M/S.Heinz Italia & Anr vs M/S.Dabur India Ltd on 18 May, 2007
However this is not and cannot /should not
be so for a trademark which is a descriptive word mark. Some
CS(COMM) 174/2019 Page 29 of 39
colour has to be taken for the word „distinctive‟ as found in the
proviso to Section 9 from the expression „well known
trademark‟ which follows the distinctiveness aspect as found in
the said proviso. Courts should ordinarily lean against holding
distinctiveness of a descriptive trademark unless the user of such
trademark is over such a long period of time of many many years
that even a descriptive word mark is unmistakably and only and
only relatable to one and only source i.e. the same has acquired
a secondary meaning. A case in point is the use of „Glucon-D‟
for 60 years in the recent judgment in the case of Heinz Italia
and Another Vs. Dabur India Ltd. (2007) 6 SCC 1. A period of 60
years is indeed a long period of time and thus distinctiveness of
the descriptive word mark used as a trademark was accepted,
albeit in a tweaked form of the normal descriptive word
„Glucose‟. Therefore, when the descriptive trademark is used
only by one person undisturbed for a very long period of time,
without anyone else attempting to use the trademark during this
long period time, a case can be established of a descriptive word
having achieved distinctiveness and a secondary meaning.