Descriptive Marks: Test Of Acquired Distinctiveness And The Prior Use Defence

The High Court of Delhi (Court), in its latest decision Peps Industries Pvt Ltd v Kurlon Limited (C.S. COMM 174/2019 with IA 4871/2019 & IA 6715/2019), has added to the myriad decisions relating to descriptive marks and the importance of use, to sustain an action for infringement. The court has also in this context considered the defence of prior use under section 34 of the Trade Marks Act, 1999 (Act). The Court rejected the Defendant's prior use defense as it observed that the Defendant's use of the mark 'NO TURN', though prior in time to the Plaintiff's use, was intermittent and not voluminous. At the same time, it also refused to grant the Plaintiff any injunctive relief as the Court held that use of the mark 'NO TURN' by the Plaintiff was (i) descriptive of the goods sold thereunder; and (ii) the extent of use was not sufficient to demonstrate the extent of goodwill required to prove acquired distinctiveness.