Trademark Registration for Descriptive Marks: Challenges and Strategies
Introduction To Trademark Registration for Descriptive Marks
In the world of branding and business identity, trademarks play a crucial role in distinguishing products and services in the marketplace. While arbitrary and fanciful trademarks often enjoy smooth registration, descriptive marks face a tougher path under the Indian Trade Marks Act, 1999 and globally. Understanding what constitutes a descriptive mark, the challenges it faces during registration and the strategies to overcome such hurdles is essential for any business aiming to protect its brand effectively.
What Are Descriptive Marks?
Descriptive marks are trademarks that directly describe a quality, characteristic, function, ingredient, purpose or feature of the goods or services they represent. For instance, a term like “Cold & Sweet” for ice creams or “Fast Delivery” for courier services simply tells consumers what the product or service is, rather than indicating its unique origin.
Such marks fall under Section 9(1)(b) of the Indian Trade Marks Act, 1999, which bars the registration of marks that are descriptive and lack distinctiveness.
Why Descriptive Marks Face Rejection?
Trademark law aims to prevent unfair monopolies over common language that other traders may need to use. Descriptive terms are considered part of the everyday vocabulary that all businesses should be free to use to describe their offerings. Granting exclusive rights over such words can restrict fair competition and mislead consumers.
As a result, the Trade Marks Registry is often reluctant to register descriptive marks unless they have acquired distinctiveness through use, also referred to as secondary meaning.
Acquiring Distinctiveness: The Key to Success
A descriptive mark may still be registered if the applicant can prove that the mark has acquired distinctiveness by virtue of extensive, continuous and exclusive use over time. This is where Section 9(1)(b) proviso comes into play, which allows registration of a descriptive mark if it has acquired a distinctive character as a result of use.
Key factors to establish acquired distinctiveness include:
- Long-term use: The mark must have been used for a significant number of years.
- Sales figures and turnover: High-volume sales can support claims of wide recognition.
- Advertising and promotion: Evidence of consistent and widespread marketing.
- Media coverage and customer recognition: Articles, news mentions and customer testimonials.
- Survey reports: Independent market surveys showing consumer association with the mark.
Examples of Descriptive Marks That Gained Registration
Some well-known descriptive marks have eventually been registered after acquiring distinctiveness. For example:
- “Fair & Lovely” (now rebranded as “Glow & Lovely”)
Goods: Skin whitening cream
Nature: Directly descriptive of the effect promised by the product, but allowed due to massive public association with the brand.
- “Lifebuoy”
Goods: Soaps and disinfectants
Nature: Descriptive of a life-saving device; however, due to prolonged and exclusive use, it acquired secondary meaning.
- “Sugar Free”
Goods: Sugar substitute tablets and powders
Nature: Descriptive of the product type, but granted registration due to the mark acquiring a secondary meaning through long-term usage and consumer recognition.
- “Kwality”
Goods: Ice creams and dairy products
Nature: Misspelling of the word “quality” — semi-descriptive — but distinctiveness achieved via branding.
- “Good Knight”
Goods: Mosquito repellents
Nature: A play on “good night” — descriptive of night-time use but distinctive through brand recognition.
Tips for Applicants Trying to Register Descriptive Marks
- Avoid descriptiveness if possible: Choose marks that are suggestive, arbitrary or fanciful instead of directly descriptive terms.
- Combine with distinctive elements: Adding a unique logo, stylization or coined word can help.
- Use consistently and prominently: Build strong brand recognition through consistent usage.
- Maintain records of use: Keep advertising, sales, invoices and promotional material for future evidence.
- Consider disclaimers: In some cases, the Registry may accept the mark with a disclaimer for the descriptive portion.
Conclusion
Registering a descriptive mark is challenging but not impossible. While the law places strict limitations on such marks to preserve fairness and competition, it also provides a path for those who have truly built a brand around a descriptive term. Businesses aiming to register such marks must be prepared with strong evidence and a strategic approach. If done correctly, even a descriptive mark can achieve the status and protection of a registered trademark, offering valuable brand identity and legal rights.
For expert assistance in registering your descriptive mark, it is advisable to consult an experienced trademark attorney or IP professional, we at My Trademark Guide can help you through the process and help you present a strong case for registration.
