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 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 held that the nature of the services, the class of purchasers of the policies, and the way in which they bought or placed orders for the policies outweighed any slight phonetic or visual similarity between the rival marks. The court also held that any injunction against the defendant would result only in severe pecuniary and financial damage to the large number of customers that had purchased the defendant’s insurance policies under the mark iTerm.
