Distinction between ‘descriptive’ and ‘suggestive’ trademarks explained

Cause Title : Lt Overseas North America Inc & Anr. vs Krbl Limited, CS(COMM) 347/2022, Delhi High Court

Date of Judgment/Order : 24.02.2023

Corum : Justice Navin Chawla

Citied: 

1. Bata India Limited v. Chawla Boot House & Ors., MANU/DE/1368/2019
2. Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. v. Anchor Health & Beauty Care Pvt. Ltd., 2014 SCC OnLine Del 3374
3. Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. and Ors., 2019 SCC OnLine Del 8739
4. Adani Wilmar Ltd. v. Baljit Agro Tech Pvt. Ltd. & Anr
5.  Marico Limited v. Agro Tech Foods Limited, 2010 SCC OnLine Del 3806;
6. Soothe Healthcare Private Limited v. Dabur India Limited, 2022 SCC OnLine Del 2006;
7. Red Bull AG v. Pepsico India Holdings Pvt. Ltd. and Another, 2022 SCC OnLine Del 969;
8. Ultratech Cement Limited and Another v. Dalmia Cement Bharat Limited, 2016 SCC OnLine Bom 3574
9. Rhizome Distilleries P. Ltd. and Others v. Pernod Ricard S.A. France and Others, 2009 SCC OnLine Del 3346; 
10. Sime Darby Edible Products Ltd v Ngo Chew Hong Edible Oil Pte Ltd., (2000) SGHC 145
11. Vardhman Buildtech Pvt. Ltd. & Ors. v. Vardhman Properties Ltd., (2016) 233 DLT 25
12. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) 1 SCR 737;
13. Bacardi and Company Ltd. v. Bahety Overseas Pvt. Ltd. & Ors., 2021 SCC OnLine Del 4956
14. S.K. Sachdeva & Anr. v. Shri Educare Limited & Anr., 2016 (65) PTC 614 [Del][DB]
15. M/s South India Beverages Pvt. Ltd. V. General Mills Marketing Inc. and Anr., (2015) 61 PTC 231 (Del) (DB)
16. McCarthy on Trademarks and Unfair Competition

Background

It was the argument of the plaintiff that they are well established in the business inter alia of processing, marketing and exporting rice and have been using the mark 'Royal' on their products worldwide and have also registered the mark in various countries. That the plaintiff's marks have acquired formidable goodwill and reputation in the market, members of trade and amongst the consumers at large.

The plaintiff alleged that the mark 'ZABREEN ROYAL’ adopted by the defendant for manufacture, sale and distribution of its Basmati Rice is identical/deceptively similar to that of the plaintiffs' mark, is bound to result in causing irreparable harm and injury to the plaintiffs.

The defendant argued that the plaintiffs had admitted that their trade mark 'ROYAL’ is distinguishable from other marks because it is in a label/logo/device format and therefore, the plaintiffs cannot now assert that use of ‘ZABREEN ROYAL’ by the defendant to be similar to that of the plaintiffs‟ trade mark 'ROYAL’. Further, there are various other parties which have been using the trade mark containing the word 'ROYAL’ in a prominent manner and, therefore, the plaintiffs cannot claim any exclusive right over the word 'ROYAL’, the same being common to trade. Using the word 'ROYAL’ in a laudatory and descriptive sense along with the mark 'ZABREEN’ in order to describe the royal quality of the rice having extra-long grain having royal taste. It is asserted that there is no possibility of confusion or deception being caused by the use of the mark 'ZABREEN’ along with descriptor term 'ROYAL’ by the defendant.

Judgment

The issue before the court was whether the word ‘Royal’ was descriptive  or suggestive of the product- Rice and, therefore, if any exclusive right therein can be claimed by the plaintiffs.

The court referred to the distinguished tome "McCarthy on Trademarks and Unfair Competition‘, where the spectrum of distinctiveness of marks have been explained as:

(i) "inherently distinctive‟;

(ii) "non-inherently distinctive‟; and

(iii) marks with "no distinctiveness‟.

The book places the "suggestive‟ marks in the category of "inherently distinctive marks‟; while "descriptive marks‟ in "non-inherently distinctive marks‟, for which secondary meaning is required. 

As per the book, the most popular test with the Court to determine whether the mark is "descriptive‟ or "suggestive‟ is the "Imagination Test‟. The more imagination that is required on the customers part to get some direct description of the product from the term, the more likely the term is "suggestive‟, and not "descriptive‟. A descriptive term directly and clearly conveys information about the ingredients, qualities or characteristics of the product or service, whereas the "suggestive‟ term only indirectly suggests these things.

The second test suggested by the learned author is "The Competitors Need Test‟, that is, is the word or words likely to be needed by the competitive sellers to describe their goods? If the answer is in the positive, then the word/words are descriptive, otherwise they may just be suggestive.

Referring to the judgment in Bata (supra) wherein court had decided that the mere mention of the word 'POWER‘ does not direct any one immediately to shoes or to footwear, the court in this matter declared that though, a laudatory word, 'ROYAL’ is not immediately connectable to rice, it would require a large amount of imagination for the consumer to form a connection of the word 'ROYAL‟ to rice. It would require a reasoning process to determine the attributes of rice. Applying the "Competitors Need Test‟ again, the word 'ROYAL’ per se is not required by the competitors to be used to describe the product-rice or its quality. The word "ROYAL‟ is neither a natural synonym for the product nor its attribute. Therefore, the word ‘ROYAL’ is laudatory, the plea of the defendant that the word ‘ROYAL’ being a descriptive term is not entitled to any protection, is liable to be rejected. The court also rejected the argument of the defendant that  the registration being in a device mark, the plaintiffs cannot claim any exclusive right over the word 'ROYAL’, being a part thereof.

Referring to the judgment in South India Beverages (supra) & Pidilite Industries (supra) the word 'ROYAL’ remains a dominant part of the trade mark of the plaintiffs. Remove the said word, the remaining is only an embellishment. Therefore, the word 'ROYAL’ per se would also be entitled to protection. As per the argument of the defendant that the word 'ROYAL’ is common to trade, the court held that it has been decided in Pankaj Goel (supra), a use of a similar mark by a third party in violation of the plaintiff's right is no defence.

Thus, the Court held that the packaging would show that the word ‘ROYAL’ has been used prominently in the packaging and does not depict the quality of the rice of the defendant but comes across as a trademark. The use of the same would also lead to dilution of the mark of the plaintiffs and, therefore, cannot be permitted in such a manner.