INTRODUCTION
A trademark can be a phrase, sign, symbol, or even graphics that are used to differentiate a brand, its products, or its services from those of its rivals, a name for a corporation, a product, or a brand, for instance. This makes it possible for customers to choose, buy, and enjoy goods and services based on the precise qualities and attributes that the trademark’s owner has promised.
The most widely used distinguishing marks are words and images, although if they can be represented graphically, other distinctive signs may also be employed.
Several brands have well-known trademarks, which acts as a defining factor for not only the brand, but the services and products provided by such brand. For instance, Cadbury has the colour purple trademarked for their chocolate packaging even though trademark for a single colour is extremely difficult to obtain. Louis Vuitton, the well-known luxury brand, has obtained a trademark for its check pattern known as the Damier Pattern. Additionally, Coca-Cola owns a trademark on the design of its bottles.
Although it is not required under the law, however, it is desirable to have the trademark registered because unregistered trademarks only receive limited protection. Trademarks are valuable corporate assets of any brand and plays a major role in acquiring the goodwill of any brand. Arbitrary marks are trademarks or service marks that are employed in a way that has nothing to do with its intended meaning. For example, Apple, one of the renowned brands selling mobile phones, laptops, etc., is named after a fruit and its trademark has no relation whatsoever with the products that it sells.
Arbitrary marks differ from descriptive markings, which highlight a particular feature of the goods or services.
VALIDITY OF ARBITRARY MARKS
In India, Arbitrary marks can be registered under the Trademarks Act, 1999 (“the Act”). Registered trademarks are afforded multiple layers of protection under the law.
Along with fanciful and suggestive trademarks, arbitrary marks are thought to be naturally distinctive and are usually awarded a great extent of protection. An arbitrary mark, however, is only subject to protection if it is not confusingly similar to a previous mark.
JUDICIAL PRECEDENTS
The underlying approach of the judiciary in every case of trademark infringement has always been to check whether the mark acquired by the parties is valid and capable of being used. The other aspect that the Courts observe is the prior use of the trademarks, and whether there is presence of any likelihood of confusion.
The same is with arbitrary marks. In the event of cases involving arbitrary marks, the Courts note whether the meaning of the mark that has been used, signifies or describes any of the features of the commodities being sold by the party, or whether the mark is inherently distinctive.
In the case of Laverana Gmbh & Co Kg vs. Mac Personal Care Pvt. Ltd. & Ors., [FAO (OS) No. 194 of 2015], the usage of the mark ‘LAVERA’ was in dispute. The Delhi High Court decided that the Defendants were not the proprietor of the trademark since it was an arbitrary mark and such arbitrary mark belonged to the Plaintiff. The trademark LAVERA was adopted by the Plaintiff in early 1980s and meant ‘the truth’ in Latin. The mark was exclusively used in relation to the cosmetics and body care products of the Plaintiff and had been used in many countries worldwide.
In the case of Ahmed Oomerbhoy and Anr. vs Shri Gautam Tank and Ors. [146 (2008) DLT 774], Plaintiffs contend that postman is a fully arbitrary word for edible oil and that plaintiff’s design belonged solely to plaintiff.
The Plaintiffs argued that ‘Postman’ is an arbitrary mark for edible oil and, as such, an invented word for the edible oil and, hence, will entail the highest degree of protection, whereas the Defendants contended that ‘Postman’ is an ordinary English word in use for centuries and, in the case of the Plaintiff, the nature of the mark is irrelevant because there is no user. The fact that trademarks can be classified as generic, descriptive, suggestive, arbitrary, or fanciful cannot be disputed. Because of various factors, there may be overlapping in the categories.
It was decided that the phrase that is descriptive but not generic has a stronger foundation. The Court gave an example and observed that, ‘ivory’ would be a general name for things derived from elephant tusk but would be arbitrary if applied to soap. It was discovered that the types of terms recognized for trademark protection, arranged in ascending order, represent their eligibility for trademark status and the degree of protection accorded: general, descriptive, suggestive, and arbitrary or fanciful. Because a product may shift from one category to the other based on its application, the boundaries of demarcation between these categories may not always be very clear and crisp.
It was established that a term is suggestive if it necessitates the use of imagination, thought, and perception to determine the nature of the items. A phrase is descriptive if it immediately provides an understanding about the materials, attributes, or character of items. In these circumstances, the Defendants’ claim that the word “Postman” is a common English word and that the trademark will be generic cannot be accepted prima facie. In light of these facts and situations, the term “Postman” for edible oils is arbitrary. As a result, the trade mark for edible oils ‘Postman’ cannot be described as both an original and common English word.
In Evergreen Sweet House v. Evergreen and Others [CS(OS) 1154/2005], the Plaintiff was a well-known shop in New Delhi and had been operating under the trade name/trademark “EVERGREEN SWEET HOUSE” is engaged in the business of preparing and selling rich traditional Indian sweets. While the Defendants were using “EVER GREEN” as their trade name.
The Plaintiffs contended that the Defendants are misrepresenting and defrauding ordinary customers by giving the false impression that the goods marked by the Defendants under the trademark ‘EVER GREEN SWEETS’ are the same as those marked by the Plaintiffs under their trademark/trading style ‘EVERGREEN SWEET HOUSE’ and that the Defendants’ business outlets are authorized outlets of the Plaintiffs.
The Defendant claims that there are other sweetmeat/namkeen shops in Delhi that use the phrase “EVER GREEN,” which is widely used and not the property of any individual. The Court observed that marks are often classified in categories of generally increasing distinctiveness; they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. The last three categories are entitled to trademark protection because they are inherently distinctive and can serve to identify a particular source of a product.
Thus, the Court observed that the mark used by the plaintiff is a word mark. It does not describe or imply the items or services offered. EVERGREEN does not immediately conjure up images of sweets; the two words used together naturally take the mind to a green panorama, or an association with the habitat, or environs. In the case of sweets and confections, the mark is arbitrary; and thus, coined.
Lastly, in Rainforest Café vs Rain Forest Café [T M no.: 118/2011] the Court observed that Arbitrary marks are words, symbols, pictures, etc. that are commonly used in language but do not suggest or explain any components, qualities, or characteristics of the goods or services in question when used with them. As a result, labels like “Apple” for computers, “Arrow” for clothing, and “Teacher” for alcohol are all arbitrary.
SUGGESTIONS AND WAY FORWARD
Although, the Courts recognize arbitrary marks as strong type of trademarks and they can be protected under the Trademarks Act, there is a need to make the public aware about all the requirements needed to be fulfilled to create a trademark for their business in order to save themselves from getting dragged into a case of trademark infringement in the future.
This would act as killing two birds with one stone because on one hand, the potential trademark applicants would be well informed about what to keep in mind while filing for a trademark registration and on the other hand, it would save the already established trademark users in the market from getting their goodwill tarnished from another trademark which causes confusion in the minds of the consumers and passes off its low-quality goods.
AMLEGALS REMARKS
Every business wants to have as much trademark protection as possible, but there are some reasons why imaginative marks aren’t always the greatest option. The major issue is that the company has to start from scratch. The word has no meaning and conveys no information about the firm or product, making it difficult for customers to remember.
Another advantage of random trademarks is that they are less susceptible to “genericide.” “Genericide” means that a trademarked word has become so generic that the company can no longer prevent others from using it. Genericide can occur with any product that dominates its market, but it is more likely to occur with fanciful marks since they lack actual significance.
Arbitrary trademarks also offer an advantage in terms of “secondary meanings.” In order for the Government to protect a trademark, the company that owns it must demonstrate that the public may associate the word to the firm rather than its ordinary meaning. The above-mentioned cases portray that India is still in dire need of public awareness as far as registration of a trademark goes.
– Team AMLEGALS assisted by Ms. Akshit Uniyal (Intern)
For any queries or feedback, please feel free to get in touch with mridusha.guha@amlegals.com or falak.sawlani@amlegals.com.
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