UNDERSTANDING DISTINCTIVENESS
The distinctiveness of a trademark is of utmost importance as it makes the trademark unique and allows to differentiate the goods and/or services provided by one person from that of the others. If a trademark is not distinctive, there is a possibility of confusion and/or deception in the minds of the consumers and disruption of the goodwill and/or reputation earned by that particular brand.
The main objective of the trademark laws is to protect the interest of the consumers by guaranteeing that the consumers are not deceived by an identical and/or deceptively similar product available in the market. The main aim of having a distinctive trademark is to remove the chances of confusion in the market and easy identification of the brand and its origin. Therefore, unique, distinctive and creative marks and logos are granted protection to safeguard the rights of the consumers.
MARKET SURVEY – MEANING
In simple words, Market Survey is a test conducted by the researchers to know the prominence of the product in the market. It indicates that at what level, the consumers are aware of the mark or product and how do they associate a particular mark in their mind.
It is to be stated that market surveys, consumer reaction and market searches are important to determine the secondary meaning as well as acquired distinctiveness of a mark in a particular area or class of consumers. To prove the relevance of the market survey, detailed, systematic and procedural questions must be formed and asked from the targeted consumers to ascertain that a proposed mark is viewed as an indication of the source of product or service.
It is rightly said in the case of Stokely Van Camp, Inc & Anr. v Heinz India Pvt Ltd.[1] whereDelhi High Court held that “There is no evidence in the form of consumer survey or otherwise which would at least prima facie have me believe that the registered mark ‘Rehydrate Replenish Refuel’ has achieved trade mark significance in as much as the use of the expression brings to mind the trade origin of the product. The mere use of the mark alone does not necessarily translate in the mark obtaining ‘secondary distinctive meaning‘.”
Therefore, market surveys are important to get a fair idea of the goodwill of the proposed mark in the targeted market. Market survey is novel and relevant pieces of evidence which are acceptable by courts as well as tribunals to prove the distinctiveness of a particular mark.
NEED OF MARKET SURVEY
In the 21st century era, where everything is just one click away, the rights of the intellectual property holders need to be protected in light to provide greater protection to their creation. With emerging techniques of an online platform, there are no set boundaries for the mark to be known to one sector only. The internet/online platform is a global village and accessible to everyone across the whole wide world.
The owners of their intellectual property showcase their goods and/or services on an online platform to gain customers and goodwill. Therefore, in this scenario, there is a high possibility of their mark/brand name getting exploited by the other person.
Thus, it is relevant to conduct a thorough market survey and market search before adopting and investing in a particular brand as it has been seen that no one can plead to ignore the fact they were unaware of the existing brand before adopting a similar and/or identical brand.
In Bennett Coleman & Co. Ltd. v. Steven S Lalwani[2], Panel while passing their decision in the matter, WIPO took cognizance of the following factors:
The newspapers of the complainant had a wide circulation both within and outside India. The newspaper websites would have added to their overall reputation since Internet users around the world could access the sites.
Since the Internet is accessible worldwide, it could not be contended that the trademark of the complainant was not registered in a particular country.
The relevance of market survey was shown prominently in the case of CADBURY UK LTD vs SOCIÉTÉ DES PRODUITS NESTLÉ SA,[3] ruled that Cadbury’s milk chocolates have acquired distinctiveness character in its purple color packaging with Cadbury’s milk chocolates and evidence in the form of public survey established that people associate the purple color (Pantone 2685C) chocolate bars with Cadbury’s milk chocolates.
INDIAN JUDICIARY & MARKET SURVEY
Even the judges and panelists are accepting the concept of the market survey in a positive manner in India. They also believe the internet being the global village has become a good method of creating a market survey as a whole.
In Prestige Housewares India Ltd and Anr v Gupta Light House and Anr[4], the IPAB pointed out that the prospect proprietor is expected to conduct a trademark registry search, market search to ascertain about any similar and/or identical mark already in use.
Further in Info Edge (India) Pvt. Ltd. v/s. Shailesh Gupta &Anr[5], Delhi High Court held that “If an item is promoted in a specific region or spot under an expressive name and has increased notoriety thereunder, that name which recognized it from contending items; it will be secured against distinct use.”
In Aegon Life Insurance Company Limited v/s Aviva Life Insurance Company India Ltd.[6], Bombay High Court held that “High sales and expenses cannot be the sole criteria and the Plaintiff must show market trends, market surveys, etc. to show that this is indeed how the public now perceives the mark and not as a mere description.”
Also in Brooke Bond Lipton India Ltd. vs Girnar Exports[7], The Intellectual Property Appellate Board has stated that “market survey evidence should have relevance on the date of making application for registration of a trademark to determine distinctiveness, goodwill or reputation”
Therefore, conducting a market survey consists a high amount of relevance to prove the genuineness and knowledge of the product in the market to protect the rights of the owners during the litigation or prosecution proceedings.
[1] (2010 (44) PTC 381 (Del)
[2] wipo domain decisions2000-0014
[3] (2012), judgment by Judge Colin Briss of the U.K. High Court
[4] Trasf. Application No./8 And 9/2005/TM/DEL
[5] Manu/DE/0735/2002
[6] Commercial Suit (IP) No. 298 of 2019
[7] 2006 (33) PTC 412 IPAB
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