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January 8, 2021

Generic Marks not Protectable as Trademark

Author: Sneha Tandon

In Delhivery Private Limited v. Treasure Vase Ventures Private Limited [CS (COMM) 217/2020, I.As. 5109/2020, 6523/2020 and 6572/2020], a Single Judge [V. Kameswar Rao, J.] of the High Court of Delhi vide an order dated October 12, 2020, allowed the Defendant’s prayer by vacating its earlier ex-parte interim order dated July 03, 2020, injuncting the Defendant from using the mark DELIVERE/ 

The Plaintiff alleged deceptive similarity of the Defendant’s mark

with its registered mark ‘DELHIVERY’. The Defendant argued, inter alia, that the Plaintiff’s mark is descriptive to the delivery business and a commonly used term in delivery trade. The Defendant placed reliance on various third-party registrations and use to substantiate its argument. The Plaintiff contended that the mark ‘DELHIVERY’ is a combination of two words ‘DELHI’ and ‘VERY’ and that it does not claim any right over the word ‘delivery’ used in a generic sense. The Plaintiff also contended that the mark ‘DELHIVERY’ at best can be termed as ‘Suggestive’.

While concluding the Plaintiff’s mark ‘DELHIVERY’ to be a phonetically a generic word, the court held that “The position of law is well settled that a generic word cannot be registered, that is, a generic word cannot be appropriated by one party to the exclusion of others. If the registrations are wrongly granted when applied for in respect of a completely generic expression, the Court cannot ignore the generic nature of marks and confer monopoly on the same in favour of any party.” Further, denying the Plaintiff’s plea of ‘DELHIVERY’ being a suggestive mark the court held that, “the mark which is phonetically similar to the English word ‘delivery’ do not require any imagination, thought and perception, more so for delivery services….in the case in hand, the mark ‘DELHIVERY’ is immediately connectable to the delivery services and cannot be termed as a suggestive mark.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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