Registering trademarks enables brand owners to stop others from using their trademarks and to prevent public confusion about the source of goods or services. However, certain exceptions permit the use of another’s trademark to describe the user’s products or services (as illustrated in Section 30 of the Trade Marks Act, 1999: Limits on the effect of a registered trade mark).  

Many jurisdictions will not consider a purely descriptive use of another person’s trademark as infringement. Descriptive use allows a party to use a third-party’s trademark to describe its own goods or services, instead of using it to represent the source of those goods or services. However, what constitutes descriptive use, and what this defense’s limitations are, may vary across jurisdictions. 

Conditions Permitting Use of a Third-Party’s Trademark in India 

India provides qualified exclusive rights to trademark owners. Through provisions in the Trade Marks Act, 1999 and judicial precedents, the law limits the effect of registered trademarks and permits their usage without the proprietor’s consent under certain conditions. These conditions can be broadly categorized as follows: 

1. Use as per Honest Practices and Not for Taking Unfair Advantage (Section 30(1) of Trade Marks Act, 1999): 

India does not consider a third-party’s use of a registered trademark to identify its goods or services as infringement if the third party establishes that such use: 

• Is in accordance with honest practices in the trade; and 

• Does not take unfair advantage of or harm the distinctive character or repute of the trademark. 

One of the earliest Indian judgments addressing this issue is Hawkins Cookers Limited v. Murugan Enterprises, (2008 (36) PTC 290 (Del), decided on January 4, 2008; appeal: RFA(OS) 09/2008, decided on April 13, 2012). Here, the Delhi High Court dealt with a trademark infringement claim. Murugan Enterprises sold pressure cooker gaskets under the name MAYUR and used Hawkins’ trademark on the packaging to indicate compatibility with Hawkins’ pressure cookers. Hawkins alleged trademark infringement, arguing the defendants’ use was not honest and amounted to infringement. 

The Single Judge Bench ruled that the defendants’ use was not trademark infringement, as it was merely descriptive and indicated purpose. However, upon appeal, the Division Bench agreed with the legal interpretation but disagreed with the facts’ application. It noted that Hawkins had not specifically designed the gasket for its products and that other manufacturers used similar references. The court found that the defendants’ use of Hawkins’ trademark was too prominent and not in line with honest commercial practices, leading to a ruling in favor of Hawkins for trademark infringement.

The Single Judge Bench ruled that the defendants’ use was not trademark infringement, as it was merely descriptive and indicated purpose.

In Renaissance Hotel Holdings Inc. v. B. Vijaya Sai And Others (Civil Appeal No. 404 of 2022 (arising out of SLP(C) No. 21428 of 2019)), the Supreme Court of India opined in its judgment on January 19, 2022, that: 

for availing the benefit of Section 30 of the said Act, it is required that the twin conditions, i.e., the use of the impugned trade mark being in accordance with the honest practices in industrial or commercial matters, and that such a use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark, are required to be fulfilled. 

It further reiterated the basic tenet of interpretation of statutes that if the sub-clauses are separated by the word “and” and not “or,” then one must consider all sub-clauses as cumulative and not standalone.

2. Use for Indicating Characteristics of Goods or Services (Section 30(2)(a) of Trade Marks Act, 1999): 

When a third party uses another person’s registered mark to describe characteristics of its goods or services, then India does not consider this use to be an infringement of a registered mark. In particular, when the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services, this third party use will not fall under infringement of the registered mark. 

The Madras High Court discussed this in its decision of March 13, 2020, in M/S Matrimony.Com Limited v. Kalyan Jewellers India Limited, AIR 2020 (NOC) 688 (MAD). While deciding on the use of the registered marks TAMIL MATRIMONY (where Tamil is a language and “matrimony” means the state of being married) as adwords, the court held: 

The appellant has not demonstrated that it has attained the secondary meaning especially when the nature of trade and business is in tune with the natural meaning of the word. The word Tamil which depicts the language gives a certain identity. A combination of these two words is one of absolute necessity to cull out the information required. As stated, this is the very essence of search engine optimization and marketing. 

Delhi High Court (Division Bench) held in Marico Limited v. Agro Tech Foods Limited, [2010] 44 PTC 736 (Del DB) on November 1, 2010, that the respondent’s use of the expression “WITH LOW ABSORB TECHNOLOGY” is only a descriptive use of normal words in the English language indicative of the kind, quality, and intended purpose of the characteristics of the goods.  

Further, the court opined that even though Section 30(2) (a) of the Trade Marks Act does not explicitly mention bona fide use, one can infer that it is encompassed within the provision. This is because the use of words that indicate their connection to the goods—such as the kind, quality, intended purpose, or other characteristics—clearly reflects bona fide use.  

3. Use of Mark Registered with Restrictions (Section 30(2)(b) of Trade Marks Act, 1999): 

When a trademark is registered with restrictions or conditions, third-party use is permissible within those restrictions or conditions. 

4. Not Using the Mark as a Trademark (Section 30(2)(c) of Trade Marks Act, 1999): 

Using a registered trademark not as a trademark but for other purposes, such as describing a product, does not amount to infringement of the registered mark. 

Delhi High Court discussed this in Nestlé India Ltd. v. Mood Hospitality Pvt. Ltd., [2010] 42 PTC 514 (Del DB) in its decision on February 10, 2010. In this case, Nestlé (appellant) launched cup/instant noodles under the name and style of MAGGIE CUPPA MANIA, with two flavors MASALA YO! and CHILLI CHAO YO! 

Mood Hospitality Pvt. Ltd. (respondent) contended that the plaintiff’s use of YO! infringed its marks YO! and YO! CHINA. One of the reasons the court gave for deciding in the appellant’s favor was that the use by the appellant was only as an expression to indicate the flavors of the noodles and not as a trademark. 

5. Use for Goods Adapted to Form Part of or Accessory to Goods Under a Registered Mark (Section 30(2)(d) of Trade Marks Act, 1999): 

Third parties do not infringe a registered trademark when they use it only to indicate their goods are compatible with or accessories to the trademarked products if:

• The use is reasonably necessary to indicate compatibility; and 

• It does not imply a trade connection with the trademark owner. 

Generally, such use of registered marks of another person is prevalent among spare part manufacturers and service providers of specific brands. But how does one break the connection between a genuine spare part manufacturer/service provider and an authorized part manufacturer /service provider that precedents have established? 

The Delhi High Court set one such precedent in its judgment in Mahle Filter Systems India Private Limited (plaintiff) v. Mobis India Limited & Anr (defendant) on December 20, 2018. In this case, the plaintiff manufactured oil and air filters suitable for HYUNDAI cars. While selling its products the plaintiff wrote “suitable for Santro” (a Hyundai trademark for one of its cars) to communicate to customers that they could use them in HYUNDAI cars.  

However, this use of the defendant’s trademarks is likely to indicate a similar trade connection between the plaintiffs and the defendants as between the defendants and their authorized equipment manufacturers. To break this connection, the court held that Mahle would have to replace “suitable for” with “adapted to form part of” and below this amendment endorse in the same font, “WE HAVE NO TRADE CONNECTION WITH HYUNDAI.” 

In Govt. E-Marketplace v. Unilex Consultants, [(2022) (CS (COMM) 205/2020 & CCP(O) 25/2020 & IA Nos. 4967/2020, 4753-54/2021)], the Delhi High Court stated in its decision of April 18, 2022, in which it passed an injunction against the defendants, that:  

This would, however, not prevent the said defendants from using the term ‘GeM’ to refer to the Plaintiff and to refer to the services the defendants are providing with respect to the Plaintiff’s GeM portal, as a means of information to the general public in a descriptive manner. 

6. Use of Name, Address, or Description of Goods or Services as a Trademark (Section 35 of Trade Marks Act, 1999): 

A proprietor or registered user of a registered trademark cannot stop use by a third person if the registered trademark is also:  

• The name of a third person or predecessor of the third person; 

• The name of the place of business of the third person or that of the predecessor in the business; or 

• That which describes the character or quality of the goods or services of the third person. 

While permitting this defense, a defendant has to establish that the use is bona fide use. Bona fide use normally means honest use by the person of his own name without any intention to deceive anybody or without any intention to exploit the goodwill which has been acquired by another trader.  

If a defendant’s use of his own name was likely to deceive, the passing-off action would have no defense, no matter how honest and bona fide the user was. Once the claimant has proved the elements necessary for passing off, and, in particular, the deception of the public, or its likelihood, the concept that the defendant escapes liability because he is making bona fide use of his own name, is a difficult one. 

Thus, whenever this defense is taken, an examination of the facts of the case determines whether this plea should apply. 

If a defendant’s use of his own name was likely to deceive, the passing-off action would have no defense, no matter how honest and bona fide the user was.

Requirements and Evidence  

Based on the previous reading, some factors that may play an important role in deciding the validity of the defense of descriptive use include: 

• Reputation of the trademark used; 

• Impact on the trademark’s reputation due to the third-party’s use; 

• The third-party’s intention while using the registered mark; 

• Impression given of a commercial relationship between the third party and the registered proprietor; 

• Prominence given to the registered mark when used by the third party; 

• Practice adopted within the trade; and/or 

• Restrictions levied while registering the trademark. 

When taking the defense of descriptive use, the onus falls on the defendants to provide evidence. To establish such claims, Indian courts generally tend to accept one or more of these types of evidence:

• Consumer/market surveys are important in deciding how consumers perceive the use of a particular mark. Such surveys could also help in establishing that the registered mark of a third party is per se descriptive and has not attained secondary meaning. That said, the weight of such evidence will depend upon the kind of samples drawn and the questions asked to consumers. 

• Publications show how the trademark has been used. Such samples help to establish if the contested mark was only used in a descriptive manner or if undue prominence was given to the registered mark in question or if the use harmed the reputation of the mark’s proprietor.

• Video advertisements are construed differently from paper advertisements and screen-time and prominence given to the use of a third-party mark may have a different impact on consumers of video advertisements. 

• Scientific reports and expert opinions assist in establishing whether the impugned trademark describes characteristics of the goods or services for which it has been used. Submissions of such reports from government-run facilities or popular laboratories tend to have a stronger impact. 

• Investigative reports are relevant in establishing the extent and reach of the use of a mark. 

• Internet searches play an important role these days in producing evidence of the use of a mark by other traders in the industry. 

• Records of trademark searches, company name filings, and domain names add as corroborative evidence. Such prior registrations prima facie establish distinctiveness of the mark in question.
  
  

The descriptive use defense in India is well-defined under the Trade Marks Act, 1999 and supported by evolving case law.

Backed by Law and Courts 

The descriptive use defense in India is well-defined under the Trade Marks Act, 1999 and supported by evolving case law. Courts consistently consider the defendant’s intent, trade practices, and evidentiary support. Recent judgments reinforce that descriptive use must not dilute the trademark’s distinctiveness or goodwill, ensuring balanced protection for proprietors and fair usage rights for third parties.