Distinctiveness In Trademarks- A Sine Qua Non?

It is a general perception that a trademark should be a distinctive one for the purposes of registration under the Trademark Act, 1999. But is it an absolute rule?

Trademarks are required to be distinctive under the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) and non-distinctiveness is an absolute ground of refusal under section 9 of the Act. The rationale behind this legal stipulation is fairly simple to decipher so it goes that the purpose of trademarks is to distinguish the goods and services of one person from that of another. Having said so, is it so that this rule is without any exceptions?

Prudence has it that rigidity is antithetical to law, and so non-distinctive trademarks are also allowed registration and protected by the act in the following situations (not exhaustive);

  1. Registration of Unregistered Non-Distinctive Trademark

If an unregistered trademark in contention has been declared to be a well-known trademark by any Registrar or Court, then despite it being non-distinctive, it will be granted registration under the act under section 23 read with section 11(8) and proviso to section 9(1) of the Act.

  1. Protection of Registered Non-Distinctive Trademark

If a trademark is registered in breach of Section 9(1) (which requires a trademark to be distinctive) and if before commencement of any legal proceedings challenging the validity of such registration, it gains subsequent distinctiveness or secondary significance based on the user of the trademark; then non-distinctiveness cannot be a ground for rectification of the ‘Trademark Register’ under S.58(c) of the Act. This proposition of law is enshrined under S.32 of the Act.

  1. Protection of Non-distinctive Unregistered trademark under the law of Passing off

Though a trademark may be a non-distinctive and an unregistered one, yet section 27(2) of the Act, read with S.134 and S.135 would protect it from unauthorized use by any other person under the law of passing off. The proprietor of such a trademark would be required to prove the classical trinity, that is; his trademark has reputation, there is a possibility of deception amongst its customers and likelihood of loss, and thereupon the ball would go to the unauthorized user’s court to disprove passing off. The significant observation to be made here is that if the plaintiff proves that his trademark has got reputation, the defendant cannot take non-distinctiveness of the plaintiff’s trademark as a defence for passing off.

But as it is said that prevention is better than cure, and not courts but offices are the ideal place for businessmen; I, now ponder upon the demerits of opting for non-distinctive trademarks.

  1. Difficult, if not impossible, registration

Firstly, though S.32 recognizes the fallibility of the Trademark Registrar’s Office by recognizing the possibility of a non-distinctive trademark getting registered, in practice, getting such registration seems to be an extremely difficult task, more so, in this era of electronic databases.

  1. Getting well-known status not a child’s play

Secondly, it is not a child’s play to get one’s trademark recognized as a well known-mark. In around 14 years of its operation, the act has seen only 62 trademarks getting such recognition. That doesn’t mean that there are no other trademarks having the potential to be declared as well-known but definitely means that the status is a coveted one and is not a freebie. Therefore, starting a business with a non-distinctive trade (registered or unregistered) mark in a hope that a subsequent grant of well-known status would come to his rescue, in case of him commencing litigation for infringement or passing off, is nothing but incurring a great deal of business risk.

  1. Bowling a full-toss is always inviting trouble

If a registered trademark is non-distinctive, then there are fair chances that it would resemble some name, address or description of goods or services. In such an eventuality, a prospective infringer can very conveniently use such registered trademark under the garb of bona fide use; as such use is saved by S. 34 of the act.

To conclude, it is not so that non-distinctive trademarks are, in limine, ignored by the Act. The policy of the act is to protect genuine and bona fide use of trademarks against any unauthorized use and not to chide and ask a person to fend for himself just because of the fact that the trademark which he uses is a non-distinctive one. But at the same time, good business sense requires erring on the side of caution and law.

 Shashank Mangal
ILS Law College Pune