INTRODUCTION
The fundamental principle of trademark law is to protect the source of origin of the goods or services under the creation label or mark. Such a label or mark should have a distinctive character capable of distinguishing itself from other players in the market. It could be inherent or could be acquired through secondary meaning. The philosophical understanding of trademark development is the repetitive use of such distinctive labels or marks concerning the goods or services offered. The threshold of repetition is when the mark is used interchangeably for the product. A trademark as a mark is successful only when it becomes a “well-known” trademark, e.g. Dettol and Dalda.
In this article, we will discuss the acquired distinctiveness doctrine within the Indian trademark system. It is also known as Secondary Meaning.
THE TRADE MARKS ACT, 1999
The proviso to section 9 provides that a trade mark shall not be refused registration if, before the date of application for registration, it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. Additionally, as per Section 32, if a trademark is registered in violation of Section 9 (1), it won’t be declared invalid as long as, before any legal challenge, it has gained distinctiveness through use concerning the goods or services it represents.
Thus marks that are not distinct or are descriptive can acquire a certain level of strength or secondary meaning to qualify for trademark protection. The validity of a trademark is determined by the necessary level of secondary meaning. However the owner must adduce enough evidence that the mark has been used extensively and uninterruptedly in the commercial market and that the consumers associate the name with a product it offers.
REQUIREMENTS OF ACQUIRED DISTINCTIVENESS
A trademark applicant has to demonstrate that the mark has acquired distinctiveness through extensive use. The burden of proof for establishing acquired distinctiveness rests entirely with the trademark applicant. The applicant must provide strong and convincing evidence that the mark has developed secondary meaning through extensive and exclusive use. The elements are mentioned below –
- Continuous Use Evidence – Applicants must provide proof of the mark’s continuous use in the Indian market over time to show its visibility and role in identifying the goods/services. Longer and consistent use strengthens the case for the mark’s recognition and association with the product.
- Promotion Efforts – The owner must provide evidence of efforts to promote the mark in India, including advertising campaigns, marketing strategies, and other promotional activities. This shows how the mark has been targeted to build recognition and market presence.
- Market Share Evidence – Sales figures, customer testimonials, surveys, and other data are crucial in proving acquired distinctiveness, demonstrating the mark’s recognition and strong popularity among consumers in the Indian market.
- Consumer Recognition Evidence – Applicants must provide evidence of consumer recognition and association with the mark in India. This can be shown through surveys, feedback, and promotional activities that highlight how consumers perceive the mark as an indicator of a specific business.
In T.V. Venogopal vs. Ushodaya Enterprises Ltd., the Supreme Court discussed in detail the secondary meaning. It held that secondary meaning arises when a descriptive term, through extensive and consistent use, becomes uniquely associated with a specific source in eh minds of consumers. The court acknowledged that Eenadu was a descriptive term in Telugu meaning “today”. It held that it had acquired distinctiveness over time, particularly in Andhra Pradesh, through extensive use and market recognition. Evidence such as market recognition, advertising efforts, market impact, and usage beyond primary products were presented. The court held that such evidence completely fulfils the criteria for secondary meaning. The court agreed that widespread recognition and goodwill had transformed the generic term into a symbol of the business owner. The consumers strongly associated it with a particular regional publication. The scope of protection is not exclusive across all products nationally, but rather limited to acquired distinctiveness within its field (media), especially in Andhra Pradesh.
STRATEGIES FOR ESTABLISHING ACQUIRED DISTINCTIVENESS
Trademark owners in India aiming to demonstrate acquired distinctiveness for descriptive or generic marks rely on a variety of strategies to present persuasive evidence to authorities or courts. Some of them are:
- In India, trademark owners can prove acquired distinctiveness by presenting sales data and market research. Concrete sales figures showing a strong market presence and consistent sales over time, along with market research reports strengthen the claim.
- Conducting consumer surveys and gathering feedback from Indian consumers can be crucial in demonstrating acquired distinctiveness. These surveys should assess whether consumers associated the mark with a specific business and recognize it as distinct. Positive results showing a strong link between the mark and the goods can serve as persuasive evidence.
- Providing a detailed record of advertising and promotional activities targeted at the Indian market can demonstrate efforts. This may include advertisements across different media, marketing campaigns, social media presence, and other promotional materials aimed at Indian consumers.
- Expert opinions from qualified professionals in relevant fields can add credibility to the claim of acquired distinctiveness. It can provide insight into the mark’s use in the Indian context, strengthening the notion that the mark has acquired secondary meaning and distinctiveness.
- Evidence of non-descriptive use, such as a stylized font, logo, or specific colours, can strengthen the case for acquired distinctiveness by showing the mark has developed a unique identity.
CONCLUSION
Acquired distinctiveness is vital for protecting descriptive or generic trademarks in India. By establishing secondary meaning through consistent use, promotion, and consumer recognition, a trademark can gain distinctiveness. The strategies discussed, such as continuous use, market share evidence, and consumer feedback, are key to demonstrating this.
Ultimately, continuous use and market recognition are essential for securing exclusive trademark rights and establishing a unique identity.
Sources:
- Acquired Distinctiveness Doctrine by Aameer V. Kale
- The Trade Marks Act, 1999
- T.V. Venogopal vs. Ushodaya Enterprises Ltd & Anr (C.A. 6314-15 od 2011)
- Trademark Law in India – Types of Trademarks, Registration Procedure and Acquired Distinctiveness of Generic Words by Sana Singh
