Normally a descriptive term is considered as a weak trade mark. More so if a term is used as a descriptor along with trademark/house mark/Umbrella trademark to describe the product of a party, then there is least chances of this being termed as use in the sense of trademark use , in order to indicate the source and original as to indicate the proprietor.

For example one can keep any trademark in relation to KURKURE. In a hypothetical situation, let us suppose a case, where a party is using trademark NIKAS in relation KURKURE. This party also writes CHATAR PATAR SWAD along with this trademark NIKAS. By passage of time , not only NIKAS trademark has become distinctive to the party but also word CHATAR PATAR SWAD. In market this descriptive term has also assumed the trademark significance. Now can this first party assert trademark right in this descriptor?

Now a party in the market stars using the descriptive word CHATAR PATAR SWAD along with trademark VIKAS. Can this defense be available to that second party that as the word  CHATAR PATAR SWAD was a descriptive word and never intended to use as a trademark and that  the first party can not assert trademarks rights therein. In such situation, what could be the answer?

One of such case came up before the Hon'ble High Court of Mumbai in case titled as Hem Corporation Pvt. Ltd Vs ITC Limited. The Judgment came on 11.04.2012 which came in the  Suit No. 2808 of 2009. The Plaintiff in this case  claiming to be the registered proprietor of the marks MADHUR GULAB, MADHUR and the word MADHUR filed suit against the defendant seeking relief of infringement and passing off against use of MADHUR in relation to subject matter product being AGARBATHI.

The Defendant appeared and argued that the same never intended to use the term MADHUR as a trademark, but only to describe its products. The defendant further alleged that the defendant's trade-mark is MANGALDEEP and the term MADHUR was intended to use only as descriptor in relation to the subject matter product being AGARBATHI.

The defendant also alleged that the word MANGALDEEP was more prominent than the mark MADHUR. Hence user of term MADHUR can never be termed as trademark user. The Hon'ble High Court of Mumbai rejected the argument of Defendant by observing:

24. Even assuming that the defendant genuinely intended using the mark only to describe the aroma of the products, it would make no difference if the use of the mark is likely to be taken as being used as a trademark. Dr. Tulzapurkar's reliance upon section 29(1) and section (2)(zb)(ii) of the Trade Marks Act, 1999, is well founded. Sections 29(1) and 2(zb)(ii) read as under :

29. Infringement of registered trade marks

1. A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
    
2. Definitions and interpretation:
   
   1. (zb) trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and
       
   2. in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark; [emphasis supplied]

25. The intention to use a mark as a trademark is not the only factor that constitutes infringement. A registered trademark is infringed by a person if he uses it in such a manner as to render the use of the mark likely to be taken as a trademark. In other words the use of a registered trademark would constitute an infringement if it indicates a connection in the course of trade between the person and his goods or services irrespective of his intention. This is clear from the phrase in section 2(1)(zb)(ii) for the purpose of indicating or so to indicate.

26. I have already come to the conclusion that the use of the mark by the defendant is as a trademark and not merely as descriptive of the product.

The Hon'ble High Court of Mumbai, while discussing the provisions of Section 29 of the Trademarks Act 1999, clearly laid down that intention of a party to use a descriptive term in a non trademark manner , will not render the user there of as non trademark user, if on fact user there of is likely to be taken as use of a trademark mark.

The court observed  that the word MADHUR can be used as a descriptive word but in the very case referred to by the defendant, it has been used as a trademark. Hence this argument of Defendant was rejected that the work MADHUR has been intended to be used by them to describe the  subject matter product being AGARBATHI.

The Court has thus laid down that intention of a party to use a descriptive word in a non trade marks manner is immaterial in case it is found that the same has actually attained trademark significance.

Written By: Ajay Amitabh Suman, Advocate, Hon'ble High Court Of Delhi