Secondary meaning / acquired distinctiveness as criteria for trademark protection.
Businesses are granted exclusive rights to their distinctive identifiers, such as names, emblems, or logos, through trademark protection. Not all marks, meanwhile, are innately distinctive. For trademark protection, certain geographical names, descriptive marks, or common phrases must have gained uniqueness or secondary meaning. When customers start to link a mark more closely with the products or services of a specific company than with the broad category it represents, secondary meaning develops. The notion of secondary meaning is thoroughly examined in this article, along with its significance in trademark law, the legal standards for establishing acquired distinctiveness, and judicial trends in different countries. It also examines obstacles that companies encounter when attempting to protect marks that have a secondary meaning and offers suggestions for guaranteeing successful brand protection.
INTRODUCTION
Every trademark inevitably links the products sold under it to a particular source. This tendency gets stronger with time, and some trademarks get registered or become psychologically linked to the product and its source as something unique in the eyes of the customers. The "strength" of the mark is another way to refer to it. Certain trademarks have distinct qualities that make them stand out right away, and they are immediately given legal protection upon use. Because consumers buy things primarily because they see signs identifying their origin on them, there is a relationship between a trademark's "strength" and its "secondary meaning." The owner of a mark capitalises on this human tendency by trying to sell their products through the allure of that symbol. For eg, Nike, Google, Apple, LG etc.
The term "secondary meaning" describes the moment when a mark, which is initially descriptive or nondistinctive, in the eyes of customers develops a special association with a specific brand. For instance, the term "Holiday Inn" originally denoted the kind of service offered but subsequently became unique as a well-known chain of hotels. This idea is essential to maintaining a balance between free competition and trademark protection because it prevents companies from monopolising widely used terms unless they establish a distinctive relationship with their brand.
This article examines the legal framework, judicial standards, and difficulties in establishing acquired uniqueness as it relates to secondary meaning as a requirement for trademark protection.
REQUIREMENTS TO ESTABLISH SECONDARY MEANING
The idea of secondary meaning acknowledges the possibility that words with a regular and distinctive meaning could start to be connected to a particular item. This secondary connotation is then used by the general public to distinguish a product. As an illustration, consider the commercials for McDonald's, Philips for electronics, and NESCAFÉ for coffee: "I'm lovin' it."
Before being deemed a trademark with secondary meaning, the mark has to be a recognisable brand for particular goods and/or services from just one source. In the future, this mark might be eligible for registration if you can demonstrate secondary meaning in accordance with the applicable trademark legislation once you've had enough use.
To be safeguarded, a trademark needs to be identifiable and distinguishable. The items or services must be differentiated from those provided by rival companies.
In order to prove that the mark—which at first lacked inherent distinctiveness—has gained consumer recognition, a few requirements must be met.
1) Continuous and Exclusive Use- Prolonged Usage: The trademark must have been continuously and widely used in relation to the products or services. To prove the mark's public exposure, it must be used consistently for a considerable amount of time.
Exclusive Use: One specific source should have been the exclusive association with the mark. It is essential to provide any proof that the mark is uniquely associated with a particular brand or place of origin.
In S. Syed Mohideen v. P. Sulochana Bai (2016), the Supreme Court of India observed that prolonged use of a mark is an essential element in proving secondary meaning, but it must also be accompanied by consumer recognition. The court emphasized that mere long-term use is insufficient unless the mark has come to symbolize the origin of goods or services.
2) Consumer Perception- Customer surveys: Empirical proof of consumer perception can be obtained through surveys and market research studies. These polls ought to show that customers identify the mark with a particular brand or source.
Advertising and Promotional Efforts: Documentation of noteworthy marketing initiatives, promotional events, and advertising campaigns that are closely associated with the mark can aid in establishing the mark's association with the company in the minds of customers.
The U.S. case of Coca-Cola Co. v. Koke Co. of America (1920) illustrated the importance of advertising in building secondary meaning. The court ruled that the extensive advertising and global reputation of the "Coca-Cola" mark established a strong association with the company, despite its descriptive components.
Another case, In ITC Limited v. Philip Morris Products SA (2010), the Delhi High Court considered survey evidence to determine whether the cigarette brand "Wills" had acquired secondary meaning in the Indian market. The court ruled in favor of ITC, emphasizing the value of empirical data in trademark disputes.
3) Sales Figures and Market Share- Sales figures can indicate the success of a mark in achieving consumer recognition. Courts consider the volume of sales, market share, and the geographical extent of operations to evaluate whether the mark has acquired distinctiveness.
Case Example:
In the case of Tata Sons Ltd. v. Manu Kishori & Co. (2001), the Delhi High Court acknowledged that the Tata brand had acquired distinctiveness due to its extensive business operations and dominant market presence in multiple sectors.
Challenges in Proving Secondary Meaning
1) Subjectivity in Judicial Interpretation - Proving secondary meaning is inherently subjective, as courts rely on factors such as consumer perception and brand reputation. Different judges may interpret similar evidence differently, leading to inconsistency in rulings.
2) Time and Cost Constraints- Establishing secondary meaning often requires businesses to provide extensive evidence, such as consumer surveys, sales data, and advertising records. Collecting and presenting this data can be time-consuming and expensive, especially for small businesses.
3) Risk of Over-Monopolization- Granting trademark protection based on secondary meaning raises concerns about over-monopolization. If commonly used words or phrases are monopolized by a business through trademark registration, it could limit competitors' ability to describe their products accurately. Courts must carefully balance public interest with trademark protection to prevent anti-competitive practices.
LEGAL PROVISIONS
The absolute grounds for rejecting a trademark's registration are outlined in Section 9(1), Absolute Grounds for Refusal of Registration. Trademark protection is typically not available for marks that lack distinctiveness or that characterise the intended use, attributes, or qualities of the goods or services. Section 9(1) does, however, offer an exception, allowing a mark to be registered if it has become distinctive through usage.
The Act's Section 9(3) offers an exemption to the absolute grounds listed in Section 9(1) regarding lack of distinctiveness. It says that if a mark becomes unique via usage, even if it doesn't have any inherent distinctiveness, it can still be registered.
The significance of secondary meaning and acquired distinctiveness in trademarks is acknowledged in this section.
Ching's Schezwan Chutney Case: Radiant Indus Chem Pvt. Ltd. vs. Capital Food Private Limited
A disagreement emerged regarding the use of the mark "SCHEZWAN CHUTNEY" in the lawsuit involving Capital Food Pvt. Ltd. and Radiant Indus Chem Pvt. Ltd. When Radiant Indus Chem Pvt. Ltd. introduced "MRS. FOODRITE SCHEZWAN CHUTNEY," Capital Food Pvt. Ltd., which is renowned for having created and independently used the trademark, filed a claim alleging infringement. Capital Food claimed that the defendant copied its packaging, advertising, and trademarks.
The court decided that "SCHEZWAN CHUTNEY" was a name used to describe a chutney that had a "Schezwan" flavour and was offered by rival companies in the market. The plaintiff, Capital Food Pvt. Ltd., claimed that "SCHEZWAN CHUTNEY" was not solely connected to their brand because they mostly used the phrase to describe the product and "Ching's Secret" was their identifying trademark, according to the court's ruling.
The court went on to say that if "SCHEZWAN CHUTNEY" was given protection, it might serve as a model for other descriptive phrases like "Tamarind Chutney" or "Tomato Chutney." As a result, the motion for an order prohibiting the defendant from using the word was turned down. The phrase failed to establish a secondary meaning uniquely linked with the plaintiff's brand, according to the court, which ruled that it lacked distinctiveness and was descriptive of the goods.
CONCLUSION
A key idea in trademark law is acquired distinctiveness, or secondary meaning, which allows companies to get trademark protection for otherwise non-distinctive marks. To determine whether a mark has acquired uniqueness, courts in India and other jurisdictions have created a number of standards. These include analysing sales statistics, advertising activities, customer recognition, and the length of usage. Even if these assessments offer insightful direction, problems persist in guaranteeing uniform meanings and preventing the monopolisation of popular terminology.
The developing awareness of the balance between public interest and trademark protection is reflected in the judicial trends observed in India. Businesses need to make branding investments as the business environment gets more competitive in order to develop a secondary meaning for their marks. Moving forward, courts must continue to refine their approach to secondary meaning, ensuring fair protection for businesses while safeguarding free competition and consumer interests.
