About Authors:

1. Ankith Kumar, specialised in IPR, is a practising advocate at Eshwars and Madras Excessive Court docket

2. Harshita Jain, specialised in IPR and Expertise Regulation, is a working towards company lawyer at Consultancy & Advisory agency.

INTRODUCTION

A particular mark is a trademark that possesses distinctive traits, enabling it to be simply recognized and distinguished from others within the market. In authorized phrases, distinctiveness refers to a trademark’s potential to point the supply of a services or products relatively than merely describing it. The stronger the distinctiveness of a mark, the higher its authorized safety and enforceability. Trademark registration authorities, such because the Indian Trademark Registry, the US Patent and Trademark Workplace (USPTO), and the European Union Mental Property Workplace (EUIPO), usually deny safety to marks which might be overly generic or descriptive.

Distinctive marks play a vital function in trademark registration by guaranteeing authorized safety, model recognition, market differentiation, and long-term enterprise worth. They safeguard manufacturers from unauthorized use by rivals, reinforcing exclusivity and authorized standing. A powerful trademark establishes a singular model identification, permitting customers to simply acknowledge and affiliate it with a particular enterprise or product. By setting a model aside within the market, a particular mark minimizes confusion and enhances client belief, offering a aggressive edge. Over time, a well-established trademark turns into a useful mental property asset, contributing to enterprise development and market positioning.

A particular mark differs from generic or descriptive phrases that merely describe a product. It falls into three principal classes: (a) Fanciful Marks (e.g., “Xerox” for photocopiers) – invented phrases with no prior which means; (b) Arbitrary Marks (e.g., “Apple” for computer systems) – widespread phrases utilized in an unrelated trade; and (c) Suggestive Marks (e.g., “Netflix” for streaming providers) – phrases that not directly recommend the character of the services or products. The extra distinctive and distinctive a mark is, the stronger its authorized safety, guaranteeing model exclusivity and recognition.

Distinctiveness is taken into account as sine qua non, for a trademark to get safety worldwide. And in latest occasions, it has been positioned in a higher reliance in several Jurisdictions. Therefore, this paper ventures all of the attainable alternatives to make this determinant of Distinctiveness a extra of goal and a seamless course of when going by means of the registration course of inside Indian context. Continuing additional, with the intention to take into account a mark as distinctive sufficient from that of others, it isn’t an instantaneous course of therefore, it entails numerous elements under talked about that come into play with the intention to get the mark registered based mostly on its distinct nature.[1]

CASE STUDY

1. In Below Armour, Inc. v. Anish Agarwal & An (2024)[2], the Delhi Excessive Court docket, by means of Justice Anish Dayal, handled a pivotal challenge surrounding trademark distinctiveness and the monopolization of widespread components in composite marks. The plaintiff, Below Armour—a well-established American sportswear model—claimed that the defendant’s use of “AERO ARMOUR” and the abbreviation “ARMR” amounted to infringement, citing similarity within the dominant part “ARMOUR.” The defendant, an aeronautical pilot, had created a military-inspired clothes model named “AERO ARMOUR.” The counsel for defendant argued that the adoption was bona fide and based mostly on his skilled expertise and inventive independence. The counsel additionally relied on Part 17[i] of the Trademark Act, 1999 and laid down that registration shall confer on the proprietor unique proper to using the trademark taken as a complete.

Justice Dayal famous that the plaintiff couldn’t declare exclusivity over the descriptive or non-distinctive time period “ARMOUR,” particularly with out standalone registration of that given phrase ingredient. The Judgement additionally laid down a number of elements for evaluation of Trademark Confusion, although it has been propounded by a number of different judgements, but it surely had tried to categorize them into intelligible, thematic silos comparable to i) power of marks ii) Similarity between marks iii) Proximity of products and providers iv) Risk of Confusion v) Nature of client vi) Intent vii) Conduct of the Events. It additionally reasoned out that there might be no ‘Preliminary Curiosity Confusion’ because the machine mark adopted by each the events listed here are structurally totally different from one another therefore, there isn’t a such malicious try by the Defendants to repeat the Plaintiff’s mark. The Court docket emphasised that the trademark have to be examined as a complete, and “AERO ARMOUR” was sufficiently distinguishable by means of an individual of common intelligence from “UNDER ARMOUR” when seen in its entirety, and the phrase ‘ARMOUR’ will not be the dominant a part of the Plaintiff’s adopted mark. Due to this fact, it bolstered two key ideas in Indian trademark regulation: (1) The need of assessing composite marks holistically, and (2) That monopoly over widespread dictionary phrases within the attire sector will not be tenable with out acquired distinctiveness and thus can not exclude all attainable manufacturers which has ‘ARMOUR’ in it. The judgment additionally famous that the defendant’s enterprise line, goal market, design theme, and branding strategy have been clearly distinguishable from that of the plaintiff. Importantly, the Court docket discovered no mala fide intent within the adoption of the identify “AERO ARMOUR,” or “ARMR” and held that the model had been conceived independently and with due creativity. The Court docket denied the injunction and highlighted the necessity to protect area for reputable, inventive entrants in the market.

2. Equally, within the case of Penta Safety Programs Inc. v. Apple Inc[3] Apple Inc. opposed Penta Safety Programs Inc.’s utility to register the trademark “WAPPLES”, arguing that it might probably trigger confusion with Apple’s well-established “APPLE” trademark. Penta Safety Programs Inc., a South Korean firm specializing in net and information safety options, had launched its “WAPPLES” safety merchandise in 2005 and launched them to the Singaporean market in 2010. Apple contended that the “WAPPLES” mark was much like its personal and opposed its registration on a number of grounds below the Singapore Commerce Marks Act.. After an intensive examination, IPOS dismissed Apple’s opposition and allowed the “WAPPLES” mark to proceed to registration. The ruling emphasised that “WAPPLES” and “APPLE” differed considerably in visible, aural, and conceptual features, because the addition of the letters “W” and “S” created a definite total impression. IPOS additionally discovered no chance of client confusion, given the contextual variations between the 2 manufacturers and their respective enterprise verticals. Moreover, there was no proof of dangerous religion, as Apple didn’t show that Penta Safety Programs utilized for the trademark with dishonest intentions or to take advantage of Apple’s model repute and goodwill. This ruling underscore the significance of evaluating trademark disputes based mostly on the general impression of the marks and their particular use within the market, relatively than solely counting on superficial similarities.

The battle of Distinctiveness and Fame elaborate how each the phrases collude with one another inside the ambit of Trademark Regulation globally with numerous evaluation and elements[4]. There appears to be a thumping loss for the tech big Apple, the place it suffered an opposition loss to the “WAPPLES” as each are completely working within the totally different fields of the Expertise Trade Thus, Penta Safety trademark utility was allowed to proceed for the registration based mostly on its distinctiveness and contextual dissimilarity.

LEGAL PRINCIPLES & INDIAN JURISPRUDENCE ON DISTINCTIVENESS

Distinctiveness is evaluated below each inherent and bought parameters. Indian courts and the Indian Logos Registry consider the next elements:

1. Period and Extent of Use: There is no such thing as a statutorily outlined timeframe for a mark to amass distinctiveness. As held in numerous Excessive Court docket choices, a shorter interval of use can suffice if accompanied by robust promoting, client engagement, and uniqueness. Conversely, even extended use could not lead to distinctiveness if the mark stays generic or descriptive.
2. Geographical Attain and Shopper Affiliation: Distinctiveness is judged by means of client notion, not merely the proprietor’s intent. In ITC Ltd. v. Nestle India Ltd[5]., the Delhi Excessive Court docket emphasised that public notion is paramount. A mark’s affiliation with particular items/providers and the chance of confusion among the many public are determinative.
3. Promoting and Publicity: Promoting expenditure, although related, will not be conclusive. It have to be correlated with client recognition and gross sales efficiency. Excessive advert spend with out demonstrable market penetration is not going to help a declare of acquired distinctiveness.

Public affiliation with a mark is essential, however repute alone doesn’t set up distinctiveness. A holistic client survey can present useful perception into acquired distinctiveness. Shopper Survey[6]: A key consider figuring out whether or not customers affiliate particular items/providers with a mark. It displays client notion of a product, identify, or idea. Whereas Indian courts typically don’t depend on such surveys, judges have, at occasions, thought-about them helpful for representing a market cross-section, assessing statistical relevance, and establishing secondary which means past mere repute and thus it was established by the above cited circumstances that no dominance or statutory proper could be claimed over the mark ‘APPLE’ and ‘ARMOUR and it extra past the repute i.e. its distinct identification. This was significantly mentioned in Ayushakti Ayurved Pvt. Ltd. Vs. Hindustan Lever Ltd[7]. Merely contemplating the repute of a given mark can not give them the standing of acquired distinctiveness. Due to this fact, in absence of a discernible good mannequin, the surveys are thought-about to be the closest to find out whether or not there exists a way of confusion if an identical mark is registered which could be phonetically totally different from the already registered mark.

CONCLUSION

This text has envisaged Distinctiveness as an necessary threshold for a Trademark utility to be thought-about for registration over the repute and different elements. From a doctrinal perspective, it’s crucial for a trademark to be distinct sufficient from different cited mark, but to fulfill the part for distinctiveness there isn’t a uniform or coherent take a look at for evaluating the identical part for the phrase mark/picture marks.  Thus, it’s crucial to find out correct indicators for the ingredient of distinctiveness. Due to this fact, diving into the subjective notion of client notion which is taken into account as far simplest issue to be thought-about by the Courts until now. Therefore, relying onto the repute of an organization to find out its distinctiveness doesn’t stand upfront whereas Knowledge Assortment and the road of enterprise would even be thought-about within the evolving world. The widespread use of this technique is believable with energetic encouragement from the judiciary and to make it as a norm relatively than an exception. There nonetheless exists a deep fog inside the Trademark Regulation with respect to distinctiveness, which must be cleared contemplating the general impression of a mark relatively than relying onto sure elements, which could be detrimental to the curiosity of the brand new registrants.

REFERENCES:

[1] 92 N.Y.U. L. Rev. 1339 (2017) The Scope of Sturdy Marks: Ought to Trademark Regulation Shield the Sturdy Greater than the Weak

[2] CS(COMM) 843/2023

[3] (2024) SGIPOS 10 https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2024/apple-v-penta-security-2024-sgipos-10.pdf

[4] Dustin Marlan, ‘Visible Metaphor and Trademark Distinctiveness’ (2018) 93 Wash L Rev 767. www.Heinonline.org

[5] MANU/TN/6089/2020

[6] Robert C. Chicken, Streamlining Shopper Survey Evaluation: An Examination of the Idea of Universe in Shopper Surveys Supplied in Mental Property Litigation, 88 TRADEMARK REP. 269, 270 (1998).

[7] 2004 (28) PTC 59 (Bom.) (India)

[i] The Logos Act, 1999