Intellectual Property Rights & Descriptive Marks Article

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Intellectual Property Rights & Descriptive Marks

Descriptive marks are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or services.

Author: Divyam Agarwal

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Intellectual Property Rights & Descriptive Marks
Article by Divyam Agarwal

A term is descriptive of goods or services if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. Whether a term is merely descriptive is determined not in the abstract but in relation to the goods or services for which the term is to be used, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use.

A descriptive mark is a contradiction in terms. The reason for this is that a trademark gives its owner a limited monopoly under law to its use in commerce. In other words, no one else is able to use your mark on the same or similar goods because the mark tells the consumer that the product it appears on comes from your company. If a term merely describes the type of product and does nothing else, it would be unfair to give one company a monopoly to its use and prevent others from using it. How then could a competing company describe its product?
In Caterpillar Inc.v.. Mehtab Ahmed and Ors.(1) The Hon’ble High Court of Delhi discussed descriptive words in detail. Relevant excerpts of the judgement are reproduced below:

“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.”

For example, take the term BROWN BOX to denote boxes that are brown. How could anyone else describe a "brown box?" How could this term, used in connection with brown boxes, possibly distinguish one company's brown boxes from another company's brown boxes?

In Living Media India Limited v. Jitender V. Jain and Anr. (2) It was in view of this principle that their Lordships held that
"if it can be established that the descriptive word or words has or have acquired among the public, or that class of the public likely to deal with the business or goods in question, a subsidiary or secondary meaning denoting or connoting the business or the origin of the article, the person claiming to restrain the user of that word or those words can obtain the relief he seeks.”

If a proposed mark is deemed descriptive by trademark counsel, that is a good reason to select another mark, or be prepared to spend considerable money, time, and effort in trying to prevent others from using it.

If you adopt it as a trademark, you may find that you cannot stop anyone else from using it. You may have wasted company time and money trying to build equity in something that has no legal recognition as a trademark. This is not value-based brand management.

Descriptive marks (or more properly, "merely descriptive marks") are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or services. No trademark rights are granted to merely descriptive marks. Misdescriptive marks are equally weak. Descriptive marks are often difficult to distinguish from suggestive marks. Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods. Descriptive marks allow one to reach that conclusion without such imagination, thought or perception. Putting this distinction into practice can be very difficult. Merely descriptive marks can be registered federally on the Supplemental Register

In Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.(3), the Supreme Court restrained the use of the word Mahendra observing that the trade mark had acquired a distinctiveness and a secondary meaning in the business or trade circles and that people have come to associate the name Mahindra with a certain standard of goods and services rendered by the plaintiff.

In Indian Shaving Products Ltd. and Anr. v. Gift Pack and Anr.(4), Prima facie there does not appear much force in the argument of the defendant that the word STANDARD is continuously used for a long time as a trade mark for selling its goods and the trade mark cannot be protected only because it is a common English language word, a generic, descriptive or laudatory word. An ordinary generic or descriptive word or even name of a person, geographical place, or surname may come to acquire distinctiveness and secondary meaning in the business and trade circle so as to associate a product sold under that trade name with a particular person. If another person is using the same word or a deceptively similar mark for marketing its producers with dishonest intention to cash upon the reputation, popularity and goodwill of the products of the plaintiff, the plaintiffs trade make is entitled to be given due protection by the Court.

The following imaginary marks could be considered merely descriptive for computer peripherals:

· FAST BAUD for modems (describing the quickness of the modem);
· 104 KEY for computer keyboards (describing the number of keys on a keyboard);
· LIGHT for portable computers (describing the computer's weight); and
· TUBELESS for computer monitors (even if misdescriptive for a monitor that contains tubes).

However, it is possible for descriptive marks to "become distinctive" by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this "second meaning" (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through the use of consumer surveys, that show that consumers recognize the mark as a brand, such as "FORD", as opposed to a descriptive term, such as "reliable".

Lord Scarman of the House of Lords, as a member of the Board of the Privy Council for Australia in Cadbury Schweppes, considered the width of the principle of passing off to have been authoritatively recognized by both the High Court of Australia and the House of Lords. Valid representations include both traditional representations in the manner of marks or names as well as those made by other descriptive material such as slogans and visual images, whether by radio, television or print, provided that such representations become part of the goodwill of the product.

Examples of marks which might be considered descriptive but have clearly developed secondary meaning include:
· SHARP for televisions;
· DIGITAL for computers;
· WINDOWS for windowing software;
· INTERNATIONAL BUSINESS MACHINES for computers and other business machines; and
· POWER COMPUTING for computers based on the Power PC chip.

Descriptive marks are designations that either describe the goods or a characteristic of the goods (such as HOT & CRISPY for frozen baked goods and CLEAN-BURN for home heating oil) or services (such as SPEX for optician services and COMPUTER TESTING LABORATORIES for consumer testing services). Included within this category are laudatory words which attribute a characteristic of superiority to the goods or services (such as GOLD MEDAL, BLUE RIBBON, and SUPREME) and geographic terms that suggest an association between the geographic region and the product or service identified by the mark (such as QUAKER STATE for motor oil). Descriptive marks are difficult to enforce against others unless the owner can show that the mark has become distinctive as applied to the owner's goods or services. A descriptive mark that is shown to be distinctive is said to have acquired a "secondary meaning" because it now serves to indicate the origin of the goods or services rather than simply referring to the product or service itself.

In the case of descriptive names, the court is reluctant to interfere even where the resemblance is very close. Here there has been a difference of opinion between the court of first instance and the Court of Appeal and the latter court has thought the matter of sufficient importance to give their reasons in a written judgment.

Case Laws:
1. Syncom Formulations (India) Ltd. v. .SAS Pharmaceuticals (5) The Hon’ble Court observed that the offending mark DROPOVIT is not a descriptive word but an invented word.

2. International Standards Certification (South Asia) Pvt. Ltd. v. International Standards Certifications Pty. Ltd. and Ors. 2004
The words "International Standards Certifications" are generic words merely descriptive of the nature of the business. They are not fancy words. Dr. Tulzapurkar further submitted that the words "International Standards Certifications" are generic words which describe the nature of the business rather than their source, that they are not fancy words and the use of the name, therefore, will not establish any passing off, as Respondent No. 1 cannot claim any monopoly in descriptive words.

3. Sanat Products Ltd. v. Glade Drugs and Nutraceuticals Pvt. Ltd. and Anr.(6)
that word 'REFORM', is a common word and is commonly known and used in India and the world over. It is generic and descriptive and can be used by anyone. The product sold ,under this trademark was intended for reformation of the bones so the defendants cannot be said to have done anything wrong as the product could not have been described in a better way than the descriptive mark 'REFORM'. The defendants had no intention of passing off its own product as that of the plaintiffs as both the words 'REFIRM' and 'REFORM' have different meaning.It was also alleged that when the products are sold under descriptive mark or generic mark, there can never be any confusion.

4. Colgate Palmolive Company and Anr. v. Anchor Health and Beauty Care Pvt. Ltd.(7)
That the colour combination red and white in respect of dental care products is descriptive in nature and has a direct reference to the character or quality of the goods, gum and teeth. This combination is common to the trade and is being used by large number of manufacturers.

5. USV Limited v. Systopic Laboratories Limited and Anr(8)
The learned Senior counsel for the respondent, Mr. Aravind Datar, would submitted which was later held by the court that PIO is descriptive of the chemical, which is the main ingredient in the product and is publici juris and the applicant cannot claim any monopoly over the same.

6. Micronix India v. Mr. J.R. Kapoor(9)
In a nutshell, the Supreme Court has held that once it is found that the word `micro' is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, the users of such products are not likely to be misguided or confused by the said word.

7. Madhubhan Holiday Inn v. Holiday Inn Inc.(10)
The words "Holiday Inn" are descriptive of the business of a hotel and as per settled law nobody can legitimately monopolise such words for his business. in case of a trade name which consists of descriptive words even a small difference will be taken to be sufficient enough in between the trade names of the respondent and that of the appellants.

8. Standard Electricals Limited v. Rocket Electricals and Anr. (11)
that the word STANDARD being a deceptive word, could not be protected as a trade mark and cited certain foreign judgment where the word 'STANDARD'. 'HEAVENLY'. 'MUST, 'ALWAYS'. 'MERIT' were held to be descriptive and, therefore, could not be given protection.

9.Living Media India Limited v. Jitender V. Jain and Anr (12)
that the words "AAJ TAK" are completely descriptive in nature and have dictionary meaning and, therefore cannot be monopolised by any particular party or person. the word "AAJ TAK" is dictionary word and appears in Oxford Hindi Dictionary and since this word clearly descriptive of news and being an ordinary dictionary word cannot be monopolised by any party.

10. Reddaway v. Banham (13) here the trade mark was the 'Camel Hair' used in relation to belts prepared from the Camel hairs. Though both the words have the dictionary meaning still it was held that when the words which are descriptive of an article have come to denote the goods of a particular manufacturer he is entitled to restrain others from using them as to deceive purchasers.
11. J.L. Mehta v. Registrar of Trade Marks (14) The trade mark in question was 'Sulekha' having the meaning a woman having "good writing" was though descriptive but since it was being used in connection with fountain pens, nibs etc. the Court came to the conclusion that it is a valid trade mark and injuncted the infringer.

12. Rupee Gains Tele-Times Private Limited v Rupee Times (Rupee Gain v. Rupee Times)(15) it was held that the word RUPEE is synonymous with money. It has been noticed that almost all the financial journals and publications have been using either the word business or financial or money for their journals and newspapers. Merely because one of the company has used the word RUPEE to name its financial journal will not mean that the said word cannot be used by any other journal nor it can mean that the journal first using the said word RUPEE has acquired trademark in the said word. RUPEE is a descriptive word not a distinctive word. Everything connected with trade and business is described by money, finances and rupee and it is for this reason that these words are repeatedly used by all the financial journals.

13. J.R. Kapoor v. Micronics India (Microtel v. Micronix) (16) the word 'micro' was held to be a common or general name and descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are therefore not likely to be misguided or confused by the said word.

14. SBL Ltd. v. Himalaya Drug Co.(17) controversy was between trademark Liv 52 and LIV-T. It was held that 'Liv' is an abbreviation of Liver, a human organ and both the aforesaid drugs pertain to the treatment of liver functioning. It was held that 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 it cannot be considered to common to that particular trade or publici 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.

15. Reddaway v. Banham & Co.(18)
-"camel hair belting" -name entirely descriptive, however can through long and consistant use become associated with source.

17. Cdn Shredded Wheat Co. v. Kellogg (19)
-cannot become distinctive in market with no competitors.
18. Blades Enterprises v. Thibeault ("La Brasserie")(20)
-if word is meaningless to consumers is not a non-protectable descriptive word.

19. Jerusalem Restaurant v. Jerusalem Food Processing (21)
-if you acquire secondary meaning are protected.

20. Poco Vacuum Case (22)
-slang term for location can be geographic description.

Conclusion
Descriptive marks (or more properly, "merely descriptive marks") are devices which merely describe the services or goods on which the mark is used. If a device is merely descriptive, it is not a mark at all, since it does not serve to identify the source of the goods or services. No trademark rights are granted to merely descriptive marks. Whether a term is merely descriptive is determined not in the abstract but in relation to the goods or services for which the term is to be used, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use.
A descriptive mark is a contradiction in terms. The reason for this is that a trademark gives its owner a limited monopoly under law to its use in commerce. In other words, no one else is able to use your mark on the same or similar goods because the mark tells the consumer that the product it appears on comes from your company. If a term merely describes the type of product and does nothing else, it would be unfair to give one company a monopoly to its use and prevent others from using it.

References
1. 99(2002)DLT678.
2. 98(2002)DLT430.
3. 2002 (24) PTC 121 (SC).
4. 1998 PTC(18) 698. Also See Kochar Oil Mills Ltd. v. Chhatar, Extractions Ltd. and Ors., PTC (Suppl.) (1)171 (Delhi).
5. 2004(28)PTC632(Del).
6. 2003(27)PTC525(Del).
7. 2003(27)PTC478(Del).
8. 2003(27)PTC203(Mad).
9. 2003(26)PTC593(Del).
10. 100(2002)DLT306.
11. 2004(28)PTC26(Del).
12. 98(2002)DLT430.
13. (13) 1896 RPC 218.
14. AIR 1962 Bombay 82.
15. 1995 PTC (15) 384 Delhi.
16. 1994 PTC 260 (SC).
17. 1997 PTC (17) (DB).
18. (1986) HL 423.
19. (1936) SCC 224.
20. (1975) BCSC 21.
21. (1985) Ont. SC 2.
22. (1988) BCSC 23.

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Final Year Law Student, Amity Law School, New Delhi, India

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