Lawyers in general are not the most loved people on the planet. There is always a sense of caution when we’re dealt with. It’s also probably why the legal profession has two patron saints St. Ives and St. Thomas Moore (must be twice as difficult for us to get into heaven). Anyway leaving God and the Saints out of it, in any Company (more so in an FMCG one) the In-House legal team is generally disliked to a great extent by the Marketing team and are at loggerheads with each other on a fairly regular basis. Ruling out personal conflicts, the main cause of trouble, is the fact, that marketing teams like catchy product names, which leave very little doubt as to what the product is – Glass for a for a pair of glasses, Watch Kart for an online store that sells watches; which is exactly what the law does not permit. While the legal team, may seem like permanent killjoys, members of marketing teams, may consider their choice of brands more carefully, if they knew the basics of trademark law and three very important reasons not to choose descriptive or generic trademarks.

You can’t register descriptive trademarks

In India, the Trademarks Act 1999 which governs all things trademarks, clearly states that a trademarks which are devoid of distinctive character (which can’t distinguish the goods of one person from another – Bakery for a bakery), Trademarks which may indicate the kind, quality, quantity, intended purpose or geographical origin etc. also can’t be registered. Finally trademarks which are customary in the current language or commonly used in the relevant trade cannot be registered.

So the basic principle would be that if you have trademark that describes the product or indicates the purpose it cannot be registered. The Trademark office records have several marks which have been refused for these reasons – Tobacco for tobacco [Yes! that was a real application]

Disclaimers – Bring you back to square one

While the reason above is straightforward enough, there is an exception to the rule. The law states that if a trademark has acquired a secondary meaning or is well known then it can be registered even if it is devoid of distinctive character or any of the reasons mentioned above. For a mark to acquire a secondary meaning, the general public should associate that mark only the owner. For example “Rich’s Whip Topping” was allowed to be registered as it had acquired a secondary meaning, but the Registry imposed a restriction on the exclusive rights to use the word “Topping”.

Another way companies try and get descriptive marks registered is by linking them to their main brand name. For instance while Britannia Snax is for a snack, and snax is not distinct in the least, since it was linked to their House mark Britannia, the Registry did allow the mark to be registered but imposed a condition which stated that they would not have exclusive rights to the word “Snax”. When Britannia tried registering Snax alone, the registration was not allowed.

Disclaimers, are never helpful, if your mark is Britannia Snax and Snax has been disclaimed, all you’re left with is Britannia, which doesn’t serve the purpose. While the Courts may examine your marks as a whole the disclaimer does hurt your chances of enforcing your rights.

Registration won’t necessarily let you stop infringers

So you’ve linked your mark to your House mark, or tested your legal counsel’s skills to the maximum and somehow managed to get your catchy trademark registered without a disclaimer, you still may not be in the clear. Registration of a trademark does not necessarily mean you can stop someone else from using a similar mark, particularly if your mark should not have been registered in the first place.

The section of law that deals with infringement of trademarks also states that

A registered trademark is not infringed where the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;

This what happened when the trademark LOSORB was called in question. Marico Limited had registered the trademark LOSORB, LO-SORB and LOW ABSORB for edible oils, and wanted to stop Agro Tech Foods from using the phrase LOW ABSORB TECHNOLOGY. The Court examined the marks and held the LOSORB which refers to LOW ABSORB was devoid of distinctive character and even though it was registered, it was not possible to stop SUNDROP with low absorb technology for edible oils as well.

So to begin with, you can’t register a descriptive or generic trademark, if you do try and get it past the Registry you may end up with a disclaimer, and even if you sneak past and get it registered you may not be able to enforce those rights.

I’m sure that there are studies which show how product recall works with descriptive brands and there are other reasons which may have been left out in this post given that I only know the legal side. So if anyone working with marketing teams responsible for coming up with brands has information that would trump the reasons above, I’d love you hear from you!

This article has been authored by Navarre Roy, an IP Law practitioner.