iTerm too descriptive for internet insurance policies

By Keya Joshi, LexOrbis

31 October 2019

2135

On 19 August 2019, the Bombay High Court in a noteworthy decision held that the mark iTerm used by the plaintiff, Aegon Life Insurance Company was not inherently distinctive in relation to the insurance policies it sold over the internet.

Aegon filed suit against Aviva Life Insurance Company India for passing off by the use of the term iTerm in relation to its online insurance policies. The plaintiff submitted that it had invented and adopted a unique, distinctive and innovative trademark, “iTerm” (and its variants subsequently) in 2009, and that the mark iTerm had acquired a secondary significance amongst the relevant section of the trade in online insurance policies.

The defendant contended that the expression iTerm was not distinctive to the plaintiff’s goods and services, as it was highly descriptive of the product and services that the plaintiff provides. The expression is derived from “i” for internet or insurance and “Term” for the nature of the insurance policy.

The court identified following three broad issues to determine the descriptiveness of the impugned mark:

Keya Joshi is an associate at LexOrbis.