agreement, The Paris Convention and the Madrid Protocol. Let’s take the EU to being a single country although it is essentially a community of all the European countries. EU effectively brings an entire set of countries under its umbrella thus creating a larger harmony in the trademark statutes of the world. All three countries have incorporated the definition of trademark, use, and so on from the TRIPs Agreement into their respective legislations. Registration procedures have been orchestrated and echoed through the Paris Convention in all three legislations. India has incorporated special provisions under the Madrid Protocol in Chapter IV A of the Indian Trademarks Act, 1999 through the Amendment Act 40 of 2010. US and EU have also acted and enacted laws with strict adherence to the protocol.