TRADEMARK LAW AND GENERIC WORD DILEMMA: AN ANALYSIS OF YATRA ONLINE V. BOOKMYYATRA
Background Of The Case
The recent dispute between Yatra Online Limited v. Mach Conferences and Events Limited (“Yatra Online”) before the Delhi High Court (“HC”) represents the perennial tension within trademark law between safeguarding commercial goodwill and restraining the monopolisation of generic or descriptive terms. In the present instance, Yatra Online Limited (“Plaintiff”), an eminent player in the travel and tourism industry, sought an interim injunction to restrict Mach Conferences Limited (“Defendant”) from using the marks such as BookMyYatra and BookMyYatra.com. The plaintiff contended that the impugned trademarks were deceptively similar to its brand identifiers, such as ‘YATRA.COM’ and ‘YATRA FREIGHT (Device)’, thereby leading to an infringement of its proprietary rights and eroding brand distinctiveness. On the other hand, the Defendant firmly opposed their claims by asserting that Yatra is a generic and descriptive term in the Hindi language, which means travel or journey, used by hundreds of travel operators across India for decades, and that Plaintiff’s registrations contained clear disclaimers denying any exclusive right over the word. The Delhi HC held that it is a settled law that the generic and commonly descriptive marks, which describe the nature of the business or the services, cannot be exclusive to the proprietor of the registered trade mark. The HC observed that while Mark ‘YATRA’ is a dominant and constitutes an essential part of the registered Device Mark of the Plaintiff, they cannot claim a monopoly on the Mark ‘YATRA’ as the same is generic, commonly descriptive for the service of travel and tourism. The generic or commonly descriptive word can never become a trademark on its own, as it never acquires distinctiveness or a secondary meaning. It is settled law that words used in everyday language cannot be allowed to be monopolised, and these words do not indicate origin or source. Accordingly, no prima facie case was made out for granting the interim injunction against the Defendant restraining from using the Marks ‘BOOKMYYATRA’/ ‘BOOKMYYATRA.COM’
The Doctrinal Dilemma of Descriptive Trademarks
Section 9(1)(a) of the Trademarks Act, 1999 (“Act”) states that the trademarks lacking distinctive character shall not be registered, meaning thereby it prohibits the registration of the trademarks which fail to differentiate between the goods or services of one trader from those of another trader. The determination of the registrability of the trademark is intrinsically embedded in the core objective of trademark enforcement, which ensures that a trademark operates as an indicator of origin. Therefore, the doctrine of distinctiveness is considered as the core of the trademark framework, because it ensures both fair competition and consumer welfare. However, the courts have established that descriptive marks can also be registered under certain exceptional circumstances. In Marico Limited v. Agro Tech Foods Limited, the Delhi HC ruled that “when the descriptive trademark is used only by one person undisturbed for a very long period of time, without anyone else attempting to use the trademark during this long period of time, a case can be established of a descriptive word having achieved distinctiveness and a secondary meaning.” This trajectory underscores that descriptive trademarks are allowed to be registered when there is acquired distinctiveness or the term has acquired secondary meaning due to its prolonged use.
The Threshold of Acquired Distinctiveness And Secondary Meaning
Proviso to Section 9(1) of the Act provides that a descriptive trademark shall not be considered invalid if it has acquired distinctiveness and a secondary meaning in relation to the goods or services for which it is registered due to its persistent use, provided that such recognition arises after registration and prior to commencement of any legal proceedings challenging its validity.
However, the Act does not mention the factors to be taken into consideration while analysing the secondary meaning or acquired distinctiveness of the trademark, contrary to other nations, such as the United States, that have ascertained principles under section 2(f) of the Lanham Act to deal with such aspects of law. The Court and IPAB have been interpreting the principles to establish the distinctiveness of the mark. The procedure for acquiring distinctiveness and secondary meaning is a complex and time-consuming process. The trademark framework has not provided any stringently fixed timeframe, unlike the British Act of 1919, which prescribed a time limit of 2 years of bona fide use to be considered for distinctiveness. In Ishi Khosla v. Anil Aggarwal, it was highlighted that a product doesn’t need to be in the market for a long time to acquire secondary meaning, if a new idea is exciting and appeals to the public, it may gain popularity very quickly. The trajectory of a trademark’s distinctiveness defies uniformity because it has been observed that, in some instances, a mark may attain distinctiveness rapidly due to strategic branding or market dynamics, while in some cases, a trademark remains generic or descriptive even after its prolonged use. Therefore, it is untenable to prescribe a fixed duration regarding the acquired distinctiveness of a trademark as the process inherently varies across contexts.
Judicial Inconsistencies
The consistent challenge that has come across the courts is the determination of the end of descriptiveness and the beginning of distinctiveness, particularly in industries where common phrases dominate consumer attention.
In BookMyShow v. BookMyEvent, the Delhi HC ruled that BookMy was descriptive of booking services and widely used across the market, thereby reinforcing the policy that no trader should monopolise a term necessary for others to describe their services. The judgement highlighted the stringent application of the descriptiveness bar. On the other hand, in the case of MakeMyTrip v. MakeMyHappyJourney, the same Court held that the defendant’s mark was deceptively similar to “MakeMyTrip”, and thereby granted an ex parte injunction. In this instance, the court prioritised the plaintiff’s branding and stylisation over descriptiveness.
These contrasting judgements unveil a judicial dilemma, and this has clearly been seen in the Yatra Online judgement, where the Court avoided providing too much protection and chose to take a balanced approach by holding Yatra generic and incapable of secondary meaning. This trajectory of rulings defies the uniformity in the courts’ decisions and highlights how the courts assess descriptiveness disputes variably depending on subjective judicial interpretations.
Possible Solutions
The non-uniform approach of the court to deal with the cases related to secondary meaning reveals the lack of a structured regulatory framework to address the issue of registration of descriptive marks. A balanced framework recognising both the need to protect commercial goodwill while keeping descriptive language free for public use. Firstly, a minimum threshold of uninterrupted use should be set before a descriptive mark can claim distinctiveness. This fixed statutory requirement of commercial use will maintain legal certainty, promote consumer clarity and align with norms of other nations, such as Brazil, to enhance cross-border trademark coherence. Secondly, there is a need to mention the categories of admissible evidence considered to examine the secondary meaning that the applicants have to furnish at the time of claiming distinctiveness. These would include proof of sales data, advertising expenditure, consumer surveys, and evidence of public recognition because such evidence will promote transparency, provide clarity on the standard of proof and ensure that secondary meaning is objectively established. Thirdly, trademark disclaimers should be strictly enforced to prevent proprietors from claiming exclusive rights over descriptive terms that are included in composite trademarks later on. This measure will prevent the brand owners from expanding their rights post-registration, maintain the authenticity of trademark registration and curtail the monopolisation of the common language. Fourthly, trademark authorities should be empowered to assess preliminary determinations, while judicial intervention can also be invoked in disputed cases, empowering courts to decide whether the claimed distinctiveness is fair in light of public interest. This two-tiered approach would maintain consistency while still allowing room for exceptional cases.
Conclusion
In conclusion, the notion of distinctiveness plays a pivotal role in the regime of the Indian trademark law. The Act prohibits the registration of descriptive marks due to a lack of inherent distinctiveness because trademarks are considered indicators of origin. However, the courts have recognised the exceptions when descriptive terms acquire distinctiveness or secondary meaning. Recently, the Delhi HC in the Yatra Online ruling upheld this principle that trademark protection cannot lead to the monopolisation of generic words by not providing exclusive rights on the word Yatra even after its significant market recognition. At the same time, this ruling unveils judicial inconsistencies in assessing the threshold of acquired distinctiveness and secondary meaning. To address this, there is a need for a structured trademark framework to strike a balance between granting proprietary rights and preserving public access to descriptive language. A model incorporating an uninterrupted use threshold, structured evidentiary requirements, strict enforcement of trademark disclaimers, and a two-tiered regulatory supervision by trademark authorities and the judiciary would foster consistency and prevent monopolisation of the common language. Lastly, the aim is not to compromise the protection of commercial goodwill, but to ensure that the trademark law remains predictable, principles and aligned with public interest.
Author:–Somya Sharma, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
