India: Distinctiveness through Secondary Meaning

Every trademark has a tendency to identify the goods sold under them as emanating from a particular source. This tendency with the efflux of time gets strengthened and a particular trademark gets registered or mentally associated in the minds of the consumers as distinctive of the product and its source. It can also be referred as ‘strength’ of the mark. Some trademarks are distinct from their inception due to their inherent characters and they are given legal protection immediately upon use as a trademark. Thus there is a correlation between ‘strength’ and ‘secondary meaning’ of a trademark. A non-inherently distinctive mark must have that quantum of strength or secondary meaning to qualify as trademark. In litigation the determination of whether there is an infringement requires an evaluation of the strength of that trademark hence the secondary meaning for a non-inherently distinctive mark is a threshold issue of trademark validity.

Secondary meaning can be characterized as that ‘attraction’, ‘drawing power’ or ‘commercial magnetism’ which acts as a psychological function of the symbols or trademarks. It is a fact that largely we purchase goods by the marks on them identifying their source and the owner of a mark exploits this human tendency by making every effort to impregnate the atmosphere of the market with the drawing power of an amiable symbol. Commercial symbols that require secondary meaning for legal protection, it is that very ‘drawing power’ and ‘commercial magnetism’ which is characterized as secondary meaning.

A secondary meaning is acquired when the name and the business becomes synonymous in the public mind and submerges the primary meaning of the name. Therefore the prime element of secondary meaning is a mental association in the minds of purchasers between the alleged mark and the source of that product.

The general rule regarding distinctiveness is that – an identifying mark is distinctive and capable of being protected if it either [1] is inherently distinctive or [2] has acquired distinctiveness through secondary meaning. If a given symbol or word is not inherently distinctive it can be registered or protected as a mark only upon proof that it has become distinctive. This acquisition of distinctiveness is referred to as ‘secondary meaning’. For symbols that are not inherently distinctive, acquisition and priority of ownership is determined by looking to when, where and how secondary meaning was established in the symbol.

The Indian Trademarks Act of 1999 through section 32, rather indirectly, speaks about acquired distinctiveness and secondary meaning. The section conveys that when a mark is registered overlooking the facts in relation to grounds for refusal of registration, it will not be rendered invalid if as a consequence of its use it has, after registration and before commencement of any legal proceedings, acquired a distinctive character in relation to the goods for which it is registered.

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