What Is The Difference Between Descriptive And Suggestive Trademarks: Delhi HC Answers

The Delhi High Court bench comprising Justice Navin Chawla retrained the defendants from using the packaging complained of by the plaintiff as the use of the same would lead to dilution of plaintiff’s mark. The court was hearing an application by Lt. Oversees North America Inc. & Anr under Order XXXIX Rules 1 and 2 of CPC,1908 to prevent KBBL Limited from using a mark called ‘Zabreen Royal’as it is similar to the plaintiff’s mark ‘Royal’.

In the case at hand the plaintiff is in the business of processing, marketing and exporting rice and these rice have been exported internationally as well. The said mark ‘Royal’ has been in continuous and extensive use by them and the sales under the use of this mark have also increased extensively. It was submitted by the plaintiff that they are aggrieved by the adoption of the mark ‘Zabreen Royal’ which they too are using for rice, particularly Basmati Rice.

It was submitted on behalf of the defendants that they are using the mark ‘Royal’ in a descriptive sense along with the mark ‘Zabreen’ and no confusion can arise about the marks as the word Zabreen has also been used with the word Royal in their mark. They also stated that since a lot of other parties are using the word royal in their marks the plaintiff cannot claim the exclusive right over the mark.

The counsel on behalf of the plaintiff stated that the contention of the defendant that the mark is descriptive in nature cannot be accepted as it is suggestive at best. It was also submitted that the contention of the defendant that other parties are also using the word royal as registered under class 30 would not come to their benefit as there is no evidence of the usage of these marks.

The counsel on behalf of the defendant submitted that the word royal indicates the kind and quality of the goods and services and conveys a sense of pre- eminence and superior quality. It was submitted that it is a laudatory term devoid of distinguishing the goods and services of one from another. It was further put forth that the word royal is common to trade and is used by various manufacturers and those products are available on e commerce websites.

The high court considered whether the word royal is descriptive pr suggestive of the product rice and therefore, if any exclusive right can be claimed over it by the plaintiffs. The bench relied on ‘Mccarthy on Trademarks and Unfair Competition’ where the author explained the spectrum of distinctiveness of marks as:

1. Inherently distinctive
2. Non inherently distinctive and’
3. Marks with no distinctiveness

It was observed that the author therein states that the “suggestive” marks are in the category of inherently distinctive marks while “descriptive marks” are in non-inherently distinctive marks, for which secondary meaning is required.

Here it is to be noted that if more imagination is required by the consumer to get the direct description of the product, then it is to be considered as suggestive and not descroptive.

The court observed that the word royal does not have any connection to rice and a large amount of imagination would be required to make it connectable to rice. After applying competitor’s test the court observed that the word royal is not required by the competitors to describe the quality of rice. The court held that the word royal showing on the packaging of the defendant cannot be permitted as it would lead to dilution of the mark of the plaintiff.

CASE: Lt. OVERSEAS NORTH AMERICA INC. V. KRBL LIMITED

CS (COMM) 347 OF 2022