TRADEMARK DISTINCTIVENESS AS A FOUNDATIONAL STONE FOR THE REGISTRATION OF A TRADEMARK
Written by Aayushi Aman [St. Xavier’s University Kolkata}
In this global economy with cutthroat competition between enterprises, every enterprise wishes to strive for excellence. There are thousands of producers producing a particular product and this is when a consumer has difficulty of choice. A trademark is, therefore, that identity proof which a consumer looks for while choosing a particular product or a particular producer. Deceptive practices are common in the economy which may lead to infringement of a trademark. Any enterprise can protect its trademark from infringement through registration. But, can all trademarks be registered? The answer is No. Only and only Trademarks that are distinctive can be registered. Thus, distinctiveness is the hallmark of the law of trademark
In this blog, we’ll discuss 1) the meaning of distinctiveness 2) the statutory reference of distinctiveness 3) the importance of distinctiveness 4) what is the role of distinctiveness in trademark registration 5) how distinctiveness can be evaluated 6) the test of acquired distinctiveness 7) judicial pronouncements regarding the distinctiveness of trademark.
Meaning of Distinctiveness
In simplest way , Distinctiveness would mean the quality or state of being different . Distinctiveness has not been defined per se under the Indian law on Trademarks but is one of the criteria for registration of Trademarks. In fact, a trademark would be considered a good trade mark when it is distinctive. In a landmark case of M.R Verma v. William Hollins & Co. Ltd , the court held that distinctive character must mean some mark which distinguishes the goods to which it is attached on those made or sold by the persons who uses the mark. In another landmark case of Imperial Tobacco Co. of India Ltd. V. Registrar of Trademarks , the word distinctiveness was held to be some quality in the trademark which earmarked the goods marked as distinct from those of other products or such goods.
Statutory reference of distinctiveness
Under s.2 (zb) of the Trademarks Act,1999 which defines a Trademark as ‘a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours’ , we find the mention of the words ‘capable of distinguishing’ and hence, the concept of distinctiveness is enshrined in the definition of Trademark itself. Moreover to refer to ‘Distinctiveness’ the words, ‘Distinctive’ and ‘Distinctive character’ has been used in the Act. wS.9 of the Trademarks Act 1999 , which talks about the Absolute grounds of refusal of registration. Under (1)(a) of this section , it is clearly stated that Trademarks which are devoid of any distinctive character shall not be registered. Distinctive character here means capable of distinguishing and both can be synonymously used in place of each other.
Importance of Distinctiveness
The Trademark Act is based on the premise that one good can have only one origin, just as one man has one mother. Trademark of a good serves as identification of the origin of the good and assures the quality promised. It is therefore important to distinguish two goods so as to determine their origin and prevent any unfair competition or deceptive practices in the market. Distinctiveness may be class dependent and may be inherent or acquired.
Role of Distinctiveness in Trademark Registration
As already mentioned above , a Trademark can be registered only if has distinctive characteristics ie; it is capable of distinguishing the goods and services of the applicant from the goods and services of others. Thus, distinctiveness can be said to be an important criterion for registration. However, it is not by itself sufficient a criteria for registration and there are other factors that play a role as well.
Evaluation of Distinctiveness
Distinctiveness may be inherent. Examples of Inherent distinctiveness can be invented words or non-descriptive words. Apart from inherent distinctiveness, distinctiveness can be acquired over a period of time if it is not inherently distinctive. However, no minimum period of the 7 users has been mentioned in the Trademarks Act of 1999.
Acquired distinctiveness has to be proved by the applicant through evidence. It is on the courts to decide that to what extent they would require the proof which will further depend on the nature of the case. There is no hard and fast rule about the period of time. In the Imperial Tobacco case , it was observed that each case will depend upon the circumstances, and the evidence brought in support of the acquisition of distinctiveness.
Test of Acquired Distinctiveness
The parameter to test the acquired distinctiveness, the mark when applied to the goods should indicate to the buyer that they are the goods of a particular person and not of any other person. A word or words to be really distinctive of a person’s goods must generally speaking be incapable of application to the goods of anyone elseMoreover, an overall assessment of the evidence should be made in order to determine acquired distinctiveness. The extent of evidence depends upon the extent of the lack of distinctive character in the mark itself. s. 129 of the Trademarks Act 1999 states that evidence of the user of a trademark or of its acquired capacity to distinguish must be given by affidavits. Apart from the applicant’s affidavit, affidavits by dealers and consumers from different parts of territories over which the user is claimed in the affidavit.
Trademark works as an image for the business. For a business to stand out from others and to be able to stay in competition must get it’s trademark registered so that it can be enjoyed without interruptions. A good trademark is one which Is distinctive from that of the other. Thus, Distinctiveness is an important component of a Trademark to be registered.
 Dr. B L Wadehra , Law relating to Intellectual Property, Fifth edition2011
 Merriam Webster Dictionary
 AIR 1947 Lah 29
 AIR 1977Cal 413: 81 CWN 885
 Imperial Tobacco v Registrar AIR 1977 Cal 413 at 422,423