Generic terms are not protected by trademark law, either in India or outside India In fact, one of

the most important limitations on the legal protection of a word adopted as a trademark is that it
cannot be a term that refers or has come to be primarily understood by the public as referring to a
‘product category’. For example, the term “Computer” is a generic term used to describe a
desktop or laptop or any computer equipment. Thus, a manufacturer selling “Computer” brand
computers will have no exclusive right to use that term with respect to that product. Under some
circumstances, terms that are not originally generic can become generic over time (a process
called “genericity”), and thus become unprotected. Take the case of ‘Xerox’, ‘Dalda’ and
‘Dettol’ which were highly distinctive trade marks to begin with, which however, due to
unregulated use and consequent significant dilution of the terms, have now become generic terms
so much so that even while purchasing other brand’s goods or availing other brand’s services, the
terms are used to describe the product itself.

The Trade Marks Act, 1999 (“Act”), accords registration to only those trademarks that are
‘distinctive’ in nature. Sections 9 & 11 of the Act make it abundantly clear that only those
trademarks that are sufficiently distinctive enough to differentiate the goods of one person from
those of others are capable of registration. In certain cases, where a person is able to demonstrate
that his mark has acquired distinctiveness due to continuous use and basis this secondary
meaning, registrations are granted to trade marks which originally lacked distinctiveness.

However, the Delhi High Court as early as in the year 1972 refused registration of the trade
mark “JANTA” (meaning cheap in Hindi) where it held that even if marks that lack
distinctiveness are used intensively and may have acquired a secondary meaning, they cannot be
registered since, in view of the absolute need of the trade to be able to use them, they must not be
monopolized.

In M/S Three- N-Products Pvt. Ltd. vs. M/S Kairali Exports and Anr., The Court noted
that the Plaintiff has based its suit primarily on the ground that its trademark is an invented word
and has no other meaning whatsoever. The entire basis of the claim of the Plaintiff is that it has
invented the word 'AYUR' and by extensive use of the word 'AYUR' and the association thereof
with its goods since 1984, the said mark has acquired distinctiveness and is identified with the
goods of the Plaintiff alone. The Court held that since the trademark of the Plaintiff i.e. 'AYUR'
is generic, it has lower level of legal protectability. Therefore, the Plaintiff cannot prima facie
claim any proprietorship on the word 'AYUR' per se.

The Court opined that it is not that a generic or descriptive mark will never have any
legal protectability but the burden of proof on the person claiming distinctness in favor of
a generic or descriptive mark is much higher. The Plaintiff not only would have to show
that the mark adopted by the Plaintiff, because of its extensive use has acquired
distinctness and is identifiable only with the goods of the Plaintiff but also that the
adoption of the mark by the Defendants is identical and deceptively similar to the mark of
the Plaintiff.

Madras High Court in the case of Mr.A.D.Padmasingh M/s Aachi Masala Foods (P) Ltd vs
Aachi Cargo Channels Private Limited, dismissed the infringement suit and stated that that the
term “Aachi” – translating to mean “grandmother” in Tamil – “is of general use” and therefore,
it could not be monopolized by Aachi Masala Foods alone.

Similarly, in 2011, in the Delhi High Court, in the case of Bhole Baba Milk Food Industries
Ltd v. Parul Food Specialties (P) Ltd, held that the word Krishna was as common as “the name
John in the West” and that the same does not provide any secondary distinctiveness, even though
the trade mark was registered.

Combining a generic term with other terms may sometimes result in a protectable composite
mark. However, the problem arises when proprietors of such composite marks try to claim
exclusivity with respect to the generic term in their composite mark. Also, giving a single
manufacturer/entity control over use of a generic term in their trademark would give such
manufacturer/entity too great a competitive advantage in the market. Therefore, courts all around
the world have rejected claims relating to exclusive use of generic term and have upheld the
principle that generic terms cannot be accorded trademark protection. This issue was recently
tested and examined by the Supreme Court of India in the case of Parakh Vanijya Private
Limited Vs. Baroma Agro Product and Others.
In SBL Limited v. Himalaya Drug Company 1997 (17) PTC 540 , Plaintiff (Himalaya Drug
co.) was able to prove that the Liv.52 is still distinctive.. On the other hand, the defendant was
unable to prove that it is a generic word and becomes common to the trade. It was also pertinent
to the defendant's entire case is that mark ‘LIV' is a generic word and is unprotectable in law, but
on the other hand, the defendant itself applied for registration of ‘LIV-T' in the Trademarks
Registry for getting the exclusive right before filing of the written statement, however in written
statement word LIV is a generic mark and has become publici juris.

Justice R.C. Lahoti, as his Lordship Chief Justice of India then was, spoke for the Bench in
these words - "Nobody can claim exclusive right to use any generic word, abbreviation, or
acronym which has become publici jurisdiction. In the trade of drugs it is common practice to
name a drug by the name of the organ or ailment which it treats or the main ingredient of the
drug. Such an organ ailment or ingredient being public jurisdiction or generic cannot be owned
by anyone for use as a trademark". The jural message, therefore, is clear and unequivocal. If a
party chooses to use a generic, descriptive, laudatory or common word, it must realize that it will
not be accorded exclusivity in the use of such words.