Every trademark distinguishes the items sold under it as coming from a certain source. With persistent usage over a prolonged period of time, a specific trademark is registered or psychologically connected in the minds of customers as unique of the product and its source.
Some trademarks are different from the start owing to their inherent characteristics, and they are legally protected as soon as they are used as a trademark, but other marks get protection due to a secondary meaning that develops through time.
The process through which a mark develops a distinctive identity in consumers’ thoughts after initially lacking any distinguishing characteristics is referred to as ‘secondary meaning’. It happens when a mark’s primary significance to the general public is not the commodity or service it stands for, but rather the source of those goods or services.
The “attraction,” “pulling force,” or “commercial magnetism” that serves as a psychological function of the emblems or trademarks may be described as a secondary meaning. Purchases are usually made on the basis of certain markings that help identify the source of the items in a lucid manner.
The owner of a mark takes advantage of this human propensity by making every effort to permeate the market’s atmosphere with the allure of a like sign. The “drawing force” and “commercial magnetism” of commercial symbols that need secondary meaning for legal protection are precisely those qualities that are classified as a secondary meaning.
For instance, if a business uses a certain term or image as a trademark and over time the general public comes to identify the word or image with the business and its goods, the word or image gains a secondary meaning.
A notion associated with secondary meaning is ‘acquired distinctiveness’, often referred to as acquired secondary meaning. It happens when a mark has enough distinctiveness to be identified as a source indicator. In other words, when a mark has gained secondary meaning, the public can identify the source of the products or services based on the mark since it is distinctive and exclusive to a certain brand.
The Indian Trademark Office takes into account a variety of factors including the length and manner of use, the type and extent of advertising and promotion, the volume of sales and the number of customers, as well as the degree of exclusivity and distinctiveness of the mark, when determining whether a trademark has acquired secondary meaning or acquired distinctiveness.
SECONDARY MEANING AND ACQUIRED DISTINTIVENESS UNDER THE TRADEMARK ACT,1999
The concepts of “secondary meaning” and “acquired distinctiveness” are important in establishing the protectability of a trademark in the realm of intellectual property. The Proviso to Section 9 of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) states that a trademark’s registration should not be rejected if it has developed a distinctive character as a result of its use prior to the date of application for registration or is a well-known trade mark.
Secondary meaning and acquired distinctiveness are discussed relatively obliquely in Section 32 of the Act. The Section states that if a mark is registered without taking into account the circumstances surrounding the reasons for refusal of registration, it will not be deemed invalid if, as a result of its use, it has acquired a distinctive character in relation to the goods for which it is registered after registration and before the start of any legal proceedings.
An identifying mark is distinctive and capable of being protected if it either is intrinsically distinctive or has gained distinctiveness through secondary meaning, according to the general rule of distinctiveness. It is only possible to register or protect a specific word or sign as a mark if there is evidence that it has acquired distinctiveness.
When determining acquisition and primacy of ownership for symbols that lack intrinsic distinctiveness, one must consider when, where, and the manner in which a secondary meaning was developed inside the sign.
The Act is however unclear when it comes to the criteria that should be taken into account when determining whether a mark has “acquired distinctiveness” or “acquired secondary meaning,” in contrast to the US and other countries that have established rules for handling these legal issues.
In India, the Courts and the previously existing Intellectual Property Appellate Board have been instrumental in establishing the rules that determine whether or not a mark has gained uniqueness. In the case of Cadila Healthcare Ltd. v Gujarat Cooperative Milk Marketing Federation Ltd 2009 (41) PTC 336, the Delhi High Court had supported the view that it is crucial to remember that using a descriptive expression as a trademark does not give the user the right to prevent other users from using the same expression to describe the distinctive features of their products, even if the trade mark has acquired secondary meaning and distinctiveness in relation to the user’s products.
Moreover, on the definition of ‘distinctive’ for the purpose of interpreting acquired distinctives, the Delhi High Court in the case of Marico Limited v. Agro Tech Foods Limited 2010 SCC OnLine Del 3806 has held that the Act does not explicitly define the term “distinctive”. However, the definitions of “trademark” under Section 2(zb) and “well-known trademark” under Section 2(zg) of the Act provides guidance on what is meant by “distinctive”.
The “erm has been defined and perceived in a wide variety of ways. According to one definition, distinctive use of a trademark refers to using it in a way that the public would quickly and undeniably associate it with the source or a specific manufacturer/owner of the goods.
The main question that emerges, however, is how to define “distinctiveness” when the trademark is a word mark that is of a descriptive character. It even said that when a trademark, which is a word mark, is arbitrarily adapted and as such has no co-relation to the goods in question, distinctiveness is achieved by the normal and ordinary use of the trademark with respect to the goods, and it has consistently been held that such a trade mark is entitled to the highest degree of protection.
It is necessary to distinguish the word “distinctive” as it appears in the proviso to Section 9 from the phrase “well recognised trademark,” which comes after the uniqueness requirement as stated in the aforementioned proviso. It directed that Courts should often refrain from finding that a descriptive trademark is distinctive until it has been used for so long—many years—that even a descriptive word mark is clearly and exclusively related to one and only source, i.e., the same has come to have a secondary meaning.
The requirements for getting a trademark through acquired distinctiveness have been liberally interpreted by the Courts. In the case of Mrs. Ishi Khosla vs Anil Aggarwal, 2007 (34) PTC 370 Del, the Delhi High Court held that a product does not necessarily need to be on the market for a period of years in order to gain secondary meaning; if a new idea is intriguing and appealing to the general audience, it may become popular instantly.
While the act does not explicitly lay down the terms of secondary meaning and acquired distinctiveness of trademarks, Sections 9 and 32 of the Act have been used to establish their usage. Despite not being explained in detail, the provisions have been interpreted by various Courts and construed liberally to allow for effective usage and protection of trademark rights.
The determination of whether a trademark has acquired secondary meaning or acquired distinctiveness is based on a factual analysis of the use and recognition of the mark in the market, and therefore, majorly depends on the respective trademarks in question and is subject to discretion and deliberation.
–Team AMLEGALS assisted by Mr. Arth Doshi (Intern)
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