Introduction
The goal of trademark law is to safeguard the public from confusion and the business of trademark owners. A mark to be registered must be a distinguished product for which the courts have created various spectra under which the protection can be granted. In between these spectrums lies the two categorizations, the descriptive and the suggestive marks. These two categories are the focus of litigation. A descriptive mark explains the good or service that a company is providing. As an illustration, “Soft & Comfortable” would describe a range of apparel manufactured from soft and comfy fabrics, but suggestive markings are more inventive and creative than descriptive marks. These symbols instead indicate the nature or quality of the commodity or service. For example, “Apple” suggests a fresh, modern, and innovative branch.
Against this backdrop, the Delhi High Court has recently in the judgment of LT Overseas North America INC and ANR. V. KRBL LIMITED1, has tried to settle this paradox between descriptive and suggestive marks.
1Lt Overseas North America Inc and Anr. vs. Krbl Limited CS (COMM) 347/2022.
Legislative Framework
Absolute grounds for refusal of registration of trademark :
The trademarks –
- “which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
- 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;
- 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 trademark 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.”
LT OVERSEAS V. KRBL LIMITED: A STEP IN THE CORRECT DIRECTION
A) FACTUAL BACKGROUND
LT OVERSEAS NORTH AMERICA (hereinafter referred to as the plaintiff), who are in the business of processing and marketing rice, filed an application against KRBL LIMITED (hereinafter referred to as the defendants), praying for restraining the defendants from using the mark “ZABREEN ROYAL” since it is identical/similar to that of the plaintiff’s mark “ROYAL” and hence resulting in infringement or passing off or dilution of the plaintiff’s marks.
The plaintiff’s case is that they are the registered owners of the device and label mark of “ROYAL” which has acquired a lot of goodwill and reputation in the market and consumers at large and are hence aggrieved by the adoption of the mark “ZABREEN ROYAL” by the defendant.
B) ARGUMENTS OF THE DEFENDANT
The defendant stated that because it expresses the high quality of the rice, using the phrase “ROYAL” in a laudatory and descriptive sense coupled with the mark “ZABREEN” to indicate the royal quality of the rice having long grain, the marl cannot cause confusion. They added that there was no infringement because the plaintiff had been granted registration for device marks, not for the word “ROYAL,” which the plaintiff claimed to own.
C) ARGUMENTS OF THE PLAINTIFF
1 Bata India Limited v. Chawla Boot House and Ors MANU/DE/1368/2019.
D) FINDING OF THE COURT
The Delhi Court relying on the “McCarthy on Trademarks and Unfair Competition” observed that the most famous test to identify whether a mark is ‘descriptive’ or ‘suggestive’ is the “Imagination Test.” As per this test, the more imagination a customer has to do to get the description of the products, the more likely is the term ‘suggestive’. A descriptive term directly and clearly conveys information about the products, whereas a suggestive mark indirectly suggests the product information.
The second test that the court pointed out was the “Competitors Need Test,” according to which the word which is more likely to be required by the competitors to describe the goods is descriptive; otherwise, it will be suggestive.
E) JUDGEMENT
1 Bata India Limited v. Chawla Boot House and Ors., MANU/DE/1368/2019
2 Procter and Gamble Manufacturing Co. Ltd. v. Anchor Health and Beauty Care.2014 SCC OnLIne Del 3374.
Conclusion
The line separating descriptive and suggestive signs can occasionally be hazy and challenging to establish. These two standards, which the court restated in the cases of LT Overseas North America INC and ANR. V. KRBL Ltd (supra), can be used to determine whether a mark is suggestive or descriptive. Examining the level of creativity or individuality involved in the mark can help you distinguish between descriptive and suggestive markings. Typically, descriptive marks are simple and factual, whereas suggestive marks ask for a creative leap to link the mark to the good or service. At the end, each case’s unique facts and circumstances will determine whether a mark is suggestive or descriptive.
This Article is Written by Mr. Aaryan Dwivedi who is the student of Gujarat National Law University interning at SJLC.
