Distinctiveness and the Spectrum of Marks
Chapter Six
Syllabus topic 1.1, "General Principles of Trademarks."
Pages 25 to 28 of 742
In one line
Marks are not all equally strong, and where a mark sits on the line from generic to invented decides how easily it registers and how far it can be enforced.
In the wording a student can write in an exam: distinctiveness is the capacity of a mark to distinguish the goods or services of one person from those of others, required by the definition in section 2(1)(zb) and enforced by section 9(1); a mark may be inherently distinctive, or it may acquire distinctiveness through use, which the proviso to section 9(1) calls a distinctive character acquired as a result of the use made of it, and which the common law calls secondary meaning.
Why the law cares
Because a monopoly in an ordinary word is a tax on everybody else. If one trader could register SWEET for sweets, every other sweet maker would have to find another way to say what he sells. The law therefore gives strong protection to marks that cost the language nothing and weak or no protection to marks that take something the trade needs.
And because distinctiveness is a fact, not a wish. A trader may adopt the most striking word in the world; if he never uses it, it distinguishes nothing. Conversely, a wholly ordinary word used for fifty years may come to mean one trader and nobody else. So the law asks two questions: is this mark capable of distinguishing, and does it in fact distinguish.
The spectrum
Five bands, from weakest to strongest. Learn them in this order and the reasoning in every case falls into place.
1. Generic. The word IS the goods. RICE for rice, PHONE for telephones. A generic term can never be a trade mark for those goods, however long it is used, because a monopoly in it would take the name of the thing out of the language. No amount of evidence saves it.
2. Descriptive. The word describes a characteristic: kind, quality, quantity, intended purpose, value, geographical origin or time of production. FRESH for bread, MUMBAI for a Mumbai shop, LONG LASTING for batteries. Barred by section 9(1)(b), but the proviso rescues it if the mark has in fact acquired a distinctive character through use.
3. Suggestive. The word hints at a quality but requires a step of imagination. COOLPACK for insulated boxes, JAGUAR for a car. Registrable without evidence of use, because a buyer has to think before he gets from the word to the characteristic.
4. Arbitrary. An ordinary word applied to goods it has nothing to do with. APPLE for computers, CAMEL for cigarettes. Strong, because the trade does not need the word for these goods.
Distinctiveness and the Spectrum of Marks
5. Invented or fanciful. A word made up for the purpose. KODAK, XEROX, SIFY. The strongest of all, because nobody else has any use for it and any similarity is unlikely to be coincidence.
The line between suggestive and descriptive is where cases are fought, and there is no formula. The working test is whether the ordinary buyer gets from the word to the characteristic immediately and without thought, in which case it is descriptive, or only after a step of reasoning, in which case it is suggestive.
Acquired distinctiveness, or secondary meaning
The proviso to section 9(1) is the escape route. A mark shall not be refused registration under clauses (a), (b) or (c) 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.
Three things in that proviso are examinable. The relevant date is the date of application, not the date of hearing. The distinctiveness must be as a result of the use made of it, so evidence of sales and advertising is what proves it. And a well known trade mark is an independent route: a mark that is well known does not have to prove acquired distinctiveness separately.
What evidence proves secondary meaning. Length and continuity of use; volume of sales; expenditure on advertising; the geographical extent of use; unsolicited press coverage; and evidence from the trade. Chapter 980 works the same material for passing off, where it is called goodwill.
Worked example
Four traders in Coimbatore all sell cotton bedsheets. Rank their marks.
Trader A uses COTTON. Generic for the material. Registration is impossible and always will be, because the word is the name of the thing. If A insists, the most he could ever get is a registration of a device in which COTTON is disclaimed under section 17, and chapter 370 works disclaimers.
Trader B uses SOFTSLEEP. Descriptive, or very close to it: it names the intended purpose and the quality. B will meet a section 9(1)(b) objection and must answer it with evidence of use under the proviso. If he has sold under it for fifteen years and spent on advertising, he may well succeed.
Trader C uses MONSOON. Arbitrary, or at most suggestive: monsoon has nothing to do with bedsheets. Registrable on the face of it, and C will get through examination without evidence of use.
Trader D uses VELVANA, a word he made up. Invented. The strongest position of the four, and any competitor using anything close to it will find it very hard to explain the coincidence.
Now change one fact. B has used SOFTSLEEP since 1996 and the whole of Coimbatore asks for "Softsleep sheets" when they mean B's. B's mark has acquired distinctiveness, and on the proviso he is registrable. C, who has just adopted MONSOON and never used it, is registrable too, but if C never uses it his registration is vulnerable to removal for non use under section 47, which chapter 870 works. Registrability and enforceability are not the same thing.
Distinctiveness and the Spectrum of Marks
The spectrum in a table
| Band | Example | Registrable without use? | Strength on enforcement |
|---|---|---|---|
| Generic | RICE for rice | Never registrable | None |
| Descriptive | FRESH for bread | No; needs the proviso to s.9(1) | Weak; protected only to the extent of the secondary meaning proved |
| Suggestive | COOLPACK for cool boxes | Yes | Moderate |
| Arbitrary | APPLE for computers | Yes | Strong |
| Invented | KODAK | Yes | Strongest |
What it does NOT mean
Distinctive does not mean unusual. A very unusual word used for nothing is not distinctive of anything. Distinctiveness is a relation between a sign, goods, and a public.
A descriptive mark is not incapable of protection. It is capable of it once secondary meaning is proved, and the protection is then correspondingly narrow: the proprietor gets what he has earned and no more. The Supreme Court's approach to a common word can be seen in Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani, (2010) 2 SCC 142. Facts. The appellant ran institutes under the name Skyline and sought to restrain the respondents from using the same word, which was in use by a large number of businesses in different fields. Held. No exclusivity could be claimed at the interlocutory stage in a common English word used widely by many concerns. Why it matters here. It is the practical consequence of a mark sitting low on the spectrum: the monopoly is thin, and at the interim stage it may be worth nothing at all.
And a generic word does not become registrable by long use. This is the one place where the proviso does not help, because the objection is not that buyers fail to recognise the trader but that the word is the name of the goods.
Genericide runs the other way too. A mark can start invented and become generic if the public begins to use it as the name of the product. Section 36 saves a trader who uses a word that has become the name of an article, and chapter 540 works it.
Limits and criticism
The spectrum is a tool of analysis, not a section of the Act. Section 9(1) does not use the words generic, suggestive or arbitrary. It refuses marks devoid of any distinctive character, marks that designate characteristics, and marks that have become customary. The spectrum is how lawyers organise those three, and an answer should show both.
Distinctiveness and the Spectrum of Marks
Traders keep choosing descriptive marks anyway, because a descriptive mark sells the product without advertising. The result is a permanent tension between what is commercially attractive at the start and what is legally strong later.
The proviso's date is a trap in practice. Evidence must show acquired distinctiveness before the date of application. A trader who applies early and builds his reputation afterwards has evidence of the wrong period.
Quick revision
Five bands: generic, descriptive, suggestive, arbitrary, invented. Generic is never registrable. Descriptive needs the proviso. The other three are registrable on their face.
Proviso to s.9(1): no refusal under clauses (a), (b) or (c) if before the date of application the mark has acquired a distinctive character as a result of the use made of it, or is a well known trade mark.
Secondary meaning is proved by: length and continuity of use, sales figures, advertising spend, geographical extent, press coverage, trade evidence.
Descriptive against suggestive: does the buyer get from the word to the characteristic immediately, or only after a step of imagination?
Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani, (2010) 2 SCC 142: no exclusivity at the interim stage in a common English word used widely across trades.
Test yourself
1. Place these on the spectrum: DIGITAL for cameras, PENGUIN for books, MILK for milk, ZANTAC for a medicine. DIGITAL for cameras is descriptive. PENGUIN for books is arbitrary. MILK for milk is generic. ZANTAC is invented.
2. What does the proviso to section 9(1) allow, and by what date must the condition be satisfied? It allows registration of a mark otherwise refusable under clauses (a), (b) or (c) if the mark has acquired a distinctive character as a result of the use made of it, or is a well known trade mark. The distinctiveness must have been acquired before the date of the application for registration.
3. Can a generic term ever be registered for the goods it names? No. However long it is used, a monopoly in the name of the goods would deprive other traders of the only word for the thing, and the objection is not one the proviso answers.
4. Name four kinds of evidence that prove acquired distinctiveness. Any four of: length and continuity of use, volume of sales, advertising expenditure, geographical extent of use, unsolicited press coverage, and evidence from members of the trade.
5. Why is a mark low on the spectrum weak even after it is registered? Because the protection extends only so far as the secondary meaning proved. As Skyline Education Institute shows, a court asked to restrain the use of a common word by another trader may find no exclusivity at all, particularly at the interlocutory stage.
The rest of this subject
These notes are cut from the University's printed syllabus. Open the syllabus itself, or the past papers, for the same subject.