Can an ordinary dictionary word acquire a secondary meaning and be exclusively associated with one proprietor?

Paragraph 25The respondent has also contended that the word "CYCLE" is a common dictionary word and that no person can claim exclusive rights over such a word. While it is true that an ordinary dictionary word cannot ordinarily be monopolised, the law is equally well settled that such a word may, by reason of long, continuous and extensive commercial use, acquire a secondary meaning and become exclusively associated in the minds of the purchasing public with the goods or business of a particular proprietor. Once such distinctiveness is established, the mark is entitled to protection under the provisions of the Trade Marks Act. Whether a mark has acquired such distinctiveness depends upon the facts and evidence of each case. In this regard, it is useful to refer to the judgment of the Hon'ble Supreme Court in Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., [(2002) 2 SCC 147], wherein the Hon'ble Supreme Court considered whether the defendant's use of the trade name "Mahendra" was deceptively similar to the plaintiff's well known trade name "Mahindra", which had acquired distinctiveness and secondary meaning through long and extensive use. Holding that such use was likely to cause confusion and adversely affect the plaintiff's goodwill and reputation, the Hon'ble Supreme Court upheld the grant of injunction. The relevant observations are extracted below:- “ 24. Judging the case in hand on the touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the words “Mahindra” and “Mahindra & Mahindra” in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name “Mahindra” with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' Group of Companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs' claim of “passing-off action” against the defendant will be accepted or not has to be decided by the Court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant Company which is yet to commence its business from utilising the name of “Mahendra” or “Mahendra & Mahendra” for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned Single Judge.” The above principle was subsequently reiterated by the Hon'ble Supreme Court in T.V. Venugopal v. Ushodaya Enterprises Ltd. and Another, [(2011) 4 SCC 85]. In the said case, the Hon'ble Supreme Court considered whether the descriptive word "Eenadu", by reason of its long, continuous and extensive use, had acquired a secondary meaning and distinctiveness so as to be entitled to protection. The Hon'ble Supreme Court held that although "Eenadu" was originally a descriptive word, it had acquired extraordinary reputation and goodwill, had become exclusively associated with the respondent's business, and that the appellant's dishonest adoption of the identical mark was likely to cause confusion and amounted to an attempt to ride upon the respondent's goodwill. Accordingly, the Hon'ble Supreme Court held that the mark was entitled to protection. The relevant observations are extracted below: - “81. From the above discussions, the following two situations arise: (i) Where the name of the plaintiff is such as to give him exclusivity over the name, which would ipso facto extend to barring any other person from using the same viz. Benz, Mahindra, Caterpillar, Reliance, Sahara, Diesel, etc. (ii) The plaintiff's adopted name would be protected if it has acquired a strong enough association with the plaintiff and the defendant has adopted such a name in common field of activity i.e. the purchaser's test as to whether in the facts of the case, the manner of sale, surrounding circumstances, etc. would lead to an inference that the source of the product is the plaintiff. … … 88. Lastly, the learned counsel for the respondent Company submitted that in any one of the following circumstances the plaintiff would be entitled to injunctive relief even qua a common word: (a) If the factors for justifying absolute protection as per “absolute protection for common words” have been made out then it would ipso facto entitle the plaintiff to protection against the world at large. (b) The protection would be given against any particular defendant if the plaintiff's name has acquired a secondary meaning and the defendant uses the name in a common field of activity i.e. where there are common purchasers. However, the court may decline to grant the relief if such name is descriptive of the defendant's product and not just a name unconnected with the defendant's product. (c) The protection would be granted qua a defendant with relation to even an unrelated product where the tests of dishonest adoption are satisfied and the defendant will be restrained from cashing in or profiting from the plaintiff's name. 89. We have heard the detailed and comprehensive arguments advanced by the learned counsel for the parties. We place on record our appreciation for the able assistance provided by the learned counsel for the parties in this case. We have also carefully examined relevant decided Indian, English and American cases. 90. The respondent Company's mark “Eenadu” has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. “Eenadu” newspaper and TV are extremely well known and almost household words in the State of Andhra Pradesh. The word “Eenadu” may be a descriptive word but has acquired a secondary or subsidiary meaning and is fully identified with the products and services provided by the respondent Company. 91. The appellant is a Karnataka based company which has started manufacturing its product in Bangalore in the name of “Ashika” and started selling its product in the State of Andhra Pradesh in 1995. The appellant started using the name “Eenadu” for its agarbatti and used the same artistic script, font and method of writing the name which obviously cannot be a coincidence. The appellant Company after adoption of name “Eenadu” accounted for 90% of sale of their product agarbatti. 92. On consideration of the totality of the facts and circumstances of the case, we clearly arrive at the following findings and conclusions: (a) The respondent Company's mark “Eenadu” has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent Company's products and services are correlated, identified and associated with the word “Eenadu” in the entire State of Andhra Pradesh. “Eenadu” literally means the products or services provided by the respondent Company in the State of Andhra Pradesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark “Eenadu”; (b) The adoption of the word “Eenadu” is ex facie fraudulent and mala fide from the very inception. By adopting the mark “Eenadu” in the State of Andhra Pradesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent Company; (c) Permitting the appellant to carry on his business would in fact be putting a seal of approval of the Court on the dishonest, illegal and clandestine conduct of the appellant; (d) Permitting the appellant to sell his product with the mark “Eenadu” in the State of Andhra Pradesh would definitely create confusion in the minds of the consumers because the appellant is selling agarbattis marked “Eenadu” as to be designed or calculated to lead purchasers to believe that its product agarbattis are in fact the products of the respondent Company. In other words, the appellant wants to ride on the reputation and goodwill of the respondent Company. In such a situation, it is the bounden duty and obligation of the Court not only to protect the goodwill and reputation of the respondent Company but also to protect the interest of the consumers; (e) Permitting the appellant to sell its product in the State of Andhra Pradesh would amount to encouraging the appellant to practise fraud on the consumers; (f) Permitting the appellant to carry on his business in the name of “Eenadu” in the State of Andhra Pradesh would lead to eroding extraordinary reputation and goodwill acquired by the respondent Company over a passage of time; (g) The appellant's deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the appellant; (h) Permitting the appellant to sell his product with the mark “Eenadu” would be encroaching on the reputation and goodwill of the respondent Company and this would constitute invasion of proprietary rights vested in the respondent Company; (i) Honesty and fair play ought to be the bases of the policies in the world of trade and business.”

Paragraph 26In the present case, the evidence adduced by the appellant establishes that the trademark "CYCLE" has been in continuous use since the year 1954. The documentary evidence relating to registrations, extensive commercial activities, advertisements, exports, sales turnover and the steps taken by the appellant to protect the trademark clearly establish that the mark had acquired substantial goodwill, reputation and distinctiveness much prior to the respondent's adoption of the identical mark in the year 2009. Thus, although the word "CYCLE" is an ordinary dictionary word, it had, by long, continuous and extensive use, acquired a secondary meaning and had become exclusively associated in the minds of the purchasing public with the appellant and its business.