Introduction
Using generic words as trademarks is a tricky play. “APPLE” is an arbitrary mark because the word is used as a trademark for products in computer technology, making it highly distinctive and distinguishable. Similarly, “CAMEL” and “SUN” are good examples of arbitrary marks because of the goods and services that they relate to. “CAMEL” is used as a trademark for cigarettes and other tobacco products while “SUN” is also used for computer products.
The strength of a trademark is identified through its level of distinctiveness. Therefore, to claim trademark protection, the first order of business is to adopt a graphically represented mark that is preferably unique and distinctive, capable of distinguishing the goods or services of one person from another. However, in some instances, protection can be granted to generic words and the Indian courts have time and again reiterated that a generic word may ‘claim legal protectability but the burden of proof on the person claiming distinctness in favor of a generic or descriptive mark is much higher’. The Plaintiff has to prove that the mark adopted by them, because of extensive use has acquired distinctiveness, is identifiable only with the goods of the Plaintiff and also that the adoption of the mark by the Defendants is identical or deceptively similar to the mark of the Plaintiff’. Continue Reading