Issue XVII | June 2011
Use of Generic Expressions as a Trade Mark
Introduction
The Delhi High Court (“DHC” or “court”) pronounced a landmark judgment on
November 01, 2010 in the case Marico Limited vs. Agro Tech Limited.1 This judgment deals with
the use of descriptive and generic expressions as trade marks and whether registration of
such trade marks can prevent the court from granting injunctions. The court examined the
scope of granting an injunction in case of an infringement as well as passing off claims.
The present bulletin analyzes the scope of judicial interpretation of the provisions of
the Trade Marks Act, 1999 (“Act”) as well as the precedent set by the aforementioned
judgment while dealing with generic expressions as trade marks.
1.0
Facts of the case
The plaintiff was a seller of edible oil and the owner of the registered trade marks
“LOSORB” and “LO-SORB,” which were used in relation to the edible oil. The plaintiff
also used the term “LOW ABSORB” but the same was not registered. The rationale of using
these terms on the packaging of the oil was because the oil contained an anti-foaming agent
which reduced the absorption of oil during the process of frying food items. Similarly, the
defendant was also selling edible oil that contained an anti-foaming agent. The packaging of
the defendant’s product contained the expression “LOW ABSORB TECHNOLOGY.”
Based upon these facts, the plaintiff filed a case for infringement as well as passing off
against the defendant on the ground that the expression “WITH LOW ABSORB” was
deceptively similar to the plaintiff’s two registered trade marks “LOSORB” and “LOSORB” as well as the unregistered mark “LOW ABSORB.”
At this point it is also important to note that the plaintiff was selling its edible oils
under the trade marks “Sweekar” & “Saffola,” whereas the defendant was selling it under the
trade mark “Sundrop.” These trade marks were in addition to the trade marks mentioned in
the above paragraph.
2.0
Issues
Keeping in view the fact that the trade marks “LOSORB” and LO-SORB” were
registered and “LOW-ABSORB” was unregistered but had been in continuous use by the
plaintiff, the DHC framed the following issues to adjudicate upon the dispute:
1.
Whether the registration of the trade marks “LOSORB” and “LO-SORB” gives the
plaintiff an exclusive right to use them and consequently an action for infringement is
maintainable if the allegedly infringing trade mark is deceptively similar or nearly identical to
1
174(2010)DLT279
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Issue XVII | June 2011
the registered trade mark, i.e. does registration confer only prima facie validity and whether,
in fact, the court can deny an injunction in spite of registration?
2.
Whether the use of “LOW ABSORB TECHNOLOGY” by the defendant in
relation to edible oil product amounts to passing off the goods of the plaintiff which uses
the unregistered trade mark “LOW ABSORB?”
3.0
Observation of the DHC
The court divided its observations under the aforementioned issues framed and first
adjudicated upon the issue of passing off alleged by the plaintiff.
3.1
Passing Off
While determining the second issue framed above, the DHC relied on the landmark
judgment of Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors.2
This case dealt with the use of the trade mark “Sugar Free” as an expression describing the
product and not primarily as a trade mark. The makers of “Sugar Free,” an artificial
sweetener alleged a case of passing-off against the makers of “D’lite,” a drink that is free
from sugar. The court held that “Sugar Free” is not an inherently descriptive word but
merely descriptive in nature but at the same time noted that if a maker of an artificial
sweetener used the same trade mark, the makers of “Sugar Free” will have a just cause in
seeking restraint of use.
Applying the same principles in the instant case, the DHC observed that the
expression “LOW ABSORB” is a common descriptive adjective and is a combination of two
popular English words that are descriptive in nature. While making this observation, the
DHC also took a firm view against persons who are the first to block descriptive trade marks
and stated that such persons should be discouraged.
The court observed that section 9 of the Act provides for absolute grounds for
refusal of registration of a trade mark and section 9(1)(b) specifically states that any mark
which consists of indications which designate a particular kind, quality or other
characteristics of the goods shall not be registered. Recognizing the principle envisaged in section
32 of the Act, even though section 32 does not apply to proceedings of a civil court, that if a
mark is registered in breach of section 9(1), it shall not be declared invalid if it has attained
distinctiveness, the court held that the trade mark “LOW ABSORB” would have acquired a
“distinctive character” if the public would immediately and unmistakably co-relate the mark
with the source or a particular manufacturer/owner thereof. Based on the facts, the trade
mark “LOW ABSORB” had been in use only for a period of seven years, which was not a
sufficiently long period of time to establish distinctiveness. Further, it was difficult to assess
whether the volume of sales of the plaintiff under the brands “Sweekar” and “Saffola” was
due to the trade mark “LOW ABSORB” or due to the trade mark “Sweekar” and “Saffola.”
Accordingly, the DHC held that no case of passing off was established as the mark squarely
fell under section 9 (absolute grounds for refusal of registration), even though it was not registered.
2
2009(8)AD(Delhi)350
Disclaimer – This bulletin is for information purposes and should not be construed as legal advice.
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Issue XVII | June 2011
3.2
Infringement
This was an extremely important question adjudicated upon by the DHC as to
whether registration of a trade mark confers an exclusive right to use the expressions
“LOSORB” and “LO-SORB” and prevents anyone else from using any trade mark which is
identical or deceptively similar to the registered trade marks. The application filed with the
trade mark registry for registering “LOSORB” and “LO-SORB” stated that these marks
were “proposed to be used.” Based on this, the court concluded that the two trade marks were
not distinctive on the date of filing the application. Further, the DHC also stated that the
trade marks were only a minor variation of an English word “LOW ABSORB” and would
fall within the ambit of section 9(1)(b) of the Act. Since the marks were not distinctive when
the application for registration was made, and any distinctiveness was only subject to the
“proposed” use, the court concluded that the two marks did not even fall under the proviso
to section 9(1) of the Act.3 Based on the aforementioned, the DHC deemed the two
registered trade marks as prima facie invalid.
The court further concluded that if the arguments of the plaintiff are accepted, any
person who is successful in getting a minor modification of a descriptive English word or
expression registered, may prevent a purely descriptive use of a normal word or expression
on the ground that it would be identical with or deceptively similar to a registered trade
mark. Such situations, according to the DHC, should be struck down with a heavy hand.
3.3
Harmonious interpretation of proviso to section 9(1), section 31(2) and section 32 of
the Act
As stated above, since the two registered trade marks “LOSORB” and “LO-SORB”
were not distinctive at the stage of registration, the proviso to section 9(1) did not apply and
hence the marks could not be registered. However, the DHC also speculated a situation
wherein the marks were not distinctive at the time of registration but post-registration, there
could be a possible scope of distinctiveness that may justify the registration. In light of this,
the court interpreted the provisions of section 9(1), 31(2) and 32 of the Act.
Section 9 pertains to “absolute grounds for refusal of registration” and proviso to
section 9(1) states that if before the date of application, the mark has acquired a distinctive
character as a result of its use or becomes well-known, it may be registered. Section 31 states
that “registration to be prima facie evidence of validity” and section 31(2) specifically states
that in all legal proceedings, a registered trade mark shall not be held invalid on the ground
that it was not trade mark that could be registered under section 9 unless there is evidence of
distinctiveness which was not submitted to the registrar of trade marks (“Registrar”) before
registration. Section 32 protects registration on the ground wherein distinctiveness of a trade
mark has been obtained after registration but before commencement of any legal
proceedings challenging the validity of the registration.
The proviso to section 9(1) states that if a mark has attained distinctiveness on the date of filing the
application for registration, then such mark may be registered even though it may be in breach of section 9(1)
3
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Issue XVII | June 2011
The DHC concluded that proviso to section 9(1) only applies on the date of the
application for registration of the trade mark whereas section 31(2) states that a mark may be
registered if distinctiveness is acquired after the date of application but before its registration,
which in India can be an extremely long drawn process. With respect to section 32 of the
Act, the court concluded this even though this section is applicable to all “legal
proceedings,” by using the expressions “declared invalid” and “challenging the validity of
such registration,” the scope of this section is limited only to cases where an application for
cancellation of a registered mark is filed with the Registrar under section 574 of the Act.
Accordingly, evidence with respect to distinctiveness under section 32 of the Act can only be
filed with the Registrar/appellate board and not in proceedings before a civil court where an
infringement action is filed.
4.0
Findings of the DHC
Based on the above analysis, the DHC did not accept the plaintiff’s contentions as
the trade mark was not distinctive and also because the defendant was not using the
expression “LOW ABSORB TECHNOLOGY” as a trade mark but only as an expression
describing the technology in its product. The court concluded that(i)
Marks falling under the scope of section 9(1) of the Act should not be offered
protection as a registered trade mark. However, in case marks falling under section 9(1) of
the Act are registered, the Registrar should ensure that the distinctiveness should be of an
undisturbed user for a very large period of time.
(ii)
A civil court, in a suit for infringement of a registered trade mark, is entitled to
consider the validity of registration for the purpose refusing grant of an interim injunction,
but only after the objection as to the validity of registration is taken up by the defendant in
the written pleadings.
(iii)
While passing interim orders, evidence to determine distinctiveness should only be
taken up till the date of registration of the trade mark and not after that. However, in
cancellation proceedings, post registration evidence for establishing distinctiveness can be
considered as well.
(iv)
Most importantly, even if there is finality to the registration of a trade mark, the
defendant can, in an infringement suit, take statutory defenses provided under the Act to
defeat the infringement action.
Conclusion
The DHC laid down a very important principle that registration of a trade mark is
only a “prime facie” evidence of its validity and not “conclusive” evidence. This implies that
the basis of registering of a trade mark can be a subject matter of adjudication even after the
registration process is concluded by the Registrar. Similar principles were also upheld in a
4
Section 57 states the power of the Registrar to cancel or vary the registration of a trade mark
Disclaimer – This bulletin is for information purposes and should not be construed as legal advice.
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Issue XVII | June 2011
more recent 2011 judgment of the DHC in Bhole Baba Milk Food Industries Limited v. Parul
Food Specialties Private Limited.5 This judgment should not act as a deterrent for parties to
register their trade mark, but warn them of what to expect in case a suit for infringement is
filed.
Authored by:
Dhruv Suri
5
2011(45)PTC217(Del)
Disclaimer – This bulletin is for information purposes and should not be construed as legal advice.
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