When it comes to cases involving descriptive trademarks, courts must find a balance between preventing people from monopolising common trade expressions and protecting the goodwill earned through long-standing commercial use. Although descriptive marks are not usually inherently distinctive, they can still be given legal protection if consumers have come to associate them with a particular source due to long use. On the other hand, claims that a mark is generic or common in trade must be backed by strong evidence and not merely by assertions.
On March 16, 2026, the Bombay High Court, in Dr Bawaskar Technology Agro v. Anannya Agro Products & Anr. (Commercial Appeal No. 28 of 2025), examined whether the mark “GERMINATOR”, when used in connection with agricultural products, was entitled to protection in a passing off action. The Court considered whether the mark was generic or descriptive, whether it had obtained distinctiveness through use, and whether the trial court was justified in rejecting the plaintiff’s application for temporary injunction after an earlier ex parte ad-interim injunction had been granted.
The dispute arose after the plaintiff instituted a commercial suit alleging trademark infringement, passing off and copyright infringement, alleging that the defendants had adopted the identical mark “GERMINATOR” together with a trade dress for agricultural products which was deceptively similar. The plaintiff stated it had been using the mark for a long time and asserted that it had acquired considerable goodwill and reputation through continuous commercial use over several years. An ex parte ad-interim injunction was initially granted restraining the defendants from using the impugned mark and trade dress. It was later set aside by the trial court, holding that “GERMINATOR” was a generic or descriptive term and the plaintiff had failed to establish that the mark had acquired distinctiveness. Because of this decision, the plaintiff appealed to the Bombay High Court.
Before the High Court, the plaintiff argued that the trial court had wrongly described the mark as generic and descriptive without considering the evidence demonstrating continuous prior use and goodwill. It contended that it had extensively used the mark for decades and had built considerable consumer recognition through sales, advertising, promotional activities and consistent presence. The plaintiff also submitted that the defendants had only recently adopted the mark in December 2024, whereas the plaintiff had shown use prior to the defendants and the licensor.
The defendants, on the other hand, argued that “GERMINATOR” was simply a descriptive word found in a dictionary, one which indicates the function of the product, namely promoting germination. They contended that descriptive terms cannot be monopolised unless they acquire secondary meaning, which, according to them, the plaintiff had failed to establish. The defendants also claimed that the plaintiff had not provided reliable evidence of continuous use since the claimed date, that the mark was commonly used by a number of traders in the agricultural sector, and that the plaintiff had suppressed material facts relating to earlier litigation and trademark registration proceedings.
While examining these rival contentions, the Court first observed that the trial court had incorrectly treated the mark as generic, despite there being no such pleading by the defendants. Citing the well-established principle that courts cannot decide cases on grounds beyond the pleadings, the Court stated that the finding describing the mark as generic was legally unsustainable.
The Court further explained that generic and descriptive marks are two separate legal concepts and cannot be used interchangeably. Referring to Section 9 of the Trademarks Act, 1999, the Court stated that while descriptive marks are ordinarily not registrable, it is possible for them to obtain protection if they acquire distinctiveness through use. The Court also referred to the Abercrombie Spectrum of trademark distinctiveness, observing that trademarks fall across a spectrum comprising generic, descriptive, suggestive, arbitrary and fanciful marks. The Court noted that, at least prima facie, “GERMINATOR” might fall in the category of a suggestive mark rather than one that is purely descriptive, requiring a more detailed legal examination than that carried out by the trial court
The Court also dismissed the defendants’ argument that the mark was commonly used in the trade simply because they had provided photographs illustrating third-party use. It observed that it is up to the party making the claim of common trade usage or descriptiveness to prove it. Photos without dates and individual instances of third-party use, in the absence of further evidence showing widespread commercial adoption, were not enough to prove that the mark had become descriptive or generic in the market.
When considering whether the plaintiff had established acquired distinctiveness, the Court observed that the plaintiff had provided a large amount of documentary evidence, such as annual sales figures, Chartered Accountant-certified turnover statements, invoices covering a number of years, promotional materials, publications in newspapers, promotions on social media, e-commerce listings and proof of recognition within the industry. Even though the defendants cast doubt on the authenticity of some of the documents, the Court ruled that disputes about such factual matters could only be settled at trial after the evidence had been led and could not therefore be a basis for refusing interim protection at the interlocutory stage.
The Court pointed out that the trial court had itself recognised the plaintiff’s stronger market position and the longer period for which it had used the mark, while at the same time arriving at the conclusion that the mark was not distinctive. The High Court considered that these findings were internally inconsistent and amounted to a misapplication of the established principles relating to passing off actions. The High Court also found fault with the Trial Court’s reliance on the defendants’ amended trade dress. It was observed that the essential feature “GERMINATOR” was still prominently displayed even in the changed packaging, and the added matter did not prima facie rule out the likelihood of confusion. The Court further noted that the relevant consumers were agriculturists and persons of imperfect recollection, who were likely to go by the trademark and trade dress of the products.
The Court also disapproved of the defendants’ unilateral changes to their label during the proceedings. Referring to the principle that confusion is not cured by minor changes, the Court opined that a defendant cannot seek approval for revised packaging that continues to be infringing or confusing.
The Court also concluded that, according to the defendants’ own statement, they only adopted the mark in December 2024, while the plaintiff had provided evidence of commercial use going back for many years. As a result, the plaintiff had set up a prima facie case regarding prior use, goodwill and consumer association which was enough to justify interim protection until the trial takes place.
Accordingly, the Bombay High Court set aside the trial court’s order dated October 4, 2025, and prevented the defendants from passing off the trademark “GERMINATOR”, or any identical/deceptively similar mark or trade dress, pending final disposal of the suit before the Trial Court. It was held that the trial court had made a mistake in describing the mark as generic, had not properly understood the difference between generic and descriptive marks, and had ignored the evidence showing prior use and prima facie acquired distinctiveness.
The judgment offers important guidance on the protection available to descriptive trademarks in passing off cases. It makes it clear that descriptive marks are not automatically excluded from protection and that they can become enforceable if they have acquired secondary meaning through long-established commercial use. The decision also stresses that claims concerning common trade usage or descriptiveness must be backed by reliable evidence and cannot be based on nothing more than assertions. Similarly, the Court stresses that any determination relating to the classification of a trademark must be based on the pleadings and must be supported by evidence. For brand owners, especially those who use descriptive or suggestive marks, the ruling highlights the need to keep thorough records of their sales, advertising, market recognition and ongoing use, since such evidence is essential for proving acquired distinctiveness and for obtaining protection in passing off proceedings.
Authors: Manisha Singh and Kratika Patel