The Non-Monopolizability of Descriptive Trademarks: Balancing Fair Use and Brand Protection

Trademarks serve as critical identifiers in the marketplace, distinguishing goods and services from different sources. They play a significant role in protecting brand identity while also ensuring fair competition among businesses. Among the various types of trademarks, descriptive trademarks describe specific characteristics or qualities of products or services, such as “Sugar Free” or “Low Absorb.” These marks often face challenges in achieving legal protection due to their inherent descriptiveness, which may hinder brand exclusivity. The balance between protecting brand identity and maintaining fair competition is crucial, especially in trademark law disputes where descriptive marks are involved. This paper highlights the necessity of balancing brand protection with fair competition, emphasizing the potential for monopolization of descriptive terms to stifle market dynamics. The analysis focuses on the legal framework governing descriptive trademarks, including relevant provisions of the Trade Marks Act, 1999, and judicial precedents that shape this area of law. The paper also discusses key legal principles, such as the “Likelihood of Confusion” test and the anti-dissection rule, which guide courts in evaluating trademark disputes. Through case studies and legal analysis, this research underscores the critical role of courts in interpreting trademark law to ensure a fair marketplace while protecting legitimate brand interests.

A trademark is an intellectual property that helps consumers differentiate a particular brand, service or goods from another in the market. A distinctive sign, symbol or word, or any combination thereof, used to indicate the source of the goods or services of one party and to distinguish them from those of others. Trademarks have a primary purpose of preventing consumer confusion through giving customers the ability to readily identify the source of the product or service.¹ It

naturally helps to foster brand loyalty and help consumer make informed buying decisions. For instance, well known trademarks such as the Nike ‘swoosh,’ or McDonalds’ ‘golden arches,’ are used not as identifiers, but also as representations of quality and reputation of the brands itself.

Descriptive trademarks are one of the several types of trademarks which explains an attribute, a quality or a function of a product or service and not an indication of the source of a product. Terms like “Sugar Free” for food products or ‘Low Absorb’ for materials are examples. These marks communicate this very important information about the product directly to consumers, but often are not easily protected with trademark because they are inherently descriptive. The Trademark law often prohibits such marks from being monopolized by any one person or organization, since doing so would foreclose competition on the free market and unnecessarily stifle other firms from accurately describing their goods and services.² Trademark law strikes the balance between maintaining the preservation of brand identity, while at the same time promoting fair competition. Trademarks are a form of intellectual property designed to protect the brand owner’s interest in developing and preserving reputation and investments by preventing use of a descriptive mark that competes with their brand. Since it is unclear as to exactly how much in brand protection is enough, trademark law seeks a balance between too much brand protection and the ability to use descriptive language in the marketplace. Perhaps most practically, the discussion of descriptive trademarks is very applicable within the realm of trademark law disputes, where tensions between trademark owners and users frequently result from confusion regarding the proper recourse of and protection for these terms. Courts often face the question whether a descriptive mark has gained secondary meaning (become distinctive) through extensive use in the public, or ought to be retained for public uniformity usage. In the case of Cadila Healthcare Ltd

1. Gujarat Co-operative Milk Marketing Federation Limited and Ors³ the Hon’ble Delhi High Court held that although the mark “Sugar Free” had attained distinctiveness through usage, its highly descriptive nature limited its protection solely to the specific goods for which it had been used and with which it was associated. The Court observed that descriptive terms, even if distinctive for certain goods, cannot enjoy blanket protection across unrelated goods or services. These disputes shine the spotlight on the ongoing tug of war between brand owners, who want to keep terms of description exclusive, and competitors who maintain descriptive terms are their property as well.

CONCEPT AND CHARACTERISTICS OF DESCRIPTIVE TRADEMARKS

A descriptive trademark offers information about the goods or services it represents by its design. One group of marks stands out clearly for what they are but descriptive trademarks describe the items they represent. People see quickly that Cold & Creamy ice cream uses cold techniques while Fast Delivery creates rapid shipping services. Though these marks sharpen customer product understanding they encounter legal shielding troubles due to their nondistinctive nature. In trademark law a slight difference in how a mark appears or sounds can trick users into confusing it with popular brands which upsets market competition. Due to their lack of distinctiveness descriptive trademarks face strong legal risks when registering their mark. The courts have handled specific cases about these trademark concerns. In Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd. the Supreme Court found that Godfrey Philips gained exclusive rights over Super Cup despite the descriptive nature because consumers associated it specifically with their extra-strong CTC tea. Godfrey Philips secured an order to stop Girnar Food and Beverages from using ‘Super Cup’ for their products. Similarly, in Metropolitan Trading Company v. Shri Mohanlal Agarwal decided Metropolitan should keep its use of ‘Zodiac’ because long-term usage made their product stand apart from others.

The inherent distinctiveness is the main reason why descriptive trademarks are considered weak trademarks because descriptive are words that in their absence cannot be distinguished from other words. For the protection of its mark in trademark law, strength is the crucial thing; strong marks, like arbitrary, fanciful marks, can be registered without additional proof of distinctiveness. However, descriptive marks need to have acquired distinctiveness, or what is sometimes referred to as secondary meaning, to obtain trademark protection. In other words, a descriptive mark must prove that it has become recognized to consumers as the source of the product itself rather than merely as a description of another product.

Protection of descriptive trademarks depends crucially on the issue of secondary meaning. Usage of a mark overtime gives it secondary meaning and consumers recognize that such mark represents the mark of a particular brand. For example, “Holiday Inn,” a descriptive term of holiday accommodations, has enjoyed recognition in brand due to years of marketing and continuous use.

As a result , descriptive trademarks, being inherently weak to obtain legal protection, can become strong brands through secondary meaning. This transformation allows them to still use them to describe a product or service whilst taking advantage of the benefits that trademark protection brings.

LEGAL FRAMEWORK: GOVERNING DESCRIPTIVE TRADEMARK

Descriptive trademarks have a legal framework that shares differences from one jurisdiction to another and are governed by national legislations and international agreements. The Trade Marks Act of 1999 in India is clear enough about the registration of descriptive marks.⁴ In this context, the case of M/S Heinz Italia & Anr vs M/S Dabur India Ltd⁵ illustrates how courts assess potential consumer confusion arising from similar product names and packaging. The Supreme Court granted an injunction against Dabur for using ‘Glucose-D,’ finding significant similarities between their products’ packaging and names that could confuse consumers. The question of whether two marks are “deceptively similar,” “similar,” or “nearly resembling” arises as a critical consideration during various trademark proceedings, including applications for registration, opposition and rectification proceedings, and infringement and passing off actions. This determination is vital for assessing potential consumer confusion and ensuring fair competition in the marketplace.⁶ As a general rule, Section 9(1)(b) of the Act does not permit registration of descriptive trademarks unless those trademarks have acquired distinctiveness or secondary meaning through considerable use in the market. This provision is to the effect that descriptive marks are not protected as such because they do not inherently distinguish the goods or services as these marks represent. Nevertheless, where a tag line has become a recognized descriptive mark in the minds of consumers over time, such tag line may be able to be registered as such a trademark.

In the case of Institute of Directors v. Directors’ Institute,⁷ the Hon’ble Court dealt with a dispute where the plaintiff sought exclusivity over the term “Institute of Directors,” arguing that the defendant’s use of “Directors’ Institute” caused confusion. The Court held that commonly used English words or phrases, especially those lacking distinctiveness, could not be monopolized under Section 9(1)(a) of the Trade Marks Act, 1999, unless they had acquired secondary meaning through extensive and exclusive use. Furthermore, the Court emphasized that permitting exclusivity over

such words would effectively result in the appropriation of the English language, which is impermissible.

Similarly, in Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd.,⁸ the Hon’ble Supreme Court of India addressed the respondent’s claim that the appellant’s use of the trademark “NANDHINI” for their restaurant business was identical and similar to the respondent’s trademark “NANDINI” for milk products. The Court upheld the Registry’s reasoning that “NANDINI,” which means cow, is a common term in India, widely used for various establishments. The Supreme Court reiterated that no one can claim a monopoly over a common term or name, as doing so would be unfair to other parties who may have legitimate reasons to use such terms in a descriptive or non-trademark sense.

Furthermore, in M/S Pornsricharoenpun Co Ltd & Anr v. M/S L’Oreal India Private Limited failed to prevent the appellant from using “Hair Spa” following a judge’s decision. The Court ruled that Hair Spa represented a trade term that multiple companies used to identify their goods instead of a trademark. Registered trademarks lose protection when these words enter regular trade or explain what products or services they represent.

Internationally agreements, such as the TRIPS Agreement and the frameworks made by the World Intellectual Property Organization (WIPO) on one hand, affect international standards for protection of a trademark on the other hand.⁹ These agreements established minimum standards of intellectual property protection and encourage member countries to facilitate legal frameworks which adequately protect for distinctive signs. In particular, the TRIPS Agreement requires that member states ensure that trademarks receive protection against unfair competition and that descriptive trademarks can be registered when distinctive.¹⁰

Indian legal framework is compared with other jurisdictions like United States and European Union, where significant differences appear. Indian law has its own protection through the U.S. Lanham Act which allows registration for descriptive marks if they acquire secondary meaning.

U.S. courts, though, rule that what constitutes secondary meaning is more flexible, based on a

consumer perception and market evidence. Similarly, European Union trademark law permits syllabic devices to be registered as word marks, but for only descriptive marks.

In India, the case of ITC Limited v. Philip Morris Products SA¹¹ illustrates the complexities surrounding descriptive trademarks and their protection under trademark law. The Delhi High Court recognized that while certain words may be inherently descriptive, they can still be eligible for protection if it can be demonstrated that they have acquired distinctiveness through extensive use in the market. This ruling emphasizes that descriptive marks do not automatically qualify for trademark protection; instead, they must show that consumers associate the mark with a specific source due to its long-standing presence in the market. Another significant case in this context is S. Syed Mohideen v. P. Sulochana Bai,¹² which further explores the concept of secondary meaning and its implications for trademark protection in India. The court acknowledged that even inherently descriptive terms could gain legal recognition if they have developed a distinct identity in the minds of consumers over time. In the United States, the case of Zatarains v. Oak Grove Smokehouse¹³ exemplifies how courts assess descriptiveness and secondary meaning. In this instance, the court ruled in favor of Zatarains, concluding that through extensive marketing efforts, the descriptive mark had acquired distinctiveness despite its inherent nature. This case highlights how consumer recognition can transform a descriptive term into a protectable trademark.

THE DOCTRINE OF FAIR USE IN DESCRIPTIVE TRADEMARKS

Descriptive trademarks raise an important doctrine of trademark law, which is the doctrine of fair use. The legal principle underlying this is that in some situations, another’s trademark can be used without actually committing infringement. Fair use is divided into two main categories i.e., classic fair use and nominative fair use.

Descriptive Fair Use, or what is also known as Classic Fair Use, allows us to use descriptive terms in the way they are used in ordinary parlance.¹⁴ This means a trademark owner cannot prevent others from using trademarked terms to describe other products or services when a party using the term to refer to its own products or services wouldn’t make the unfair implication that that party is or has an affiliation with the trademark owner. Imagine a fruit seller who says that all their produce is ‘fresh’ while another company has the trademark on ‘Fresh Foods’. This type of fair use is important because otherwise trademark holders will monopolize such descriptive terms, which are common, are essential to the market and needed for products to be described by competitors correctly.

However, Nominative Fair Use permits use of a trademark with reference to the mark owners goods or services.¹⁵ In these instances though, where the mention of the trademark is necessary for clarity, this is particularly relevant. For example, say a reviewer talks about a certain brand of running shoes, and it will be necessary for them to mention the brand name to give them a correct idea to the consumers. Nominative fair use is permitted when three conditions are met:

• the product or service cannot be readily identified without using the trademark;
• only as much of the mark is used as necessary; and
• the use does not imply endorsement by the trademark ¹⁶

These fair use doctrines cannot be understated. They act as a curb on trademark protection to make sure competitors may make sense of what they make without fear of infringement cases. These doctrines permit descriptive terms and trademarks to be used in a non-confusing way, thus encouraging competition and the selection of consumer products. Both of these doctrines classic and nominative fair use represent essential safeguards of trademark law to protect the rights of trademark owners while countering the need for free expression, fair competition .

BALANCING BRAND PROTECTION AND FAIR USE

Descriptive trademark law poses some serious challenges as to the balance between fair use and brand protection. On the one hand, affording protection to descriptive marks impedes competition by precluding other business from using common terms to describe their products or services.¹⁷ If the government continues to overreach, language that is necessary to the market place becomes monopolized. Suppose the firm wins exclusive rights to a widely used term, for instance ‘fresh’; ending competition to give marketing their fresh products which may restrict consumer choice. On the other hand, refusal of protection for descriptive marks can put others at a disadvantage in building the considerable goodwill invested into their brands. Companies that earn themselves a reputation by using a descriptive mark without infringing on others’ rights can become susceptible to free riding if other competitors can adopt similar language without any restraints. The balance between interests of trademark owners and the right of competitors to fair description of goods is illustrated by such a scenario.

This balance depends upon judicial tools. Bundled with the “Likelihood of Confusion” test, Courts often use to find out whether consumers will be confused as to the source of goods or services from similar trademarks.¹⁸ The tests undertaken are designed to look at many factors, including how similar the marks are, the type of goods in question, and the channel the goods travel. Courts also consider acquired or “secondary meaning” and distinctiveness on the descriptive marks. If a mark has accumulated a strong association with a particular source, in the minds of consumers, then such mark may be granted protection.

It’s borderline where brands like Aloe Vera as a skincare brand comes into play. “Aloe vera” is a descriptive name for anything created from the aloe plant, but companies can easily slip into trademark law traps that contradict with existing protections. In trademark law, therefore, balancing brand protection against the legitimate use of a mark requires careful balance among competing considerations such as competition, consumer’s perception and judical standard.

The debate surrounding the protection of descriptive trademarks underscores the importance of striking a balance between safeguarding brand identity and preventing the monopolization of common terms. Descriptive terms, by their nature, serve as essential tools for businesses to convey key information about their products and services. If one entity is allowed exclusive rights to a descriptive term, it can hinder other businesses from effectively communicating with their customers. This can lead to market disadvantages and disrupt healthy competition.

The “Likelihood of Confusion” test plays a crucial role in determining whether a trademark’s similarity can mislead consumers. This test considers several factors, such as the degree of similarity between marks and the nature of the goods or services. Additionally, the concept of secondary meaning, or acquired distinctiveness, is fundamental in establishing whether a descriptive term has gained recognition as a source identifier among consumers.

Ultimately, the key challenge lies in ensuring that brand protection does not stifle competition while respecting the rightful claims of trademark owners. Trademark law must foster an environment that encourages innovation and protects consumer interests. By ensuring that

businesses can protect their brands while leaving descriptive terms available for general use, the legal system can maintain a fair and competitive marketplace.

Author:– Utkarsh Shukla, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References –

[1] C. Black, Black’s Law Dictionary (6th ed. 1994).

[2] The Public Gambling Act, 1867

[3] R.M.D. Chamarbaugwala v. Union of India – AIR 1957 SC 628

[4] State of Andhra Pradesh v. K Satyanarayan and Others, (1968) 2 SCR 387

[5] The Goa, Daman and Diu Public Gambling Act, 1976.

[6] Dr. K.R. Lakshmanan v. State of Tamil Nadu & Anr., (1996) 2 SCC 226

[7] The Lotteries (Regulation) Act, 1998.

[8] Varun Gumber v. Union Territory of Chandigarh & Ors., CWP No. 7559 of 2017

[9] The Information Technology (Intermediary Guidelines and Digital Media Ethics Code) Rules, 2021

[10] Fantasy Sports – Creating a Virtuous Cycle of Sports Development https://www.deloitte.com/in/en/Industries/tmt/research/fantasy-sports.html

[11] https://www.bhaskar.com/local/bihar/sitamarhi/news/a-youth-from-sitamarhi-won-1-crore-from-dream-11-134296919.html

[12] Diagnostic and Statistical Manual of Mental Disorders (DSM-5-TR) – https://www.psychiatry.org/psychiatrists/practice/dsm#:~:text=Diagnostic%20and%20Statistical%20Manual%20of%20Mental%20Disorders%20(DSM%2D5%2DTR)

[13] International Statistical Classification of Diseases and Related Health Problems (ICD) – https://www.who.int/standards/classifications/classification-of-diseases#:~:text=International%20Statistical%20Classification%20of%20Diseases%20and%20Related%20Health%20Problems%20(ICD)

[14] Translational Psychiatry https://www.nature.com/articles/tp2016256

[15] https://www.thequint.com/fit/online-fantasy-sports-apps-addiction-debt-depression-loan

[16] https://www.business-standard.com/finance/personal-finance/fantasy-sports-made-rs-2-800-crore-in-gross-gaming-revenue-during-ipl-123070400170_1.html

[17] https://www.businesstoday.in/latest/corporate/story/dream-11-gaming-unicorn-steadview-capital-dream-11-becomes-indias-first-gaming-unicorn-with-investment-from-steadview-capital-183198-2019-04-09