Introduction
In trademark law, not all marks enjoy equal protection. While inherently distinctive marks like “KODAK” or “XEROX” easily qualify for trademark registration, descriptive and numerical marks must clear higher legal hurdles. Since these marks often lack inherent distinctiveness, their registrability depends on whether they have achieved acquired distinctiveness, also known as secondary meaning.
This doctrine acts as a crucial lifeline for descriptive or numerical marks, enabling them to gain legal protection if they become uniquely associated with a single source through consistent use and market recognition.
What Are Descriptive and Numerical Marks?
1. Descriptive Marks
Descriptive marks directly describe a product’s features, quality, use, or origin.
Examples:
- “Extra Strong” for coffee
- “Fresh” for juices
The challenge? Convincing the Registrar that consumers see “Fresh” as your brand—not just a product characteristic.
2. Numerical Marks
Numerical marks such as “2000” or “501” typically lack distinctiveness unless used in a unique manner or backed by long-term recognition.
Example:
Levi’s “501” jeans. Originally just a number, it eventually became synonymous with a particular style due to decades of promotion and market dominance.
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Understanding Acquired Distinctiveness
Acquired distinctiveness refers to the process by which a non-distinctive mark gains the power to identify a specific business source in the minds of consumers. Through extensive, continuous, and exclusive use, even generic or descriptive terms can evolve into protectable trademarks.
This doctrine allows:
- Common words
- Descriptive phrases
- Numbers
to evolve into strong brand identifiers when supported by clear evidence of consumer association.
Legal Framework: The Trade Marks Act, 1999
The Trade Marks Act, 1999 clearly outlines what makes a mark eligible—or ineligible—for trademark registration.
Section 9(1): The Statutory Barrier
A mark is refused registration if it is:
- “Devoid of any distinctive character,” or
- Consists exclusively of signs indicating quality, kind, quantity, geographical origin, or characteristics of goods/services.
In simple terms:
Descriptive and numerical marks cannot be registered—unless they acquire distinctiveness.
The Exception: Acquired Distinctiveness
Section 9(1) allows registration if a mark has acquired a secondary meaning through:
- Extensive use
- Advertising
- Market recognition
Thus, a descriptive or numerical mark can “level up” into a protectable trademark if evidence proves the public associates it uniquely with the brand.
How to Prove Acquired Distinctiveness? (The Evidentiary Challenge)
To prove that consumers associate a descriptive or numerical mark with your business, the applicant must present strong, multi-dimensional evidence.
1. Extensive and Continuous Use
Courts evaluate:
- Length of Use: Typically several years
- Volume of Use: Scale of commercial operations
- Geographical Spread: Regional or nationwide use
- Consistency: Uninterrupted commercial presence
2. Consumer Recognition and Association
This is the heart of acquired distinctiveness.
Evidence may include:
- Consumer surveys showing recognition
- Market research demonstrating awareness
- Media coverage referencing the brand
- Industry recognition such as awards or expert acknowledgment
3. Advertising and Promotional Investments
Strong advertising efforts support a claim for distinctiveness.
Indicators include:
- Advertising expenditure reports
- Print, digital, TV, and outdoor campaign data
- Participation in trade fairs and sponsorships
- Sales revenue from products sold under the mark
4. Market Position and Commercial Success
Clear evidence of success strengthens the case:
- Market share comparisons
- Sales volume data
- Distribution network size
- Customer loyalty and repeat purchase records
Illustration
Consider a descriptive-numerical mark like “Silver123” used consistently for jewellery across India for over 10 years. With:
- Significant ad spends
- High nationwide sales
- Survey evidence showing consumers link “Silver123” to a single jewellery brand
…the applicant can successfully overcome a Section 9(1) objection by proving acquired distinctiveness.
Key Case Laws on Acquired Distinctiveness
1. N.R. Dongre v. Whirlpool Corp. (1996)
“Whirlpool” acquired distinctiveness in India due to long-standing use and aggressive advertising—even before the brand entered the Indian market.
2. Yahoo! Inc. v. Akash Arora (1999)
The Delhi High Court held that “Yahoo!”, a dictionary word, had gained distinctiveness through global reputation and extensive promotion.
3. M/s. Balan’s Tea v. Registrar of Trademarks (1993)
The Kerala High Court held that “Good Luck Tea,” despite using common words, was capable of becoming distinctive due to continuous and extensive use and public recognition.
4. Vineet Kapur v. Registrar of Trade Marks (Delhi HC, 2025)
The mark “2929” was held inherently distinctive as an arbitrary numeral combination. The Court directed registration, emphasizing that distinctiveness is context-based and cannot be denied merely due to common use of digits.
Conclusion
Acquired distinctiveness is the bridge between descriptive use and exclusive trademark rights. It transforms ordinary words or numbers into powerful brand assets through consistent use, recognition, and strategic branding.
Rather than a last resort, acquired distinctiveness should be viewed as a strategic pathway—allowing descriptive and numerical marks to evolve into iconic, protectable trademarks. With robust evidence and sustained use, even simple marks can gain strong legal protection and significant commercial value.
Disclaimer: This blog is for general informational purposes only and does not constitute legal advice. Privacy laws may vary based on circumstances and jurisdiction. Readers are advised to consult a qualified legal professional, such as Bisani Legal, for specific advice regarding data protection, privacy rights, or related legal concerns.
