Delhi High court Ruled that Common Names Like ‘NEHA’ Can Be Trademarked If They Gain Distinctiveness Through Use. Quoting, “Trademark rights don’t arise in the abstract… they accrue through real commercial activity that identifies product origin.”
New Delhi: The Delhi High Court recently ruled that common Indian names like “NEHA” can be registered and protected as trademarks, provided they have gained distinctiveness through extensive commercial use.
However, the Court made it clear that such trademarks cannot be monopolized across unrelated product categories, even if they belong to the same trademark class.
Justice Sanjeev Narula stated,
“The mark ‘NEHA,’ while capable of functioning as a trademark, is not a coined term. It is a popular forename in India, making it inherently weaker in terms of source identification… The term ‘NEHA’ not being a distinctive word, the Plaintiffs cannot monopolise the use of ‘NEHA’ for all cosmetics unless a strong secondary meaning across product categories is proved – something that has not been shown on record.”
The dispute involved competing claims between Neha Herbals (the defendant), which asserted usage of the mark “NEHA” since 1992 for mehendi and herbal products, and Sahni Cosmetics (the plaintiff), which claimed prior use of the same mark for face creams dating back to 1990. Sahni also filed cancellation petitions to invalidate Neha Herbals’ registrations.
The Court found that Sahni Cosmetics did not provide sufficient evidence to support its prior use, noting that its trademark applications had either lapsed or been rejected.
In contrast, Neha Herbals presented comprehensive documentation, including income tax returns, packaging samples, promotional materials, and CA-certified sales figures, demonstrating use of the mark since at least 1994.
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The Court ruled that using a personal or common name as a trademark is not inherently prohibited under the Trade Marks Act, 1999. However, for such names to receive protection, the owner must prove that the mark has acquired secondary meaning, that consumers associate the name with a single commercial source.
The Court Stated,
“Trademark rights do not arise in the abstract…rather, those rights accrue through tangible trading and commercial activities that identify origin of products or services to the consumers.”
The judgment also provided detailed guidance on the evidentiary burden required to establish secondary meaning for trademark protection of common names.
The Court remarked,
“The question is not merely whether the claimant has used the mark, but whether the mark has come, over time, to identify a single commercial source with respect of the goods used under the said mark,”
Claims must be supported by objective evidence, including:
- Length and continuity of use
- Sales volumes and turnover
- Advertising expenditures
- Market share
- Public recognition or consumer surveys
The Court referenced a Supreme Court decision stating that registration of a mark in one category does not prevent its use for unrelated goods within the same class, especially where no confusion or deception is likely.
In this case, although both parties operated within Class 3 (cosmetics and personal care products), the Court determined that mehendi products and face creams were commercially and functionally distinct.
While the Court ruled in favor of Neha Herbals regarding validity and ownership, it dismissed the company’s claims of infringement and passing off.
The Court noted that Sahni’s use of “NEHA” for creams was unlikely to confuse consumers with the defendants’ use of the same mark for mehendi products.
The Court stated,
“Goodwill is not a blanket right, It is inherently product-specific and context-bound.”
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Ultimately, the Court found that while the term “NEHA” is registrable and protectable, it is inherently weak in terms of distinctiveness due to its nature as a common Indian forename.
“We must also note the strength of the mark in question. ‘NEHA’ is a common Indian forename, not a coined or inherently distinctive word. In trademark jurisprudence, it is well settled that marks comprising everyday/common names or generic expressions do not, by themselves, command the highest level of legal protection.”
Sahni Herbals was represented by Advocates MK Miglani, Hardik Gogia, and Akash Singh.
Neha Herbals was represented by Advocates Sachin Gupta, Adarsh Agarwal, Rohit Pradhan, and Prashansa Singh.