Special Legal Issues Seminar

July 28, 2023

Legal Issues in ‘Trademark law’

Issue: Is consumer perception a relevant criteria for determining

descriptiveness of a mark under the Trade Marks Act?
?

Kavya Dixit
Intern at ALG India Law Offices LLP
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 Relevant Provision

 Relevant provision: Section 9(1)(b)

“9. Absolute grounds for refusal of registration.—

(1) The trade marks—

...

(b) which consist exclusively of marks or indications which may serve in trade to designate the
kind, quality, quantity, intended purpose, values, geographical origin or the time of production of
the goods or rendering of the service or other characteristics of the goods or service;

2 ...

shall not be registered: ..."

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 Relevant Case Laws

Armasuisse v. The Trade Mark Registry & Anr. [C.A.(COMM.IPD-TM)

158/2022]

"103. Having heard learned Counsel, what is immediately apparent from a reading of Section 9(1)(b) of the Trade Marks
Act is that the consumer or customer is a stranger to the said provision. The impression of the mark on the consumer,
or any other third person, is irrelevant, where Section 9(1)(b) is concerned. …only concerned with what the mark
serves to designate in trade..."

3 "105. ...Designation, therefore, involves specific identification, with a declaratory component. ...is far more specific than
the word indicate. Designation involves a positive act done by the person who designates. Additionally, it involves the
intent to so designate. ..."

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 Relevant Case Laws (Contd.)

Procter & Gamble Manufacturing (Tianjin) Co. Ltd. and Ors. v. Anchor Health & Beauty Care Pvt.
Ltd. [FAO(OS) No. 241/2014, Delhi HC]

10...There is a difference between words/marks which would classify as descriptive, generally of the goods or services,
whosoever may be provider thereof and words/marks which communicate the particular/peculiar quality/qualities or
features of product of one and which may not exist or do not exist in the same product being provided by others.

10(ii) The words "marks or indications which may serve in trade to designate the kind, quality, quantity, intended
4 purposes, values...of the goods" in Section 9(1)(b) cannot be read to include words/marks which designate the quality,
intended purpose or values, not generic to the goods and services but unique to the goods of one and which may not be
present in the same goods and services provided by another.

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 Relevant Case Laws (Contd.)

10 (iii) “Such words/marks, highlight and communicate to the consumer the difference claimed from the
same goods or services of others, also available in the market. Of course, such words or marks would also
be, in a sense descriptive of those unique features, quality, character, intended purpose of goods/services of
one; however they will still classify as distinctive so long as none other till then has described those as
unique to the product. In our opinion, it is only the former which are not registrable as trademark and
which are not protected, and not the latter "

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 Relevant Case Laws (Contd.)

American Gem Society Laboratories LLC vs. The Deputy Registrar of Trade Marks Trade Marks
Registry [OA/97/2008/TM/DEL and OA/98/2008/TM/DEL, IPAB]

"4. In our judgment both the impugned marks serve in normal usage from the consumer's point of view to designate,
either directly or by reference to one of their essential component/ingredients, the services such as those in respect of
which registration is sought. Neither of these two marks "AMERICAN GEM SOCIETY LABORATORIES" nor
"SETTING THE HIGHEST GRADE FOR DIAMOND GRADING" is lexical invention nor syntactically unusually
juxtaposed. Thus in our considered view both the impugned trade marks are totally devoid of any distinctive character."
6

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 Relevant Case Laws (Contd.)

Cadila Healthcare v. Gujrat Co-operative Milk Marketing Federation Ltd (FAO (OS) No. 62/2008,
Delhi HC)

"9. ...Thus, it is clear that the mark or indication which serves to designate the quality of the goods of the appellant,
which indeed the phrase 'Sugar Free‘ does, would be an absolute ground for refusal of registration of a mark unless it
has acquired a distinctive character.
...
11. ...To an average consumer, a sweetener is known to exist only when added to food and beverages, and its own identity
7 gets merged in the food and beverages to which it is added. Thus, the expression 'Sugar Free' when used in relation to a
sweetener may really describe a sweetener in the sense of its generic meaning, and what it connotes is the specific nature
and characteristics of the product

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 Conclusion & Opinion

 Consumer perception has frequently been used to determine whether a brand has developed
distinctiveness through use. If a descriptive mark has gained a secondary meaning in the minds of
consumers and is connected exclusively with a specific brand or supplier of products or services, it may
be eligible for registration.

 Descriptive trademark can come under protection if it acquires distinctiveness related to the seller’s
goods or services. The distinctiveness is assessed from the perspective of the average consumer who is
reasonably well informed and circumspect. So, consumer perception can be a relevant criteria.
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 THANK YOU!
Questions?
Kavya Dixit, Intern

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