Trademark Thresholds: Exploring the Generic Word Conundrum

Trademark Thresholds: Exploring the Generic Word Conundrum

This piece has been authored by Vidushi Sehgal and Rahil Arora , 4th year, Jindal Global Law School

Keywords: Trademark Law, Generic Words, Distinctiveness, Industry-Specific Protection, Territorial Principle


With the rise of competitive economic markets, the business proprietor tries to attract consumers and distinguish their goods and services by assigning special marks to the nature of their business. Simultaneously, there has been an escalating need to protect these marks to circumvent unauthorized proprietors to cash on the reputation built by another person. In the sphere of Intellectual Property, trademark laws endeavor to prevent consumer confusion resulting from the use of similar marks in the marketplace, while safeguarding the distinct brand identities of various businesses. For a word or symbol to be eligible for trademark protection, certain prerequisites must be satisfied. These prerequisites often include demonstrating distinctiveness and avoiding the use of generic terms. However, trademark disputes rarely are resolved through straitjacket formula. As they frequently unfold in shades of grey and present complex scenarios for courts to navigate; sometimes the threshold of distinctiveness becomes blurred and trademark protection is granted to what may appear to be generic or common words. For instance, it would be unreasonable to grant exclusive rights to the word “apple” for merely selling apples, unless, of course, acquires distinctiveness through secondary meaning. This paper tries to analyse where to draw the line when determining if and when such generic or common words can qualify for trademark protection.

The Bennet Coleman Case

Within the news industry, the case of Bennet Coleman and its decision to grant protection upon the term “The Newshour” serves as a notable illustration of courts granting protection to generic terms. This protection was conferred on the premise that the term had been in continuous use since 2006 and has gained popularity through particular news programs, thereby acquiring its distinct identity and goodwill. It is argued that the mark protected is merely a combination of common words and any prudent man will normally associate it with general news.

Sliding scale of distinctiveness

One of the central issues in the debate about generic words as trademarks is distinctiveness. Trademarks are designed to be distinctive, serving to differentiate the products or services they signify from those offered by competitors. On the other hand, generic words, by their nature, describe the overall category of products or services and lack distinctiveness as they directly refer to the product or service itself. So, how does a term like “The Newshour” attain protection as a trademark? Such a situation arises when a word has been in continuous use, and through popularity, it has gained a meaning distinct from its generic interpretation. Further, recently, the Delhi High Court also reiterated that words of ordinary English usage cannot be protected unless it has acquired distinctiveness. This principle is well illustrated by the transformation of the term “Amazon” which earlier referred to a geographical location, but through years of extensive use and branding, “Amazon” has acquired distinctiveness and is now a globally recognized trademark.

Market success often serves as a criterion for secondary meaning, and it is argued that such an approach should be looked into, as any powerful proprietor with substantial resources and marketing capabilities can turn any generic word into a recognizable brand. While the sliding scale approach to distinctiveness is based on secondary meaning offers flexibility and mirrors the real-world complexities of trademark recognition, it does have its own limitations. These includes subjectivity, complexity, and the potential for abuse, particularly as smaller proprietors might struggle to protect their marks. For instance, consider Company X and Company Y, both operating in the food industry and using the term “Fruit Punch“; Company X has achieved substantial market success, while Company Y, despite having been in the business longer than X, operates as a smaller proprietor. However, when assessing their respective claims for trademark protection, the sliding scale of distinctiveness comes into play. This approach highlights that the distinctiveness of “Fruit Punch” can vary between companies. Company X, through its high popularity may acquire distinctiveness, while Company Y, due to its limited market presence, may face challenges in establishing such distinctiveness.

Industry-Specific Considerations

Consideration of generic words as trademarks requires an examination of the industry context in which they are applied. The suitability of generic words as trademarks varies across different industries. It is contended that certain words should be ineligible for trademark protection based on the unique characteristics of the respective industry. In the ongoing legal proceedings of Capital Food Private Limited v. Radiant Indus Chem Pvt. Ltd., the Court, in an order dated 11.01.2023, initially deemed the term ‘Schezwan Chutney’ as descriptive, although this decision was later stayed by a subsequent order. However, in light of our current discussion, it is important to take into account the defendant’s argument, stating that if protection is afforded to the term ‘Schezwan Chutney,’ similar consideration should be extended to ‘Tamarind Chutney‘ or ‘Tomato Chutney‘. This discussion highlights the significance of industry-specific considerations.

In the realm of food and beverages, common words like “Fruit Juice” or “Mineral Water” may serve as descriptive product identifiers that help consumers make informed choices. Seeking trademark protection for these generic terms might not be suitable, as it could restrict the use of words necessary for transparent product labelling. Therefore, in industries where descriptive terms are crucial for identifying products and services, setting a higher threshold for trademark protection is essential in order to prevent companies from monopolizing generic words that are commonly used within their respective sectors.

On the other hand, in the technology sector, the criteria for trademark protection can differ. In this industry, a higher value placed on distinctive and unique branding. For example, a company unveiling a groundbreaking smartphone may choose to trademark a term like “SmartCover” to communicate its innovative features. Unlike some other sectors, the technology industry may set a lower threshold for trademark protection, encouraging companies to engage in creative branding to distinguish their products within a competitive market. These instances highlight the industry-specific nuances in evaluating generic words as trademarks, emphasizing that the nature of the industry should guide the threshold for protection. This approach seeks to strike a balance between product identification and brand distinctiveness.

The Role of the Territorial Principle

The case of “Newshour” in India and its concurrent use by BBC in another territory raises pertinent questions about where to draw the line when it comes to protecting generic words as trademarks. While acknowledging the importance of adhering to the territorial principle that restricts intellectual property rights to the country where they are granted and recognizing the need for businesses to protect their distinctiveness within their registered territories, another question concerning generic words emerges. Whether certain words which are common and widely used across different regions, should be granted exclusive trademark protection at all?

Determining this line entails the delicate task of balancing the rights of businesses to protect their brand identity with the broader public interest. In some cases, it might be reasonable to exclude certain generic words from trademark protection if their common usage in a particular industry or their integration into everyday language is so pervasive that granting exclusive rights would be impractical. This argument underscores the need for a nuanced approach when deciding which generic words can be protected as trademarks and where the line should be drawn to strike a balance between brand protection and the public’s right to use common words.

For example, the scenario in which an Indian shoe company successfully trademarks the term “High Heels” and, a US company uses the same term to promote its product. This situation illustrates the variance in the application of the sliding scale theory, a principle that takes into account a term’s distinctiveness and secondary meaning in a given market. In India, “High Heels” may have successfully acquired a secondary meaning, rendering it eligible for trademark protection. In contrast, in the U.S., it might still be perceived as a generic term, thereby failing to meet the criteria for trademark protection. This example highlights the importance of understanding the nuanced application of trademark principles across different regions and industries.


The issue of generic words as trademarks is a multifaceted and continually evolving aspect of trademark law. Finding the right balance between protecting intellectual property and promoting fair competition is of utmost importance. The Bennett case serves as a reminder that the threshold for granting trademark protection to common words should be considered carefully and judicious application should take place to avoid potential issues and disputes. To address these challenges, firstly, the concept of secondary meaning should be applied cautiously, requiring a higher threshold to prevent potential overreach by powerful entities. Secondly, industry-specific considerations must play a vital role in assessing trademark applications. Stricter criteria should be set in place for industries where descriptive terms are indispensable for consumer understanding. Ultimately, the protection of common words as trademarks should be grounded in a thoughtful and balanced approach that acknowledges the need to encourage innovation protect intellectual property and concurrently foster a fair and competitive market environment. The determination of the threshold for granting protection should be approached with careful consideration, taking into account the unique circumstances of each case and the industry in question.

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