A “descriptive use” defence under Section 30(2)(a) crumbles when your own pack and marketing present the term like a brand. Bombay High Court decisions from Hem Corporation v ITC (no “sub-brand” escape) to Jagdish Gopal Kamath v Lime & Chilli (narrow scope of fair use) and Everest (TIKHALAL) v Shyam Dhani (₹2 lakh costs after forged invoices) show the same pattern: function beats label. If your descriptor behaves like a trademark, expect an injunction.
Why you should care (founders, owners, litigators)
Section 30(2)(a) protects genuine, good-faith descriptions (kind, quality, characteristics). It does not protect badge-of-origin use dressed up as “mere description.” Courts look at how consumers encounter the term pack hierarchy, repetition, and overall impression (the Parle Products and Cadila tests). If your choices signal source, not information, you’ve handed the plaintiff their win.
Also Read: Pharma Trademarks & Public Health: The IMOX vs. INIMOX Verdict Explained
The five packaging mistakes that sink a Section 30(2)(a) defence
1) Making the “descriptor” the headline
If the impugned word is largest, boldest, centred, or appears where brands usually sit, you’re using it as a mark. That’s precisely how courts separate description from origin. In Everest (TIKHALAL), on-pack prominence supported the finding of trademark use, not fair description; the Court restrained use and imposed costs.
2) Consistency across SKUs (it behaves like a brand system)
Descriptors change with attributes (“extra-hot”, “mild”). Marks stay constant. If the same word, type style, and position repeat across the range, courts infer brand behaviour a point that runs through Bombay HC jurisprudence and underpinned the Everest order.
Also Read : Can You Trademark a Common Word? A Deep Dive into the ‘STAR’ Battle
3) Filing trademark applications (or using ™/®) for the “descriptor”
You can’t claim “it’s descriptive” while seeking exclusivity. In Hem Corporation v ITC, the court rejected a “sub-brand” defence; functionally, a sub-brand is still a trademark. If you call it your brand before the Registry and a descriptor in court, expect estoppel-like pushback.
4) Trade-dress mimicry plus the “descriptor”
When the word sits inside a look-alike get-up similar colours, layout, visual hierarchy Indian courts apply overall impression (hurried consumer) and lean toward injunctions. That’s Parle / Cadila orthodoxy courts cite repeatedly. Your “descriptor” doesn’t live in a vacuum; the pack context matters.
Also Read : Deceptively Similar Trademarks: Never-Ending Conflicts from the Perspectives of the Madras High Court
5) Using the “descriptor” in URLs, social handles, ad creatives
Search handles like /brand-descriptor or domain names with the “descriptor” as the identifier reinforce source association. Plaintiffs will annex these to show the term is doing brand work not merely describing goods.
Bonus mistake: Document games (inflated “use since” claims, tinkered invoices). In Everest (TIKHALAL), the Court found a fabricated invoice and hit the defendant with ₹2,00,000 costs torpedoing credibility and the fair-use story.
Also Read : Anti-Dissection vs. Dominant Part: Under Armour’s Landmark Victory at the Delhi High Court
Flowchart: How plaintiffs beat “descriptive use” (and how defendants avoid the trap)
Collect pack → Prove brand-style use → Surface admissions → Apply Parle/Cadila → Seek relief
- On-pack hierarchy: Same-scale photos show size/placement/typography “descriptor” sits in brand seat.
- Repeat pattern: Show the term’s constant use across SKUs (brand behaviour).
- Defendant admissions: Trademark filings, ™/® usage, decks calling it a brand (not description). Hem Corp helps here.
- Context lens: Comparison boards capture overall get-up; argue hurried buyer per Parle / Cadila.
- Integrity check: Spot invoice/affidavit inconsistencies as in Everest, courts penalise fabrication.
Also Read : Dynamic Injunctions in the Digital Marketplace: Reliance’s Shield Against Online Brand Misuse
Comparison table: Packaging choice → Court inference → Safer alternative
| Your choice | Court’s likely inference | Safer alternative if you truly mean “description” |
|---|---|---|
| Big, bold “descriptor” in the brand slot | Trademark use (badge of origin) | Keep small, secondary font; place beside/under house brand |
| Same style across all SKUs | Brand system (not attribute info) | Vary wording/placement with attributes (“extra hot”, “smoked”) |
| ™/® or TM filings for the word | You claimed exclusive rights | Avoid symbols/filings for pure attributes |
| Descriptor + plaintiff-like get-up | Overall impression = deception | Distinct colourway/layout; avoid rival’s visual lane |
| Descriptor in domain/handle/ads | Reinforces source signal | Use it in sentence form within copy (not as identity) |
Authorities: Hem Corp v ITC (sub-brand is still a mark); Jagdish Gopal Kamath (fair use is narrow); Parle, Cadila (overall impression).
Checklist: Day-1 plaintiff pack to crack Section 30(2)(a)
- Photo grids: same-scale, front/side/top; minimal annotations. (Parle/Cadila frame.)
- SKU panel: Show consistency of the impugned word across variants.
- Admissions bundle: Defendant’s TM filings, ™/® sightings, marketing decks. (Hem.)
- Digital shelf: Domains, handles, listing titles, ad creatives.
- Integrity dossier: Invoice/affidavit comparisons; highlight fabrication or retro-fits. (Everest, ₹2 lakh costs.)
Sparring-partner corner (let’s pressure-test common assumptions)
- “But Section 30(2)(a) says kind/quality use is fine.” Yes, when it’s genuinely descriptive. Your layout and repetition may convert it into source use. Courts read the function, not your label.
- “We’re safe if we add our house brand.” Not if the “descriptor” dominates visually. Mixed signals still confuse; overall impression controls.
- “Everyone uses this term.” That doesn’t license brand-style use or trade-dress mimicry. The more your look aligns with the plaintiff’s, the weaker your defence.
About the Author
Suresh Kumar, Advocate, is the Managing Attorney at Unimarks Legal Solutions, Chennai. Practising since 2008, he focuses on trademark infringement and passing off, appeals from the Registrar, rectification, and online/platform enforcement before the Madras High Court (IPD), Commercial Courts, and District Courts across Tamil Nadu. He frequently speaks on IP law at industrial forums and universities and is associated with SICCI, CII, and the Tamil Nadu Chamber of Commerce.
References: Section 30(2)(a) Trade Marks Act (scope of fair use); Hem Corporation v ITC (no “sub-brand” defence); Jagdish Gopal Kamath v Lime & Chilli (narrow fair-use reading); Parle Products v JP & Co and Cadila Health Care v Cadila Pharmaceuticals (overall impression tests); Everest (TIKHALAL) v Shyam Dhani (injunction + ₹2 lakh costs for fabricated invoice).
This article is for information and education. It is not legal advice, does not create a lawyer–client relationship, and avoids case-specific recommendations. Conflicts are screened per firm policy before any engagement.
