When does a Trademark form a Distinctive and a Distinguish Character as per Section 9(1)(a) of the Trademarks Act, 1999?

Have you ever wondered, when you file a Trademark Application and approximately a month later you receive an objection through examination report under Section 9(1)(a) of the Trademarks Act, 1999, which read as follows:

“The above mentioned application has been examined under the provisions of Trade Mark Act, 1999 and Trade Mark Rules, 2002 and the trade mark applied for is open to objection and are subject to conditions/requirements/restrictions as mentioned hereunder.

The objection is raised under S 9(1) (a) of the Trade Marks Act 1999, as the mark is non-distinctive and as such it is not capable of distinguishing the goods of one person from those of others.”

So by this time you start wondering, why department has raised such an objection on your or your client’s trademark application. You start figuring out about meaning of the words Distinctive and Distinguish character. The solution to your possible queries lies hereunder.

Definition of Distinctive and Distinguish:

In layman language, Distinctive means, characteristic of one person or thing, and so serving to distinguish it from others and distinguish means, be an identifying characteristic or mark of or which is able to be recognized or point out a difference.

In Industry language, distinctiveness and distinguishness is an important concept in the law governing trademarks. A trademark may be eligible for registration, or registrable, if it performs the essential trademark function, and has distinctive and distinguished character. Registrability can be understood as a continuum, with inherently distinctive marks at one end, generic and descriptive marks with no distinctive character at the other end.

As Per Trademark Registry, Benchmark Judgments & Iuris Consilium:

a) The mark is not considered prima facie distinctive or capable of distinguishing and is not registrable except upon evidence of distinctive-ness is produced. However, if the mark has been used only for a short period, there cannot possibly be such evidence. The mark, therefore, does not qualify for registration.

b) A trade mark shall not be registered unless the trade mark in relation to the goods in respect of which it is proposed to be registered is distinctive, or is not distinctive, but is capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in the course of trade from goods. 

c) Ordinary words do not become distinctive and coined merely by being misspelt or by incorporating therein some variations or alterations or which are spelt phonetically, fantastically or conventionally or which are ordinary slang words, even though they are not found in a dictionary.

d) There is no statutory requirement of the number of years or exact extent of the period after the expiry of which a mark may be deemed to have acquired distinctiveness.

e) Where an applicant has imitated or adopted distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name.

f) The mere proof or admission that a mark does in fact distinguish does not ipso facto compel the registrar to deem that mark to be distinctive. It must be further adapted to distinguish, which brings within the purview of his discretion the wider field of the interests of strangers and of the public.

How do you prove your Distinctive and Distinguish Characteristics?

a)  The extent to which the actual user down to the date of the application has, in fact, rendered the mark distinctive of the applicant's goods is to be considered in order to find out if the mark has been adapted to distinguishing those goods. The probability or improbability of distinctiveness being maintained in the future has to be considered in determining whether the mark is capable of distinctiveness or not.

b)  In the B.T.H's case, (1917) 34 RPC 169 The Court of appeal held that even if the mark B.T.H. was not distinctive for the reasons given by the Registrar, as it had been used for many years it must be assumed a distinctive character.

c)  In the E. Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal 654. It was held that "Vapo Rub" was not an invented word but it was entitled to and was also allowed to be registered under the Act on evidence of acquired distinctiveness. Taking into consideration the affidavits filed on behalf of Vick Chemical Company it was held that the mark "VapoRub" had been continuously in use in India since before the date of application for its registration and had acquired sufficient distinctive-ness to entitle the mark to be registered.

d)   In United Iron and Steel Works vs Government Of India AIR 1967 P H 64; in the end citing the relevant principles to the facts of the case and with help of relevant case laws and findings the registrar allowed the appeal and reversed the order of the Assistant Registrar. Therefore, the application of the appellant was granted and the mark “UIS” was registered in the relevant Part of the register.

e)   In a country like ours where industry is progressively developing, registration of a genuine, legal and valid trade mark may go a long way in establishing an industrial enterprise. Whenever, therefore, it is found that a trade mark offered for registration is registrable and there is no bar to it and its registration is not likely to injure the public interest, it must normally be brought on the register of trade marks

Article By -

Harshdeep Singh Narula (Founder)

Your Legal Expert Powered By Iuris Consilium.

www.yourlegalexpert.in

+91 98780 67337 & info@yourlegalexpert.in