Descriptive trademarks: easy to market, tough to protect


Samta Mehra and Anika Narula

A ‘descriptive trademark’ is one that identifies a characteristic, quality, purpose or some other aspect of a product or service.

For instance, the words ‘apple’ for fruits and ‘all bran’ for cereals would be considered descriptive in nature. As a general rule, such words do not qualify for trademark registration and an objection can be raised by the registrar if he is of the view that the mark applied for registration falls into this category. However, such an objection may be overcome by establishing that the mark has acquired a distinctive character by virtue of its use or that it is a well-known mark.

Descriptive trademarks are often preferred by the marketing teams of companies as they communicate product associations to consumers. Nonetheless, the Indian courts have now made it clear that such marks, even if registered, may be considered invalid.

In Marico Limited v Agro Tech Foods Limited, it was contended by Marico, owner of the registered marks ‘Lo-sorb’ and ‘Losorb’, that Agro Tech’s use of the tagline ‘with low absorb technology’ was tantamount to infringement/passing-off. The goods in this case were identical—edible oil containing an anti-foaming agent by which less oil was consumed while cooking.

Descriptive trademarks, trademark protection