Template from here
In an interesting turn of events, the Delhi HC on 12th October, 2020, vacated an interim injunction effectively permitting the Respondent (Treasure Vase Ventures Pvt. Ltd.) to use the impugned trademark ‘DELIVER-E’. In doing so the court held that the Applicant’s (Delhivery Pvt. Ltd.) registered trademark ‘DELHIVERY’ is phonetically similar to the English word ‘delivery’ and is a generic mark, not eligible for benefit of statutory rights. The court reiterated that unless a generic mark has achieved distinctiveness, it cannot be accorded protection under law, and to determine the ‘so claimed’ distinctiveness of the mark at the interim stage would essentially amount to conducting a mini trial, which is prohibited. In this post I shall highlight the reasons of the court to vacate the interim injunction and expand on the concept of so called “spectrum of distinctiveness”.
Brief Background
The Applicant claims to be the proprietor of the trademark ‘DELHIVERY’ since 2011 and has 27 trademark registrations for the mark and its variants under classes 35, 39 and 42. Sometime in May 2020, one of the Applicant’s employees noticed the use of the impugned mark ‘DELIVER-E’ on an E-rickshaw, following which the Applicant approached the court for an interim injunction. The court via its order dated 3rd July, 2020 (pdf) granted an interim injunction restraining the Respondent from manufacturing, selling and / or offering for sale any goods / services bearing the impugned mark ‘DELIVER-E’ or any mark which is identical / deceptively similar to the Applicant’s registered trademarks ‘DELHIVERY’, till the next date of hearing.
On merits of the interim injunction, the Respondent argued that the court was wrong to pass the injunction since the conflicting trademarks ‘DELHIVERY’ and ‘DELIVER-E’ are visually, structurally and phonetically dissimilar and that the Applicant cannot restrict the use of the mark ‘DELIVER-E’. The court agreed with this and vacated the interim injunction.
The Degree of Distinctiveness
The Applicant claimed that its mark ‘DELHIVERY’ is a portmanteau of “Delhi” and “Very” and thus it is neither a generic term nor a descriptive one. It argued that registration of a mark is prima facie evidence of its validity and in absence of any cancellation petition, no questions with regard to the validity of Applicant’s mark can be raised. It complained that the Respondent’s mark is deceptively similar to its mark ‘DELHIVERY’ and alleged that by use of mark ‘DELIVER-E’ the Respondent is passing off its services as that of the Applicant’s.
The Respondent on the other hand argued that its mark ‘DELIVER-E’ is different as it contains an “E” device, denoting use of an electronic vehicle by them. It claims that it adopted the mark ‘DELIVER-E’, in February 2020, for “last mile” delivery of goods and the same is derived from its earlier marks ‘SMART-E’ which it has been using since 2014. The Respondent argued that both the marks ‘DELHIVERY’ and ‘DELIVER-E’ are adaptations of the descriptive word ‘delivery’ and asserted that ‘DELHIVERY’ is a trademark which is descriptive of the business it performs. Citing Marico Ltd. v. Agro Tech Foods Ltd., it argued that registration of a descriptive mark does not bar others, in the same trade, from using the word described.
The general principle says that the ability to be registered as a trademark and the corresponding protection thereof depends on the capability of the trademark to distinguish a good/ service from that of other traders. Bombay High Court’ in Indchemie Health Specialties v. Intas Pharmaceuticals And Anr reiterated this and elaborated the principle by viewing it from the lens of Miller Brewing Company’s spectrum of distinctiveness rationale [Sidenote: It was Abercrombie & Fitch Co. v. Hunting World, Inc. in which the court had actually framed this rationale] The court held, whether a mark is distinctive and thus registrable or not is assessed on the basis of the category it falls in-
- Generic: one which describes the kind of the goods/ services it is applied on and thus cannot be registered.
- Descriptive: one which describes one or the other characteristics of the good/ service. And is not registrable unless it has acquired “secondary meaning” in the market..
- Suggestive: one which “suggests” and not “describes” the characteristics/ ingredients of the good/ services. Here, some sort of imagination is required in part of the consumer to determine the nature of the goods and thus such marks are registrable without the need of acquiring secondary meaning.
- Arbitrary or fanciful: These, including invented words, are most likely to distinguish the goods of the applicant from the goods of others and therefore enjoy the fullest protection along the spectrum.
This brings to mind Justice G. S Patel’s words in People Interactive (I) Pvt.Ltd v. Vivek Pahwa And Ors– “The degree of distinctiveness, and, therefore, the possibility of registration as a trade mark, is inversely proportional to the degree of obviousness: the more obvious the word, the less the degree of distinctiveness and the chances of its registration.”
No Country for Generic Marks?
The court in the present case reiterated that the rights of Applicant’s trademark are not absolute and the competing marks are to be seen disjunctively. The court essentially held that the Applicant cannot have its cake and eat it too. It applied the logic that the Applicant claims the mark ‘DELHI’ ‘VERY’ to be coined and to have no relation with the generic word ‘delivery’. Thus, there shouldn’t be any comparison with the mark ‘DELIVER-E’ as the origin of the marks will be different. The court then held that the fact that Applicant alleges ‘DELIVER-E’ to be deceptively similar to its mark ‘DELHIVERY’ it relates its own mark to the generic word ‘delivery’. The court observes that the marks ‘DELHIVERY’ and ‘DELIVER-E’ are not structurally similar, however, noted the phonetic similarity of both the marks with the word ‘delivery’ and expressly held “the mark ‘DELHIVERY’ if pronounced in a routine manner shall mean ‘delivery’ and being a generic word, cannot be registered as a trademark.”
Ruling that the registration granted to the Applicant was for a generic mark, the court relied on Parveen Kumar Jain v. Rajan Seth, where the court said that if the registrations are “wrongly granted” for a completely generic expression, the court cannot ignore the generic nature of marks and confer monopoly on the same in favor of any party.
The court also rejected the Applicant’s argument that owing to high sales figures the mark ‘DELHIVERY’ has acquired secondary meaning. Citing para. 19 from the People Interactive case, the court rejected this argument and reiterated that “evidence, showing the displacement of the primary meaning by the secondary meaning, must be of the members of the public as well, not merely those specially placed to attest to its uniqueness.”
It also referred to the “classical trinity” test of- goodwill of plaintiff in market; misrepresentation to public from the services of defendant as that of plaintiff’s and; consequential suffering occurred to the plaintiff’s reputation because of the above misrepresentation. And held that the Applicant must establish the above during the trial.
Interestingly, the Applicant presented an arguendo stating that at best the mark ‘DELHIVERY’ can be accepted as a suggestive mark and not a generic one. The court disregarded this argument and held that “the mark which is phonetically similar to the English word ‘delivery’ does not require any imagination, thought and perception, more so for delivery services…. And cannot be termed as suggestive.”
The order is one of the rare ones which discuss the phonetic similarity of a mark with a generic word. It also highlights one of the most important problems about the Indian Trademarks Office i.e. the liberty at which protection is granted to a mark. The order specifically noted that “mark ‘DELHIVERY’ is a phonetically generic word and cannot be registered so as to seek benefit of statutory rights” during an interim hearing. It’s interesting to note that the examiner did not raise a Section 9(1) objection during the prosecution of the mark “DELHIVERY”(for instance see examination reports for the word mark ‘DELHIVERY’ under classes 35, 39 and 42). The court’s order is also laudable for clearly explaining, perhaps again, that registration of a mark will not give the owner unencumbered rights and will be subjected to limitations especially if the mark is a generic one.