Generic Words and Trademarks: The Recent Judicial Outlooks
Using generic words as trademarks is a tricky play. “APPLE” is an arbitrary mark because the word is used as a trademark for products in computer technology, making it highly distinctive and distinguishable. Similarly, “CAMEL” and “SUN” are good examples of arbitrary marks because of the goods and services that they relate to. “CAMEL” is used as a trademark for cigarettes and other tobacco products while “SUN” is also used for computer products.
The strength of a trademark is identified through its level of distinctiveness. Therefore, to claim trademark protection, the first order of business is to adopt a graphically represented mark that is preferably unique and distinctive, capable of distinguishing the goods or services of one person from another. However, in some instances, protection can be granted to generic words and the Indian courts have time and again reiterated that a generic word may ‘claim legal protectability but the burden of proof on the person claiming distinctness in favor of a generic or descriptive mark is much higher’. The Plaintiff has to prove that the mark adopted by them, because of extensive use has acquired distinctiveness, is identifiable only with the goods of the Plaintiff and also that the adoption of the mark by the Defendants is identical or deceptively similar to the mark of the Plaintiff’.
In the case of Sunil Mittal v. Darzi On Call, the Delhi High Court observed that a distinction has to be drawn between the use of a word as descriptive of the services provided under a trademark, and the use of that word in the trademark itself. The Court concluded that the Urdu translation of the word “tailor”, “darzi” was not common for tailoring services in Delhi and thus it was not descriptive/generic. The Court held that if a person, for the first time, starts using a word that had previously only been used as descriptive of services, as a trademark, that innovation to use it as a mark was deserving of trademark protection. Similarly, in the case of Info Edge (India) Pvt. Ltd. Shailesh Gupta, the Court had held that “NAUKRI.COM”, an online portal for job searching was not descriptive of the services provided even though “naukri” is a translation of the word “job” in Hindi. The Court also observed that the mark had acquired distinctiveness through goodwill and reputation over a period of time.
In a recent case this year, Vimal Dairy Limited v. Gujarat Tea Depot Company, the matter regarding generic words was raised and the Gujarat High Court agreed with the Defendant’s argument that a “generic, and common word cannot be protected unless and until it has acquired secondary meaning.” While this is the set standard, however, some recent cases have come to light where protection has easily been claimed by trademark holders even though their marks contain generic words and the marks may not have acquired secondary meaning.
Trademark holders are beginning to claim protection of the words which form part of their marks. For instance, BigBasket has recently sent a cease and desist letter to Daily Basket, claiming trademark infringement. While Big Basket is the largest online grocery and food store in India, Daily Basket, also an online grocery store, is a startup. BigBasket claims that use of a name or logo containing the word “Basket” for any e-commerce business and related products conjures in the minds of the relevant class of consumers and members of trade as that of being associated with BigBasket. However, upon perusal of such a claim, one begs the question whether BigBasket can claim monopoly over a generic word “Basket” in relation to groceries. It may be argued that the word is descriptive and perhaps even suggestive of the goods and services provided. Therefore, BigBasket may only claim monopoly over the word “Basket” if the mark has acquired secondary meaning and distinctiveness in the minds of the consumers.
Moreover, recently in the case of Natures Essence Private Limited v. Protogreen Retail Solutions, the Plaintiff claimed infringement of its marks “NATURE’S”, “NATURE ESSENCE” and “NATURE’S ESSENCE” as a result of the Defendant’s use of the mark “NATURE’S TATTVA”. The Court pointed out that while the Plaintiff has trademark registrations for the marks “NATURE’S ESSENCE” and “NATURE’S INC.”, they did not have any registration for the word “NATURE’S” alone. The Defendant argued that the Plaintiff cannot claim any rights over the word “NATURE” because the word is “purely generic and descriptive, with no secondary meaning.”
The Plaintiff however argued that since the Defendant had itself claimed trademark protection of the mark “NATURE’S TATTVA”, they could not claim that the word “NATURE’S” is descriptive in character. The Court held that “the defendant’s mark is, visually and phonetically, deceptively similar to the plaintiff’s “NATURE’S INC.” mark, and conveys a deceptively similar idea to that conveyed by “NATURE’S ESSENCE”, as has the potential of confusing a customer of average intelligence and imperfect recollection. Whether an intellectual property monopoly can be claimed in respect of the word “NATURE” is, therefore, really off the mark. It would be totally antithetical to all canons of trademark jurisprudence to question the validity of the or marks because “Nature” is a descriptive word. Once “Nature’s” is used in conjunction with “Inc.”, or “Essence”, it assumes a definite and distinct – as well as distinctive – connotation and meaning, which is totally different from “Nature” per se.
It is also pertinent to note that recently in the case of Phonepe Private Limited v. Ezy Services and Anr., the Delhi High Court observed the two trademarks “PhonePe” and BharatPe” wherein the suffix “Pe” was being used instead of the word “Pay” but the same was descriptive of the services provided by both the parties, that is, online payment. The Court held that a mere misspelling of the descriptive word did not itself merit distinctiveness and stated that, “No exclusivity can be claimed, over a descriptive mark, or a descriptive part of the mark, even by misspelling it.”. The Court also found that “Bharat” and “Phone” were phonetically different words and therefore held that there was no deceptive similarity between the two marks, thereby denying the Plaintiff the grant of an injunction.
Phonetically Generic Marks
Another trend that can be observed in trademarks is where a combination of generic words is used to create a unique conjunction. In such instances, one may argue that the combination has made the mark distinctive and hence it should be granted appropriate trademark protection. However, the Delhi High Court rejected this argument and found a mark to be phonetically generic, despite a unique conjunction of words in the case of Delhivery Pvt Ltd v. Treasure Vase Ventures Pvt. Ltd. The Court held that the Plaintiff’s trademark “DELHIVERY” is a phonetically generic mark and vacated an interim injunction, allowing use of the Defendant’s mark “DELIVER-E”. In coming to this decision, it was observed by the Court that, “The attempt of the plaintiff is to tweak the word in the English language, which is clearly impermissible. Similar is the position with regard to the mark ‘DELIVER-E’ coined by the defendant, which also if pronounced in a routine manner means ‘delivery’.”
This judgment is another case affirming the fact that unless a trademark is distinctive enough, it shall not be granted trademark protection. However, this judgement also compels us to question whether the mark “DELHIVERY” is indeed phonetically generic or whether it has acquired some level of distinctiveness. The Plaintiff argued that its mark “DELHIVERY” is in fact distinctive because it is a unique conjunction of the words “DELHI” and “VERY”. But, the Court still concluded that an inference to the generic word “delivery” has to be presumed.
Despite several precedents and a clearly laid out test regarding generic words and trademarks, there still seems to be some degree of uncertainty in this area of the law. The Courts review each case on a factual basis and compare both the marks in question is essential for a proper determination of the case. Whether a unique conjunction of words can still make a mark phonetically generic is another aspect to be analysed further. Monopolizing generic terms is against the principle of fair competition and should be disapproved by the courts.
To conclude, to avoid confusion and uncertainty with regards to the level of protection granted, it is safer and always recommended to adopt a unique and distinctive trademark in the first place. The latest cases seem to align with this conclusion.