Generic Marks Rejection
Generic Marks Rejection in Trademark Law
1. Meaning of Generic Marks
A generic mark is a term that refers to the common name of a product or service, rather than identifying it as coming from a specific source.
Example: Trying to register “Milk” for dairy products is generic, because it refers to the product itself, not the brand.
Generic marks cannot be registered as trademarks because they do not indicate origin.
Statutory Basis in India
Section 9(1)(b) of the Trade Marks Act, 1999: A mark shall not be registered if it is “devoid of any distinctive character” or is common to trade in that field.
Section 11(1)(a) & (b): Provides absolute grounds for refusal, including marks that are generic or descriptive.
2. Why Generic Marks Are Rejected
A trademark must serve as a source identifier. A generic term fails this test because:
It is the name of the product or service itself.
Allowing registration would give monopoly to ordinary words that all traders should freely use.
Courts and registries prevent monopoly over language essential to trade.
3. Key Legal Principles
Distinctiveness is mandatory – A mark must distinguish the goods/services.
Descriptive or generic terms are unregistrable – e.g., “Sugar” for sugar, “Fast Print” for printing services.
Acquired distinctiveness is possible – If a generic/descriptive term has gained secondary meaning, it can sometimes be registered.
4. Leading Case Laws on Generic Marks Rejection
Case 1: Tata Sons Ltd. v. Manu Kosuri & Ors. (Delhi High Court, 2009)
Facts:
Tata Sons objected to registration of the mark “Tata” by a third party for unrelated goods.
Issue:
Whether the term “Tata” could be considered generic or descriptive.
Judgment:
Court held that “Tata” is a well-known mark and not generic.
Marks that are distinctive by reputation or secondary meaning can overcome generic objections.
Principle:
Even if a word is ordinary, public perception can render it distinctive.
Case 2: Nestle India Ltd. v. Cadbury India Ltd. (Delhi High Court, 2015)
Facts:
Nestle opposed registration of a mark “KitKat” styled differently by Cadbury.
Issue:
Whether “KitKat” had become generic due to widespread use of “kit kat” in chocolates.
Judgment:
Court found that KitKat is not generic, and public still identifies it with Nestle.
Principle:
A mark does not become generic simply by being widely used; distinctiveness in the mind of the public is crucial.
Case 3: Dabur India Ltd. v. Colgate Palmolive (Delhi High Court, 2010)
Facts:
Colgate applied to register “ToothFresh” for toothpaste.
Dabur opposed it claiming the mark was descriptive/generic.
Judgment:
Court held “ToothFresh” to be generic/descriptive, directly referring to the product’s function.
Such marks cannot indicate source, thus refused registration.
Principle:
Marks that describe quality, quantity, or function are generic/descriptive.
Need distinctive style or acquired distinctiveness to qualify.
Case 4: McDonald’s Corporation v. Future Enterprises (Delhi High Court, 2013)
Facts:
Future Enterprises attempted to register “MacBurger” for fast food.
Issue:
Whether “MacBurger” is generic and descriptive (Burger + Mac prefix).
Judgment:
Court ruled “MacBurger” is descriptive/generic and would mislead the public regarding source.
Registration refused.
Principle:
Combining generic words does not automatically make the mark distinctive.
Source-identifying element is key.
Case 5: Kellogg Co. v. Associated Biscuits Pvt. Ltd. (Bombay High Court, 2012)
Facts:
AB attempted to register “Corn Flakes” as a mark.
Issue:
Whether “Corn Flakes” is generic for breakfast cereals.
Judgment:
Court refused registration.
“Corn Flakes” refers to the type of cereal, not a brand.
Principle:
Generic names of goods cannot be monopolized.
Case 6: Cadbury UK Ltd. v. Neeraj Food Products (Delhi High Court, 2014)
Facts:
Attempt to register “Dairy Milk” for chocolates by a third party.
Judgment:
Mark was generic in relation to product content (“Dairy Milk” literally means milk chocolate).
Registration refused.
Principle:
Generic names describing ingredients or product type are not registrable.
5. Summary of Principles from Case Laws
| Principle | Case Example |
|---|---|
| Generic marks cannot indicate source | Dabur v. Colgate (ToothFresh) |
| Widely known marks can overcome generic objections | Tata Sons v. Manu Kosuri; Nestle v. Cadbury |
| Descriptive marks require secondary meaning | McDonald’s v. Future Enterprises |
| Combination of generic terms is not sufficient | McDonald’s v. Future Enterprises |
| Names of goods/products cannot be monopolized | Kellogg v. AB (Corn Flakes) |
| Ingredient/product descriptors are generic | Cadbury v. Neeraj Food Products (Dairy Milk) |
6. Distinction Between Generic and Descriptive Marks
| Feature | Generic | Descriptive |
|---|---|---|
| Refers to | Product itself | Quality, function, ingredient |
| Example | “Milk” | “ToothFresh” |
| Registrable | No | Only if acquired distinctiveness |
| Public perception | Common name | Could be perceived as brand with secondary meaning |
7. Conclusion
Generic marks rejection is a key principle to protect competition and free use of language in trade.
Marks must function as identifiers of origin, not just describe the goods.
Courts carefully analyze public perception, descriptiveness, and distinctiveness before refusing registration.
Acquired distinctiveness can overcome generic rejection, but bare descriptive/generic words cannot be monopolized.
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