Many may remember the Essar group’s advertisements, in its heyday, that featured the words ‘positive attitude’. Now, both ‘positive’ and ‘attitude’, as also their pairing are common words of the English language. Can a copyright prevent others from using them to brand their products?

The Delhi High Court was faced with this question recently. The French beauty care major L’Oréal, which has products branded as ‘Hair Spa’, was upset when Thai company Pornsricharoenpun had, in 2011, advertised its new product, ‘Berina Hair Spa’. In 2014, L’Oréal filed for permanent injunction, claiming that the use of the registered ‘Hair Spa’ mark by Pornsricharoenpun constituted infringement.

L’Oréal did get a favourable order in a lower court, but the Delhi High Court, hearing an appeal by the Thai company, has held that ‘Hair Spa’ was a descriptive term widely used in trade to refer to products that nourish and treat hair. Because ‘hair’ and ‘spa’ are common English words, the combination “lacked the necessary distinctiveness to be considered a trademark”. It further ruled that L’Oréal’s own ‘Hair Spa’ trademark had not acquired the distinctiveness required to prevent others from using the generic expression. Furthermore, the colour, fonts, letter styles of ‘Berina Hair Spa’ were different from that of L’Oreal, the court noted while setting aside the lower court’s order.

Writing in Mondaq, Asavari Mathur, a lawyer with Photon Legal, notes that the verdict “sends a clear message that the bar for safeguarding and upholding descriptive marks is set exceptionally high”.

Companies must be able to demonstrate through substantial and reliable evidence that their marks have acquired a distinctive secondary meaning, separate from the product itself, that is instantly identifiable with their brand, Mathur said, noting that the Delhi HC’s decision has “upheld the integrity of trademark law”.