Why Distinctiveness Matters in Trademark Law

Introduction

Trademarks are a significant asset for any corporation. A mark can be a phrase, word, or symbol that denotes a specific product and legally differentiates it from all other products of its kind. Trademark is a significant intellectual property that is used by companies to distinguish its brand from competitors in the market. In India more than 1,00,000 trademark applications are filed in a year. Not all of these application see it to the end of the registration process and get registered- many are refused, generally because they are too similar to existing marks or not distinctive enough.

With so many applications being filed annually it is imperative for the marks to possess distinctiveness. Distinctiveness is nothing but a certain amount of uniqueness or the ability to stand out from the rest of the lot. In an IP such as Trademarks, distinctiveness as a factor can go a long way in establishing a brand, acquiring customers and gaining control over the market.

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How is Distinctiveness Defined in Trademark Law?

The concept of Distinctiveness plays a critical role in trademark law because it ensures that no two marks are similar at the time of being registered. Any mark that is not distinctive from that of an existing mark is rejected. Courts have evaluated general guidelines for distinctiveness of word mark by placing it in one of four categories 1) generic, 2) descriptive, 3) suggestive or 4) arbitrary or fanciful.

Generic marks are those words or marks which are known to the public in general and have a dictionary meaning. Descriptive marks are those marks that lack distinctiveness because they tend to describe the product or service. Suggestive marks on the other hand are distinctive in nature as it hints towards a particular product or service, for example the word AIRBUS hints towards airplanes and the word NETFLIX hints towards streaming services. Just like suggestive marks the final category i.e. arbitrary or fanciful which is inherently distinctive and are likely to get protection as the terms used are completely made up and do not have a meaning. For example, terms like XEROX or KODAK got fanciful marks and APPLE for arbitrary marks.

In comparison of these 4 categories it can be deduced that the degree of distinctiveness is extremely high when it comes to arbitrary or fanciful marks. These marks do not possess a fixed meaning thereby have an increased chance of getting registered. They are also less likely to be denied registration for being common terms someone else in the industry would like to use.

Why Does Distinctiveness Matter?

Distinctiveness is extremely crucial in the long run of a particular trademark. Distinctiveness reduces consumer search costs. A logo, a slogan or colour of the packaging of the goods helps a consumer to easily identify a particular good from the list of goods on display. Once established, it gains the consumer confidence on the quality of the service provided by a particular brand.

For example: Cadbury was successful in staking its claim against Nestle to register the colour purple on the whole of the visible surface of its chocolate bars, eating chocolates and drinking chocolates. The ruling stated that the colour had acquired a distinctive character and people associated the colour with Cadbury Chocolates. Evidence in the form of a public survey, proved that the public associated the colour with Cadbury’s products.

Companies by ensuring distinctiveness in their brands or logos establish a certain amount of goodwill among the consumers in the market, whereby the consumers feel confident to buy a certain product because of its brand. Having distinctiveness in trademarks also ensures that no competitor is passing off the goods under the mark of another person. It’s often seen that once a particular brand has attained certain goodwill, competitors try to sell the same product using either similar packaging or mark, thereby making consumers believe that the goods are manufactured by the original company itself.

A mark acquires distinctiveness over a period of time. By acquiring a customer base and goodwill in the market it can establish in the court of law that the impugned mark is a distinctive mark. An interesting illustration of this concept can be found in the following set of case laws regarding the usage of numerals in trademarks.

In Radico Khaitan Ltd v. Carlsberg India Pvt Ltd. the rival parties sold mineral water branded as 8 PM and been marked as Palone 8.  Ruling against the Plaintiff in this case, the Delhi High Court opined that a numeral, in itself, cannot be said to have distinctive character and that in any case, the numeral 8 was generally used in the beer industry and other users had also registered similar trademarks. However, in the interests of the consumers, to avoid confusion it was asked of the defendant to change the manner in which the numeral ‘8’ was represented.

Under the Trademarks Act protection can be availed for numerals as well. However, distinctiveness as a trait cannot rely solely on numerals. The same was held in Skol Breweries Ltd. v. Som Distilleries & Breweries Limited, the Bombay High Court held that numerals cannot be claimed exclusively by any applicant. In the case of Kamal Trading v. Gillette UK Limited, the court was concerned with the usage of identical mark 7 O CLOCK by the defendant. The Court considered that to be a case of a composite mark that was distinctive as a whole and the defendants were restrained from using the mark on their toothbrushes as it would confuse the trade in respect of the plaintiff’s use of the mark on their shaving creams and razors.

Conclusion

From the discussion above it can be deduced that distinctiveness goes a long way in ensuring continuity in the life of a trademark and the brand of a company. It secures the trademark and also reduces the chances of any similar mark to get registered thereby causing confusion among the consumers. It is a trait that is sometimes acquired and generally enhanced over a period of time, but starting off with a more distinctive trademark helps in establishing a dominant stake in the competitive market.

Author: Nihal Raj, Legal Intern at PA Legal.

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