About Authors:
1. Ankith Kumar, specialised in IPR, is a practising advocate at Eshwars and Madras High Court
2. Harshita Jain, specialised in IPR and Technology Law, is a practicing corporate lawyer at Consultancy & Advisory firm.
INTRODUCTION
A distinctive mark is a trademark that possesses unique characteristics, enabling it to be easily identified and distinguished from others in the marketplace. In legal terms, distinctiveness refers to a trademark’s ability to indicate the source of a product or service rather than merely describing it. The stronger the distinctiveness of a mark, the greater its legal protection and enforceability. Trademark registration authorities, such as the Indian Trademark Registry, the United States Patent and Trademark Office (USPTO), and the European Union Intellectual Property Office (EUIPO), typically deny protection to marks that are overly generic or descriptive.
Distinctive marks play a crucial role in trademark registration by ensuring legal protection, brand recognition, market differentiation, and long-term business value. They safeguard brands from unauthorized use by competitors, reinforcing exclusivity and legal standing. A strong trademark establishes a unique brand identity, allowing consumers to easily recognize and associate it with a specific business or product. By setting a brand apart in the marketplace, a distinctive mark minimizes confusion and enhances consumer trust, providing a competitive edge. Over time, a well-established trademark becomes a valuable intellectual property asset, contributing to business growth and market positioning.
A distinctive mark differs from generic or descriptive terms that merely describe a product. It falls into three main categories: (a) Fanciful Marks (e.g., “Xerox” for photocopiers) – invented words with no prior meaning; (b) Arbitrary Marks (e.g., “Apple” for computers) – common words used in an unrelated industry; and (c) Suggestive Marks (e.g., “Netflix” for streaming services) – words that indirectly suggest the nature of the product or service. The more unique and distinctive a mark is, the stronger its legal protection, ensuring brand exclusivity and recognition.
Distinctiveness is considered as sine qua non, for a trademark to get protection worldwide. And in recent times, it has been placed in a greater reliance in different Jurisdictions. Hence, this paper ventures all the possible opportunities to make this determinant of Distinctiveness a more of objective and a seamless process when going through the registration process within Indian context. Proceeding further, in order to consider a mark as distinctive enough from that of others, it is not an instant process hence, it entails various factors below mentioned that come into play in order to get the mark registered based on its distinct nature.[1]
CASE STUDY
- In Under Armour, Inc. v. Anish Agarwal & An (2024)[2], the Delhi High Court, through Justice Anish Dayal, dealt with a pivotal issue surrounding trademark distinctiveness and the monopolization of common elements in composite marks. The plaintiff, Under Armour—a well-established American sportswear brand—claimed that the defendant’s use of “AERO ARMOUR” and the abbreviation “ARMR” amounted to infringement, citing similarity in the dominant component “ARMOUR.” The defendant, an aeronautical pilot, had created a military-inspired clothing brand named “AERO ARMOUR.” The counsel for defendant argued that the adoption was bona fide and based on his professional experience and creative independence. The counsel also relied on Section 17[i] of the Trademark Act, 1999 and laid down that registration shall confer on the proprietor exclusive right to the use of the trademark taken as a whole.
Justice Dayal noted that the plaintiff could not claim exclusivity over the descriptive or non-distinctive term “ARMOUR,” especially without standalone registration of that given word element. The Judgement also laid down several factors for assessment of Trademark Confusion, though it has been propounded by several other judgements, but it had attempted to categorize them into intelligible, thematic silos such as i) strength of marks ii) Similarity between marks iii) Proximity of goods and services iv) Possibility of Confusion v) Nature of consumer vi) Intent vii) Conduct of the Parties. It also reasoned out that there will be no ‘Initial Interest Confusion’ as the device mark adopted by both the parties here are structurally different from each other hence, there is no such malicious attempt by the Defendants to copy the Plaintiff’s mark. The Court emphasized that the trademark must be examined as a whole, and “AERO ARMOUR” was sufficiently distinguishable through a person of average intelligence from “UNDER ARMOUR” when viewed in its entirety, and the word ‘ARMOUR’ is not the dominant part of the Plaintiff’s adopted mark. Therefore, it reinforced two key principles in Indian trademark law: (1) The necessity of assessing composite marks holistically, and (2) That monopoly over common dictionary words in the apparel sector is not tenable without acquired distinctiveness and thus cannot exclude all possible brands which has ‘ARMOUR’ in it. The judgment also noted that the defendant’s business line, target market, design theme, and branding approach were clearly distinguishable from that of the plaintiff. Importantly, the Court found no mala fide intent in the adoption of the name “AERO ARMOUR,” or “ARMR” and held that the brand had been conceived independently and with due creativity. The Court denied the injunction and highlighted the need to preserve space for legitimate, creative entrants in the market.
- Similarly, in the case of Penta Security Systems Inc. v. Apple Inc[3] Apple Inc. opposed Penta Security Systems Inc.’s application to register the trademark “WAPPLES”, arguing that it could potentially cause confusion with Apple’s well-established “APPLE” trademark. Penta Security Systems Inc., a South Korean company specializing in web and data security solutions, had launched its “WAPPLES” security products in 2005 and introduced them to the Singaporean market in 2010. Apple contended that the “WAPPLES” mark was similar to its own and opposed its registration on several grounds under the Singapore Trade Marks Act.. After a thorough examination, IPOS dismissed Apple’s opposition and allowed the “WAPPLES” mark to proceed to registration. The ruling emphasized that “WAPPLES” and “APPLE” differed significantly in visual, aural, and conceptual aspects, as the addition of the letters “W” and “S” created a distinct overall impression. IPOS also found no likelihood of consumer confusion, given the contextual differences between the two brands and their respective business verticals. Additionally, there was no evidence of bad faith, as Apple failed to prove that Penta Security Systems applied for the trademark with dishonest intentions or to exploit Apple’s brand reputation and goodwill. This ruling underscore the importance of evaluating trademark disputes based on the overall impression of the marks and their specific use in the marketplace, rather than solely relying on superficial similarities.
The battle of Distinctiveness and Reputation elaborate how both the terms collude with each other within the ambit of Trademark Law globally with various assessment and factors[4]. There seems to be a thumping loss for the tech giant Apple, where it suffered an opposition loss to the “WAPPLES” as both are totally operating in the different fields of the Technology Industry Thus, Penta Security trademark application was allowed to proceed for the registration based on its distinctiveness and contextual dissimilarity.
LEGAL PRINCIPLES & INDIAN JURISPRUDENCE ON DISTINCTIVENESS
Distinctiveness is evaluated under both inherent and acquired parameters. Indian courts and the Indian Trademarks Registry evaluate the following factors:
- Duration and Extent of Use: There is no statutorily defined timeframe for a mark to acquire distinctiveness. As held in various High Court decisions, a shorter period of use can suffice if accompanied by strong advertising, consumer engagement, and uniqueness. Conversely, even prolonged use may not result in distinctiveness if the mark remains generic or descriptive.
- Geographical Reach and Consumer Association: Distinctiveness is judged through consumer perception, not merely the proprietor’s intent. In ITC Ltd. v. Nestle India Ltd[5]., the Delhi High Court emphasized that public perception is paramount. A mark’s association with specific goods/services and the likelihood of confusion among the public are determinative.
- Advertising and Publicity: Advertising expenditure, though relevant, is not conclusive. It must be correlated with consumer recognition and sales performance. High ad spend without demonstrable market penetration will not support a claim of acquired distinctiveness.
Public association with a mark is crucial, but reputation alone does not establish distinctiveness. A holistic consumer survey can provide valuable insight into acquired distinctiveness. Consumer Survey[6]: A key factor in determining whether consumers associate specific goods/services with a mark. It reflects consumer perception of a product, name, or concept. While Indian courts generally do not rely on such surveys, judges have, at times, considered them useful for representing a market cross-section, assessing statistical relevance, and establishing secondary meaning beyond mere reputation and thus it was established by the above cited cases that no dominance or statutory right can be claimed over the mark ‘APPLE’ and ‘ARMOUR and it more beyond the reputation i.e. its distinct identity. This was particularly discussed in Ayushakti Ayurved Pvt. Ltd. Vs. Hindustan Lever Ltd[7]. Merely considering the reputation of a given mark cannot give them the status of acquired distinctiveness. Therefore, in absence of a discernible perfect model, the surveys are considered to be the closest in finding out whether there exists a sense of confusion if a similar mark is registered which can be phonetically different from the already registered mark.
CONCLUSION
This article has envisaged Distinctiveness as an important threshold for a Trademark application to be considered for registration over the reputation and other factors. From a doctrinal perspective, it is necessary for a trademark to be distinct enough from other cited mark, yet to satisfy the component for distinctiveness there is no uniform or coherent test for evaluating the same component for the word mark/image marks. Thus, it is necessary to determine accurate indicators for the element of distinctiveness. Therefore, diving into the subjective notion of consumer perception which is considered as far most effective factor to be considered by the Courts till now. Hence, relying onto the reputation of a company to determine its distinctiveness doesn’t stand upfront whereas Data Collection and the line of business would also be considered in the evolving world. The widespread use of this method is plausible with active encouragement from the judiciary and to make it as a norm rather than an exception. There still exists a deep fog within the Trademark Law with respect to distinctiveness, which needs to be cleared considering the overall impression of a mark rather than relying onto certain factors, which can be detrimental to the interest of the new registrants.
REFERENCES:
[1] 92 N.Y.U. L. Rev. 1339 (2017) The Scope of Strong Marks: Should Trademark Law Protect the Strong More than the Weak
[2] CS(COMM) 843/2023
[3] (2024) SGIPOS 10 https://www.ipos.gov.sg/docs/default-source/resources-library/hearings-and-mediation/legal-decisions/2024/apple-v-penta-security-2024-sgipos-10.pdf
[4] Dustin Marlan, ‘Visual Metaphor and Trademark Distinctiveness’ (2018) 93 Wash L Rev 767. www.Heinonline.org
[5] MANU/TN/6089/2020
[6] Robert C. Bird, Streamlining Consumer Survey Analysis: An Examination of the Concept of Universe in Consumer Surveys Offered in Intellectual Property Litigation, 88 TRADEMARK REP. 269, 270 (1998).
[7] 2004 (28) PTC 59 (Bom.) (India)
[i] The Trademarks Act, 1999