Stop and think before you submit: some arguments can only harm and do no good!

We often come across instances, in opposition, infringement and/or passing off actions, where counsels or right holders argue that the impugned mark should be refused on the grounds of it being ‘generic, devoid of distinctive character and/ or descriptive of applied goods and services’. While the primary grounds for filing the action is similarity in marks, ironically, one of the grounds is that the impugned mark is descriptive, lacking distinctive character and/or generic which ultimately raises questions on the registrability of the Opponent / Plaintiff’s mark.

The Indian Courts have, time and again, ruled on this aspect – the earliest case being, Automatic Electric Company v/s R.K. Dhawan & Anr. 1999 I AD (Delhi) 603. The relevant segment from the judgment is provided for ease of reference –

“The defendants got their trademark "DIMMER DOT" registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression”.

Similarly in the matter of The Indian Hotels Company Ltd. and Ors. Vs. Jiva Institute of Vedic Sciences & Culture 2008 (37) PTC 468 (Del, the Hon’ble Delhi High Court stated that “the appellant has itself applied for registration of Jiva as a Trademark and cannot, therefore, argue that the mark is descriptive”. More recently, while relying on the principle of Automatic Electric Limited (supra) and Indian Hotels Company (supra), the Delhi High Court has stated that “a party that itself applies for the registration of a mark is estopped from contending that the mark is descriptive or generic” – in Bata India Limited vs. Chawla Boot House and Ors. (2019 (78) PTC 505 (Del) and Anil Verma Vs. R.K. Jewellers SK Group and Ors. (2019 (78) PTC 476 (Del).

Therefore, it is vital that we keep these aspects in mind while drafting and ensure that in the attempt to attack the impugned mark, we do not end up prejudicing the rights of the Opponent / Plaintiff’s mark.