Delhi High Court makes a U turn on Secondary Meaning and Acquired Distinctiveness

In another twist, a single Judge bench of the Delhi High Court declared the marks "SCHEZWAN CHUTNEY" and "SZECHUAN CHUTNEY" to be descriptive and devoid of secondary meaning, only to be later declared to have acquired "secondary significance" by the Division Bench.

The Single Judge in Capital Foods Private Limited vs Radiant Indus Chem Pvt. Ltd clarified, citing People Interactive (India) Private Limited v. Vivek Pahwa, that large sales figures or commercial success in the market, while establishing goodwill, will not establish that the term has acquired a secondary meaning. According to the court, a term acquires a secondary meaning when it loses its original meaning and acquires a new meaning that only refers to the claimant's.

And in this process of acquiring new meaning, the claimant must also prove that it has been using the term uninterruptedly for a long time. According to the Single Judge, the bar to acquire secondary meaning was set too high. On ascertaining whether a mark is descriptive or not, the single judge applied ‘The Competitor’s Need Test’, whereby it is to be seen if others will need to use the same term to describe their products? If the answer is yes, then the trademark is merely descriptive of the product. However, the Single judge made absolute the interim injunction granted to the Plaintiff with regard to the Defendant’s adoption of a similar trade dress. 

However, as the defendant argued before the Single Judge, granting exclusive rights over the descriptive term will open the floodgates, allowing Tamarind Chutney and Tomato Chutney to be granted protection, shaking the chutney market as well as trademark law! Although I am not sure about the chutney market, the Division Bench order has clearly shaken trademark law for the time being.