Descriptive trademarks: easy to market, tough to protect
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.
The court observed that the registration of the trademarks ‘Losorb’ and ‘Lo-sorb’ was prima facie invalid as they are only a minor variation of the descriptive expression ‘low absorb’ and no evidence of distinctiveness existed as the marks were sought to be registered on a ‘proposed to be used’ basis.
“The courts are leaning away from granting protection to descriptive marks, even if registered. The level of protection afforded to such marks is low and the message to the trademark owners is loud and clear that if you wish to register descriptive marks, do so at your own risk.”
It was also observed that use for just seven years is not enough to grant monopoly over the terms. And since the marks were used along with other trademarks such as ‘Sweekar’ and ‘Saffola’, it would be a moot point, to be decided after trial, as to what extent of sales could be attributable to these marks. The court thus held that an action for infringement/passing-off was not applicable and declined to grant an interim injunction. The Division Bench of the Delhi High Court laid down the following guidelines:
