India: Proviso To Sec. 9(1)(B) Of The Trade Marks Act, 1999 – A Primer

The author through this article aims to focus on the principle of "acquired distinctiveness" in the Indian trademark law and establish how proviso to Section 9 (1)(b) of the Indian Trade Marks Act, 1999 is a boon to the trademark owners. The author supplements this analogy through various case laws.

A. Statutory Provision

Section 9 (1) (b) of the Trade Marks Act, 1999:

"Absolute grounds for refusal of registration.

(1) The trade marks

(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;

... 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." 1

B. Acquired Distinctiveness/ Secondary Meaning

The trademark law stipulates that a trademark which has secured a secondary meaning or secondary significance shall not be refused registration even if it falls under the categories as stated under Section 9. It is a well-settled law that common language words or descriptive words or common words and names cannot be trademarked by any trader unless and until such trade names have acquired such a great reputation and goodwill in the market that the common language word has assumed a secondary significance. Secondary significance here would mean that other traders in that line of trade acknowledge that such common words have come to denote the goods belonging to a particular trade.

C. Case Laws

It has already been established that a common/descriptive word per se cannot be trademarked, and it must have had acquired distinctiveness/secondary meaning for the trademark to be registered. The rule relating to "secondary significance" and "acquired distinctiveness" has been well explained in various case laws over the years.

S.NO. COURT OF LAW CASE LAW JUDGMENT/ANALYSIS KEY TAKE AWAYS
1. House of Lords Reddaway and Co Ltd v Banham and Co Ltd2 This is a leading case law which talks about descriptive words having acquired secondary meaning/secondary significance. And rule derived from this case law forms an essential part of the Indian Trademark law.

In this case, the plaintiff manufactured and sold Camel Hair Belting. The defendant also began to sell belting made of camel's hair in the name of Camel Hair Belting. The trader claimed a right in the term 'Camel Hair'.

It was held that- the term "CAMEL HAIR" was descriptive but had acquired secondary significance in the trade of business and had come to be associated with the plaintiff's business and therefore is liable for protection.
Common words of a language and/or descriptive words can be trademarked, when they have acquired distinctiveness/ secondary meaning.
2. Supreme Court of India Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd.3 A descriptive trademark may be entitled to protection if it has assumed secondary meaning which identifies it with a particular product or as being from a particular source. Common words of a language and/or descriptive words can be trademarked, when they have acquired distinctiveness/ secondary meaning.
3. Delhi High Court Living Media India Limited v. Jitender V. Jain and Anr.4 The issue before the court was- whether the name and style of "AAJ TAK" and its logo is a generic term and as such is not the monopoly of any particular person either in relation to the news programme or otherwise5. The court observed that even if the words "AAJ TAK" are descriptive in nature and even if they have a dictionary meaning, together it is still coined word of the plaintiff and has acquired a secondary meaning by virtue of prior, continuous and extensive use and therefore the combination of the two words "AAJ TAK" cannot be used by any other user. Both the words "AAJ" and "TAK" may be individually descriptive and may not be monopolized by any user. But together the combination of words has acquired distinctiveness by virtue of prior, continuous and extensive use and therefore, is protected.
4. Delhi High Court Globe Super Parts v. Blue Super Films6 In this case two words "SUPER" and "FLAME", which are descriptive dictionary words, the combination of which were declared by the court as coined words and accordingly protection was granted. Both the words "SUPER" and "FLAME" may be individually descriptive and may not be monopolized by any user. But together the combination of words has acquired distinctiveness by virtue of prior, continuous and extensive use and therefore is protected.
5. Bombay High Court J.L. Mehta v. Registrar of Trademarks7 The trademark "SULEKHA" is a Hindi word which has a dictionary meaning i.e. a person with good handwriting and is therefore, a descriptive word. The Court observed that since "SULEKHA" is being used in relation to fountain pens, nibs etc, it was a valid trademark. Common words of a language/ descriptive words can be trademarked, when they are used in relation to a different class of goods.
6. Supreme Court of India Laxmikant V. Patel v. Chetanbhat Shah and Anr.8 The trademark "MUKTA JEEWAN COLOUR LAB" by virtue of it being a continuous user was a valid trademark. The other party was injuncted from using a similar mark. Together the combination of words has acquired distinctiveness by virtue of prior, continuous and extensive use and is therefore, protected.
7. IPAB (Chennai) M/S P.K. Overseas Pvt. Ltd.v. M/S KRBL Ltd.9 The Appellate Board remarked that "BEMISAL", by virtue of it being used continuously and having massive sales figures, had acquired distinctiveness and hence, was a valid trademark. The "Sales Figures" can be used as a determiner for establishing the goodwill / reputation of the trademark, and in turn establishing whether the trademark has acquired distinctiveness or not.
8. IPAB (Chennai) Metropolitan Trading Company v. Shri Mohanlal Agarwal10 In this case IPAB held that, Appellant's trademark "ZODIAC" had acquired distinctiveness as it was in use for more than three decades and therefore, it qualifies for registration. In this case since the trademark was in use for a long period of time, it was said to have acquired distinctiveness, while the other trademark which is also named "ZODIAC" was not capable of registration because it was in use for a short period of time. This case law gives an idea as to how the courts perceive the time frame with respect to "acquiring distinctiveness"
9. Delhi High Court Ishi Khosla v. Anil Aggarwal11 Delhi High Court in this case observed that- "to acquire secondary meaning it is not necessary that product is in the market for number of years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight"12. This case law settles the principle of "acquired distinctiveness". The goods associated with a trademark do not have to be in the market for a certain number of years for the trademark to have acquired distinctiveness. A trademark can acquire distinctiveness, even overnight, and therefore, it depends from case to case. There is no fixed time frame for a trademark to have acquired distinctiveness.
10. Delhi High Court ITC Ltd. v. Britannia Industries13 In a relatively recent judgment, the Delhi High Court has settled the principle regarding the "term of use" with respect to a trademark acquiring distinctiveness- "to acquire secondary meaning, it is not necessary that product is in the market for number of years. If a new idea is fascinating and appeals to the consumers, it can become a hit overnight"14.

It reiterates the same principle as laid down in the case of - Ishi Khosla v. Anil Aggarwal
This case law settles the principle of acquired distinctiveness. The goods associated with a trademark do not have to be in market for a certain number of years for the trademark to have acquired distinctiveness. A trademark can acquire distinctiveness, even overnight, and therefore it depends from case to case. There is no fixed time frame for a trademark to have acquired distinctiveness.

D. CONCLUSION

Indian trademark law is at par with any other law around the world with respect to prohibiting the use of descriptive words in a trademark. It is a volatile practice to adopt a common language word and use it as a trademark as it increases the scope of confusion in the minds of public at large. But there are scenarios where, the once prohibited descriptive mark, acquires a secondary meaning/ acquires distinctiveness, and the customers associate the trademark with the applicant's business. And that's when the principle of "acquired distinctiveness" kicks in. This principle has been well stated in the Proviso to Section 9 (1) (b) of the Trade Marks Act, 1999, and has further been widely accepted by the courts. The courts have conducted a strict scrutiny while applying this principle. And a lot of weightage has been given to evidence in support of the reputation/goodwill of the trademark. The Courts have been right to say that no cap should be put with respect to "term of use" while applying the principle of "acquired distinctiveness" as time is no barrier to decide whether a mark is reputed or not; and an idea "can become a hit overnight"15.It can therefore be said that the proviso to Section 9 (1) (b) is a boon to many innocent trademark owners.

Footnotes

1. Section 9(1) (b), The Trade Marks Act, 1999.

2. Reddaway and Co Ltd v Banham and Co Ltd, [1896] AC 199.

3. Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd., [2005] 123 Comp Cas 334 (SC).

4. Living Media India Limited v. Jitender V. Jain and Anr., 2002 VAD (Delhi) 161.

5. Id.

6. Globe Super Parts v. Blue Super Films, AIR 1986 Del 245.

7. J.L. Mehta v. Registrar of Trademarks, AIR 1962 Bom 82.

8. Laxmikant V. Patel v. Chetanbhat Shah and Anr., AIR 2002 SC 275.

9. M/S P.K. Overseas Pvt. Ltd.v. M/S KRBL Ltd., 2014 (57) PTC 129 (IPAB).

10. Metropolitan Trading Company v. Shri Mohanlal Agarwal, MIPR 2008 (1) 24.

11. Ishi Khosla v. Anil Aggarwal, 2007 (34) PTC 370 Del.

12. Id.

13. ITC Ltd. v. Britannia Industries, CS (COMM) 1128/2016.

14. Supra Note 11.

15. Supra Note 11.

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.

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