Common Names Like 'NEHA' Can Constitute Protected Trademark If It Acquires Inherent Distinctiveness Or Secondary Meaning: Delhi High Court

The Delhi High Court has made it clear that common Indian forenames like “NEHA” can constitute protected trademark, provided it acquires an 'inherent distinctiveness' by establishing a secondary meaning in trade.Justice Sanjeev Narula observed that marks comprising everyday/ common names or generic expressions do not, by themselves, command the highest level of legal protection. The bench relied on People Interactive (India) Private Limited v. Vivek Pahwa (2016) where the Bombay High Court held that common names or dictionary words attract a narrower scope of protection.Thus, to claim exclusivity over such trademarks, it held that parties are required to demonstrate that this common word had acquired a secondary meaning.This necessitates production of cogent and credible evidence, such as advertising expenditure, market share, sales figures, consumer surveys, or other indicators of brand recognition that extend beyond mere presence in the marketplace, the Court held.The observations were made while dealing with a trademark infringement and passing off suit arising from competing claims over the use of the trademark “NEHA”. While the Plaintiffs used the mark in relation to their line of Mehandi and allied herbal products, the Defendant had applied it to its range of face creams.The Plaintiffs claimed it had adopted the trademark “NEHA” in the year 1992, drawing inspiration from the first name of his sister.The Defendant on the other claimed that it adopted the trademark “NEHA” for creams as early as in 1990 and its use of the mark is prior in time to the Plaintiffs' adoption.At the outset, the High Court noted that the goods in respect of which the parties claim use of the mark differ in function and formulation. Further, while Plaintiffs held valid and subsisting registrations for the mark, the multiple applications of the Defendant for registration of “NEHA” had remained unsuccessful.It then proceeded to note that neither party had furnished direct or contemporaneous proof from their respective claimed dates of first use. “Documents one might expect to decisively tilt the balance, such as dated invoices, early product packaging bearing the mark, period-specific promotional materials, or trade communications, from the claimed dates of first use, are conspicuously absent,” it said.So far as Plaintiffs are concerned, the earliest available document was the Income Tax Return filed for the Assessment Year 1995-96. The Defendant had relied on its licence for vanishing cream and pomade however the Court noted that it had made no attempt to secure registration of the mark “NEHA” until 2006, thus undermining its plea of prior adoption.Significant to note that Defendant had contended that Plaintiffs only recently expanded into the creams segment while they had knowledge of the Defendant's claim over the mark “NEHA” in respect of creams. Thus it was argued that Plaintiffs not only delayed enforcement of their rights but also acquiesced in the Defendant's use of the mark in relation to creams.Disagreeing, the High Court held thst the doctrine of laches or acquiescence does not apply unless (i) the Plaintiffs had clear knowledge of the Defendant's infringing use; (ii) such use continued for a prolonged period without objection, and (iii) the Defendant altered its position or suffered prejudice in reliance on the Plaintiffs' inaction. It held, “The Defendant's argument that the Plaintiffs had constructive knowledge of the Defendant's use, due to common distributors or the Plaintiffs' later applications for creams, is too speculative to qualify as acquiescence…The Plaintiffs hold valid and subsisting trademark registrations. The mere fact that they expressed an intention to expand into creams and filed a fresh application in 2019 does not dilute their core trademark rights, nor does it amount to acquiescence in favour of a third party's use, particularly where the Defendant has never secured registration for the impugned mark.”Nonetheless, the Court dismissed Plaintiffs' suit, holding that the “functional dissimilarity” in the parties' products weigh heavily against the Plaintiffs' claim of infringement.While products of both parties fall under Class 3, the class for which the Plaintiffs hold a valid registration, Court said the test for determining similarity of goods is multi-dimensional, requiring consideration of several interrelated factors: the nature and composition of the goods; their intended purpose and method of use; the trade channels through which they are marketed; the profile of the purchasing public.In the case at hand, it Court that despite the fact that both Henna and creams may fall within the broad umbrella of cosmetics under Class 3, they are not functionally interchangeable or competitive. “They serve distinct purposes, have different ingredients, and are marketed with separate consumer expectations. They differ materially in their nature, purpose and formulation. Plaintiffs' products are largely...

Common Names Like 'NEHA' Can Constitute Protected Trademark If It Acquires Inherent Distinctiveness Or Secondary Meaning: Delhi High Court

Kapil Dhyani

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