The Delhi High Court recently ruled that common Indian names such as "NEHA" can be registered and protected as trademarks, provided they have acquired distinctiveness through long-standing commercial use..However, the Court simultaneously drew a critical line, holding that such marks cannot be monopolised across unrelated product segments, even if they fall within the same trademark class. Justice Sanjeev Narula ruled, "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 centred on the competing rights of Neha Herbals (defendant), which claimed usage of the mark “NEHA” since 1992 for mehendi and herbal products, and Sahni Cosmetics (plaintiff), which claimed prior adoption of the same mark for face creams dating back to 1990. Sahni also filed cancellation petitions seeking to invalidate Neha Herbals’ registrations.However, the Court found that Sahni Cosmetics failed to substantiate its prior use with contemporaneous and credible evidence. It was noted that its trademark applications had either lapsed or were refused. In contrast, Neha Herbals submitted extensive records - including income tax returns, packaging samples, promotional materials and CA-certified sales figures -demonstrating use of the mark since at least 1994..The Court held that the use of a personal or common name as a trademark is not per se barred under the Trade Marks Act, 1999. However, for such names to be afforded protection, the proprietor must demonstrate that the mark has acquired secondary meaning - consumer association of the name with a single commercial source.“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 provided detailed guidance on the evidentiary burden for establishing secondary meaning in support of trademark protection for common names.“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,” the Court observed.It held that such claims must be supported by objective evidence, such as:Length and continuity of useSales volumes and turnoverAdvertising expendituresMarket sharePublic recognition or consumer surveys.The Court relied on a Supreme Court decision which held that registration of a mark in one category does not bar its use for unrelated goods within the same class, especially where no confusion or deception is likely.In the present case, although both parties operated under Class 3 (cosmetics and personal care products), the Court found that mehendi products and face creams were commercially and functionally distinct.Although the Court found in favour of Neha Herbals on validity and proprietorship, it dismissed the company's infringement and passing off claims. The Court noted that Sahni's use of “NEHA” for creams was not likely to cause confusion with the defendants’ use of the same mark for mehendi products.“Goodwill is not a blanket right,” the Court stated, “It is inherently product-specific and context-bound.”The Court ultimately found that the term “NEHA,” while registrable and protectable, 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..[Read Judgment]
