Spectrum of distinctiveness: High Court clarifies criteria for inherent registrability
Facts of the case:
In its order dated July 8, 2022, issued in Disruptive Health Solutions Private Limited vs Registrar of Trade Marks, the Delhi High Court laid emphasis on the spectrum of distinctiveness as it clearly explains how the distinctiveness of marks is to be judged.
The Appellant, in this case, had already secured registration for the mark ‘HEALTHSKOOL’ and its variation in classes 3, 5 and 44 and since it was looking forward to expanding its business, it had applied for registration of the mark ‘HEALTHSKOOL’ under application number 3942420 on ‘proposed to be used’ basis in respect of class 10 goods namely ‘Bandages; condoms; surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes, and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices, and articles for nursing infants; sexual activity apparatus, devices and articles.’
The application was examined and objected by the Trade Marks Registry under Section 9(1)(b) of the Trade Marks Act, 1999 on the ground that the same consists exclusively of words or indications which may serve in trade to designate the intended purpose or other characteristics of the goods or service. The mark was eventually refused by the Senior Examiner at the hearing, and the reasoning given by him was that the use of the expression ‘HEALTHSKOOL’ for the class 10 goods applied by the Appellant would only indicate the purpose or the use for which the goods are meant.
According to the Senior Examiner who assessed the Appellant’s trade mark application, for any mark to be considered descriptive, it was sufficient that it’s reasonably indicative and descriptive of the kind or nature of services applied for. He also suggested that for a proprietor to have exclusive rights, the mark ‘must’ consist of some arbitrary or fanciful terms, figures, device and which do not by their ordinary and usual meaning denote or describe goods/ services to which they’re applied and if they do so, they would be liable to be refused.
Observations of the court:
The court observed that the Senior Examiner in the present matter has erred in law while applying the standard required for registration of marks. The court reiterated that the general rule regarding distinctiveness is that a mark is capable of being protected if either it is ‘inherently distinctive’ or has ‘acquired distinctiveness’ through secondary meaning.
The court relied on the decision of Bata India Limited v Chawla Boot House (2019) wherein the spectrum of the distinctiveness of marks was discussed, which explains how the distinctiveness of marks is to be judged i.e. the first category of marks is of arbitrary, fanciful and invented marks which is of absolute distinctiveness; the second category is of suggestive marks which can also be registered due to their inherent distinctiveness; the third category is of descriptive marks which can be registered as trademarks provided the secondary meaning is established, and the fourth category is of generic marks, which is least distinctive. The said decision also underlined that the question as to whether the mark is descriptive or suggestive, can be based on the following tests: a) the degree of imagination required to connect the mark with the product; and b) the competitor's need to use the mark.
It was observed in the present case that the mark ‘HEALTHSKOOL’ was in use by the Appellant since 2015 (with sales to the tune of approximately INR 23 crores in 2020-2021) and that it was a subject matter of several registered marks (in both logo and word form) in various classes. As the Appellant had itself submitted before the Court that it does not wish to claim any exclusive right in the word ‘health’ per se, the Court held that the mark is distinctive enough to proceed for advertisement and set aside the refusal order issued by the Trade Marks Registry, directing the Registry to publish the mark in the Trade Marks Journal within two months with the disclaimer that there shall be no exclusive rights in the word ‘Health’.
As per the recent trend seen in the standard of examination of marks, there has been a considerable increase in the number of marks being objected by the India Trade Marks Office on absolute grounds of refusal i.e., on the grounds that the applied mark is not distinctive (i.e. capable of distinguishing the goods/services of one person from those of the others) and/or on the ground that it is descriptive of the goods/services. There is no strict categorization of marks against which such objections are definitely raised and Applicants of all types of marks (such as single to two or three letter marks; composite marks comprising common dictionary words; marks made up of non-Hindi/ English characters; purely figurative marks, etc.) have faced such objections.
The notion of descriptiveness of marks has been clearly defined in the EUIPO guidelines, which state that a sign must be refused as being descriptive only if it has a meaning that is immediately perceived by the relevant public as providing information about the goods and services applied for (this is the case where the sign provides information about, inter alia, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services). The relationship between the term and the goods and services must be sufficiently direct and specific.
Thus, the same principle of ‘obviousness’ should be considered during the examination of marks in India too, and it has to be understood that just because some portion of the mark is a common dictionary word or has some reference or indication to the products or services intended for, the same does not make it liable to be rejected straightaway. In such a case, the merits of the case should be considered by the Examiners while assessing the mark as a whole (i.e. without breaking it and assessing it element by element) along with consideration of other factors such as the extent of usage of the said mark, other registrations of the applicant for the same mark or its variations (if any).
Thus, to conclude, as the question of receiving an objection on distinctiveness/ descriptiveness of the mark is quite subjective (since it depends upon the level of understanding of the Examiner handling the application), the Applicants should keep the following in mind and make a prior assessment while filing their trademark applications in India in order to prevent getting embroiled in contesting objections raised by the Trade Marks Registry and receiving refusal orders against their trademark applications specifically on such grounds: -
That the mark is on the higher side of the spectrum of distinctiveness i.e. it is arbitrary, fanciful and invented (it comprises such distinctive verbal elements or device elements, there is a unique stylization of the mark, etc.) or is one which may at most be considered as being merely suggestive.
If the mark is to a certain extent descriptive of the goods/services sought to be covered, there is enough documentary evidence to show that the mark has acquired distinctiveness due to its use in India.
The Trade Marks Office provides an opportunity to the Applicant to submit such documentary evidence (if not done earlier) regarding the use of the mark even at the hearing stage of the examination process and there have been many instances where the Trade Marks Office waived its objection and allowed the application (even if it was filed on ‘proposed to be used’ basis) to move towards publication upon submission of evidence of acquired distinctiveness of the mark.