The question about the distinctiveness of laudatory trade marks is a recurring one in Indian trade mark jurisprudence. It has been debated whether a laudatory mark will be considered as descriptive or suggestive in nature for the purpose of registration in India. This blog post seeks to analyze the changing strength of a laudatory mark on the spectrum of distinctiveness through judicial interpretation.
While the Trade Marks Act, 1999 (“Act”) does not define what “descriptive” marks are, the term finds its roots in Section 9(1)(b) of Act which states that “trade marks 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, shall not be registered”. A plain reading of this section would suggest that descriptive marks are those which designate to the consumers, any characteristics of the goods and/or services offered under such marks. Unlike descriptive marks, suggestive marks do not directly describe the goods/services offered under such marks. Rather, consumers have to go through a series of mental steps in order to decipher the exact nature of the goods/services offered under such marks.
Laudatory marks are those that praise the quality or characteristics of the goods/services being offered. Laudatory terms, i.e., those expressing praise and commendation, such as ROYAL, GREAT, SUPER, MAJESTIC, etc. are prima facieconsidered indistinctive in nature and are not registrable in a standalone manner, without proof of acquired distinctiveness. However, in various instances, the Trade Marks Registry has granted registrations to laudatory marks and even Courts have recognized that such marks are capable of functioning as source identifiers if such marks are suggestive of the quality of goods/services offered under such marks, rather than having a direct reference to such goods/services.
One of the most prominent cases in trade mark jurisprudence with reference to laudatory marks is that of Mohd. Rafiq and Anr. v. Modi Sugar Mills Ltd. In this case, the Hon’ble Delhi High Court dismissed an appeal filed by the appellants, Mohd. Rafiq and Mohd. Shafiq, to expunge the mark “SUN” in respect of lanterns and globes for lamps on the ground that the mark “SUN” is not distinctive. The Court, while doing so, noted that reference to the character and quality (of the goods) should be direct and plain, and not remote and far-fetched. Applying this interpretation to the present case, the court held that the word SUN does not refer to the character or quality of the lanterns, and stated that, “Likewise, the word, which is sought to be construed as laudatory, should have obvious signification of praise, and not one out of which an inference of praise has to be spelt out by a laboured process.”
One of the recent cases that discussed the parameter to judge whether a laudatory mark is descriptive or suggestive is the case of LT Overseas North America Inc. & Anr. v. KRBL Limited. In this case, a single judge bench of the Hon’ble Delhi High Court discussed two tests formulated by McCarthy, namely, ‘The Imagination Test’ and ‘The Competitors’ Need Test’, to determine if the word ROYAL in relation to rice is descriptive or suggestive and if the plaintiff, LT Overseas North America Inc., can claim rights over the word ROYAL in relation to rice. According to the court, as per the first test, a consumer will not easily connect the word ROYAL with rice and would require “imagination” to make such a connection. Further, as per the second test, the word ROYAL is not essential to be used by “competitors” to describe rice. Therefore, while the court acknowledged that the word ROYAL is laudatory in nature per se, based on the two tests formulated by McCarthy on ‘Trade Marks and Unfair Competition’, it found the word ROYAL to be, at best, suggestive of rice, but not descriptive. Additionally, the court observed that, whether a word is used in a laudatory sense would also depend on how the term is being used on the product packaging. If a term is used prominently on the infringing product, the defendant cannot take the defence of the term being used in a merely laudatory sense, but if it is used in a less prominent manner, such usage shall be laudatory in nature.
Another issue surrounding laudatory marks is that, while marks containing laudatory terms can be registered, they are still available for public use, and proprietors find it difficult to enforce their rights against any third-party use of such laudatory terms in a composite mark. One such case was, Soothe Healthcare Private Limited v. Dabur India Limited, in which the Division Bench of the Hon’ble Delhi High Court shed light on the publici juris nature of laudatory terms even though such terms form part of a registered trade mark, and laid down the distinction between “descriptive similarity” and “deceptive similarity”. It was the case of the plaintiff, Soothe Healthcare Pvt Ltd., that Dabur’s adoption and use of the mark SUPER PANTS in relation to diapers infringes upon the plaintiff’s statutory rights in its SUPER-formative registered marks. The Division Bench analysed the rival marks and packaging of the rival products and noted that the only common word in both the marks i.e., SUPER is descriptive and laudatory in nature, and commonly used by various manufacturers in similar lines of business. This case illustrates that, while it may not be difficult to obtain registration over marks containing a laudatory term, enforcing such laudatory terms against third parties is not as easy as it may seem.
In conclusion, courts have offered helpful parameters to identify whether laudatory marks are descriptive or suggestive in nature keeping in view the surrounding facts of the case. However, there is still no set criteria defined under the Act or by the courts to identify the strength of laudatory terms as trade marks. In LT Overseas (Supra), the court had attempted to differentiate between descriptive and laudatory marks, but it refrained from offering a clear-cut differentiation. Additionally, as seen in Soothe Healthcare (Supra), the determination of whether a laudatory term is publici juris or suggestive to function as an independent and enforceable trade mark, ultimately depends on the evidence of acquired distinctiveness/ secondary meaning of such marks submitted before courts.
The answer as to where laudatory marks lie on the spectrum of distinctiveness has evolved over time through judicial interpretation, but the fine line between the descriptive or suggestive nature of a laudatory mark is to be evaluated on a case-by-case basis.