[This post has been authored by SpicyIP intern Ishant Jain. Ishant is a final-year student pursuing BA LLB at Guru Gobind Singh Indraprastha University, Delhi. He comes from Firozabad, UP, and is looking forward to building his career in Intellectual Property Rights. As he describes himself, if he is not at his desk, he is probably writing a poem or a short story.]
In another spicy development, the mark “SCHEZWAN CHUTNEY” and “SZECHUAN CHUTNEY” were held as descriptive and bereft of secondary meaning by a single Judge bench of the Delhi High Court, only to be later declared to have acquired “secondary significance” by the Division Bench.
In Capital Foods Private Limited vs Radiant Indus Chem Pvt. Ltd, the Single Judge, applying the precedence in People Interactive (India) Private limited v. Vivek Pahwa, clarified that huge sale figures or commercial success in the market, which though can establish goodwill, will however not establish that the term has acquired a secondary meaning. The court opined that a term acquires a secondary meaning when it loses its earlier meaning and acquires a new meaning, which exclusively refers to the claimant’s product. And in this process of acquiring new meaning, the claimant must also prove that it has been using the term uninterruptedly for a long time. According to the Single Judge, the bar to acquire secondary meaning was set too high. On ascertaining whether a mark is descriptive or not, the single judge applied ‘The Competitor’s Need Test’, whereby it is to be seen if others will need to use the same term to describe their products.? If the answer is yes, then the trademark is merely descriptive of the product. However, the Single judge made absolute the interim injunction granted to the Plaintiff with regard to the Defendant’s adoption of a similar trade dress.
This assessment of the Single Judge was set side by the Division Bench, who deferred to the sales figures and expenses incurred on advertisement by the Appellant to prima facie held that the Appellant has acquired secondary “significance” and stayed the above order of the Single Judge. Secondary significance has previously been explained to mean a situation where “other traders in that line of trade acknowledge that such common word has come to denote the goods belonging to a particular trader”.
One may wonder “Ab chutney ko chutney na bolein toh kya bolein ?” (“if you don’t call chutney, ‘chutney’, then what will you call it?”). However, as argued by the defendant before the Single Judge, affording exclusive right over the descriptive term will open flood gates whereby Tamarind Chutney and Tomato Chutney will also be granted protection and shake the market of chutneys and the law of trademark as well! Not sure about the market of chutneys, the Division Bench order has clearly shaken the law of trademarks for now. How can the secondary significance of the mark be acknowledged by other traders when these traders are themselves arguing against the exclusive use of the impugned mark? Does high ad expenses and sales of one product denote that the product has been accepted by other traders to carry secondary significance? Clearly, the court has used the terms secondary significance and secondary meaning interchangeably. However, was it correct in doing so? Perhaps a response to all the above questions will come in the subsequent stages of the appeal.