Descriptive terms cannot be styled protected trademarks

In the recent appeal of M/S Pornsricharoenpun Co Ltd & Anr v M/S L’Oreal India Private Limited against the grant of a court order, the Delhi High Court set aside the interim injunction restraining the use by the appellant of the mark Hair Spa. The court held that the term Hair Spa, despite being registered as a trademark by the respondent, was common in trade and was used by the appellant in a descriptive manner rather than as a trademark.

The appellant had a well-established business in Thailand manufacturing, marketing, exporting and dealing in cosmetics and hair care products under the trademark Berina. This trademark was registered in India in class 03 for cosmetics and hair care products. The appellant advertised the first sale of its products under the mark Berina Hair Spa in India in 2011. The advertisements appeared in a magazine in which the respondents’ product was also advertised. Despite having prior knowledge of the appellant’s products and appearance, the respondents took no action for three years. In 2014, the respondents applied for a permanent injunction against the appellants alleging infringement of and passing off in relation to their trademark, Hair Spa. The original court made the order restraining the appellants from using the mark Berina Hair Spa. The appellant appealed to the High Court challenging the injunction.

The appellant submitted that the goods it manufactured bore the trademark, Berina, followed by the description or nature of the products such as bleaching preparations, hair colourings, hair straightener creams, hair spa and conditioners. The expression hair spa was used merely in a descriptive sense and not as a trademark. The expression was generic, and commonly understood and used by consumers as a treatment for hair conditions. Both hair and spa had plain dictionary meanings, and therefore, when put together, the words hair spa merely referred to the treatment, conditioning and nourishment of damaged hair.

Since the expression hair spa was common in trade, no person could claim a monopoly over it as several entities were marketing their products using the words hair spa. There were no similarities in the styling, colour combinations or the trade dress of the two rival labels. Even the stylised way in which the words hair spa was written was dissimilar.

The respondent argued that in 2002 they adopted the trademark, Hair Spa, honestly and in good faith for hair products and services and that they had been openly, continuously and extensively using it for their business purposes ever since. The respondents submitted that they had built a large portfolio of L’Oreal marks using stylised markings and logos. They had registered the trademark, Hair Spa. The use of the registered mark, Hair Spa, by the appellant therefore amounted to infringement and passing off.

Citing a number of supportive judgments, the high court held that the term, hair spa, was descriptive and commonly used in trade to describe products employed in the treatment and nourishment of hair. The court held that hair spa was not an invented expression but merely a combination of two English words, hair and spa, that only described the characteristics of a product. The combination was not capable of being distinctive. The court also held that the respondents’ trademark, Hair Spa, had not acquired the distinctiveness needed to claim an exclusive monopoly and to exclude others from using the generic expression.

Most importantly, the colour scheme of the appellant’s products was clearly different from those of the respondents and even the fonts, letter styles and colours of the words, hair spa were different. The high court allowed the appeal and set aside the order made by the original court.

This decision has reaffirmed the position under trademark law that descriptive words, defining the characteristics of a product, should not be registered as trademarks. The threshold for the protection and enforcement of descriptive marks is high. Assertions that marks have acquired distinctiveness must be backed by reliable and credible bodies of evidence showing continuous and uninterrupted use that is so distinctive as to relate unmistakably to the claimant.

From an enforcement standpoint brand owners must be extremely cautious about adopting such marks as they may offer little protection.