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Once a trademark is identified as descriptive, the conversation does not necessarily end. While descriptive trademarks are generally weak and prone to objections, Indian courts have repeatedly recognised that descriptive words can, in limited circumstances, acquire distinctiveness and become protectable.
This protection does not arise automatically. Courts look closely at how the mark has been used, whether consumers associate the mark with a single source, and whether the mark has moved beyond description to function as a brand identifier.
This article examines how Indian courts have protected descriptive trademarks, the legal principles applied, and the practical limits of such protection.
When Can a Descriptive Trademark Be Protected?
Trademark law draws a clear line between description and identification. A descriptive word may initially describe a product or service, but over time, it can acquire a secondary meaning—a point at which consumers stop seeing the word for its descriptive value and begin associating it with a particular business.
Courts do not ask whether the word is descriptive in isolation. Instead, they ask:
- Do consumers associate the mark with one source?
- Has the mark been used consistently and prominently as a brand?
- Has goodwill been built around the mark?
- Would use by another trader cause confusion?
Only when these questions are answered convincingly does protection arise.
Distinctiveness Through Secondary Meaning
Secondary meaning develops when prolonged and consistent use of a descriptive term causes consumers to associate that term with a specific business rather than the product category.
This mental association is critical. Courts look for evidence showing that the descriptive meaning has been overtaken by brand recognition.
Godfrey Philips India Ltd. v. Girnar Food and Beverages Pvt. Ltd.
In this case, the dispute centred around the term “Super Cup” used for tea. The defendant argued that “Super Cup” was a common descriptive or laudatory expression that could not be monopolised.
The Supreme Court, however, focused on consumer association. It noted that the plaintiff had built substantial goodwill around the term and that consumers had come to associate “Super Cup” specifically with the plaintiff’s tea product.
The Court recognised that even descriptive or common words can function as trademarks if they acquire secondary meaning. Protection was granted, and the defendant was restrained from using the term.
Key takeaway:
Descriptiveness does not bar protection when evidence shows strong consumer association with a single source.
Distinctiveness Through Prolonged and Exclusive Use
Secondary meaning is often the result of long, uninterrupted use, supported by consistent branding and market presence. Courts place significant weight on duration, continuity, and exclusivity.
Metropolitan Trading Company v. Shri Mohanlal Agarwal (Zodiac Case)
The appellant had been using the mark “Zodiac” for garments for over three decades. When a competing trader sought registration of the same mark, the appellant opposed the application.
The IPAB observed that although “Zodiac” is a dictionary word, prolonged and exclusive use had resulted in the mark acquiring distinctiveness in the garment trade. Consumers associated “Zodiac” garments with the appellant alone.
The respondent, being a relatively new entrant, was denied registration.
Key takeaway:
Length and consistency of use can outweigh the descriptive or dictionary nature of a word.
Protection Through Overall Presentation and Trade Dress
In some cases, protection is not granted solely because of the word mark, but because of the overall manner in which the product is presented to consumers.
Heinz Italia & Anr. v. Dabur India Ltd. (Glucon-D Case)
The dispute involved “Glucon-D” and “Glucose-D.” While “glucose” is undeniably generic, the Supreme Court focused on deceptive similarity, including packaging, colour scheme, and phonetic resemblance.
The Court held that the overall similarity between the products was likely to confuse consumers and granted an interim injunction against the defendant.
Key takeaway:
Even where individual elements are descriptive or generic, courts may grant protection when the overall commercial impression causes confusion.
Protection of Descriptive Words in Unique Combinations
Courts have also recognised that a distinctive combination of descriptive words can function as a trademark.
Sky Enterprise Pvt. Ltd. v. Abaad Masala and Co.
The plaintiff had registered marks such as “Black Chinese Pepper Masala” and “White Chinese Pepper Masala.” The defendant argued that these were generic, descriptive terms required for trade.
The Court disagreed, noting that while individual words were descriptive, the specific combination, along with consistent and distinctive use on packaging, created a unique identity associated with the plaintiff.
An injunction was granted restraining the defendant from using identical or deceptively similar combinations.
Key takeaway:
Descriptive elements, when combined in a distinctive and recognisable manner, can receive protection.
What These Cases Reveal About Protecting Descriptive Trademarks
Across these decisions, certain principles emerge clearly:
- Descriptive trademarks are not automatically unprotectable.
- Courts focus on consumer perception, not theoretical classification.
- Evidence of goodwill, reputation, and association is critical.
- Protection is often narrow and context-specific.
- Enforcement depends heavily on facts and presentation.
The Practical Limits of Protection
Despite these successes, courts consistently caution against over-extending rights in descriptive marks. Even when protection is granted:
- The scope of exclusivity is limited.
- Protection may be confined to specific goods or trade channels.
- Enforcement against unrelated uses may not succeed.
- The evidentiary burden remains high.
Relying on descriptiveness is therefore a defensive strategy, not an ideal branding approach.
A Practical Perspective for Brand Owners
These cases demonstrate that descriptive trademarks can be protected—but usually after years of use, substantial evidence, and often litigation.
For new or growing businesses, building a brand around a name that is distinctive or suggestive from the outset remains the safer path. Descriptive marks demand long-term investment and offer narrower protection.
For a practical explanation of how trademark examiners distinguish between descriptive and distinctive marks at the registration stage, see our detailed guide on Distinctive vs Descriptive Trademarks: Why Many Brand Names Get Rejected in India.
Final Thought
Descriptive trademarks can evolve into protectable assets—but only when they stop describing and start identifying. Courts recognise this transformation carefully and sparingly, guided by evidence rather than intent.
Understanding where a mark stands on this spectrum helps businesses make informed decisions about branding, enforcement, and long-term trademark strategy.