DOCTRINE

OF
DISTINCTIVENESS

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TRADEMARK

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FUNCTIONS OF A TRADEMARK
Distinguishes the goods and services of one person
from another.(Distinctive character)
Indicates the source of origin of goods or services.
Helps guarantee the quality of goods bearing the
mark.
Creates and maintains a demand for the product.
Used as a marketing tool to build a brand.

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 DISTINCTIVENESS
It is an requirement necessary for the nature of a
trademark.
A trademark may be may be eligible for registration if it
has distinctive character. Thus, it is the preliminary for
registration.
Section 9(1) (a) of the Trade Marks Act,1999 provides
that – “trade marks that are devoid of any distinctive
character , that is to say, not capable of distinguishing
the goods or services of one person from those of another
person shall not be registered”
However, registration shall not be refused if before the
date of application it has acquired distinctive character
as a result of the use made of it or is a well-known mark. 4
 TYPES OF DISTINCTIVENESS
INHERENT DISTINCTIVENESS
 By virtue of the mark itself
 Nature of the mark
 Capability of identifying source when newly adopted

ACQUIRED DISTINCTIVENESS
 Market acceptability
 Association with source
 Incontestability

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 SPECTRUM OF DISTINCTIVENESS &
LEVEL OF PROTECTION

COINED

N G
RO
ST
ARBITARY

SUGGESTIVE

DESCRIPTIVE
E AK
W

GENERIC

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 DETERMINATION OF
DISTINCTIVENESS IN COINED TERMS
Establishing 'distinctiveness' of coined words is tackled
by Courts on a case-to case basis.

Trademarks with unusual combinations or

combination of words have traditionally enjoyed a
higher degree of protection under the trademark law of
India.

Cadila Healthcare Ltd. v. Gujarat Co-operative Milk

Marketing Federation Ltd. & Ors' 2009 (41) PTC 336
(Del.) (DB)
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 Cadila Healthcare Ltd. v. Gujarat Co-operative
Milk Marketing Federation Ltd. & Ors'
It is a judgment of the Delhi high Court that deals with the issue
of adjudicating the distinctiveness of a trademark when it
is prima facie, 'descriptive' in character.
Cadila Healthcare Ltd. launched a product containing
'aspartame', a sugar substitute, under the brand name 'Sugar
Free' in the year 1988.
Cadila had allegedly coined and adopted the trademark 'Sugar
Free' and were the first user of the said trademark in India. 
Gujarat Co-operative adopted a mark consisting of the words
'Sugar Free' for their frozen dessert, identical with and
deceptively similar to the Cadila's trademark.
The primary issue before the appellate Court was to adjudge
whether the appellant had indeed acquired exclusivity over the
use of the mark 'Sugar Free' in relation to their products. 8
 DISTINCTIVENES OF DESCRIPTIVE
TRADEMARKS
Time and again courts have held that descriptive trademarks
should not be monopolized by granting registration to one
party and, therefore, should not be registered unless special
circumstances, such as long and continuous use of the mark,
are established.
The BEMISAL Rice Case
 In this judgment the Intellectual Property Appellate Board
(IPAB) upheld the validity of the trademark BEMISAL in
respect of rice.
  Among the various grounds on which the applicant had
sought removal of the impugned mark was that BEMISAL was
descriptive, as it conveyed the meaning “matchless/having no
comparison” in Hindi/Urdu and thus was indicative of the
kind and quality of the goods. 9
 The BEMISAL Rice Case

  Section 9(1)(b) of the Trade Marks Act, 1999

 The respondent based its defense on the provisions of Section 31(2)
and Section 32 of the Act.
 The IPAB observed that the impugned mark was “highly laudatory
and should never have been registered in the first place” because it
violated Section 9(1)(b) of the Act..
 However, the respondent furnished invoices in support of the use
of the mark, which demonstrated not only the substantial amount
of sales made using the mark but also the fact that the rice under
the impugned mark was being exported to countries such as
Kuwait, Bahrain, New Zealand, Saudi Arabia and Canada.

Thus, the IPAB was convinced that the impugned mark had
acquired a distinctive character, and accordingly it held that the
mark was liable to be protected under Section 32 of the Act. 10
 CONCLUSION
Hence , it can be said that understanding Doctrine of
Distinctiveness of Trademarks is understanding the
Strength of Trademarks; Strength of a trademark refers to
the scope of protection afforded to that trademark by
courts.
The stronger the mark, the more uses the mark’s owner
may exclude from the marketplace through a trademark
infringement or dilution action.
However, the acquired distinctive character of a trademark
is insufficiently theorized and lacking in analytical rigor,
which results in inconsistent results as judges in each
jurisdiction rely on their own peculiar heuristics for
determining whether a trademark is strong or weak.
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