Trade Mark Distinctiveness: A Global Perspective

What is distinctiveness?

The general understanding of ‘distinctiveness’ is that it refers to something that is easily
recognizable from something else of a similar nature. The word ‘distinctiveness’ denotes the difference between two or more things. It allows the mind and eye to judge the uniqueness of a particular thing compared to others.

Why do trademarks require distinctiveness?

Distinctiveness is an extremely important concept for trademarks. A strong and distinct
trademark indicates a valuable asset for any proprietor. A distinct trademark has the ability to raise the reputation and goodwill of any company by making an eminent foothold in the minds of customers. A trademark is only eligible for registration as long as it is distinct. The distinctiveness of a trademark is not easily judged by the naked eye; rather many more voluminous factors need to be considered to award a trademark with distinctiveness. Some parameters to determine the distinctiveness of a trademark are- extent and period of use, goodwill and association in the minds of customers, investments on advertisements, recognition in trade circles, channels
of distribution and the relevant class of customers. The more distinctive a trademark is the more legal protection it receives. This is because the distinctiveness of a trademark allows a lesser chance of misrepresentation and customer confusion. If a trademark is distinct from another, customers will be able to easily distinguish the different marks and associate them with their respective companies. A trademark that is ‘capable’ of being distinguished from other goods and services.

Spectrum of distinctiveness-

Fanciful marks- those marks that have accorded the highest amount of distinctiveness hence receiving the most protection. It consists usually of inventive words or phrases. It is distinctive from anything else that exists and is the easiest to adopt due to the non existence of any competing mark. Examples of such marks are Kodak, Xerox, Nike, Adidas etc.

Arbitrary marks- those marks which are placed second on the spectrum of distinctiveness. It refers to a word or phrase that is well-known but has no relation or meaning to the particular goods or services. For example, ‘Apple’ is a familiar word but when used in context of electronics it has a different meaning. Due to the disassociation of a word from its literal meaning, a mark can get a high level of protection on the ground that it is distinct enough.

Suggestive marks- those marks which hint at or indicates information about the good or
service. A customer must use his/her imagination to associate the mark with the kind of good or service offered by the company. For example, Jaguar, is an animal that is known for its speed and hence when used in context cars it suggests that the car is distinctively known for its speed and agility.

Descriptive marks- those marks which are weaker on the spectrum of distinctiveness. Such marks are not automatically distinctive until it settles in the minds of customers. It describes certain fundamental characteristics of goods and services. For example, ‘coca cola’ describes that the product has some association to cocoa products.

Generic marks- the weakest on the spectrum of distinctiveness and for which registration is extremely tough. It uses common or colloquial words that do not particularly associate itself with a particular brand or company. They are usually ineligible for trademark protection. For example, “the ice-cream shop” is too generic and if awarded trademark protection it would restrict all other shops that sell ice cream.

Hence, on the basis of the spectrum of distinctiveness, it is effortless to stat that the more fanciful or arbitrary the mark is, the better are the chances of a mark getting trademark protection due to the invariable distinctiveness it holds. Such distinct marks allow the registrant to steer clear of any infringement suits as well.

Inherent and Acquired distinctiveness-

When trying to categories distinctiveness, inherent and acquired distinctiveness play an
extremely important role in order to defend a mark. If a mark has inherent distinctiveness it is much easier to protect it as it qualifies for utmost protection. On the other hand, marks that have acquired distinctiveness can also be protected to a great extent as long as the distinctiveness can be proved and it can also be proved that due to such long term use customers identify the source of the company as the source of such product. In cases of inherent distinctiveness, the uniqueness of a mark is obvious and born with the conception of the mark and remains so in permanent form. However, in cases of acquired distinctiveness, over time with use and association of the public, a mark becomes distinct and acquires such status of distinctiveness. Referring to the spectrum of distinctiveness, Fanciful, Arbitrary and Suggestive marks have an Inherent distinctiveness whereas Descriptive and Generic marks have an acquired distinctiveness.

Foreign perspective on distinctiveness-

In the United Kingdom, no mark can be registered if it is devoid of distinctive character.
Other factors taken into account to test the distinctiveness of a mark are- market share,
investment in marketing, long term use of the mark, assessment of distinctiveness from the point of view of an average customer etc. A mark is considered inherently distinctive in the UK if customers are automatically directed towards the origin of a product without having to be taught or told about it. A mark can also receive protection if it has acquired
distinctiveness over a substantial part of the geographical territory.

In China, the Trademark authorities clearly address the term “distinctiveness”. It rejects
marks which state only generic names, devices or model numbers of products and those
marks which directly indicate the quality, key ingredients, purposes, functions etc and any other marks or situations that lack distinctiveness according to the standards issues jointly by the Trademark Office and The Trademark Review and Adjudication Board.

In Germany, the same rule as the UK is followed where judgement of distinctiveness is
placed upon the customers. Most cases are rejected after a strict examination in Germany due the lack of distinctiveness. If a mark lacks an inherent distinct character, distinctiveness needs to be proved by way of usage which can be evidenced by market surveys.

In Canada, distinctiveness is the most important aspect of a trademark. It is not necessary for the mark to be well known or famous, however distinctiveness is judged in the marketplace as to whether a mark can be distinguished from another source even if it is not well known. Canadian courts rely on three points to determine the distinctive character of a mark. Firstly, the mark and the product should be associated, secondly, the owner uses such association to manufacture and sell his product and thirdly the association enables the owner of the mark to distinguish his products from those of others. Inherent and acquired distinctiveness are not given much weightage to determine whether a mark deserves protection or not. However, in Canada, distinctiveness is not a fixed asset of any mark. A mark may lose its distinctiveness if there has been improper assignment or licensing of the said mark or if it becomes generic or too common for association. Therefore, in the event of a dispute, the distinctiveness of a trademark is the best and highest defense for any owner to further protect his mark. Most of the countries globally have a common understanding of distinctiveness and some judge it through interpretation in cases while some have it codified in their trademark legislations to avoid any other interpretation of the term with regard to trademarks.

In the case of Peps Industries Pvt Ltd V. Kurlon Ltd, distinctiveness has been explained to mean “such use of a trademark with respect to the goods of a person that the public will immediately and un-mistakably correlate the mark with a source or a particular manufacturer or owner thereof”

In the 1977 case of Imperial Tobacco Co. of India V. The Registrar of Trademarks, the
Calcutta High Court held that distinctiveness means “some quality in the trademark which earmarks the goods so marked as distinct from those of other producers of such goods” Hence, it can be seen that the interpretation of distinctiveness of a trademark even though deeply rooted in section 2 (zb) of the Trademarks Act, 1999 has been interpreted differently in a 1977 case and in a 2020 case. India relies on the elucidations of courts to prove distinctiveness of marks; however such explanation is constantly changing but standardly means something that can be distinguished from another. Some place reliance on the public for proof of such distinct character, while the rest rely upon other business factors.