Trade Mark Restrictions: The Limit of Monopoly on Common English Words

ABSTTRACT

The constraints placed on trademark registration, particularly concerning common English words by recent judicial review by Justice C. Hari Shankar in which he emphasized the reasons and importance of these limitations. Understanding the legal and practical implication of these limitations, shedding light on the boundaries of monopolistic control in the English language. This article explores real world examples, international perspectives and aims to provide comprehensive understanding of the complexities surrounding trademark restriction. And dissect the nuances of trademark restrictions focusing on the ineligibility of everyday language for monopolistic control.

INTRODUCTION

For consumer identification and brand protection a crucial mechanism is important which is served by trade mark law. However the limitations and restrictions for registration is present not all terms are eligible for registration… a trade mark encompasses with number of elements, including logo, slogans, shapes, sounds, even scents, all designed to distinguish product and services from other competitors. , saying this the exclusion of common English words in particular aiming to prevent monopolization of everyday language. This article aims to dissect the nuances of trademark restrictions, focusing on the ineligibility of everyday language for monopolistic control.[i]

CRITICAL ANALYSIS

Anywhere in the India or in world trade mark face limitations unless have acquired distinctiveness through use.  Examples of excluded terms descriptive terms, generic terms, geographically descriptive terms, functional terms.

Descriptive term: the qualities and characteristics of goods or services which describe in the mark. Like fast for food services, the word fast is descriptive for quick services, making it challenging to obtain trademark protection. However brands like fast food nation having managed to create a unique identity by incorporating the term into distinctive brand.[ii]

Generic terms: common name of product or the main composition of the product. Computer of computers, medicines names. Shoes for footwear or restaurant for dining establishments.

Functional terms:  describing the functional purpose which can’t be monopolized. For example foldable chairs, non –stick cookware, long lasting batteries, noise canceling for headphones.

Geographically descriptive: terms indicating the origin and quality of the product or good like Kashmir apple, textiles and Darjeeling foe tea.

REASONS BEHIND EXCLUSION OR LIMITATION

Promoting fair competition and preventing monopolistic over every day language and also ensuring that commonly understood terms to describe products or services are not deprived for consumer[iii]

Descriptiveness; the disruption of good and services are often common English words, making them ineligible for trademark and they do not distinguish one brand from another

Genericness; consumer choice and fair competition would hinder if the generic name of products be monopolized so it is restricted

Lack of distinctiveness; a mark purpose is to serve distinctiveness but without it a mark is not effective serve, distinguishing the source of goods and services leading to potential consumer confusion

IMPACT ON BRAND DIFFERENTIATION

Consumers can resonate by this, as it encourages business to develop unique and distinctive

Brands.  Companies can differentiate themselves in the marketplace by investing in branding efforts that go beyond generic terms which can build consumer trust, and secure long term success.

encourages creativity ; to  stand out in the market , businesses will be creative in developing unique brand names and identities which is forced by limitation on the common words .

Promotes fair competition; consumers will have variety of choices in the marketplace is ensured by preventing monopolies over common language, trademark lea foster fair competition. [iv]

Builds brand loyalty; companies which are successfully navigating their brands through limitations on common words and establish distinct identities can build strong brand loyalty

EXCEPTION AND SPECIAL CASES

Descriptive marks vs. fanciful marks:

Descriptive marks are not generally granted immediate trademark protection as they lack inherent distinctiveness, in contrast, fanciful marks are entirely invented or coined words with no intrinsic meaning, which are inheritantly distinctive and typically easier to protect as trademark because there is no descriptive connotation.

Acquired distinctiveness through use

Through extensive use in the commerce, the trade mark which is initially descriptive may acquire distinctiveness and secondary meaning, rather than the descripted meaning, the consumer come to associate the most with a particular source of goods or services

To establish acquired distinctiveness, the trademark owner must demonstrate that the mark has been used extensively in connection with the goods or services, resulting in consumer recognition of the mark as indicating in a specific source.

Coined terms

They are known as arbitrary marks. used completely unrelated context which is existing words , these have no direct connection to goods and services they represent so these marks are inherently distinctive , for example apple , amazon which are completely different from their trade marks .

Implication for businesses and brands

• Brand identity and differentiation; The implication of these expectations and special cases in trade mark law for businesses and brands are significant : for establishment of a unique brand identity and standing out in the marketplace choosing a distinctive and protected trademark is crucial . Fanciful marks and coined terms offer stronger protection.
• Intellectual property protection; to effectively protect their intellectual property assists and prevent competitors from using the same or similar marks understanding the nuance of trademark law enables it. For infringement and unauthorized use of the brand acquiring trademark rights through registration and acquiring distinctiveness by extensive use provides legal recourse.
• Market expansion and globalization; ensuring protection is crucial for both operating internationally and expansion into new market by providing exclusive rights to use the market in connection with goods and services
• Marketing and branding strategy ; company’s values and objectives can be aligned and can be legally protected by crafting a strong branding strategy involves selecting trademark that resonate with consumers
• Competitive advantage and market positioning; commanding premium pricing and maintain customer loyalty can be enabled by enhancing strong trademark for a company. Brand reputation and goodwill can be capitalized by using similar marks
• Risk mitigation and legal compliance; protection against brand dilution and legal risks can be mitigated by proactively and monitoring for potential infringement and ensuring compliance with trademark portfolios laws and regulations. [v]

Case study

Institute of Directors v. Worlddevcorp Technology and Business Solutions Pvt. Ltd., 2023..
Yahoo! Inc . v. yahoo india! Pvt ltd:

In this case there is dispute over the domain name yahooindia.com. The court held the case by judgment that both plaintiff and defendant’s domain names are similar highlighting the importance of protecting trademarks

Louis Vuitton v. Louis vuiton dak:  a Korean based fired chicken restaurant lost the legal battle against the luxury brand Louis Vuitton. Court emphasized the need to protect well-known brands and their goodwill from unauthorized users.

CONCLUSION:

The assertion that no one can claim a monopoly on common English word serves as a pivotal reminder for fundamental principles that underpin fair competition, consumer choice, the innovation in the market place. Equal opportunities to thrive and competitors of all sizes of business is ensured by the legal system upholds the ethos of fairness by affirming that common linguistic upholds elements cannot be exclusive appropriate. Bacons of legal clarity and fairness is server by recent judgment by saying the non-monopolization of common English words. Striking the balance between protection intellectual property rights and fostering a dynamic, competitive marketplace

Author: KMK SRI BHARGAVI, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

[i] IANS ,Delhi HC rules against trademarks monopoly for common English words,  THE HANSINDIA ,21/02/2024,https://www.thehansindia.com/business/delhi-hc-rules-against-trademark-monopoly-for-common-english-words-844554

[ii] Words of common English usage, even when put together to form phrase of common English usage, cannot be registered as trade mark: Delhi High Court. SSC TIMES ,21/02/2024 https://www.scconline.com/blog/post/2023/12/16/delhi-hc-words-of-common-english-usage-cannot-be-registered-as-trade-mark-legal-news/

[iii]BY Raja Selvam  , no monopoly over generally used words , selavam& selvam , 21/02/2024 https://selvams.com/blog/no-monopoly-over-generally-used-words/

[iv] Nupur thapliyal , words of common English usage can’t be registered as trademark , no monopoly can be claimed by anyone : Delhi high court , live law , 21/02/2024 ,https://www.livelaw.in/high-court/delhi-high-court/delhi-high-court-words-common-english-trademark-monopoly-244573

[v] Chaitali sadayet , monopoly cannot be clained on words being common to trade , MLEGALS Legal strategist’s , 21/02/2024 ,https://www.mondaq.com/india/trademark/963064/monopoly-cannot-be-claimed-on-words-being-common-to-trade