Descriptive Trademark , not entitled for protection A Case Study

Descriptive and Generic Trademark are considered to be poor Trademark. Though descriptive Trademark can be granted protection provided the party concern establishes the secondary significance. However generic Trademark can not be entitled to protection. Hence it is always advisable that a business man should avoid using those trade marks which are descriptive and generic in nature. Here are few case study where Descriptive and Generic Trademark were declined the relief of injunction.

 i.1977 SCC OnLine Mad 72 : AIR 1978 Mad 336: Nestle's Products (India) Ltd. Vs P. Thankaraja and another. 

 Applicant’s Trademark applied for was INSTEA in relation to Tea. 

The Court observed that first impression of the word INSTEA was that the word had something to do with tea and had something to do with instant. 

The Court equated the word INSTEA in relation to Tea with telescoped expression like “artsilk” for artificial silk, “Comintern” for communist international. 

ii. 1942 (54) RPC 127 Coca Cola of Canada Limited Vs Pepsi Cola of Canada Ltd. 

Trademark PEPSI COLA of the Defendant was registered in CANADA since 1906. 

Expression COLA was name of beverage itself. 

More than 31 others Parties were having Trademarks registrations containing the word COLA as suffix. 

iii. 1996 RPC 281 British Sugar PLC Vs James Robertsons & Sons Limited. 

Trademark of Plaintiff was SILVER SPOON TREAT. While Defendant was using the Trademark ROBERTSON’S TOFEE TREAT. 

Word Treat was written in very small font by the Defendant. 

iv. 2007 (35) PTC 697 (Bomb) Asian Paints Limited Vs Home Solutions 

Injunction was declined in Asian Paints Judgement on the ground that Trade mark HOME SOLUTIONS was descriptive and common to trade. 

v. 2010 (44) PTC 515 (Del) (DB) Rich Products Corporation & Anr Vs Indo-Nippon Foods Limited. 

The court held the Plaintiff’s Trade Mark WHIP TOPPING to be generic in relation to non dairy Topping. 

Trademark of the Plaintiff was RICH’S WHIP TOPPING while trademark of Defendant was BELLS WHIP TOPPING. 

Word BELLS was very prominently displayed on the Defendants packaging . 

The Plaintiff has failed to show any distinctiveness to the word WHIP TOPPING separately. 

vi. 2009 (39) PTC 627 (Del) Lowrenbrau AG and another Vs Jagpin Breweries Ltd. 

Plaintiff’s whole of the Trademark LOWENBRAU was disclaimed in registered Label in which device of Lion was also there. 

Plaintiff has not given Sales figure in India. 

Plaintiff’s Sales was intermittent and at miniscule label in India. 

Plaintiff and Defendant were both using the trademark LOWENBRAU for 100 years. 

The Defendant was protected being honest and concurrent user. 

vii. 2010 (MIPR) (3) 273: 2010 (44) PTC 381 (Del) Stokley Van Camp Inc. Vs Heinz India Pvt. Ltd. 

Plaintiff’s Trademark was REHYDRATE REPLENISH REFUEL in relation to ready to Drink. 

Defendant’s Trademark was REHYDRATES REPLENISHES RECHARGES. 

 Plaintiff asserted that the expression used by the Defendant to describe its product, is similar to Plaintiff’s expression. 

Defendant’s use of expression was held to be honest. 

viii. 2010 (44) PTC 736 (Del) (DB) Marico Limited Vs Agro Tech Foods Limited. 

Plaintiff’s Trademark was LOSORB in relation to Oil while Defendant’s Trademark was LOW ABSORB. 

Defendant were using expression LOW ABSORB TECHNOLOGY with their Trademark SUN DROP in much bigger font. 

Defendant was using the expression LOW ABOSRB as a part of Sentence as “WITH LOW ABSORB TECHNOLOGY”. 

Term LOW ABSORB TECHNOLOGY was defined under Rule 26A of the Prevention of Food Adulteration Rules 1955 . 

Plaintiff had filed a trade mark application bearing no. 1012561 dated 28.05.2001 for registration of its mark LOW ABSORB. 

ix. 2020(84) PTC 395 (Mad) (DB) ITC Limited Vs Nestle India Limited. 

Plaintiff’s Trade mark was SUNFEAST YIPPEE MAGIC MASALA. 

Defendant’s Trademark was MAGGI XTRA-DELICIOUS MAGICAL MASALA. Plaintiff’s Trade mark was not a registered Trademark. 

The Defendants have proved user by various third parties use of packaging containing the word MAGIC MASALA. 

The Court declined the injunction by observing that Plaintiff was using the term MAGIC MASALA only in order to indicate the kind of product. 

x. 2021 (86) PTC 437 (Del).Phone Pe Private Limited Vs. Ezy Services 

The Hon’ble Court held that the Plaintiff could not claim exclusivity on the word “PE” suffix as it was merely part of registered trade mark. 

Meaning of “PE” itself pay. 

Plaintiff and Defendant both were indulged in the activities of online payment. 

Disclaimer: This information is being shared in the public interest. It should not be treated as a substitute for legal advice as there may be possibility of error in perception, presentation and interpretation of facts and the law involved therein. 

Ajay Amitabh Suman,IPR Advocate, Hon'ble High Court of Delhi.

Email: ajayamitabh7@gmail.com, Ph No: 9990389539