Project Trademark

DISTINCTIVENESS AS A GROUND FOR REFUSAL TO

“ “

REGISTRATION UNDER SECTION-9

” ”

Project submitted to Ms. Kuhu Tiwari

(Faculty: Trademarks law, Hons. II)

Project submitted by Pranav Vaidya

Semester VII Roll no. 117

HIDAYATULLAH NATIONAL LAW UNIVERSITY, RAIPUR, C.G

Acknowledgement I would like to take this opportunity to express my deep sense of gratitude towards my course teacher, Ms. Kuhu Tiwari for giving me constant guidance and encouragement throughout the course of the project. I would also like to thank the University for providing me the internet and library facilities which were indispensable for getting relevant content on the subject, as well as subscriptions to online databases and journals, which were instrumental in writing relevant text.

Pranav Vaidya VIIthSemester

Contents

ACKNOWLEDGEMENTS .......................................................... ……………….Error! Bookmark not defined. OBJECTIVES: ......................................................................................... ….Error! Bookmark not defined. RESEARCH METHODOLOGY:Error! Bookmark not defined.....................................................................................................................

Research Question… .…………………………………………………………………………………………………………………………… Scope ……………………..…………………………………………………………………………………………………………………………..

INTRODUCTION: ....................................................................................... Error! Bookmark not defined. Distinctiveness of a mark:: ........................................................................ Error! Bookmark not defined. Concept of Acquired Distinctivess ........................................................... Error! Bookmark not defined. FACTORS  N NECESSARY  T TO  IINFLUENCE  T THE  D DISTINCTIVENESS O OF  A A  M MARK ................... Error! Bookmark not defined. CONCLUSION  ............................................................................................... Error! Bookmark not defined. Bibliography………………………………………………………………………………………………………………………………………..

OBJECTIVES 

To understand the concept of Distinctiveness under the Indian Trademarks Act.



To analyze such relevant factors which are capable of influencing the distinctiveness of a mark.

Research Methodology This research paper is descriptive & analytical in approach. It is largely based on secondary & electronic sources. Books & other reference as guided by faculty of Trademarks Law are  primarily helpful for the completion of this project.

Research Questions 

What is the concept of distinctiveness under Indian Trademarks Act, 1999?

SCOPE The geographical scope of this Project work is mainly limited to India, and also gives a basic outline about the ideology followed in UK.

INTRODUCTION In order for a trade mark to fulfil its essential function of acting as a sign that is capable of distinguishing the goods or services (‘products’) of o ne ‘undertaking’ or legal trading entity from another, at the very least it has to be ‘distinctive’. Although apparently tautologous, the answer to the question, ‘what makes a trade mark distinctive?’ is whatever makes it capable of distinguishing the goods or services of one undertaking from those of another. A mark is distinctive by ‘nature or nurture’ when the prospective purchaser of the product knows it refers to a particular source and not to another. A made-up or coined name, such as KODAK for films, is distinctive by nature. No one would have simply seen the name for the first time and associated it immediately, with films (unlike with a mark such as TECHNOFILMS which has a direct connection with the goods). Once the connection is made through, for example, advertising, the mark then is always associated with that or a similar product. On the other hand, a mark such as ‘BLUE WATERS’ for mineral water presented in a blue tinged bottle, is per se descriptive for the goods and a very weak mark. However, if a manufacturer has invested a lot over a long period of time in promoting the connection such that a substantial section of the mineral water drinking public now associate the name with the product, then distinctiveness has  been earned through use or 'nurture'. It has 'acquired distinctiveness'. The mark then becomes registrable, other things being equal. Consider the case of Dettol, Xerox, Dalda where what was originally the brand or name (trademark) of the entity has been significantly diluted to now bear reference to the product itself. So much that even while buying a product having a different brand name, the image is that of ‘dettol’ or ‘dalda’. These illustrations highlight the manner in which marks originally distinctive in nature have become common reference to the consumers. In this project, I would like to deal with the concept of distinctiveness in reference to the Indian trademarks law with prospective inferences.

Distinctiveness of a mark: To be eligible for registration, a trademark must possess distinctive characteristics that cause the  public and its consumers to understand that the goods bearing that trademark are different from goods originating from other sources. Such distinctiveness can manifest itself in the form of invented words or pictures, but it will not be achieved if generic or vague descriptive terms are used to describe the trademark in the application for its registration. This form of distinctiveness is known as “ inherent distinctiveness ”. This raises the question of whether a trademark that is not inherently distinctive can still be registered. The answer is yes, but only if it is proved that the trademark has been used for a long enough time that it is known to the public and they are able to distinguish goods bearing the mark from the goods of other sources. This is referred to as “factual distinctiveness .” If a trademark is void of inherent distinctiveness when the registration application is filed, evidence of prior use can be submitted to a trademark registrar within 30 days of the date of filing. But applicants seldom submit evidence of use to demonstrate factual distinctiveness at this early stage even then; the registrar is likely to consider the trademark as one that lacks inherent distinctiveness. Case law helps us conclude that where signs cannot convey a particular message or information (e.g. the definite or indefinite articles: ‘the’ and ‘a’ or the conjunction ‘and’) these are per se indistinctive and are unregistrable, subject to the proviso of acquired distinctiveness. Laudatory words or terms of praise, such as PERFECTION or BRAVO, and also common slogans, are also usually devoid of distinctiveness. Although practice has now changed, in the past letter combinations that were not words were usually regarded as non-distinctive, and likewise with number combinations. The easiest way to indicate how a mark might be non-distinctive is when it is descriptive - as with the example given above. If a mark consists exclusively of a sign which serves in trade to describe a characteristic of a product, then this is necessarily non-distinctive. This prohibition of registrability also has a public policy aspect of keeping signs free for traders to use. The European Court of Justice has clarified that it is sufficient that one of the possible meanings of a word is completely descriptive, even if there might be an additional non-descriptive meaning (the

‘DOUBLEMINT’ case). The sign might designate kind of product (‘socks’), its quality (‘all wool’), quantity (‘10 Kilos’), intended purpose (‘dog food’), value (‘top value’), geographical origin (‘Melton Mowbray pies’), time of production of goods or rendering of services (‘24/7’), or other characteristics (‘fast’).

Stance taken by courts of India & abroad: (i) Amritpal singh v. Lal babu priyadarshini 1

As far as the Trademarks Act 1999 is concerned, section 92  of the act eals with the absolute grounds for refusal to register a trademark on certain grounds. Whereas clause(1) of the section deals with "Absolute grounds for refusal of registration.--(1) The trade marks-(a) Which are devoid  of any distinct ive 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 character istics of the goods or service; The Intellectual Property Appellate board of India held in this case that the first respondent's mark 'RAMAYAN' is not a distinctive mark and is devoid of any distinctive character. The mark is not capable of distinguishing the goods of one person from those of another person. 'RAMAYAN' word per se is not registrable since it is the name of famous and well known religious epic hook of Hindus. It carries a large sentimental value for the people and thus no trader can claim exclusive right to the use of such a word. More than 20 traders in Patna and many more in different parts of India are using the trade mark 'RAMAYAN' and thus it has  become public juris. The appellant produced photocopies of certain packets with the word 'RAMAYAN' being used by many traders. The use of the mark by first respondent is tainted with dishonesty as in one of their notice to the appellant dated 19.6.1996 they had alleged that they

1

2005 (30) PTC 94 IPAB.  . Trademarks act, 1999 .

2

are engaged in the manufacture of Dhoop, Agarbati for nearly one decade from 1987 and they had wrongly and willfully alleged in the said notice that they are the registered proprietors of trade mark 'RAMAYAN'. Large reputation and goodwill had accrued to the respondent's mark 'RAMAYAN' by reason of advertisement, sales etc. The impugned mark for which the first respondent is seeking registration is identical with the appellant's mark 'Badshah Ramayan' which is pending registration. The impugned registration will cause harassment to other traders and purchasing public is bound to be confused and deceived into buying the goods of the first respondent bearing the trade mark 'RAMAYAN'. (ii) Windsurfing Chiemsee v Boots 3

ECJ in this case has laid down a test to identify whether a particular trademark which is not inherently distinctive can also be registered or not. The evidence necessary to establish that a trade mark is factually distinctive will vary depending upon the facts of the case. The burden of establishing factual distinctiveness will generally be proportionate to the strength of the prima facie objection raised in the trade mark application. The court held that: “The test is that the mark must be used in such a way that sufficient amount of the relevant  public recognize the sign as a distinctive trade mark at the time when the application is filed.

The evidence submitted should answer the following questions in the affirmative: (i) Has the trade mark been used as a trade mark i.e. as a means of identifying trade origin of the goods? (ii) Has the applicant promoted the trade mark as a trade mark? (iii) Does the evidence show, as a matter of fact, that the trade mark is operating in the market  place as an indicator of origin? (iv) Has the relevant public (or a significant proportion thereof) come to rely upon the mark, in the course of trade, as a means of identifying the trade origin of the goods?

3

 . (Case C-108/97).

(v) (Although the applicant need not necessarily have used the mark as the only means of identifying the trade origin of the product as there is no rule that two or more trademarks cannot operate alongside each other), the trade mark applied for must, by itself, come to foster a concrete expectation amongst the relevant public that the goods bearing that mark originate from, or are under the control of, a single undertaking. (iii) BABY-DRY 4

The now well-known BABY-DRY case from September 2001 heralded what many thought was a liberal attitude to the registration of marks. Registration for BABY-DRY was sought for nappies and was initially refused by the Community Trade Marks Office (OHIM) on the basis that the mark consisted exclusively of words that were descriptive of nappies. The Court of First Instance (CFI) upheld the decision since the 'purpose of nappies is to be absorbent, in order to keep babies dry'. The CFI concluded that the term BABY-DRY merely conveyed to consumers the intended purpose of the goods and there were no additional features to render the sign distinctive. The European Court of Justice (ECJ) overturned the CFI and allowed the sign to be registered. One of the questions asked of the ECJ was how descriptiveness should be assessed in relation to composite marks made up of two separate words. The ECJ said the test was whether the word combination in question was the normal way of referring to the goods or services or of representing their essential characteristics in 'common parlance'. The ECJ found that because of the 'syntactically unusual juxtaposition' of the words ‘baby’ and ‘dry’, BABY-DRY was not a familiar expression in the English language for describing nappies or describing their essential characteristics. The combination of the words Baby and Dry were a 'lexical invention bestowing distinctive power on the mark so formed'. (iv) DOUBLEMINT

5

However, following the BABY-DRY decision, the hopes of WM Wrigley Jr Company in registering the mark DOUBLEMINT for chewing gum were to be dashed.

4

 . [1999] ECR II-2383.  . C-191/01 P - OHIM v Wrigley.

5

The DOUBLEMINT application was refused by OHIM on the basis the trade mark consisted solely of the word

'Doublemint '

which was a combination of two English words with no

additional fanciful or imaginative element. An appeal was made to the CFI on the grounds that 'Doublemint'  was not exclusively descriptive and was 'ambiguous and suggestive'. The CFI considered that for an English speaker, the numerous meanings of

'Doublemint'   (for

example, it could mean double the amount of mint or

two kinds of mint) were immediately apparent but for a non-English speaker, the terms would have a vague and invented meaning. Therefore, as the average consumer would not immediately detect the description in relation to a characteristic of the goods, registration could not be refused. The decision was appealed by the OHIM. In October 2003 the ECJ found that DOUBLEMINT was purely descriptive and the fact that 'double' and 'mint' in combination gave rise to a variety of possible meanings does not automatically mean that the words are not descriptive. The Advocate General, in a precursor to the ECJ decision, suggested that a proposed trade mark should be assessed as follows: 

What is the relationship between the mark and the product? - If the mark to be used is a general description in the particular trade then registration will be refused,



How immediately is the message conveyed? If the mark quickly conveys the characteristic of the goods/services then it will not be registrable,



What is the significance of the characteristics in relation to the product in the consumer's mind? If the characteristics are intrinsic to the product or the consumer's choice of  product, then the grounds for refusing registration because of the descriptive element are high.

When applied to the mark DOUBLEMINT there is a tangible reference to mint flavour which is doubled in some way and therefore is 'readily perceived' as such and the flavour is a prominent feature of the product. Registration was denied.

The ECJ held that a sign must be refused registration if one of its possible meanings is capable of designating a characteristic of the goods concerned. It was held that DOUBLEMINT was less unusual than BABY-DRY and the only lexical invention was the removal of a space between the words double and mint. (v) Loubotin v. Yves Saint Laurant 6 (combination of colors). (vi) Radico khaitan Ltd. v. Carlsberg India Pvt. Ltd 7.(use of numeral ‘8’; third party users have also registered similar marks).

Concept of Acquired Distinctiveness: Every trademark has a tendency to identify the goods sold under them as emanating from a  particular source. This tendency with the efflux of time gets strengthened and a particular trademark gets registered or mentally associated in the minds of the consumers as distinctive of the product and its source. It can also be referred as ‘strength’ of the mark. Some trademarks are distinct from their inception due to their inherent characters and they are given legal protection immediately upon use as a trademark. Thus there is a correlation between ‘strength’ and ‘secondary meaning’ of a trademark. A non-inherently distinctive mark must have that quantum of strength or secondary meaning to qualify as trademark. In litigation the determination of whether there is an infringement requires an evaluation of the strength of that trademark hence the secondary meaning for a non-inherently distinctive mark is a threshold issue of trademark validity.

What is Secondary meaning?

Secondary meaning can be characterized as that ‘attraction’, ‘drawing power’ or ‘commercial magnetism’ which acts as a psychological function of the symbols or trademarks. It is a fact that 6

 . Under Section 10 of trademarks act, unless a trademark is registered with a limitation as to its colour, it will be deemed to be registered for all colours. 7  . 2012 (49) PTC 54 (Del.) (DB).

largely we purchase goods by the marks on them identifying their source and the owner of a mark exploits this human tendency by making every effort to impregnate the atmosphere of the market with the drawing power of an amiable symbol. Commercial symbols that require secondary meaning for legal protection, it is that very ‘drawing power’ and ‘commercial magnetism’ which is characterized as secondary meaning. A secondary meaning is acquired when the name and the business becomes synonymous in the  public mind and submerges the primary meaning of the name. Therefore the prime element of secondary meaning is a mental association in the minds of purchasers between the alleged mark and the source of that product.

Necessity of Secondary meaning:

The general rule regarding distinctiveness is that –  an identifying mark is distinctive and capable of being protected if it either [1] is inherently distinctive or [2] has acquired distinctiveness through secondary meaning. If a given symbol or word is not inherently distinctive it can be registered or protected as a mark only upon proof that it has become distinctive. This acquisition of distinctiveness is refer red to as ‘secondary meaning’. For symbols that are not inherently distinctive, acquisition and priority of ownership is determined by looking to when, where and how secondary meaning was established in the symbol. Indian Position

The Indian Trademarks Act of 1999 through section 32, rather indirectly, speaks about acquired distinctiveness and secondary meaning. The section conveys that when a mark is registered overlooking the facts in relation to grounds for refusal of registration, it will not be rendered invalid if as a consequence of its use it has, after registration and before commencement of any legal proceedings, acquired a distinctive character in relation to the goods for which it is registered. Factors requisite to an application for registration on the grounds of Distinctiveness:

While taking into consideration the various necessities, there are several grounds on which the registrar has to judge an application, in order to consider such application of mark to be of distinctive nature: (a) Period of Use

(i) The longer the period of use, the more likely the mark is to have acquired a distinctive character. Five years of prior use of the trade mark with strong sales is generally required. Extensive use over a shorter period may well be sufficient, although use that is less than two years prior to the date of application would very unlikely be regarded as sufficient. (ii) The use of the mark should be continuous. If the use has not been continuous, the reputation of the trade mark may have been diminished. Therefore, the Registrar will consider how the  break in use may have affected the reputation of the mark applied for. For example, if the sales were very good before and after the break, it might suggest to the Registrar that the distinctiveness acquired before the break had not been lost. (iii) If the trade mark has been transferred between owners, details such as the name of the former owner and date of acquisition of the mark should be indicated. (iv) the period of use will be considered in conjunction with turnover figures.

(b) Advertising expenditure

(i) Advertising figures provided should be for a period of 5 or more years prior to the date of filing. (ii) The type of advertising should be listed e.g. TV, magazines, posters, newspapers, radio,  billboards, trade publication, trade fair, sponsorships etc. (iii) The breakdown of advertising figures in relation to each class of goods and services should  be provided, where feasible. (iv)Details of titles of publications and names of TV channels and radio stations used should be given. Samples of advertisements should be included in the exhibits.

(v) The importance to be attached to advertising figures depends on the goods/services in issue.

(c) Nature of exhibits

(i) The exhibits should reflect how the mark has been used in relation to identified goods/services. All exhibits should be listed in the declaration and clearly cross-referenced. (ii) All exhibits should be dated, or where this is not possible, an estimate of its date of use should be given. The materials relied upon must precede the filing date. (iii) The exhibits must show use of the mark applied for as a trade mark. If the mark is commonly used with a house mark or in a substantially stylized form, an assessment will be made to determine whether this constitutes use of the mark applied for. For example, in the UK case of British Sugar Plc v James Robertson & Sons Ltd 8, TREAT was always accompanied by the established mark SILVER SPOON. Hence, the court was of the view that it was doubtful if the mark TREAT had acquired distinctiveness on its own. However, if the additional matter in the mark is subsidiary, i.e., a background or a decorative device, the mark may still be distinctive on its own. If the application is for a different typeface to that actually used, the Registrar may consider if the variant could qualify as a series. If not, the use would not be sufficient to establish factual distinctiveness. If the evidence shows that the mark applied for is used only as a subsidiary part of a composite device mark or is used as part of a longer mark which naturally “hangs together”, such as a known phrase or a full name, the Registrar may not consider that the evidence is sufficient to establish that the mark applied for has become factually distinctive. In WI LD CH I LD Trade Mark 9, Mr Geoffrey Hobbs Q.C. stated “My difficulty with regard to the use of the words WILD CHILD as part of the overall get-up of sweatshirts is that I would not expect people to interpret the use of those words in that manner as an indication of trade origin. I therefore cannot see any basis for the suggestion that people in the world at large will have been educated by means of such use to infer that “complete articles of outer clothing; footwear and 8

 . [1996] R.P.C. 281.  . [1998] R.P.C. 455.

9

headgear” supplied under or by reference to the trade mark WILD CHILD are connected with the course of trade or business with the undertaking responsible for supplying sweatshirts embellished in the way I have described”. Examples of Three-Dimensional Marks Devoid of Distinctive Character

In the decision of

April 3rd 2001of the Maritime and Commercial Court, in the case of Pitney Bowes Inc v.  Neopost Ltd10 the court found that this mark, the shape of a cardboard cylinder, consisted in such a well-known geometric shape that it could be characterized as a primary form. Therefore, the court found that “the mark lacked distinctive character and that trademark protection by way of distinctive character acquired through use had not been obtained either.” This was affirmed in the appeal. In this case, the office found that “the fact that the illustrated “snack” is slightly curved or that its surface is grooved does not provide sufficient distinctive character, because these elements are commonly used for snacks and potato crisps. Nor the fact that the basic shape of the mark is square provides distinctiveness, because snacks and potato crisps are commonly formed in simple geometric shapes, such as round, square, oval or triangular.

10

 . ECLI:EP:BA:1999.

Conclusion Evidence of use is highly important to a trademark owner if his or her trademark is not inherently distinctive. Trademark owners should collect evidence that shows, prima facie, acquired distinctiveness based on at least five years of use up to the date the claim is made. However, the number of required years varies on a case-by-case basis. In some cases, evidence of use dates  back to less than five years after a mark’s filing, but the evidence may nevertheless be able to demonstrate sufficient distribution or advertising for the mark to become distinctive through use. If an applicant is confident that he or she has evidence to prove that a trademark is widely used, distributed, or advertised to the extent that it has acquired distinctiveness through use, we advise such applicants to proceed through the courts to obtain trademark protection. However, the Indian courts have taken a consistent stand that words that are common or generic amongst the public at large cannot be normally allowed to register unless they have an additional factor which could add to the distinctiveness of a mark. Unlike ECJ, no concrete tests have been laid down which could assist the distinctiveness of a mark.

BIBLIOGRAPHY STATUES: 

Indian trademarks Act, 1999.

Webliography 

www.manupatrafast.in



https://iiprd.wordpress.com/2012/12/26/analysis-of-the-case-carlsberg-india-pvt-ltd-vsradico-khaitan-ltd-on-20-december-2011/



Cases by ECJ.