Distinctive Spectrum in the Realm of Trademark Law

I. Introduction

The Nice Classification which was initiated under the Agreement of 1957², began to classify goods and services eligible for registration. Given in the Act, mark can comprise of brand, label, ticket, name, signature, word, letter, shape of goods, so on so forth.³ Once the Trademark is registered it benefits in the following manner;

• by creating business goodwill and brand awareness
• indicates the source of goods, services and guarantees a quality
• advertises promotion
• assures the customer

Furthermore, all the restrictions laid down in the Act has to be duly considered before proceeding with the registration as it can lead to refusal of the same, either absolutely or relatively.

II. Strength of a trademark

In order to determine strength of a mark, one has to be aware of the degree of distinctiveness. Higher the distinctiveness, higher the chances of getting the mark registered.⁴ Here, the Spectrum of Distinctiveness comes into play, as it lays the following categories to measure distinct character;

A) Fanciful Trade Mark

They are coin terms, symbols that have no meaning attached to it whatsoever. If a trademark is fanciful, it becomes inherently distinctive and registrable. By no chance it depicts/describes the goods or services. Examples of fanciful mark would be Zomato, Kodak, Google.

B) Arbitrary Trade Mark

Words with a meaning, frequently used by others falls under this category. But again, such words have no connect with the services or goods being sold. Degree of distinctiveness somewhat decreases but since the word is not related and does not describe the product, it is inherently registrable. For instance, ‘Apple’ company manufacturing various gadgets or ‘Camel’ company for stationary items.

C) Suggestive Trade Mark

Under this category, trademark suggests the characteristics of goods and services. But in no way it describes the product. Hence, it is eligible for registration. Examples of suggestive trademark would be ‘Air India’ for aircraft, ‘Netflix’ for streaming services. In the stated examples the Trademark hints at the goods and services being offered without actually describing it at length.

D) Descriptive Trade Mark

There is no strength in descriptive trademark per say as it lack distinctiveness. Such symbols, words describe the goods and services including its characteristics, colour, nature, geographical region to a great extent. As stated in the Act of 1999, when a mark is unable to distinguish goods and services of one person from that of another person due to lack of distinct character then it leads to refusal of registration on Absolute grounds.⁵ In exceptional cases, one can get it registered only when acquired distinctiveness is achieved with usage. Examples of descriptive trademark include ‘Pizza Hut’ for pizza, ‘Natural Ice Cream’ for ice cream using natural ingredients.

E) Generic Trade Mark -

When common name of products or services are chosen as trademark it qualifies as a generic trademark. Generic words never qualify for registration. For instance, when the word mark ‘Toothpaste’ is used to sell only toothpaste. In such cases, trademark cannot be given for one word, but if any additional term is added to it then it can be considered.

It was in the year 1976 when Justice Learned Hand developed the spectrum of distinctiveness after the case of; Abercrombie & Fitch Company vs. Hunting World, Inc⁶, wherein the plaintiff (A & F) was a well known brand using the ‘Safari’ mark for sporting good stores. Since term ‘Safari’ was a registered trademark, the plaintiff filed a suit for trademark infringement against the defendant (Hunting World) who started using ‘Safari’ for their apparel business.

The main issue involved in the above case was, Whether the term ‘Safari’ was eligible for trademark protection since it was a generic in nature.

The Hon’ble Court held that ‘Safari’ being a generic term commonly used for hunting activities, the plaintiff company had no right to prevent the defendants from using the same.

-Further, it was also held that there is no liability of trademark infringement by Hunting World.

III. Refusal in trademark registration

As discussed earlier, the Act provides grounds on which Trademark can be refused for registration. However the grounds are classified into two heads namely;

1. Absolute Grounds for Refusal of Registration (Section 9 of the Act)

2. Relative Grounds for Refusal of Registration (Section 11 of the Act)

SECTION 9

Grounds for absolutely refusing registration of the trademark under Section 9 are as follows;

• When no distinctive character is possessed by the trademark, making it incapable of distinguishing from other goods and services.
• When the trademark indicates features, quality, geographical origin of the product.
• Trademarks which becomes customary in trade and practice. In other words, when the mark gains prominence, people no longer use it as a distinguished factor.
• Trademarks causing any confusion or when it can deceive the people at large.
• Trademark which contains religious links, and is likely to affect the religious sentiments of the citizens of India.
• When there is involvement of obscene or scandalous matters.
• When usage of trademark is prohibited under Emblems and Names (Prevention of Improper Use) Act of 1950.
• Trademark relating to the shape of goods which contributes as a necessity to derive technical result, adds value to the goods, or is a result of the nature of good itself. More so, the functionality doctrine bars registration of marks that are functional in nature.

SECTION 11

Under Section 11, the Registrar considers the similar or identical factor of the current trademark and compares it with earlier existing trademark.

Grounds for relative refusal in registering a trademark are as follows;

• When the trademark is identical with earlier similar trademark and hence would confuse the public.
• When the trademark is similar with earlier identical trademark and hence would confuse the public.
• When there is presence of an earlier well known trademark and undue advantage would be taken by trademarks being identical or similar to the former.
• Trademarks that would adversely affect the repute and distinctive character of an earlier well known trademark.
• When the trademark usage is prevented by law of passing off in order to protect an unregistered trademark which has acquired distinctiveness.
• When the copyright law prevents the usage of trademark. For instance, if any logo gets copyright and is protected under artistic work, the same logo cannot be used for trademark.

Honest Concurrent Use; An Exception to Section 11

Section 12 of the Act provides for an exception to the grounds mentioned under Section 11, wherein subject to the discretion of the Registrar, trademark registration of users having similar marks on similar/non similar goods is permissible.

• While registering the applicant has to prove his good faith in using the mark or non awareness of previously registered trademark.
• Hence in Honest Concurrent use, both the trademarks can coexist without any clash.
• For example, the mark ‘BlackBerry’ is used for devices and similarly the mark ‘Blackberrys’ is used for apparel.

IV. Judicial precedents

In the case of Amritdhara Pharmacy vs. Satyadeo Gupta⁷, the issue was regarding registration of similar trademark with identical goods. ‘Amritdhara’ pharmacy (the Appellants) were using the mark since long to manufacture medicine Pan India.

• Thereafter, the Respondent company, who were also into medicine manufacturing applied for registration of the mark ‘Laxmandhara’. Registration was opposed by Amritdhara pharmacy as usage of a similar mark would create confusion among the public.
• DECISION: Two tests were developed by the Apex Court in order to determine similarity between the two marks; one from the point of view of Reasonable/Man of average intelligence while the other one was according to overall similarity impression.

Registrar of Trademark allowed registration of the mark Laxmandhara under Section 12 of the Act (Honest Concurrent Use), but the sale of medicine was limited only to Uttar Pradesh region. Decision of the registrar was upheld by the Apex Court.

Bigtree Entertainment Pvt Ltd vs. D Sharma & Another⁸

The plaintiff had registered the trademark ‘BookMyShow’ used for online ticket venture. Over a period of time, ‘BookMyShow’ acquired the position of well known trademarks.

Thereafter, another company started using the term ‘Bookmyevent’ for similar ticket venture. The prefix being similar, a suit was filed by the plaintiff seeking an order for permanent injunction to restrain the defendant company from using the prefix ‘BookMy’

• The plaintiff contended that both the terms involved were phonetically, visually, structurally similar so much so that it can deceive the public. Plaintiff company earned a strong reputation over time, and the defendants should not be allowed to take advantage of the good will and fame created by the plaintiff company.
• DECISION: The Court here referred to the distinctive spectrum and concluded that the plaintiff company cannot have monopoly over the term ‘BookMy’ as it common term having wide usage. Moreover the term was not distinctive in nature, rather it described the trademark.
• The Mark of plaintiff and defendant when seen as a whole, it is very unlikely that the people will get confused because of prima facie difference in font, colour.
• No injunction was granted to the plaintiff company. Since the term ‘BookMy’ was not an invention of the plaintiff, both the companies/marks are allowed to co exist.

V. Conclusion and suggestion

Trademark is considered as a valuable asset which helps in business expansion. It more or less influences the decision of the customers through quality assurance. In order to distinguish one good/service from the other, a distinctive mark plays a crucial role as it never fails to grab attention of the consumers. Therefore, when a mark gets registered, exclusive rights are guaranteed to the company.

• Acquiring distinctiveness takes time and labour, but one can opt for an inherently unique term (mark) and get it registered.
• Before registering the mark, it is always advisable to check if any similar/identical mark already exists in the market as it will minimize the potential risk of litigation.
• Consulting an expert can ensure a hassle free registration experience.
• Renewal of trademark must be done every 10 years without fail to avert penalty and other complications.