The Significance of Acquired Distinctiveness in Trademark Protection
Introduction
A Trademark is a sign, symbol, or word that is used to distinguish a product or service from others in the market. In legal terms, a Trademark is a registered symbol that represents a company or product. To prevent competitors from utilizing a company's brand identification for their goods or services, Trademark protection is crucial for businesses. On the other hand, getting Trademark protection might be difficult, particularly if the Trademark is generic or descriptive. This is where the concept of secondary meaning or acquired distinctiveness comes into play. This article will explain what secondary meaning is and how it can be used to obtain trademark protection.
What is Secondary Meaning or Acquired Distinctiveness?
Some Trade Marks are distinctive from the beginning due to fundamental qualities, and they are legally protected as soon as they are used as a trademark, while other marks receive protection because of a secondary meaning that evolves through time. Acquired distinctiveness is also known as secondary meaning. Secondary meaning or acquired distinctiveness is a legal term used to describe the ability of a trademark to identify and distinguish a product or service in the marketplace. In simple words, it is the process through which a brand acquires a distinctive identity in customers' minds after initially being devoid of any identifying traits. This occurs when the source of the products or services that a brand represents has more importance to the general public than the product or service it stands for.Acquired distinctiveness differs from inherent distinctiveness in that the former is fundamental to the mark, such as a coined word, while the latter is produced by the?use.
For instance, "Band-Aid" is a brand of adhesive bandages. The word "band-aid" has become so associated with the specific brand that it has acquired a secondary meaning as a descriptor of any type of adhesive bandage. Also, "Xerox" is a brand of photocopier. The word "Xerox" has become so associated with the specific brand that it has acquired a secondary meaning as a verb that describes the act of making a photocopy, regardless of the brand of the photocopier. These original brand names now relate to the actual product after diluting to this extent. This is acquired distinctiveness.
When determining whether a trademark has acquired secondary meaning or acquired distinctiveness, the Indian Trademark Office takes into account several factors, including the length and manner of use, the type and extent of advertising and promotion, the volume of sales, and the number of customers, as well as the degree of exclusivity and distinctiveness of the mark.
The creation of Secondary Meaning
It might be difficult to establish secondary meaning, yet it is necessary to secure trademark protection. The following are some elements that?support the development of secondary meaning:
SECONDARY MEANING AND ACQUIRED DISTINCTIVENESS UNDER THE TRADEMARK ACT, 1999
Section 9(1) (b) of the Trade Marks Act, 1999[1] states “The trademarks which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.” Whereas Section 9(1) (c)[2] of the Act states “The trademarks which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.”
It means that a trademark’s registration should not be rejected if it has developed a distinctive character as a result of its use before the date of application for registration. The Act acknowledges that a mark that is initially non-distinctive can become distinctive by the use of products or services, and as a result, acquire the capacity to identify the goods or services of a specific source. The idea of acquired distinctiveness is recognized by Section 9(1) (b) of the Act.
Section 32 of the Trade Marks Act, 1999[3] provides for the submission of evidence of the use of a trademark in proceedings for trademark registration or infringement. It is a crucial provision for establishing the acquired distinctiveness or secondary meaning of a trademark as it provides an opportunity to demonstrate the long-term use of a trademark and its association with particular goods or services, which can be used to prove that the mark has acquired a distinctive character or secondary meaning.
The concept of a “well-known” trademark is closely related to the topic of secondary meaning or acquired distinctiveness in trademark law. Section 2(1) (zg) of the Trademarks Act, 1999[4] defines that “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. ?Examples: Coca-Cola, Nike, and McDonald's.
In Marico Limited vs Agro Tech Foods Limited on 1 November 2010[5]case, the Delhi High Court held that a mark that has become well-known about certain goods or services can also be protected against use about other goods or services, provided that the use of the mark about those other goods or services is likely to cause confusion or deception. The court also held that to establish a well-known mark, the owner must show that the mark has acquired a substantial reputation in India through its use or promotion.
Although the concepts of secondary meaning and acquired distinctiveness of trademarks are not directly stated in the Act, their application has been established using Sections 9 and 32 of the Act. Despite not being mentioned specifically, the clauses have been generously interpreted by various Courts to permit the effective use and protection of Trademark rights. Several landmark cases in Indian trademark law have dealt with the concepts of secondary meaning and acquired distinctiveness. Here are some examples:
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These cases highlight how crucial it is for Indian trademark law to establish secondary meaning and acquired distinctiveness, especially when competitors use confusingly identical marks. They also draw attention to the fact that, if used and promoted consistently in commerce, even descriptive or generic phrases can develop a secondary meaning and become protectable trademarks.
Conclusion
In conclusion, acquired distinctiveness and secondary meaning are essential ideas in Trademark Law that enable businesses to safeguard their brand identity and reputation. While some trademarks are distinctive by nature, others may eventually accomplish so with time, consistent use, and marketing in the marketplace. Sections 9 and 32 of the Trademarks Act 1999, despite not being explained in detail, the provisions have been interpreted by various Courts and construed liberally to allow for effective usage and protection of trademark rights. In determining whether a mark has acquired a distinctive character because of long and continuous use, the competent authority must evaluate the overall evidence that the mark has come to identify the product concerned as originating from a particular source.
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This article is written by Divya Verma, student of Law College Dehradun.
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