Background of the Update
In the field of Trade Marks, several times there arises a very interesting issue. Two or more manufacturers or sellers of a similar / identical product may use different prominent (main) trade marks, but along with the main trade mark, they use the same additional trademarks. For example, one company selling edible oil would use “Sundrop” as the main trade mark and the company selling edible oil would use “Saffola” as the main trade mark. However, both the companies would use a generic / descriptive expression “Low Absorb Technology” or “Losorb Technology” as an additional trade mark along with the main Trade Mark.
In such cases, a question arises that when the main trademark of a plaintiff in a particular case acquires popularity and brand value in markets, then can the additional trademarks (used with the main trademark) which are used to acquire distinctiveness qua the plaintiff also fall in the ownership of the main trade mark of the plaintiff? In other words, can such plaintiff stop its competitor from using these additional trademarks?
The issue was recently dealt with by the Honourable Delhi High Court in the case of Superon Scweisstechnik Ltd v. Modi Hitech India Ltd. in which the Court held that, – in case of passing off, the Courts will not see just the usage of the respective additional trademarks, but also the other aspects of get up of the packaging of the products of the two parties. Therefore, even if the additional trade marks of the Plaintiff and Defendant are same, but if the overall packaging of their respective products is different, then the Court will not stop the defendant from using the same additional trade mark.
Facts in Brief
The Plaintiff was the owner of well known registered trademark of “SUPERON” under which it sold its welding electrodes, and along with this trademark “SUPERON” the plaintiff also claimed to have adopted from the year 2004 the trademark of “VAC-PAC”. As per the Plaintiff, the trademark “VAC-PAC” (though unregistered and not the main trade mark) was said to have been coined, conceived and adopted by the plaintiff with respect to its products and hence entitled to a high degree of protection from passing off / infringement.
Plaintiff claimed that the defendant has dishonestly adopted an identical trademark “VAC-PAC” for the same goods being welding electrodes.
The Plaintiff claimed that, – every manufacturer or seller is entitled to have protection of additional trademarks which are used with the main trademark and once the additional trademarks which are used to acquire distinctiveness qua the plaintiff, then such additional trademarks used with the main trademark also fall in the ownership of the plaintiff; and no other manufacturer or seller etc can use these additional trademarks. In the present case the main trademark of plaintiff was ‘SUPERON’ and the additional trademark of which ownership was claimed by the plaintiff is VAC-PAC.
The Defendant pleaded that, – abbreviation of descriptive words cannot and should not be given protection as a trademark.
Judgement of the Delhi High Court
Relying upon the judgment given by the same court in the case of Marico Limited vs. Agro Tech Foods Limited 2010 (44) PTC 736, the Court held that, –
Courts will not allow ordinary descriptive words or their abbreviations to be appropriated / misappropriated, by one or more manufacturer or seller etc. The word VAC-PAC is derived from Vacuum Pack/Vacuum Packaging, and which is a way of packaging of the welding electrodes of the parties so as to give it a longer shelf life, then an abbreviated form of descriptive words Vacuum Pack/Vacuum Packaging by calling it VAC-PAC will not entitle a manufacturer/seller such as the plaintiff to claim exclusive ownership of either the descriptive wordmark/trademark Vacuum Pack/Vacuum Packaging or its abbreviated form VAC-PAC in view of Sections 9, 30 and 35 of the Trade Marks Act.
The law with respect to passing off is different from the law with respect to infringement. If the suit was based on the cause of action of infringement of the trademark of the plaintiff by the defendant then the Court had to essentially see the two trademarks only and not the packaging, whereas if the suit is for passing off, this Court therefore can examine, besides the respective trademarks, the other aspects of get up of the packaging of the products of the two parties.
The main trademark of the plaintiff was SUPERON along with the added trademark of VAC-PAC whereas the main trademark of the defendant was totally different being GMM/arc with the use of VAC-PAC. Hence, there was no identity or deceptive similarity qua the aforesaid two main trademarks of the parties and the different trademarks are such to distinguish the goods of the plaintiff from that of the defendant, and hence no case is made out of passing off.
The packaging of the plaintiff and defendant were also completely different.