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How ‘Distinctive’ should a trade mark be?

By Adarsh Ramanujan and R. Subhashree 

A creative mind may say that a rose called by any other name would smell as sweet and a name has nothing to it. The Trademarks Act, 1999, however, envisages the opposite and our experience with brand names and market shares show that a name has quite a bit to it.  It provides for registration of trademarks - a mark capable of being represented graphically and distinguishing the goods and services of one person from those of others. A trade mark may include shape of goods, their packaging and combination of colours. Sections 9 and 11 make it clear that the scheme of things under the Trademarks Act, 1999 is to allow for registration of only those marks that are sufficiently distinctive in nature. 
Consider the case of ‘Dettol’, ‘Xerox’, ‘Dalda’ where what was originally the brand or name (trade mark) of the entity has been significantly diluted to now bear reference to the product itself. So much so, 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 subsequently become common reference for consumers.   The other side of the coin is where manufacturers try to carve out a unique image or brand value from common or generic words.
Let us take the case of Bhole Baba Milk Food Industries Ltd v. Parul Foods Specialiaties Pvt. Ltd. [MANU/DE/4050/2011 - Delhi High Court order, dated 17th October 2011, in FAO(OS) 109/2011]. The Plaintiff and the Defendant sold dairy products under the name of ‘Krishna’ and ‘Parul’s Lord Krishna’, respectively. The latter, however, reduced the font size of ‘Lord’ and hence, it was alleged that the defendant’s products bore significant resemblance to the Plaintiff’s product, ‘Krishna’. The Delhi High Court held that registration cannot possibly give an exclusive statutory right to the Plaintiff qua a particular word of common origin. The Court opined that the affinity of Lord Krishna for butter was widely known and the party could only claim distinctiveness, if at all, in the way the word was written. Colour or combination of colours can be registered as a trademark.
In Louboutin v. Yves Saint Laurent, for instance, Louboutin claimed that he had the exclusive right to use red colour soles in shoes and that by trading in shoes having red soles, Yves Saint Laurent had infringed his trademark. Ruling against this, the United States District Court of the Southern District of New York [Christian Louboutin S.A. v. Yves Saint Laurent Am.,Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011] reasoned that granting an injunction to that effect was overly broad and inconsistent with the scheme of trademark registration. The court impliedly noted that providing exclusivity over the colour red may affect competition in the market.

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[Adarsh Ramanujan is an Associate in IPR Division and R. Subhashree is Manager, Lakshmikumaran & Sridharan, India]
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