Are Generic Trademarks protected in India?

Trademark law doesn’t protect the generic terms, either in India or outside India. Indeed, one of the crucial restrictions on granting legal protection to a word 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.’  To illustrate, the term ‘Computer’ is a generic term, which is used to describe a desktop or laptop or any computer equipment. Therefore, a manufacturer selling ‘Computer’ brand computers cannot use that term with respect to that product.             

However under some exceptional circumstances, terms which were not originally generic, can become generic with the passage of time, and eventually, become unprotected. To elucidate, brand terms such as ‘Dalda’, ‘Dettol’, and ‘Xerox’, which were distinctive trademarks to start with; nonetheless, now become generic terms owing to unregulated use and consequent significant dilution of the terms. This can be evident from the fact that these terms are used to describe the product/services even at the time of buying/availing goods/services of other brands.

Notably, the Trademark Act, 1999, hereinafter referred to as ‘Act’, which allows registration of trademark, which is distinctive in nature. The provisions contained under Section 9 & 11 of the Act, make it clear that trademark, which is distinctive enough to distinguish the goods of one person from those of others, is eligible for registration under the Act. It is marked here that, where an applicant is able to show that his/her mark has gained exclusivity because of constant use, then such trademark gets registered, which organically lacked uniqueness.

When a generic phrase is combined with other terms, it can occasionally result in a protectable composite mark. The issue arises when the owners of such composite marks attempt to claim exclusivity over the generic word in their composite mark. Furthermore, providing a single manufacturer/entity control over the use of a generic phrase in their trademark would provide that manufacturer/entity with an unfair competitive advantage in the market. As a result, courts all over the world have rejected claims for exclusive use of generic phrases and supported the premise that generic terms cannot be protected as trademarks.

Judicial viewpoint: –

In 1972, the Hon’ble Delhi High Court, denied registration of the trademark “JANTA”, while observing that even if marks that lack individuality are used intensively, and might have attained a secondary meaning, they cannot be registered, as in view of the absolute need of the trade to be able to use them, they must not be monopolized. Similarly, while adjudicating upon a matter in “Bhole Baba Milk Food Industries Ltd. Versus Parul Food Specialities (P) Ltd.”, Delhi High Court observed that the word Krishna was as common as “the name John in the West” and that the same does not provide any secondary distinctiveness, despite the fact that the trade mark was registered.

The Hon’ble Supreme Court of India in the case of “Parakh Vanijya Private Limited Vs. Baroma Agro Product and Others”, observed that the registration of Parakh’s trade mark in Class 30 includes a special disclaimer noting that the company does not have exclusive rights to use the name “MALABAR. On the trade mark registry, there were several trademarks that used the phrase “MALABAR” in conjunction with other terms/words. Some of the marks considered in this regard are: (i) “MALABAR MONSOON” granted to Amalgamated Bean Coffee Trading Company Limited with respect to Coffee Cream, Coffee included in Class 30; and (ii) “MALABAR COAST” granted to Tropical Retreats Private Limited with respect to Coffee, Tea, Cocoa, Sugar, and so on. The set up of Baroma’s trademark, which includes the words “BAROMA,” “MALABAR,” and “GOLD,” differs from that of Parakh’s trade mark, and comparing the two marks revealed no similarity, let alone deceptive similarity.

To encapsulate, entrepreneurs prefer trademarks that identify their goods or services or that directly connect to their goods or services, even if such trademarks or names are generic in nature. As a result, such enterprises risk losing their ability to use their trade marks if it is generic. Even distinctive and strong trademarks can become generic and lose trade mark protection if they are frequently used to refer to a specific good/service. Therefore, proprietors should limit the use of their trademarks so that it does not become generic over time, resulting in the loss of their rights to the mark.

Leave a Comment

Your email address will not be published. Required fields are marked *