It is a common practice for organizations/businesses to use abbreviations in relation to their brands. From Indian Space Research Organisation (ISRO) to Mahashian Di Hatti (MDH), from Bavarian Motor Works (BMW) to Kentucky Fried Chicken (KFC) and from Louis Vuitton (LV) to Madras Rubber factory (MRF) and General Electrics (GE), all these brands changed their strategy by adapting abbreviations to connect with their consumers easily.
In this post, we will look into the aspects of registering abbreviations as trademarks under the Indian Trademark laws and attempt to list out the requisite considerations associated with adopting an abbreviation as a brand name.
NATURE OF ABBREVIATIONS – DESCRIPTIVENESS
As per the trademark law, for a word/term to qualify for registration as a trademark, it should not be a generic or a common term to trade or be recognized by customers as being descriptive of the kind/quality/character/intended purpose of specific goods/services. However, most abbreviations would be considered descriptive and non-distinctive as they are formed out of words that could be generic/common to trade. In such instances, it becomes difficult to claim exclusive rights when the trademark itself is incapable of being associated with a single source, like ‘VIT’ for Vitamins or ‘EV’ for Electric Vehicles. Under these conditions, how can an abbreviation qualify as a valid trademark? How does one seek registration/protection of an abbreviation as a trademark?
In the matter of S.B.L. Ltd. vs. Himalaya Drug Co, the Court emphasised on the test of overall similarity while deliberating upon the broad and essential features of both the marks and the effect on the consumers. The plaintiff’s liver tonic was labelled ‘Liv. 52’ and the defendant’s mark ‘LIV-T’ dealt with homeopathic and ayurvedic preparations. In both instances, the word ‘Liv’ was an abbreviation for liver. The Court held that abbreviation ‘Liv’ for Liver was generic or commonly used and falls under the domain of public juris. Hence the Court denied both the parties an exclusive proprietary right.
The Delhi High Court, in the decision of Bharat Biotech International Ltd. vs. Optival Health Solutions Pvt. Ltd. and Ors., provided clarification in relation to the nature of acronyms that may make valid trademarks. In the instant case, the facts in issue pertained to the acronym TCV – the full form being Typhoid Conjugate Vaccine, that was being used by the plaintiff as ‘TYPBAR-TCV’ and the defendant as ‘ZYVAC-TCV’. The Court opined that the vaccine ‘Typhoid Conjugate Vaccine’, was common to the trade world over, especially in the medical community as ‘TCV’. Therefore, the mark ‘TCV’ being a generic abbreviation, as also being descriptive of the goods it related to, was incapable of trademark protection.
From the observations made by the Courts, it is clear that an abbreviation that is generic, common to trade or carries a descriptive meaning in itself cannot be registered or even enforced unless added to another distinctive and non-descriptive term like TYBAR-TCV/ Liv. 52. Here, the comparison is made on the basis of the perception of the trademark as a whole and not just the abbreviation.
NATURE OF ABBREVIATIONS – NON-DISTINCTIVE
Let us now look at the decisions where the Courts have found that the abbreviation by itself has trademark value and ought to be protected. In general practice, abbreviations, especially those formed of less than 3 letters, are usually not considered inherently distinctive, unless on certain occasions it is proven with substantial evidence that such a mark has acquired distinctiveness or a secondary meaning has come to be associated with it, by virtue of such extensive use. Some of the popular examples are GE, HP, LG etc.
This concept of acquired secondary significance has been a deciding factor in the Delhi High Court’s judgement in Larsen and Toubro Limited vs. Lachmi Narain Trades and others, which dealt with the abbreviation trademark ‘LNT’/‘LandT’. The Court studied the evidence produced by the plaintiff and observed that ‘LandT’ had acquired a secondary meaning exclusively associated with the plaintiff, owing to its continuous use over the course of nearly 50 years, whereas, the Respondents, being in business for some years, had started using the abbreviation ‘LNT’ only recently. It was held that the trademark ‘LandT’ was identified with the goods marketed by the plaintiff and as a result, its use could not become permissible for expressions like ‘Lachmi Narain Trades’.
Similarly, the Madras High Court in the decision of VIT University vs. Bagaria Education Trust and Ors., also relied on the distinction and secondary significance acquired by the plaintiff in relation to the abbreviation ‘VIT’ and recognised the exclusive rights of the plaintiff to use ‘VIT’ as trademark.
An abbreviation may be granted protection if it is not common to trade practices, has distinctive focal element(s) attached to it, its full form does not carry any descriptive meaning, or it is proved with substantial evidence that the abbreviation has acquired distinctiveness or secondary significance by way of use. By observing the rulings of various Courts over the years, we are given a basic sense of the principles that are relied on, while deciding whether an abbreviation deserves to be registered as a trademark or not, and some of them are as follows:
- Acquired distinctiveness or secondary significance, by way of longstanding, extensive and exclusive use of the trademark: This is case-specific and is decided on the basis of the evidence produced.
- Overall perception of the trademark: This is decided based on the anti-dissection principle and the ‘dominant feature’ rule.
- Common to trade or descriptiveness: The concept of publici juris is considered since no single business is allowed to claim monopoly or have exclusive rights over a generic term. The full form of the abbreviation is examined to check if it is directly pointing towards the goods/services bearing the trademark.
The problem with the protection of an abbreviation as a trademark is not the registration; rather it is the enforcement of the rights that creates more hassles. There are many industries (as seen above like pharmaceutical, electrical etc.), that follow the trend of adopting brand names that are derived from or consist of generic terms that are common to trade. In such cases, since one business cannot claim monopoly over a generic trademark, it is added to a distinctive element, which is precisely the reason why it is easier to protect an abbreviation as a part of a composite mark (in whole), as opposed to protecting and enforcing it by itself.
Image Credits: Photo by Alexey Mak on Unsplash
An abbreviation may be granted protection if it is not common to trade practices, has distinctive focal element(s) attached to it, its full form does not carry any descriptive meaning, or it is proved with substantial evidence that the abbreviation has acquired distinctiveness or secondary significance by way of use.