Marketing teams like names that leave no doubt about the product — Glass for glasses, Watch Kart for a watch store. That is precisely what trademark law will not protect. Here is why the in-house lawyers keep saying no, and why they are right.
Lawyers are not the most loved people on the planet; there is always caution when we are dealt with. Perhaps it is why the profession has two patron saints. In any company — more so in FMCG — the in-house legal team tends to be at loggerheads with marketing, and the recurring cause is this: marketing wants catchy, descriptive product names, and the law does not permit them.
Members of marketing teams might choose more carefully if they knew three things.
1. You can’t register descriptive trademarks
The Trade Marks Act, 1999 states that marks devoid of distinctive character — those that cannot distinguish one person’s goods from another’s, like Bakery for a bakery — cannot be registered. Nor can marks that indicate the kind, quality, quantity, intended purpose or geographical origin of the goods. Nor marks that have become customary in the current language or in the practices of the trade.
The basic principle: if the mark describes the product or indicates its purpose, it cannot be registered. The Registry’s records contain many marks refused for this reason — including an application for Tobacco, for tobacco. That was real.
There is a commercial argument here too, not just a legal one. A descriptive name is easy to explain and impossible to own. Every competitor may use the same descriptive words, so the thing marketing invested in building cannot be defended.
2. Disclaimers bring you back to square one
There is an exception. A mark that has acquired a secondary meaning, or is well known, can be registered even if otherwise non-distinctive. For a mark to acquire secondary meaning, the general public must associate it only with the owner.
Rich’s Whip Topping was registered on that basis — but the Registry imposed a restriction on exclusive rights to the word “Topping”.
The other common route is linking a descriptive term to the house mark. Snax is not distinctive in the least, but as Britannia Snax the Registry allowed registration — subject to a condition that there would be no exclusive rights to “Snax”. When Britannia later tried to register Snax alone, registration was refused.
Disclaimers are never helpful. If your mark is Britannia Snax and Snax is disclaimed, all you are left with is Britannia — which does not serve the purpose the descriptive element was chosen for. Courts may examine marks as a whole, but the disclaimer damages your ability to enforce.
3. Registration won’t necessarily let you stop infringers
Suppose you linked the mark to your house mark, or stretched your counsel to the limit and got the catchy mark registered without a disclaimer. You may still not be in the clear.
The infringement provisions themselves state 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, time of production, or other characteristics of the goods or services. That is the Section 30 descriptive use defence, and it is available to your competitor precisely because your mark describes something.
That is what happened with LOSORB. Marico Limited had registered LOSORB, LO-SORB and LOW ABSORB for edible oils, and sought to stop Agro Tech Foods using the phrase LOW ABSORB TECHNOLOGY. The court held that LOSORB — referring to low absorb — was devoid of distinctive character, and that despite registration, Marico could not prevent the use of low absorb technology in relation to edible oils.
So: you cannot register a descriptive or generic mark; if you push one past the Registry you may end up with a disclaimer; and even if you get it through cleanly, you may not be able to enforce it.
What to do instead
The names that are hardest to sell internally are the easiest to protect: invented words (Kodak, Xerox), or arbitrary words unrelated to the product (Apple for computers). They require marketing spend to build meaning — which is precisely why, once built, that meaning belongs to you alone.
If anyone working with brand teams has research on product recall that trumps the reasons above, we would genuinely like to hear it.
The takeaways
- Descriptive and generic marks can’t be registered — Section 9 bars them.
- Secondary meaning is an exception, but usually comes with a disclaimer.
- A disclaimer removes the part you wanted and weakens enforcement.
- Descriptive use is a defence — as Marico found with LOSORB.
Frequently asked questions
Why can’t we register a name that describes our product? Because a descriptive mark cannot distinguish your goods from anyone else’s, and every trader is entitled to use descriptive words — so the Act bars registration.
What is a disclaimer on a trademark? A condition recorded on the registration stating that the proprietor has no exclusive rights to a particular non-distinctive element of the mark.
Can a descriptive mark ever be registered? Yes, on proof of acquired distinctiveness or secondary meaning — where the public associates the mark solely with one proprietor.
Does registration guarantee I can stop competitors? No — a competitor using words descriptively to indicate the kind, quality or purpose of their goods has a statutory defence, as the LOSORB case showed.
Useful official resources
- The Trade Marks Act, 1999
- Trade Marks Registry — IP India