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A mark cannot be called as valid trademark if it lacks distinctiveness which is a core feature of Trademark Law. There are several theories on the assessment of distinctive character of trademarks. All these theories state that distinctive character is the core feature of trademark without which a mark could not be a valid trademark and the same could not be protected. However, trademarks which are not distinctive can be used provided they acquire distinctiveness after being put to use. It happens especially in case of marks used without registration.
Analyzing the Character of Trademarks
According to the law of trademarks a mark should be inherently distinctive or should have acquired distinctiveness on usage to be a valid trademark. The primary meaning of the marks which are not inherently distinctive is that they are not valid trademarks. These marks which are not valid according to their primary meaning would have secondary meaning on acquisition of distinctiveness. The marks which have acquired distinctiveness are valid trademarks according to the secondary meaning. Generally personal names, surnames and geographical terms are not considered as distinctive but could be registered as valid trademarks on acquisition of distinctiveness or secondary meaning.
Even when the same owner uses two different marks on same type of goods the marks are said to be distinctive and valid provided those marks are indicating different qualities, such as the best quality and the second best quality of the goods produced by the same owner. In that sense, the marks should have ability to distinguish the different quality goods of the same owner. Hence, distinctive character is the essential feature of a valid trademark either naturally or through acquisition on regular use.
Distinctive Character of Trademarks
The concept of distinctiveness can be regarded as the parameter on the basis of which the strength or weakness of marks is adjudged. Therefore, distinctiveness is considered to be the most important aspects of trade mark. Marks which are devoid of any distinctive character or not capable of distinguishing the goods or services of one person from those of others cannot be protected. Lack of distinctiveness is an absolute ground for refusal of registration. A mark in order to be capable of distinguishing a particular good from other similar kind of goods ought to be distinctive. A mark need not be invented to be distinctive, innovative use of existing/known trademark can be distinctive.
In Imperial Tobacco v Registrar, Trademarks, it was viewed that; distinctiveness has been understood to mean “some quality in the trade mark which earmarks the goods so marked as distinct from those of other producers of such goods”. Therefore, distinguishing the goods and service is not only the basic function of trademark but as well basic feature of a valid trademark. Further, it was viewed that; a mark has distinctive character if it communicates the fact that the goods with reference to which it used recurrently are those of one and the same undertaking. The capacity of communication by the mark to the consumer about the origin of the goods and the quality makes it distinctive.
Meanwhile, in British Sugar v James Robertson & Co Ltd, the courts have held that; to be distinctive a sign must be in cable of fair & honest application to the goods of anyone else. The basic feature of a trademark is to distinguish the goods and services on which it is applied from that of others in the market. Every trademark should possess distinctive character which may be possessed either by inherently or acquired through use. There are certain marks which are inherently distinctive which do not require any further proof. However there are other marks which are not inherently distinctive but can acquire distinctive character on continuous use. Therefore, distinctiveness could be either inherent or acquired. The Trademark Act specifies that to be able to get registration the mark should possess distinctive character of capacity to distinguish the goods and services, otherwise the mark cannot be registered. The European Union the Trademark Directive states that a mark which lacks distinctive character cannot be registered. At the same time it has to be noted that possessing distinctive character is not a guarantee for registration and every mark which possesses distinctive character cannot be registered. There are certain marks which are not registered even if possess distinctive character. On the basis of public policy concerns the following marks cannot be registered even if they are distinctive:
1. Scandalous marks. 2. Obscene images/pictures. 3. Marks tend to mislead public
Philosophy of Distinctive Character
The trademark should fulfill certain requirements such as distinctive character, capable of being applied on goods and services, capacity of being represented graphically. These requirements also form the essential features of the trademark. A valid trademark shall possess these mentioned features or requirements. Protection and enforcement of trademark is done on the basis of the assessment of the above mentioned features. While assessing these features there followed various theories which decide whether a mark is capable of representing the goods and services graphically, whether it is capable of distinguishing the goods and services on which it is applied from that of other goods and services. Let us discuss these theories, their applicability, their role in determining the status of trademark and significance of their use in the protection and enforcement of trademark. There are different theories which are operating in the field of trademarks which are instrumental in determining the distinctive character of trademark.
They are: 1. German Theory; 2. Second Theory and 3. Cynic’s theory
These theories do play an important role in law courts and help interpreters in reaching a decision with reference to the distinctiveness of a mark. Let us discuss these theories in some detail:
Trademark which is distinctive by nature or a mark which is inherently distinctive is protected. At the same time, a mark which is in continuous use if acquires distinctiveness could be protected. An inherently distinctive mark could be registered without putting the same for use before registration. However, a mark which is not inherently distinctive can acquire distinctiveness only through continuous use. Therefore, in case of marks which are not inherently distinctive, usage of the mark before registration is required. According to the German theory before the date of application for registration or following the use the trademark should have acquired distinctive character. The theory postulates two types of distinctiveness: Concrete distinctiveness: It connotes the ability the trademark to distinguish the particular goods or services of one undertaking from that of the goods and services of other undertaking. Abstract distinctiveness: It connotes the ability of the trademark to distinguish the goods and services in abstract, without regard to any particular goods or services.
The second theory lays emphasis on the functional aspect of trademark. According to the theory the expression “capable of distinguishing” takes account of the fact that marks may not have been used before filing an application for registration, but contemplates “what must occur when the mark is used”. In the sense, when a mark is “put to use” it must distinguish the goods/services of one undertaking from that of other undertakings. Therefore, usage of trademark before filing application for registration is not necessary; however it should have the capacity to distinguish the goods and services once it is put to use.
According to the theory there may be literal interpretation of the meaning of the expression “capable of distinguishing” than a logical or internally consistent interpretation. Cynic theory does not provide scope for going around what has been provided under the Act. The theory advocates for the literal interpretation of the provisions of the Act. Accordingly, the expression “capable of distinguishing” shall be given literal meaning and interpretation.
Types of distinctiveness
There are two types of distinctiveness recognized under the trademark law. The law courts have time and again spoken about the different types of distinctiveness which play important role in determining the validity of a trademark. The following are the two types of distinctiveness:
• Inherent distinctiveness. • Acquired distinctiveness.
The mark which do not provide any information as to the nature, quality or characteristics of the goods on which they are affixed are considered inherently distinctive marks. It does mean that a valid trademark should not indicate any thing about the nature, characteristics or quality of the goods or services. There shall not be any direct or indirect or casual link between the mark and the features of the goods or services on which it is applied. It goes without saying that such a mark which provides any information about the goods is not distinctive and hence it is not a valid trademark. On the proof of the link between the mark and the features of the goods registration could be revoked on the ground of lack of distinctiveness. Inherently distinctive marks would have the natural quality of distinguishing the goods and services.
Marks which are not inherently distinctive can acquire distinctiveness on use. As per the established practices under the trademark law, those marks which are not inherently distinctive and acquire distinctiveness on use can be protected. All marks which are not inherently distinctive cannot be rejected trademark protection. There shall be no problem for registration of those marks which acquire distinctiveness by use. In such cases the question with regard to what makes a mark to have acquired distinctive character would arise. There are certain parameters on the basis of which an assessment of mark whether it has acquired distinctiveness or not will be done. Courts consider these parameters while determining the acquisition of distinctiveness by marks which are being used by the traders.
Whether a mark has acquired distinctiveness or not could be determined on the basis of the impression of the consumers on the mark. If the consumer identifies a mark to be associated with goods or services from a definite source, it can be said that the mark has acquired distinctiveness. Such acquisition of distinctiveness is on the basis of the consumers association with the mark. As trademark is a bridge between the consumer and the trader, the mark used by the trader would acquire distinctive character if the consumer believes it to be associated with the trader. In the trademark law practice acquisition of distinctiveness or distinctive character by a mark which is not inherently distinctive is known as acquisition of secondary meaning. A mark which is not inherently distinctive is not a valid trademark is the primary meaning attributed to the mark. The secondary meaning could be attributed if the consumer association with the mark proves the acquisition of distinctiveness by the mark. Therefore, there are two different meanings attributed to a mark.
Primary meaning signifies that marks which are inherently not distinctive cannot form a valid trademark. Such marks cannot be registered and protected.
Secondary meaning signifies acquiring of distinctiveness by a mark through consumers identification of the mark in association with goods or services of a definite source.
As explained, a mark which is primarily not distinctive, if acquires secondary meaning by use is considered to be distinctiveness and could be a valid trademark. The applicant who intends to claim a mark which is not inherently distinctive shall have to prove the consumers identification of the mark as associated with goods or services of a definite source. In Wood Laboratories Inc v Ives Laboratories, it was viewed that to establish secondary meaning a manufacturer/trader must show that in the minds of the public, the primary significance of a product feature is to identify the source of the product rather than the product itself. In the minds of the public, the mark used by the trader should be a mark associated with the products of the trader. The consumer should identify the mark with the product of the trader. Such impression in the minds of the public about the product and the corresponding mark confers secondary meaning to the mark. A mark on which such secondary meaning has been conferred is said to have acquired distinctiveness. The mark which has acquired distinctiveness through consumer association which has been built after a continuous use is a valid trademark and without any doubt can be registered. The Trademarks states that; a mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it. Applicant has to demonstrate or prove that his mark which was having primary meaning (inherently not distinctive) has acquired secondary meaning (acquired distinctiveness). On the same lines a mark which is wrongly registered shall not be declared invalid if the mark has acquired distinctiveness after registration and before the commencement of any legal proceedings challenging the validity of such registration.
The discussion makes us realize how important the distinct character of trademarks is in a trademark law as if a mark does not have a distinctiveness it cannot be called as a valid trademark. There are various theories which help us in determining this distinctiveness of the same i.e. German, Second and cynic’s theory. It is not important that these marks always has to be inherently distinctive but the marks that prima facie don’t appear as inherently distinctive can also acquire the distinctiveness through consumers identification of that mark in association with goods or services of a definite source.