The court rules that 'D-TAN' is a descriptive term, not eligible for exclusive trademark protection.
In a landmark decision, the Delhi High Court has ordered the cancellation of the trademark registration of 'D-TAN', previously held by Visage Beauty and Health Care Pvt. Ltd., determining it to be a descriptive term lacking distinctiveness. The judgment, delivered by Justice Tushar Rao Gedela, highlights the significance of distinctiveness in trademarks for protection under the Trade Marks Act, 1999.
The case was brought forward by Honasa Consumer Ltd., which filed a rectification petition under Section 57 of the Trade Marks Act, 1999, challenging the registration of the 'D-TAN' trademark by Visage Beauty. Honasa argued that 'D-TAN' was a common term used to describe products intended for the removal of tanned skin, making it incapable of distinguishing the goods of one entity from another.
Visage Beauty defended its trademark, claiming extensive use and substantial goodwill built over 15 years, arguing that 'D-TAN' had acquired secondary meaning in the market. However, the court found no evidence supporting the claim of secondary significance, emphasizing that sales figures alone do not establish distinctiveness.
Justice Gedela noted that the term 'D-TAN', derived from the words 'de' (indicating removal) and 'tan' (referring to tanned skin), directly describes the product's intended purpose. The court also referenced industry-wide usage of the term as a descriptor, supporting the argument that 'D-TAN' is not distinctive or eligible for exclusive trademark protection.
In its ruling, the court directed the Registrar of Trade Marks to cancel the registration of 'D-TAN' under Class-3, granted to Visage Beauty, within four weeks. The judgment underscores the importance of distinctiveness in trademarks and prevents monopolization of common descriptive terms, ensuring fair competition in the market.
Bottom line:-
Trade Mark Law - A descriptive mark that lacks distinctive character cannot be registered under the Trade Marks Act, 1999. Honest concurrent use under Section 12 of the Act does not confer exclusive rights to restrain others from using similar descriptive terms.
Statutory provision(s): Trade Marks Act, 1999 Sections 9, 12, and 57
