How Can Descriptive Trademarks Acquire Secondary Meaning for Protection?

Introduction

Trademarks are a critical part in the differentiation of the goods and/or services of businesses. With regard to marks that are arbitrary, fanciful, or suggestive, they are granted immediate protection. However, descriptive trademarks are still not protected. A descriptive trademark is one that denotes the concrete value of goods and services. Typical examples would be “Creamy” for dairy products or “Fast Service” for courier companies.

Similar to most trademark laws, the Trademark Act, 1999, in India states the acquisition of secondary meaning as a distinctive character a mark attains through use in Section 9(1)(b). The central question, then, is how can descriptive trademarks gain this secondary meaning to be legally protectable?

Understanding Descriptive Trademarks

Descriptive trademarks describe the product or service itself, leaving little imagination for the consumer. Their initial weakness stems from the need to keep descriptive terms available for all traders. For example, one business cannot monopolize words like “Fresh” or “Natural” in isolation

However, if consumers begin to identify the descriptive term with a specific source rather than the product’s descriptive quality, the mark may achieve distinctiveness. This transition is the essence of secondary meaning.

The Concept of Secondary Meaning

Secondary meaning develops when a descriptive mark, by way of its predominant use, promotion, and consumer acceptance, goes beyond its lexicological sense. Such a mark no longer identifies the characteristics of the goods but rather signifies the source alone to consumer minds.

Under Indian law, Section 32 of the Trade Marks Act, 1999, deals with the concept of acquired distinctiveness, defining that a somewhat initially unregistrable mark may, however, become eligible if it gets distinctiveness prior to the registration.

The courts have for long been on the same page with this point of view. The Supreme Court, in Godfrey Phillips India Ltd. v. Girnar Food & Beverages (P) Ltd. (2004), found that even descriptive words might be afforded protection if the distinctiveness as a result of continuous, consistent use over a long period has been demonstrated.

Judicial Precedents on Secondary Meaning

Indian Cases

● ITC Limited v. Britannia Industries Ltd. (2016)—The Delhi High Court ruled that because a term was descriptive, like “Nutri Choice,” it could not be a trademarked word unless it can be proven that the consumers associate the mark with a particular source directly.

● T.V. Venugopal v. Ushodaya Enterprises Ltd. (2011) – The Supreme Court said that “Eenadu” (meaning “today” in Telugu) had become a secondary brand after holding the monopoly for more than 30 years and at the same time gaining public recognition as a newspaper brand.

● Marico Ltd. v. Agro Tech Foods Ltd. (2010)—The Delhi High Court held that “Low Absorb” for edible oils had become distinctive over time with user experience and through publicity despite being a descriptive one.

International Cases

● Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc. (U.S. 1983) – The Court found that while the term “Fish-Fri” was descriptive, secondary meaning was linked to the plaintiff’s seasoned coating mix.

● Kellogg Co. v. National Biscuit Co. (U.S. 1938) – The Court admitted that “Shredded Wheat” was generic but maintained the doctrine that descriptive terms can get secondary meaning if the public identifies them with a producer.

Factors Establishing Secondary Meaning

Courts generally assess multiple factors to determine whether a descriptive mark has acquired secondary meaning:

● Duration, Extent, and Exclusivity of Use – A trademark recognition is strongly supported by old, regular use.

● Advertising and Promotional Efforts – Extensive advertising, celebrity endorsements, and consumer outreach work greatly to consumer association.

● Sales Volume and Market Share – The use of most of the goods in the area under the mark at a commercially successful level is what makes the claim of distinctiveness possible.

● Consumer Surveys and Evidence – One main feature of proof is the indication revealed by survey evidence that the public associates a trademark with the source reported.

● Intentional Copying by Competitors—If rivals imitate the descriptive mark, it signals recognition and secondary meaning.

Practical Business Strategies

Businesses aiming to protect descriptive marks must adopt proactive strategies:

● Consistent Branding – Employ the descriptive mark in combination with a distinct logo, packaging, or even a specially designed font. This consistent presentation can gradually build recognition over time.

● Aggressive Marketing – Fed advertising campaigns that focus on the connection between the business and the mark are a better way to use your resources.

● Consumer Education – Tell people that the descriptive mark is a part of the business and not a quality of the product.

● Documented Evidence – Keep records of ad spending, consumer surveys, and sales figures to back up your secondary meaning assertion.

● Gradual Transition – Use the descriptive marks in association with the inherently distinctive marks to boost the legal protection (e.g., “Apple iTunes,” where “iTunes” by itself appears to be descriptive).

Challenges in Acquiring Secondary Meaning

Despite these strategies, businesses face significant hurdles:

● High Burden of Proof – The Court requires an abundance of evidence showing distinctiveness to be convinced. Mere use is insufficient.

● Risk of Genericism – There are some descriptively named brands for which the danger of becoming generic and losing even the possibility to be protected is looming (e.g., “Escalator,” “Aspirin”).

● Competitive Fairness – The courts are cautious in granting a monopoly on words that are common and used by other parties in the business when determining fair competition.

Conclusion

The law of trademarks is a tricky one when it comes to descriptive marks. Even though they start out as the weakest, they still have a way of developing into strong, protectable marks through secondary meaning. Businesses can turn descriptive terms into a treasure trove of intellectual property assets by consistent and exclusive use, aggressive marketing, and consumer recognition.

Judicial precedents in India and abroad reaffirm that while descriptiveness poses an initial barrier, it is not an insurmountable one. The point of turning secondary meaning is what makes it possible for descriptive marks that are used as mere descriptors not to lose the trademark status but rather to become strong identifiers of origin, which is the essence of the balance between fair competition and brand protection.