Inherent Distinctiveness
The degree to which a trade-mark does not define the nature, character, or quality of goods or services is referred to as its intrinsic distinctiveness. The less mark has to do with the product it is representing, the more inherently distinctive it is.
For example, take a company like Nike or Adidas, which deal in sporting merchandise. Their logos and names have only a passing resemblance at most to anything connected with sports.
In contrast, if a mark describes the nature, character, or quality of a commodity or service, it has minimal or no inherent distinctiveness in the marketplace. For example, imagine a mark Speech Centre for talking aid equipment or speech impediment health services. This would be a mark with lower inherent distinctiveness than Nike or Adidas.
This is because it’s entirely possible for a competitor to argue that the words “Speech Centre” could be used in common parlance by other competitors. Giving exclusive usage to the initial mark user would be difficult in this case. It’s also easier for the trademark owner to assert that a third party using a visually or phonetically similar mark causes consumer confusion in cases of trademark infringement. The confusion argument has additional weight if the mark is more inherently distinctive.
In essence, a trade-mark with low distinctiveness may not be registrable or provide the trade-mark owner with limited protection in terms of enforcing their trade-mark rights. When selecting a trade-mark, it is critical to choose a powerful mark with a high degree of inherent distinctiveness in order to obtain stronger trademark protection and avoid confusion with other marks.
Acquired Distinctiveness
The word “acquire” means “to get.” A trademark that has gained distinctiveness with which it has become even more distinctive than before.
Acquired distinctiveness, unlike inherent distinctiveness, requires time, often taking place over a period of several years in the majority of cases. This is because a mark does not become distinctive overnight, it is a process of change that will take time and effort.
Acquired distinctiveness is also referred to as secondary meaning. This refers to how a mark has acquired a significance among the consuming public that is separate from the mark’s dictionary meaning.
When evaluating the distinctive character of a mark for which registration has been sought, the following factors should be taken into consideration;
- The percentage of the market that the mark controls.
- The extent to which the mark has been used extensively, geographically widely, and for a lengthy period of time.
- The amount of money that the company has invested in marketing the product or service.
- The fraction of the relevant class of people who recognise the commodities as having originated from a specific enterprise.
- Statements from a number of different trade and business organisations.
It is necessary for the competent authority to conclude, based on these considerations, that a considerable number of people recognize the goods as having originated from a specific source as a result of the trademark before the mark can be registered on the basis of acquired distinctiveness.
Distinctiveness as an Exception of Descriptiveness
The quality of being distinct is an exception to the quality of being descriptive.
In accordance with Section 9 (1) of the Trade Marks Act, 1999, a descriptive mark is a mark that defines the traits or characteristics of the products and services and is not eligible for registration.
However, while Section 9 (1) establishes an absolute prohibition on descriptive marks being registered as trademarks, it also provides an exception. This exception states that a trade mark will not be refused registration, if it has acquired a distinctive character as a result of the use made of it or if it is a well-known trade mark prior to the date of application for registration.
The proviso to Section 9 (1) and Section 32 of the Trade Marks Act of 1999, respectively, deal with acquired distinctiveness or secondary meaning in a more indirect manner.
If a mark is registered in violation of Section 9 (1) of the Act, Section 32 states that the mark will not be declared void if it acquires distinctiveness after it has been registered and before any legal proceedings are brought to challenge its validity.
Relevant Case Laws
In the case of Britannia Industries Ltd vs Itc Ltd & Ors, the Delhi High Court resolved the question of the amount of time required to establish acquired distinctiveness. The Court stated that it was not necessary for a product to be on the market for a definite number of years in order to acquire secondary meaning. If a fresh idea is intriguing and appealing to customers, it has the potential to become a hit almost overnight.
Providing that the applicant can demonstrate that the mark has acquired a secondary meaning or a distinctive character through consistent use for a significant period of time, or that consumers have truly fallen in love with the mark, the applicant may be granted exclusive rights to use the word as a trade mark even if it is not inherently distinctive.
In Living Media India Limited vs Jitender V. Jain the Delhi High Court had to assess whether the name and style of “AAJ TAK,” as well as its logo, were generic terms that did not belong to any particular person, whether in relation to the news program or not.
Even if the words “AAJ TAK” are descriptive in nature and have dictionary meaning when combined, the court determined that they are still a coined word of the plaintiff that has acquired a secondary meaning through prior, continuous, and extensive use. Thus, the combination of the two words “AAJ TAK” could not be used by any other user.
Author: Ayush Agrawal, Legal Intern at PA Legal.
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