Proving acquired distinctiveness? Easier said than done!

money-trading-1-1444155The registration of descriptive trademarks is prohibited under Section 9(1)(b) of the Trade Marks Act, 1999 (hereinafter the Act). However an exception is provided under the Act itself, on the provisions of Section 32 of the Act, which provides that “where a trade mark is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration acquired a distinctive character in relation to the goods or services for which it is registered.

Thus, in order to register a descriptive mark the proprietor of such mark must convince the Examiner that the proposed mark has acquired a secondary significance, and is liable to be protected under Section 32 of the Act.

The issue that remains to be determined is how to prove that any mark has acquired secondary significance. Usually the proprietor submits invoices, advertisements and other relevant promotion evidence to prove the use of any mark. The position in this regard has been recently clarified by the Bombay High Court in an order passed in the matter of, Pidilite Industries Limited and Ors. vs. Vilas Nemichand Jain and Ors.

The facts of the case are as follows: Hardcastle & Waud had applied for registration of a label mark containing the word LEAKGUARD along with the expression HOLDTITE for use in relation to industrial chemicals and claimed use since 1999. Later on Hardcastle & Waud assigned its rights in favour of Pidilite Industries (hereinafter the Plaintiff).

Subsequently the Defendant applied for registration of the trademark LEAKGUARD under on February 16, 2008 with a user claim April 1, 2005. Feeling aggrieved by this move of the Defendant, the Plaintiff filed a suit before the Bombay High Court of passing off against the defendant for illegally adopting its mark.

The question before the court was to determine whether the establishment of the fact that the plaintiff is a prior user and that the mark had obtained reputation and goodwill, would ipso facto entitle the plaintiff to an injunction against passing off.

The Bombay High Court answered this in negative and emphasised that the mere evidence of extent of use including invoices, financial figures of sales and so on might perhaps show use or even increased use; however something more is necessary to show that the use is such that the mark has become distinctive. It is a well established principle of law that use is not equal to distinctiveness and when it comes to a descriptive mark even extensive use is insufficient and what is required is that the proprietor of such mark must show that the secondary meaning acquired must have displaced entirely the primary descriptive meaning of the mark. To succeed in such an action what a plaintiff must show is that the goods bearing the mark have come to be identified with his goods exclusively, and in the case of a descriptive mark, evidence is necessary of members of the public as well, not just people who are specially placed to attest to its uniqueness.

Further, the court held that for a registration of mark in relation to a descriptive word or an expression, it is necessary to show that the mark has been used extensively; publicity wide and in consequence has achieved some sort of secondary distinctive meaning.

So in order to establish a passing off in relation to descriptive mark, the proprietors of trademarks must prove that the descriptive mark has acquired secondary meaning and merely showing prior use will not be sufficient to succeed in an action for passing off.