NO-TURN: ‘Prior Use’ of ‘Descriptive’ Trademark

Peps Industries Pvt. Ltd. versus Kurlon Limited

Under Indian trademark law, ‘descriptive words’, which delineate characteristics of a product, cannot be registered as trademarks, unless they acquire ‘distinctiveness’ or ‘secondary meaning’, through long, uninterrupted and continuous use of the mark. Therefore, substantial use of a descriptive word as a trademark may grant such word an exceptional status, permitting its registration as a trademark. However, the benchmark for protection and enforcement of descriptive is quite high and the fact that the mark has in fact acquired distinctiveness has to be duly established. The Delhi High Court, in a recent judgment, examined such an issue, that is, whether a descriptive word ought to be allowed protection. The Court, in the instant case, refused to grant an injunction on the use of the mark ‘NO-TURN’, on the basis that it is a descriptive expression in respect of mattresses.

Factual Background
Peps Industries (Plaintiff) owns a registered trademark for ‘NO-TURN’ under Class 20 in respect of mattresses and other related products, since 2008. Kurlon Limited (Defendant) filed a trademark application for the mark ‘NO-TURN’ in 2018 and which was subsequently opposed by the Plaintiff. The Plaintiff parallelly filed a civil suit against the Defendant, before the Delhi High Court, seeking to restrain the Defendant from using the mark NO-TURN. The Plaintiff claimed that use of the mark NO-TURN by the Defendant, for identical goods i.e. mattresses, constitutes an infringement of its registered trademark. The Plaintiff also contended that the Defendant is using the mark ‘NO-TURN’ in a descriptive sense by prominently showing that the mattresses would not have to be ‘turned over’. The Plaintiff alleged that such descriptive use is wrongful, since NO-TURN, is a trademark of the Plaintiff.

In its defence, the Defendant claimed that they had been using the mark ‘NO TURN’ since 2007, which is even prior to the use of the mark by the Plaintiff. The Plaintiff also initiated a cancellation proceeding against the Plaintiff’ trademark registration, on such basis.

The case therefore involved two primary issues:

• whether the Defendant is a prior user of the mark, and
  
• whether the trademark ‘NO-TURN’ is descriptive in nature, thus validating the Defendant’s use, thereby precluding any injunction from being granted to the Plaintiff.
  

Court’s Observations:
On the issue of the claimed ‘prior use’ of the mark NO-TURN, the Court held that the Defendant had failed to establish such use, particularly since the Defendant did not produce sufficient evidence to show voluminous and frequent sales of goods bearing the mark NO-TURN.

On the issue of enforceability of descriptive words, the Court reaffirmed that descriptive words are not registrable, except when they have acquired distinctiveness. The Court held that for a mark to ‘acquire distinctiveness’, the mark should have attained a certain amount of reputation, through its long and continuous use, so much so that use of the said mark immediately directs the public to co-relate the said mark with the source/ manufacturer, even though the word may be descriptive in nature.

The Court further referred to an earlier decision of the Court in Marico Limited Vs. Agro Tech Foods Limited, in which it was held that proof of ‘distinctiveness’ of a descriptive mark can be submitted either on- (a) the date of application; (b) or post application but prior to the actual date of registration; or (c) post registration, when the trademark validity has been challenged. Relying on the aforementioned observations, the Court, in the present case, held that Plaintiff has failed to prove that its trade mark ‘NO-TURN’ has acquired any such distinctiveness, either on the date of application or prior to the date of actual registration. It was further held that the mark ‘NO-TURN’ is descriptive, and the Defendant is rightly using the said same in a ‘non-trademark’ sense. Based on such observations, the Court refused to restrain the Defendant from using the mark NO-TURN.

Descriptive words/ marks, are ‘weak trademark’ as compared to arbitrary words. While it might seem strategically sound to apply for registration of descriptive marks as trademark, especially when the same have been used for a substantial amount of time, companies must ensure that any such claims are predicated on solid proof of the goodwill and public confidence the masses repose in them. The owner of such a mark has to be in a position to show that the word in question though descriptive, in its true sense, has come to be associated solely with the company. This is simply because the Court has drawn a line in the sand, as to when a descriptive word can actually acquire distinctiveness.

Vatsala Singh

Vatsala joined the practice as a litigator. She is involved in activities pertaining to research and drafting. She also appears in various Courts including the Delhi High Court, District Courts in Delhi, IPAB (Intellectual Property Appellate Board) and the Trade Marks Registry. Besides, she actively participates in IP awareness programs.

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