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Descriptive Trademarks: Balancing Exclusivity and Fair Use

Trademark depicting the general nature or character of the goods/services to which it is applied is called a descriptive trademark. It also includes a combination of two words whose meaning together is also descriptive. For example, combining "RUNNING" and "SHOE" to form "RUNNING SHOE" for shoes. It is not necessary for the words used to comprise a clear, complete, and accurate description of the goods/services.

A proprietor who has managed to register a "descriptive" word or make a minor modification to a descriptive word cannot claim exclusive rights over the "descriptive part" of the trademark in any case. Such a proprietor can only claim exclusivity over that trademark if the descriptive words are used in an unusual juxtaposition of words or part words for a significant period without any use or claim by any other party in the market, to the extent that it has acquired a secondary meaning. Even then, anyone can use descriptive words as a prefix or suffix with their trademark, provided it is not copied in that particular combination and order in which the words appear in a rival's trademark, if that combination or order is not generally used in the trade for describing the character or quality of goods. In such scenarios, only the "non-descriptive" part of both trademarks is analyzed. A mark will be capable of registration if the unique part of the trademark is non-deceptive and visually and phonetically different from the unique part of a rival trademark.

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