COMBINATION OF GENERIC TERMS AS TRADEMARK

INTRODUCTION TO GENERIC MARK/ TERM

With the evolution of multinational companies and ever-expanding innovation techniques developed by renowned scientists, the protection of the brand plays a crucial role in the growth and development of the businesses. The Trademark Legislation grants legal protection to unique trademarks that possess distinctive character and has the ability to strive for goodwill in the market. The concept of distinctive character varies from case to case. It can be understood as the customer’s ability to recognize the product and differentiate it with other existing trademarks.

Where the distinctiveness grants stronger protection to the Trademark, the usage of generic terms and descriptive terms emerge as a ground for objection to the Registration of Trademark.[1] Generic terms/names can never receive protection under the Trademark Act, 1999[2] because they communicate the word or symbol which describes the product or services rendered by it.

Generic word is a common term used to denote a product or service used by the general public in common parlance. For instance, Apple can become a generic name for fruits but the term would not be generic if it is used for products like electronics, textile, or automobile. The term is generic because it is commonly spoken by a certain category of people or the public at large.

FEATURES OF A GENERIC MARK

• A generic term is a name of common parlance which is used by the general public, for example, Grocery, Chair, Photocopying, Detergent, Noodles, etc.
• A generic term is not granted protection under the Trademark Ac, 1999 for the same goods and services. Thus, a generic mark or name cannot be registered.
• A generic term is analyzed according to the goods and services offered by the business.
• A generic term may be similar to one particular type of product but it is arbitrary to another set of goods and services. Example: Apple for electronic goods.
• A generic mark cannot be registered because it will create a monopoly over a certain name/term/symbol/word which is commonly used by people.[3]
• A generic mark cannot track the origin of the goods and services as that of a distinctive mark.
• Sometimes a popular trademark becomes generic with improper use by the customer, like Xerox, Kerosene, Aspirin, Escalator, all these trademarks have become a sufferer of ‘Genericide’.

In M/S Three-N-Products Pvt. Ltd. vs. M/S Kairali Exports and Another.,[4] the Hon’ble Delhi High Court held that to trademark a generic word requires a greater degree of proof/evidence and an even longer battle.

Also in Mr A.D. Padma Singh Isaac and M/s Aachi Masala Foods (P) Ltd vs Aachi Cargo Channels Private Limited [5], the Madras High Court refused Trademark Registration to the brand name ‘Aachi’ which means ‘Grandmother’. The court affirmed that this term cannot be monopolized as it is a generic term.

UNIQUE COMBINATION OF GENERIC TERMS 

The Generic terms cannot be protected under the Trademark Act, 1999 and hence objection can be raised on registration of generic names as a trademark. But popular judicial pronouncements have affirmed that the unique combination of generic terms, with a distinctive name, to receive trademark registration. This was adopted to overcome legal obstacles in the limitation of registration of the Trademark. The unique combination of generic / non-distinctive marks can be granted protection under trademark ac as it still fulfils the requisites of distinctiveness.

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JUDICIAL PRECEDENT SUPPORTING COMBINATION OF GENERIC TERMS AS TRADEMARK

In the United States Patent & Trademark Office v. Booking.com B. V.[6], the court granted registration to the generic term followed by adding a suffix “.com”. Booking.com was granted trademark registration. At the beginning of the battle, the mark was refused registration on being generic term but at later period of time when the mark received secondary significance in the hotel reservation industry, it received trademark registration.

The ruling of the Supreme Court of India in the case of Laxmikant Patel v. Chetanbhat Shah and Anr.[7], held that The trademark “MUKTA JEEWAN COLOUR LAB” by virtue of it being a continuous user was a valid trademark. Together, the combination of words has acquired distinctiveness by virtue of prior, continuous and extensive use and is, therefore, protected under the Trademark Act, 1999.

Living Media India Limited Vs. Respondent: Jitender V. Jain and Anr.[8], the court held that the word ‘AAJ’ and ‘TAK’ are individually descriptive and generic words their unique combination does invite protection under Trademark law due to prior and continuous use in the market.

Delhi High Court in Globe Super Parts v. Blue Super Films[9] held that the words ‘SUPER’ and ‘FLAME’ are individually descriptive and generic words which cannot be granted protection under the law. But together, the unique combination of generic terms has acquired distinctiveness. This unique combination of terms was as coined words and accordingly, protection was granted by the court.

Bombay High Court in its judgment in Sky Enterprise Private Ltd. v. Abbad Masala and Co.[10] held that trade names ‘White Chinese Pepper Masala’ and ‘Black Chinese Pepper Masala’ is individually a generic term but the combination of these generic terms have a unique identity in totality. The court is of the opinion that if a mark is a unique combination of generic/descriptive words and has acquired goodwill and reputation in the market, then it is eligible for registration.

Also, the Supreme Court in the case of Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd.[11] held that the descriptive and generic mark can be granted trademark if it has achieved secondary meaning which means the consumers are able to associate the product with its origin. Common words can receive trademark registration when it has acquired secondary meaning in the market.

CONCLUSION

In the ever-expanding field of intellectual property, it is important for business organizations to analyze the limitation of certain concepts. It is important to determine and anticipate the possible complication while registering an Intellectual Property. For successful registration of Trademark, the element of distinctiveness is a cardinal principle that cannot be ignored. But, with the course of time, the unique combination of a generic term is given protection under the Trademark Act, 1999 as it is a result of prior and continuous use of the product and also the reputation of the business has to be restored.