Strength of a trademark lies in its distinctive qualities. The strongest trademarks are words that are fanciful, arbitrary and/or suggestive. Words that are descriptive and/or common may or may not be registered subject to the marks’ acquired distinctiveness or secondary meaning. The weakest trademarks are generic names of goods or services, which are not capable of being registered under the Trademark law.

The law regarding registration of descriptive marks is unequivocal. Descriptive marks are not afforded registration under section 9 of Trademarks Act, 1999 in normal circumstances. However, courts have interpreted that descriptive marks can be afforded registration in circumstances where the mark has acquired distinctiveness as a result of prolonged and extensive use. Therefore marks such as International Business Machine (IBM) for computers, Sharp for television, and Glucon-D for revitalizing beverage, among others, are or may be registered under these circumstances.

In Marico’s case1 , it was held by the Delhi High Court that: "when the descriptive trademark is used only by one person undisturbed for a very long period of time, without anyone else attempting to use the trademark during this long period time, a case can be established of a descriptive word having achieved distinctiveness and a secondary meaning." This strengthens the aforementioned proposition that descriptive trademarks are not allowed registration until there is a strong case of distinctiveness as a result of prolonged use.

The position of law regarding infringement of descriptive trademarks is also well settled. Generally, registration and monopolizing of descriptive marks is discouraged, if the said mark has not attained a secondary meaning. Consequently, decisions are pronounced against the trademark owner in such cases. In fact, based on the decision of Marico’s case, courts can even suo motto go into legitimacy of a trade mark even when defendant has not challenged the validity of Plaintiff’s mark. There are various other cases where the position of law regarding infringement of descriptive trademarks has been discussed. In the famous “Sugar Free” case2, Delhi High Court allowed use of the word “Sugar Free” to describe low-fat frozen dessert in a different font size. Since then, owners of trademarks like Skyline3, Krishna4, Rehydrate5, Micro6 and Low- Absorb have been knocking at the court to restrict competitors from using similar names.

Adopting a descriptive or otherwise weak trademark rather than a distinctive one is, however, a risky game to play. First, it can take many years to reach a stage of acquired distinctiveness and during this period there is no protection. Second, there’s no guarantee that a court will agree with your assessment that your mark has become distinctive through use- courts have, by way of example, held that Lotto was not a valid trademark for lottery services7 (descriptive). Third, even if you do get registration or judicial recognition of distinctiveness, your rights may in fact be very limited, and quite possibly restricted to the exact word or term, and litigation costs may shoot.

It is contended very rightly by scholars that the descriptive marks should be eliminated from trademark protection. This is because these marks inherently provide information regarding the product sold under the mark and do not identify the origin or source of a product as is done by a fanciful, arbitrary or suggestive mark. Descriptive terms rather retain their original descriptive meaning. Even if the public associate the descriptive phrase “Fair & Balanced” with Fox News, the slogan “Fair & Balanced” also advertises to consumers that the news organization using that term will provide fair and balanced news. Descriptive terms used as marks do not automatically or immediately signal a brand (unlike inherently distinctive marks) because they also function to describe the attributes of the product.

Furthermore, the current trademark law stifles the free flow of commercial information more than necessary when it protects exclusive rights both in inherently distinctive marks and descriptive marks. Free speech interests are harmed when competitors of Fox News cannot use the descriptive phrase “Fair & Balanced” as part of a slogan or domain name. Like generic terms, such as “News,” descriptive terms should be available for use by everyone in the industry. Commercial expression is suppressed more than necessary when trademark laws allow one company to register a descriptive term and enjoins its competitors from using the same.

Businesses do not need exclusive rights in descriptive marks to compete effectively in the marketplace. When selecting a mark, they can either coin a new word or choose a random word or combination of words from the dictionary that have nothing to do with the product. The trademarks “Kodak,” “Apple,” and “Tide” are all strong, distinctive marks, but they do not describe their products. Due to extensive advertising and sales, these brand now stand apart and are accorded the highest level of protection. Trademark law should encourage companies to use inherently distinctive marks because these marks instantaneously tell a customer that the term refers to a brand name, not a product attribute. Instead, current law creates an incentive to use descriptive marks because the “prior user” of a descriptive term as a mark can obtain exclusive rights in that term and use the mark to quickly and cheaply provide consumers with information regarding attributes of the product.

Descriptive marks should be sparingly used. No business should be given monopoly in descriptive or generic marks. When a descriptive term is used as a trade mark, it should be within the understanding that the mark is conceptually weak and it will be entitled to very narrow scope of protection. The end result likely will be the inability to prevent competitors to use the descriptive term. Laws should be fashioned in such a way so as to prevent registration and enforcement of exclusive rights in descriptive marks.


Surana & Surana International Attorneys

1 Marico Limited V. Agro Tec Foods Limited, (Os) No. 352/2010
2 Cadila Healthcare Ltd. v. Gujarat Cooperative Milk Marketing Federation Ltd. & Ors’ 2009 (41) PTC 336 (Del.)
3 Skyline Education Institute vs S.L.Vaswani on 5 January, 2010 civil appeal nos.1360-1361 OF 2005
4 Bhole Baba Milk Food Industries Ltd. V. Parul Food Specialities Pvt. Ltd. 2011 (48) PTC 235 (Del.) (DB)
5 Stokely Van Camp, Inc. V. Vs Heinz India Pvt. Ltd., Delhi HC, IA No.3646/2010 (Under O.39 R.1 & 2 CPC) In CS(OS) 514/2010
6 Micronix India vs Mr. J.R. Kapoor, 2003 IVAD Delhi 524, 105 (2003) DLT 239
7 On-line Lottery Services (Pty) Ltd v National Lotteries Board [2009] 4 All SA 470 (SCA)

Only a few days after the terrible terrorist attacks that occurred in Paris on the January 7th, targeting firstly the French satirical weekly newspaper Charlie Hebdo in Paris, several Trademark Offices worldwide received dozens of trademark applications for the slogan “JE SUIS CHARLIE” (“I AM CHARLIE”), which have become in minutes the rallying slogan in tribute to the victims and to the freedom of speech, claiming the refusal of all kind of violence. These exceptional circumstances had led some of the Trademark Offices to emit exceptional statement regarding their practices about trademarks.

Indeed, applicants tried to take advantage of this slogan created by Joachim Roncin through a Twitter message to create a morbid and immoral “Charlie business” based on selling T-shirts and all types of products or services wearing “JE SUIS CHARLIE”. Not only has the public been shocked by hearing about the existence of these applications, but also when the news detailed that some claimed the protection of the slogan to distinguish firearms.

Therefore, in this context of collective emotion, the French Patent and Trademark Office (the INPI) issued a statement and decided to purely deny and reject all applications containing the expression “JE SUIS CHARLIE” or making reference to it. More precisely, the INPI declared that this decision was based on the fact that the phrase lacks the necessary distinctive character due to its wide use by the public, and consequently the slogan can’t be owned exclusively by one economic actor in the market. It’s remarkable to say that the policy of the National Offices is to not comment on any individual cases of trademark application, either before examination or at any stage of the procedure.

If it is clear that the conclusion of the INPI is morally correct, the reasoning may be debatable in some respects. Indeed, "JE SUIS CHARLIE" should be considered as a distinctive trademark, as it is not used in common nor professional language, as well as it is not the necessary, generic or usual designation of products or services like clothing for instance. Moreover, “JE SUIS CHARLIE” is not referring to any characteristic of a product or a service, nor it defines the design of a product. Therefore this phrase should be considered as distinctive.

The OHIM, in another official statement, chose a better argumentation by considering that the IP issues surrounding the registration of the "JE SUIS CHARLIE" mark could be considered to be of overriding public interest and by affirming that such applications would probably be subject to an objection due to the fact that the registration of such a trade mark could be considered "contrary to public policy or to accepted principles of morality" and also as being devoid of distinctive character. We consider that, even if the French INPI’s position is morally valid, the basis of its reasoning should have been the public policy and the morality, as it is clear that granting a “JE SUIS CHARLIE” trademark would have as a result a certain restriction of freedom of speech of the citizens.

Oscar A. Mago Carranza,
IP Specialist Lawyer

OMC Abogados & Consultores, Peru