Not every trademark wears a crown and flaunt in the branding courtroom. Some trademarks stutter in, sounding like generic supporting characters, while others shout uniqueness and charm. Enter the concept of distinctiveness, the VIP pass in the trademark world. At the Trademarks Registry, generic, merely descriptive, or undifferentiated trademarks are frequently rejected. However, recent judicial trends show a shift toward a more nuanced, context driven evaluation. Courts are increasingly realizing that distinctiveness may not necessarily be inherent, it can also be created via use. This article examines these changing interpretations, concentrating on significant rulings that have influenced India's trademark protection laws.
Introduction
The distinctiveness of a trademark has been regarded as a cornerstone of protection, both in relation to registration and enforceability of trademark. The primary function of a trademark is to distinguish the goods or services of one entity from those of another. To fulfil this role, a trademark must be distinctive, either inherently or through acquired secondary meaning.
Understanding non-distinctiveness in trademark law
Section 9(1)(a) of the Trade Marks Act, 1999 (‘Act’), stipulates that a mark devoid of distinctive character shall not be registered, and reads as:
‘The trademarks which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person shall not be registered.’
This section is essential in determining whether a trademark is eligible for registration under the Act. It essentially bars the registration of trademarks that fail to distinguish the goods or services of one trader from those of others. Distinctiveness is a core principle of trademark law because a trademark must serve as a source identifier for consumers, indicating the origin of the goods or services.
A crucial filter in determining the registrability of a mark is rooted in the very purpose of trademark protection ensuring that a trademark functions as a badge of origin. In essence, a trademark must enable consumers to identify the source of goods or services and differentiate them from those offered by others in the marketplace. The doctrine of distinctiveness is, therefore, central to the integrity of the trademark system, as it upholds both consumer protection and fair competition.
Distinctiveness may manifest in two forms: inherent and acquired. Inherent distinctiveness is present when a mark, by its very nature such as a coined word or an arbitrary expression can distinguish the goods or services of one entity from another.
Inherent distinctiveness
The ability of a trademark to differentiate one entity's goods or services from another without requiring proof of past usage in the marketplace is known as inherent distinctiveness. Examples include coined terms like ‘Kodak’ (which have no dictionary meaning) or arbitrary uses like ‘Apple’ for computers (while it is a common English word, it has no logical or direct connection to the goods or services it's used for).
Categories of distinctiveness
Indian Courts, much like their counterparts in jurisdictions such as the United States, frequently draw upon the classical spectrum of distinctiveness; a conceptual framework for evaluating whether a trademark is eligible for protection. This spectrum, originally formulated in the U.S. jurisprudence as the Abercrombie classification, has found persuasive relevance in Indian case laws, offering a structured approach to assessing the registrability of trademarks.
The spectrum categorizes trademarks into five distinct types, arranged in descending order of inherent distinctiveness. At the top are fanciful marks, which are invented or coined terms with no prior meaning in any language, such as ‘Kodak’ or ‘Xerox.’ These trademarks are inherently distinctive by nature, as they are uniquely created to serve as brand identifiers. Next are arbitrary marks, which consist of real, dictionary-defined words that bear no logical relationship to the goods or services offered ‘Apple’ for computers being a classic example. These too are inherently distinctive because they do not describe or suggest the nature of the product. Suggestive marks form the third category, requiring a degree of imagination, perception, or mental pause to connect the mark with the goods or services. For example, ‘Netflix’ suggests entertainment and streaming services but does not directly describe them, making it inherently distinctive as well.
The remaining two categories, descriptive and generic trademarks, are not considered inherently distinctive and face significant hurdles in the registration process. Descriptive marks directly refer to a characteristic, quality, function, or purpose of the goods or services. For instance, ‘Cold & Creamy’ for ice cream or ‘Quick Wash’ for laundry services plainly describe the product attributes. Finally, generic marks, which refer to the common or class name of the product itself (e.g., ‘Soap’ for a cleansing bar), are entirely barred from registration under Section 9(1)(a) of the Act as they fail to distinguish the origin of the goods or services. Generic terms are considered part of the public domain and cannot be monopolized by any one entity.
This spectrum not only helps Courts and registrars assess the degree of distinctiveness but also underpins much of the legal reasoning in trademark refusal cases. It ensures that only those trademarks that truly serve the function of source identification either inherently or through acquired distinctiveness are granted the legal protections that accompany trademark registration.
Acquired distinctiveness
The theory of acquired uniqueness, sometimes referred to as secondary meaning, allows descriptive trademarks that are not initially unique to become registrable, in contrast to intrinsically distinctive trademarks. This legal notion acknowledges that a mark may become so strongly linked to a specific source over time and via widespread and ongoing usage in commerce that it no longer serves as a descriptive mark but rather as a distinctive identification of origin.
Under Indian context, the Act categorically provides a proviso to Section 9 of the Trade Marks Act, 1999 categorically stating that ‘a trademark 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 trademark’. Thus, a trademark though originally generic or descriptive becomes associated in the minds of consumers with a particular source through extensive and exclusive use over time. This form of distinctiveness often requires substantial evidence, such as market surveys, sales data, advertising expenditures, and media recognition, to demonstrate that the public perceives the mark as indicative of a specific origin.
Judicial interpretations: Case law insights
The refusal of a trademark on the grounds of non-distinctiveness has become a significant concern in the Indian trademark landscape. Over the years, Indian Courts have dealt with various cases where trademark applications were challenged for their lack of inherent distinctiveness.
Umang Dairies Limited v. Registrar of Trade Marks[1], In the present case, the Delhi High Court examined whether the trademark ‘White Magik’ for dairy products was inherently distinctive or simply descriptive. The Registrar maintained that the mark was descriptive because it utilized common English terms.
In contrast, Umang Dairies argued that ‘White Magik’ was a unique term with no direct association to dairy products. Umang Dairies further presented significant evidence, including sales figures, marketing expenditures, and consumer surveys, to illustrate that the mark had gained distinctiveness through extensive market presence. The Court concluded that ‘White Magik’ possessed inherent distinctiveness, as the combination of words did not explicitly describe the nature or quality of the dairy products. Additionally, the evidence of prolonged use was adequate to establish acquired distinctiveness, permitting the mark's registration. This case emphasizes the intricate evaluation of distinctiveness, especially for composite marks, and highlights the necessity of providing robust evidence of use to counter objections related to descriptiveness under Section 9 of the Trade Marks Act, 1999.
Mocemsa Care v. Registrar of Trade Marks (2024)[2], In this case, the application for the trademark ‘MOCEMSA CARE’ submitted by Mocemsa Care was denied by the Registrar of Trade Marks due to its lack of distinctiveness as outlined in Section 9(1)(a) of the Trade Marks Act. The trademark was considered descriptive of the healthcare services offered, which included care solutions.
The Delhi High Court affirmed the Registrar's ruling, concluding that ‘MOCEMSA CARE’ did not exhibit inherent distinctiveness and that there was inadequate evidence to demonstrate acquired distinctiveness through its use. The Court noted that trademarks that directly describe the nature or quality of goods or services are not inherently distinctive, and simply appending a generic term like ‘CARE’ does not render a descriptive mark distinctive without substantial proof of consumer recognition. This case highlights the stringent interpretation of Section 9(1)(a) and underscores the necessity of providing strong evidence of secondary meaning for the registration of descriptive trademarks.
Ticona Polymers, Inc. v. Registrar of Trade Marks[3], In this case, the Delhi High Court addressed whether a trademark could be dissected during examination to assess its eligibility under Section 9(1)(a) of the Act. The appellant's mark ‘COOLPOLY’ was challenged on the grounds of lacking distinctiveness, being a combination of the descriptive words ‘COOL’ and ‘POLY.’ The Court held that the mark should be considered in its entirety, emphasizing that dissecting the mark into individual components could lead to unjust outcomes. The decision underscored the importance of assessing the overall distinctiveness of a mark rather than focusing on its parts in isolation.
Anjay Bansal v. Assistant Registrar of Trade[4]: In this case, the Madras High Court examined the eligibility for registration of the mark
which faced objections on the basis that the trademark was descriptive and lacked distinctiveness as per Section 9 of the Act.
The Court ruled in favor of the Applicant, noting trademark has been used since 2005, therefore the mark has acquired distinctiveness. Further, the trademark has been applied in a device form consisting of various elements, the word ‘people’ written in an indigo-green colour; the word ‘source’ written in green; and unique shape of the alphabet, ‘o’ being styled so as to resemble a magnifying glass with the image of a person within the alphabet ‘o’ making the trademark distinctive in totality. The Court also took note of the invoices and financial annual reports of recent years and concluded that refusal order is unreasoned and confirming trademark shall proceed towards advertisement. This ruling confirms that a composite mark can be eligible for registration even if one of its components is descriptive, as long as the trademark is used.
Conclusion
In the context of Indian trademark law, it is evident that distinctiveness is essential; it serves as the prerequisite for protection. A trademark, whether inherently distinctive or acquired through use, must differentiate itself to qualify for safeguarding under Section 9(1)(a) of the Act.
Although descriptive and generic trademarks often encounter significant challenges, Courts are moving away from a uniform approach. They are increasingly acknowledging the significance of secondary meaning, which can be established through consistent usage, effective branding, and market awareness. Recent legal developments indicate a more business-oriented and practical perspective: composite marks that blend generic terms with unique stylization or design may achieve success where straightforward terms do not, and evidence of acquired distinctiveness, such as consumer surveys, advertising expenditures, and brand recognition is being given considerable weight. This evolution suggests that the critical factor is not the initial nature of a mark, but its effectiveness in the marketplace. In the current branding environment, functionality takes precedence over form, and Courts are prepared to protect trademarks that resonate with consumers, even if they are not found in the dictionary.
[The authors are Associates in IPR practice at Lakshmikumaran & Sridharan Attorneys]
[1] C.A.(COMM.IPD-TM) 145/2021 (Decided on February 21, 2023, by DELHC); MANU/DEOR/41667/2023
[2] MANU/DE/2183/2025
[3] 2023 SCC OnLine Del 1234
[4] 2023 SCC OnLine Mad 7463
