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The distinctiveness of a trademark

When we think of a product, we instantly think of its brand and source. We even recall the classic slogans, logos, and colour scheme of the package design. The signs, logos, and slogans that give a product its identity are alluded to as its trademark.

A trademark is a kind of intellectual property that has grown in popularity. Presently, product owners are fully aware of the implications of a trademark and the rights that are granted to the proprietor upon registration of such a brand. There are numerous kinds of trademarks in India, each of which entitles the owner to legal rights as well as protection upon registration.

The distinctiveness of a Trademark

“Distinctiveness” in a Trademark refers to a mark’s capacity to “identify and differentiate” a product or service. If a proposed mark is not distinguishable, it is unsuitable for trademark protection and the other advantages that come with registration. Furthermore, the uniqueness of a trademark might affect its enforcement and continued validity after registration.

Importance of a Trademark Distinctiveness

A powerful trademark is a great asset that may boost a company’s reputation and influence customer choices. When developing a mark for a product or service, businesses must consider not only the economic appeal of a proposed trademark but also the level of legal protection it would get based on a notion known as “trademark distinctiveness.”

The Calcutta High Court declared in The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks that uniqueness is “some quality in the trademark which earmarks the products thus marked as different from those of other manufacturers of similar commodities.”

The court held in Cluett Peabody & Co., Inc. v. Arrow Apparels that the mark must be unique. It must show the buyer where the items came from. Words like “best,” “superior,” and so on failed to differentiate the items. They were simply descriptive and hence could not be used as a trademark.

The Spectrum of Distinctiveness

Not all marks are made equal when it comes to uniqueness or distinctiveness. It is difficult to register trademarks without distinctive characteristics. Trademark law protection depends upon this spectrum.

Here are the five distinct classifications:

  • Generic: A generic mark is one that uses a commonly used phrase to describe a product or service, such as “scooter” for a foot-powered scooter or “Valet” for a parking service. Generic marks cannot be used to identify the source of a commodity or service and are hence ineligible for trademark protection.
  • Descriptive: A descriptive mark is a component, quality, feature, purpose, or usage of an item or service. A descriptive mark is not immediately unique and becomes eligible for trademark protection only when it becomes connected with the relevant item or service in the eyes of the public. The well-known descriptive mark is “Coca-Cola,” which refers to a cola drink created with coca plant elements. This symbol is descriptive on its own. However, the “Coca-Cola” label grew so strongly associated with a certain kind of beverage that it became unique.
  • Suggestive: A suggestive mark suggests or denotes a good or service, but the final meaning of the mark is open to interpretation. A suggestive mark, although less recognisable than arbitrary or whimsical markings, is unique and protectable. “Chicken of the Sea” for canned tuna or “7-Eleven” for convenience shops are some of the most well-known suggestive trademarks.
  • Arbitrary: Arbitrary marks are existing terms that are unrelated to the products or services under consideration. “Dove” for hygiene goods, “Uber” or “Ola” for a ride-hailing mobile service, and “Camel” for cigarettes are examples of arbitrary marks. Arbitrary marks are intrinsically unique, and courts provide more trademark protection for them.
  • Fanciful: A fanciful mark is composed of a created word or phrase. Fanciful marks are at the top of the distinctiveness range and enjoy maximum legal protection. Several well-known trademarks fall under the category of fanciful marks, such as “Google” for an internet search service, “Xerox” for copiers, and “Kodak” for photographs and video.

These marks are easier to defend in the case of a trademark infringement complaint. In certain circumstances, licencing arbitrary and fanciful marks and expanding into new product categories might be simpler. As a result, many trademark attorneys advise their clients to use random or whimsical marks when building a brand. However, this is not always the best advice for every customer.

Here are some examples of trademark distinctiveness being protected:

Laxmikant V. Patel v. Chetanbhat Shah and Anr., The plaintiff has been using the mark “Mukta Jeewan Colour Lab” for a long time. Ultimately, the other party was barred from using a comparable mark. As a result, the Court stated that the word combination has attained distinctiveness and is therefore protected by the virtue of its previous, continuous, and comprehensive use.

M/S P.K. Overseas Pvt. Ltd.v. M/S KRBL Ltd, The Board agreed that the trademark “Bemisal” had acquired uniqueness as a consequence of its widespread use and high sales records. As a result, it is a legitimate trademark. As an outcome, this situation demonstrates that we may utilise sales numbers to establish the trademark’s reputation and goodwill. 


Although there are several strictly legal advantages to choosing an unique trademark, businesses must consider the marketing and commercial consequences of any proposed mark.

It might take years to gain customer awareness of an arbitrary or imaginative brand. Until a very unique mark is well known, it may be challenging for prospective consumers to draw the link between the mark and the products or services with which it is connected. Furthermore, random and whimsical markings might cause problems with SEO strategy and social media.

An expert trademark attorney can assist a company in striking the proper balance between choosing a protectable trademark and practical marketing and commercial factors. Working with an intellectual property lawyer early in the development process may assist in guaranteeing that trademark rights are obtained, safeguarded, and enforced if necessary.

Trademark rights are just one component of an organization’s total intellectual property approach, which may also comprise patents, trade secrets, copyrights, domain names, and common law intellectual property protections. Investing in legal counsel from the outset of a new product or service may pay dividends in the long run, so don’t put off speaking with an intellectual property lawyer about how to create and defend a great brand.

By Priyasha Sen Gupta