India: Protecting Translations of Descriptive Words as Trademark

Last Updated: 30 May 2017
Article by Swati Setia and Shree Misra

In law of trademarks, words that are distinctive enough to distinguish goods or services of one person from those of others, qualify to be protected against infringement and/or passing off. Descriptive words/marks which lack inherent distinctiveness are refused registration under the Indian Trade Marks Act, 1999 (hereinafter, "the Act"). Interestingly, trademark squatting vis-ŕ-vis translation of descriptive words is a niche area in trademark disputes. This article attempts to discuss this subject area in the light of an order passed by the Hon'ble High Court of Delhi in the case of Sunil Mittal & Anr. v. Darzi On Call.

The plaintiffs in this case, Sunil Mittal and Darzi India LLP, are the registered proprietors of the label mark "The Darzi THE SUIT PEOPLE SINCE 1981" and copyright in the artistic work of mark/ label "THE DARZI", with respect to services of tailoring, selling and marketing of all kinds of clothing and garments in Class 24. The defendant company, Darzi on Call Private Ltd. adopted the mark "DARZI ON CALL" in 2015 and had applied for registration of the mark in respect of same tailoring services under Class 40. When the plaintiffs for the first time learnt about the trademark application of the defendant, they proceeded to issue a cease and desist notice to the defendant in October 2015. However, after a wait of about 10 months, the plaintiffs were alerted of the continuous use of "DARZI ON CALL" by the defendant. Therefore in October 2016, the plaintiffs approached the Delhi High Court and sought for an interim injunction against the defendant's use of the said mark contending that the defendant had used the word "DARZI" as well as alphabet 'D' in it in the same style as that of the plaintiff. Accepting the plaintiff's contentions, the Single Judge passed an ex-parte interim order restraining the defendant from using the trademark or trade name comprising the word "DARZI" or any other trademark or trade name which may be similar or deceptively similar till further orders of the court. Subsequently, the Single Judge modified the same order on December 7, 2016, allowing the defendant to use the alphabet 'D' with exception of the word "DARZI".

The defendant contested this suit and filed its written statement contending that the plaintiffs had registration only with respect to their label and not the words "DARZI" or "THE DARZI" per se. This implied that the plaintiffs were aware that the words in dispute are common to trade and, thus, generic and descriptive of tailoring and textile services. The defendant, therefore, contended that the registration on the label conferred rights on the label/logo as a whole and not on parts of the whole, as deciphered on combined reading of Sections 17 and 15 of the Act. These provisions require separate registrations on parts of the trademark to confer rights on each of them. Moreover, the phonetic similarity in the marks was also disputed as well as the services and class they fell in.

The plaintiffs, on the other hand, argued that their logo cannot be portrayed without "THE DARZI", of which "DARZI" formed an integral and essential part of the label/mark. They placed reliance on the case of Jagdish Gopal Kamath v. Lime & Chilli Hospitality Services to contend that the essential, prominent and leading feature of the mark has to be considered whether it is a label, device or composite word. They also claimed that their label/mark "THE DARZI" had acquired distinctiveness through long and continuous use for nearly 35 years.

Interestingly, the Court considered and appreciated that a distinction had to be carved out between the use of a word as descriptive of the services provided under a trade name/ mark and the use of that word as trade name/mark in itself. Accordingly, if a person adopts such a word as trade name/trade mark, then it deserves to be viewed as a novel thought, which, in turn, is entitled to protection under IP law. The Single Judge observed that the words 'Tailors' or 'Drapers' were used to describe the nature of business of tailoring in the high end society to which both parties provided their respective tailoring services. "DARZI" happened to be the Hindi/Urdu translation for 'Tailor' and, in his experience, the judge had never come across any person or entity providing the services of tailoring under such name. The Court opined that the word "DARZI", in common parlance, is used in spoken language than written to describe the profession of a person. It further stated that the word 'Tailor' accompanied with the word 'Master', when written in Hindi language, as commonly displayed on shops, can be said to be descriptive of the services, but not "DARZI". Hence, the Court rejected the contention of the defendant that the word "DARZI" was inherently incapable of being used as a trademark on account of being generic or publici juris of the service. It reasoned that "DARZI" is neither devoid of distinctive character, unlike "Tailor", to distinguish services of one person from that of another nor commonly used in the territory of business to designate the service rendered so as to be refused registration under sub-clauses (a) & (b) of Section 9(1) of the Act. The Court, thereby, laid down the test to determine distinctiveness of translated words, i.e., to not only take into account whether a word or its meaning was understood at a particular place but also if it was generally used at that place as descriptive of the services rendered. Applying this test, it was observed that the word "DARZI" was not used in Delhi to designate the service of tailoring under a trade name/mark, rather it was used in spoken language to describe the vocation/profession of a person instead of a service, placing reliance on the judgements of T.V. Venugopal vs. Ushodaya Enterprises Ltd.[1] and Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta[2].

Further, the Court also rejected defendant's contention that the plaintiffs' registration was with respect to the label and not the word mark "DARZI", on the grounds that the word "DARZI" was the essential feature of both the marks which, in itself, had stronger recall value in the minds of the customers than with the suffix of "On Call". Additionally, the Court opined that where goodwill of tailoring business is by word of mouth and recall value is the word "DARZI", then the test of similarity/deceptive similarity has to be based on human interactions in a particular society rather than as laid down in law books. Applying this test, in observation of the Court, neither the added features in both the labels (i.e., defendant's label with stylized alphabet 'D' or the shape of mannequin's dress and plaintiff's label containing "The Suit People" or "1981") nor their colour scheme, were relevant and capable of distinguishing each other. The Court also rejected the defendant's contention on the aspect of plaintiffs' registration in Class 24, stating that the plaintiffs could not be deprived of protection due to absence of any specific class for tailoring under the Fourth Schedule of the Trade Marks Rules.

Notably, the Single Judge adjudicated on the issue of whether the mark at dispute had acquired secondary meaning or not at the interim stage itself. It also observed that the proprietor of a trademark is not expected to make litigation as a business to prevent use of its mark, even when the proprietor is not affected by such use. But that doesn't deprive him of pursuing protective action when someone invades his business.

In light of the above grounds, the Court held that the plaintiffs had established a prima facie case, wherein the balance of convenience lied in their favour and they would have suffered irreparable loss/injury from continued use of the mark by the defendant, had the injunction not been granted in their favour. The Single Judge granted an interim injunction against the defendant restraining them from using the word "DARZI" or any other word, mark, label identical with or deceptively similar to the word/mark "DARZI".

Therefore, the position of law on translations or paraphrases of descriptive words as trade name/mark in itself was set out in this case, as being capable of protection under trademark law. Although the order could have discussed in detail the test of distinctiveness in such a case, especially on the aspect of considering common usage of the word at a particular place/society when the protection granted under law is pan-Indian in nature, it definitely encourages trade owners to come up with innovative translations as trademark/name and avail protection under the Act. However, this order has been challenged by the defendant and is presently lying on appeal before the Division Bench of the Delhi High Court. The findings and grounds of the decision of the Appellate bench, whether it upholds or overrules the Single Judge order, would be interesting to learn as it will definitely set a precedent in this niche area of trademark law in India.


[1] (2011) 4 SCC 85

[2] 2002 (24) PTC 355 (Del.)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.