The Silent Capture Of Generic Terms

Indian trademark law insists that generic and descriptive terms must remain in the public domain, yet in practice, resource‑rich proprietors often succeed in fencing off such words through private litigation. In the absence of an institutional guardian of public interest, courts may, case by case, end up reinforcing monopolies over everyday language that the statute itself never intended to privatise. It is necessary that India now needs a dedicated public‑interest authority or structured mechanism to intervene whenever generic terms are claimed as trademarks, especially in suits where smaller traders are ranged against large corporations.

The statutory starting point is unambiguous. Section 9(1)(b) of the Trade Marks Act, 1999 prohibits registration of marks that exclusively designate the kind, quality, intended purpose or other characteristics of the goods or services, while Section 9(1)(c) bars marks consisting exclusively of indications or terms customary in current language or established trade practices. The law presumes that generic and purely descriptive expressions must remain free for all to use, unless exceptional evidence of acquired distinctiveness brings them within the proviso to Section 9. Indian courts have repeatedly endorsed this principle. In cases concerning descriptive terms, the Delhi High Court and the Supreme Court have refused to allow traders to monopolise words that directly describe goods, their attributes or underlying technology, stressing that common descriptive vocabulary belongs to the public and the trade at large.

The "Manjal" case reveals how generic words slip into corporate control until fiercely contested. "Manjal" (Malayalam/Tamil for turmeric) was registered in Class 3 for Ayurvedic bath soap by Oriental Extractions Pvt Ltd, with Marico Ltd later acquiring rights through assignment. Two battles unfolded: In 2008, Marico sued Kollam-based Divine Pharmaceuticals in Delhi High Court over "Ayur Manjal" soap, securing an interim injunction and goods seizure; separately, Divine's proprietor S. Sivasubramanyan filed rectification against Oriental Extractions at Chennai Registry, arguing the mark described turmeric soap's core ingredient and was inherently generic. On January 21, 2011, Deputy Registrar N.D. Kasturi ruled ex parte that "Manjal" violated Sections 9(1)(a)-(b), ordering its removal under Section 57(4) despite Oriental's failed Section 125 jurisdiction plea tied to the Delhi suit. Marico appealed to Madras High Court, which in March 2011 stayed the cancellation and restored status quo, reinstating the mark. This back-and-forth underscores the peril: powerful firms enforce descriptive terms via swift injunctions, while small challengers endure costly, protracted fights—with public interest hanging on rare underdog victories rather than systemic safeguards.

The “Sugar Free” dispute underscores how courts struggle to balance acquired distinctiveness with the need to preserve descriptive language. Cadila Healthcare built substantial goodwill around its artificial sweetener marketed under the mark “Sugar Free” and argued before the Delhi High Court that the expression had become inextricably associated with its products. In actions against rival food products, defendants contended that “Sugar Free” was generic or descriptive of a characteristic—that the product contained no sugar—and therefore could not be monopolised as a trademark. The Single Judge and the Division Bench accepted that “Sugar Free” had, to some extent, become distinctive of Cadila's artificial sweetener, yet they refused to bar descriptive use of the phrase by others, insisting that there could be “no restraint on the expression 'Sugar Free', particularly in the descriptive sense”. Courts attempted a compromise: recognising Cadila's commercial association with “Sugar Free” in a narrow sense, while explicitly preserving the public's right to use the words descriptively. This careful calibration, however, depends heavily on judicial sensitivity; absent a structured public‑interest voice, there remains a risk that similar cases may tilt more decisively towards proprietors.

The landscape becomes even more complex with terms like “Metro”. Large businesses have obtained registrations for “METRO” in relation to footwear, retail and wholesale or cash‑and‑carry services and have vigorously enforced those marks. In Metro Brands Ltd v MetBrands Pvt Ltd, the Bombay High Court granted a temporary injunction against “METBRANDS”, treating it as deceptively similar to “METRO” and placing significant weight on Metro Brands' long‑standing reputation. Yet “metro” in everyday Indian usage evokes metro rail systems, “water metro” projects, metropolitan cities and countless local establishments that deploy the word to signify urban modernity rather than a specific trader. When a multinational cash‑and‑carry operator sues a small shop in a remote town over the use of “Metro” in its name, the defendant stands before the court facing a registered mark, a line of earlier decrees and the threat of an ex parte injunction. In such circumstances, the trader is often compelled to change the name and record a compromise, even if their usage is geographically descriptive or colloquial. Each such decree then becomes part of a litigation arsenal that future courts may treat as evidence of exclusive proprietorship, pushing a broadly used term further into the orbit of a single company.

The Kolhapuri chappal episode, though arising under the Geographical Indications of Goods (Registration and Protection) Act, 1999 rather than trademark law, reflects similar anxieties about cultural expressions sliding into controlled legal categories. “Kolhapuri Chappal” received GI registration in 2019 for traditionally handcrafted leather sandals from specific districts in Maharashtra and Karnataka, with the object of protecting the name and associated craftsmanship. When a global fashion brand marketed sandals resembling Kolhapuri chappals, a public interest petition in the Bombay High Court sought to restrain this appropriation in the name of artisans and cultural heritage. The court, however, emphasised that enforcement lay primarily with the registered GI proprietors and authorised users, not with public‑spirited petitioners. While GI law thus offers a community‑oriented alternative to private trademarks, it still reveals how access to courts and the design of standing rules can limit who speaks for the public when names and styles deeply embedded in shared culture are at stake.

Across these examples, the structural problem is that public interest appears only if some affected party manages to raise it. Trademark infringement suits are framed as bilateral disputes: the plaintiff alleges confusion and infringement; the defendant, usually a smaller trader, struggles to defend on grounds of genericness, descriptiveness or honest concurrent use. Rectification, opposition and cancellation mechanisms in the Act do conceptually incorporate public interest, and the Supreme Court has recognised that courts exercising rectification powers must consider not only the parties' commercial interests but also the interests of the public. Yet access to these remedies presupposes resources, legal awareness and stamina that many small enterprises lack. In the meantime, interim injunctions are often issued on the strength of registrations and chains of compromise decrees, narrowing the space for generic words without any institutional actor dedicated to representing the broader community of speakers, consumers and traders.

This is why India needs a designated public‑interest authority—or, at minimum, a formalised amicus mechanism—to intervene in disputes where generic terms risk being treated as private property. Such an authority could be housed within the Trade Marks Registry, a specialised public ombudsman's office, or a statutory “Public Interest in IP” commission. Its mandate would be to scrutinise applications and litigations involving words that are dictionary‑generic, names of goods or ingredients, common geographic descriptors or culturally significant expressions. Where necessary, it could oppose registrations, initiate rectification, or appear before courts to argue that certain marks must remain free, much as competition regulators intervene to protect market structure rather than any single firm.

Legislative and procedural reforms can reinforce this role. Parliament could amend Sections 9 and 31 to codify a stronger, continuing presumption of genericness for terms like “manjal” when used for turmeric‑based goods, or “sugar free” when used to describe the absence of sugar, regardless of the applicant's market strength. Courts, especially at the interlocutory stage, should be required to expressly examine genericness and descriptiveness when confronted with commonplace words, and to deny or strictly tailor ex parte injunctions in such cases. Judges could also be guided to treat compromise decrees with caution, recognising that they reflect bargaining inequality as much as legal strength, and should not, be read as confirmation that a generic word has become proprietary. Finally, fair‑use provisions under Sections 30 and 35 should be interpreted generously for small traders who use such words descriptively or in connection with their own names or localities, so that the everyday language of commerce is not chilled merely because a powerful entity holds a registration.

With generic terms increasingly trademarked and the stakes of risking the loss of everyday generic words to protected corporate monopolies, without a standing public‑interest voice at the heart of trademark administration and adjudication, there is a real risk that generic words—whether inherited from centuries of community use or coined to describe common product attributes—will continue to be quietly cordoned off in favour of those who can afford to litigate. A dedicated authority, empowered to speak for the linguistic commons whenever generic terms are pressed into private service, would mark an important step toward aligning Indian trademark practice with its own statutory promise: to protect indicators of origin without sacrificing the shared vocabulary on which both commerce and culture depend.

The Author is an LLM student. Views are personal.