When it comes to trademarks, generic words are common, everyday words or terms that depict the very essence of a product or service. Think "email" or "cereal." These words are inherently generic, offering no distinctiveness to a single source. The Indian legal system wisely withholds trademark protection for such terms unless they fulfil certain conditions to avoid the establishment of unwarranted monopolies.

 

Attempting to trademark a generic term, such as "accounting firm," proves futile. Singular usage cannot elevate it beyond its generic category. Therefore, while selecting a trademark, one should steer clear of generic words or terms. A trademark's purpose is to signify origin and safeguard uniqueness. Embracing generic words only dilutes this purpose, leaving products and services undifferentiated.

When Are Generic Words Not Allowed?

Section 9(1) of the Trademark Act, 1999 (the "Act") explicitly bars registration of commonly used words in the local language, terms describing qualities of goods and services, and words customary in trade practices.

 

Registration of everyday words such as "chair", "company", "finance", etc. is not allowed unless certain conditions are fulfilled. The rationale is to prevent exclusive rights over commonplace language. Additionally, terms like "fresh", "best", or "super", which are laudatory in nature, and/or describe character or qualities, are also ineligible for registration.

 

Illustratively, in the case of Mr A.D.Padmasingh Isaac and M/s Aachi Masala Foods (P) Ltd v Aachi Cargo Channels Private Limited, the Madras High Court held that 'Aachi,' the Tamil word for "grandmother", could not be exclusively claimed by a single entity. This underscores the Act's intent to protect commonly used words.

 

Similarly, in the case of Bhole Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd, the plaintiff was a dairy products manufacturer and filed a suit against the defendant’s trademark 'PARUL'S LORD KRISHNA,' contending that 'KRISHNA' had acquired secondary meaning in relation to their milk products.

 

However, the Court held that name of the deity, i.e. Krishna, cannot be monopolised by the plaintiffs. The Court emphasised that the appellant's registration pertained to the distinct form of the entire label, not just the word 'KRISHNA,' which had common origins. Consequently, the Court concluded that the appellant's claim lacked merit, leading to the dismissal of the appeal.

 

The Act also refuses to grant protection for words that are of a descriptive nature. The case of Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors is a classic example of the challenges of claiming exclusivity over words having reference to the character, quality, and nature of the relevant goods/services as trademarks. Cadila introduced 'Sugar Free' as a sugar substitute in 1988 and claimed it as their exclusive mark. Gujarat Co-operative adopted 'Sugar Free' for their frozen dessert but argued they were using it descriptively, not as a trademark.

 

The Court acknowledged Cadila's substantial market share but disagreed that 'Sugar Free' was a coined term. It evaluated the term's distinctiveness among consumers and found it well-established within specific groups. However, since it could be used descriptively, the Court denied a complete injunction. Instead, Gujarat Co-operative was asked to reduce the font size of 'Sugar Free' in relation to their product's trademark. When trademarks remain distinctive, consumers can make informed choices and promote fair competition in the market.

When Are Generic Words Accepted As Trademarks?

While the norm is that generic words should not be allowed registration, the following are exceptions to the same:


  • If a generic term has gained distinctiveness through consistent and prolonged usage before the application for trademark registration is filed.



  • If a generic word is combined with another term to form an arbitrary mark, detached from its generic meaning, such as Microsoft, Netflix, Starbucks etc.



  • If the generic word does not have any reference to the relevant goods or services. For example, use of the word Singer for sewing machines, Camel for cigarettes, etc.



  • Lastly, Section 32 of the Act offers an avenue for generic words, registered against the provisions of Section 9, to earn trademark protection. If such a word becomes distinctive between the date of registration and the time it is legally challenged, it can qualify for protection under Section 32.


 

In the case of Info Edge (India) Pvt. Ltd. and Anr. v. Shailesh Gupta and Anr., the term 'naukri' (meaning 'job' in English) underwent scrutiny. The plaintiff demonstrated that its unique use of a Hindi word in English script since 1997 granted the word 'naukri' distinctiveness and secondary meaning. Despite the defendant's claim that 'NAUKRI.COM' was descriptive, the Court recognised the plaintiff's reputation, issuing an injunction against the defendant's usage of the said word. This case clearly illustrates how generic words can evolve into trademarks.

 

Also, when a generic term bears no relation to the relevant goods or services, it can still gain trademark protection. This provision allows generic terms to earn safeguarding through prolonged use, acquiring distinctiveness over time. Notably, a term's generic nature may differ depending on the product. For example, "Apple" is generic for fruit but not for smartphones due to its tech giant association. This safeguard ensures fairness, preventing monopolies by enabling generic words to evolve into protected trademarks based on acquired distinctiveness.

Understanding Trademark Genericide

Trademark genericide occurs when a trademark loses its distinctiveness and transforms into a generic term in respect of the particular product or service. For example, "Band-Aid" was once a registered mark but now represents adhesive bandages generically. Similar examples would include Yo-yo, Dalda, Velcro, etc.

 

Such trademarks lose legal protection as they fail in their fundamental role of distinguishing goods or services of one entity from those of the others. Three main types of generic trademarks exist:


  • Genericized Marks: Initially legally protected trademarks that lost their distinctive character and legal status due to widespread use as generic terms. Examples include "aspirin" and "escalator."


  • Abandoned Marks: Trademarks that were once protected but have been abandoned, leading to their transformation into generic terms. Popular examples of this type would be "Yo-yo" and "thermos".



  • Legally Protected Marks: Some marks, like "Xerox," maintain their legal protection in specific jurisdictions because their owners vigilantly prevent genericization through constant enforcement.


 

Despite the prevalence of genericide, the legal framework regarding the rights of affected businesses remains uncertain. The potential loss of trademark protection due to genericide presents challenges for companies seeking to protect their brand identities in a language-driven market. Proactive measures are essential to safeguard trademarks from becoming generic and to preserve a brand's distinctiveness and reputation.

 

To safeguard a mark's distinctiveness and legal protection, it is essential to consider the following:

  • Characteristic Modifier: Companies can add a unique descriptor or characteristic modifier to their brand name. This helps maintain trademark significance and distinguish their products from others. Examples include "Apple Computers" and "Coca-Cola Beverages."


  • Avoiding Generic Use: Companies must educate the public and actively enforce their mark's proper use to prevent genericization.


  • Global Variations: Trademark laws vary by jurisdiction, necessitating international brand protection strategies.


 

How can one prevent trademark genericide?


  • Use the trademark only to indicate the connection between the goods or services with its proprietor. The trademark should not be used interchangeably with the goods or services. For example, the correct usage is “get a photocopy” and not “get a Xerox”
  • Create clear brand guidelines for proper usage
  • Display the ® symbol for registered trademarks
  • Take immediate action against incorrect third-party usage
  • Consider running a marketing campaign to raise awareness and educate the public

 

Selecting distinct and protectable trademarks is crucial for businesses. Commonly used words, and descriptive terms lack the required distinctiveness for trademark protection. To ensure legal safeguarding, businesses must choose unique identifiers that can distinguish their goods/services from competitors. Additionally, building strong brand recognition and consumer association enhances a mark's distinctiveness. By making thoughtful and strategic choices in trademark selection, businesses can safeguard their brand identity and enjoy the benefits of exclusive rights and protection under Indian trademark law.