Mr. A D Padamsingh Issac & M/s Aachi Masala v/s Aachi Cargo Channels (P)
AIR 2014 Mad 2
Satish K. Agnihotri and M.M. Sundresh, JJ.
Word/Mark Argued To Be Generic:
Aachi, a Tamil word which is translated to mean
Arguments of The Appellants:
The submission of the appellants was with respect to being the registered
proprietor and therefore having the exclusive right to use the word Aachi
and that the respondents cannot use the word regardless of
being in a completely different service/business. In pursuance of this they
relied on two judgments- Caterpillar Inc., Illinois USA, V. Jorange and another
(O.S.A. No. 166/1997 in C.S. No. 785 of 1996 decided on 01.10.1997); and Daimler
Benz Aktiegesellschaft and another V. Hybo Hindustan (AIR 1994 Delhi 239).
Arguments of The Respondent
The learned counsel appearing for the respondent
has submitted that admittedly the appellants and the respondent are operating in
two different and distinct fields having no connection whatsoever with each
other. There is no similarity of goods manufactured and the service rendered by
the parties. There is no likelihood of causing any confusion in the minds of the
public that the business of the respondent is that of the appellants.
Decision of The Court
The opinion of the court was that, in a suit for
infringement, the Courts are primarily concerned with the label as a whole which
may also contain the name. The label reflecting the masalas and spices of the
appellants has nothing to do with the service being rendered by the respondent
as cargo operators. Therefore, on this ground they refused to grant injunction
in favor of the appellants.
To discuss the scope and ambit of sections 28, 29 and 30 of the Trademarks Act,
1999, the court relied on the case of Orchid Chemicals & Pharmaceuticals Ltd.,
v. Wockhardt Limited (2013) 3 CTC 841 where each of the sections were discussed.
With respect to section 28, its applicability relies on two conditions:
to other provisions of the Act"
and subject to its "validity"
Section 29 which
deals with infringement of a registered trademark by an unregistered proprietor
makes it clear through its text that it is meant to be used against the person,
who is not entitled to use the said trade mark under "law"
. This is required to
constitute an infringement. Lastly, a perusal of Section 30 of the Act would
show that Section 29 of the Act is subjected to it. Therefore, Section 30 of the
Act is an overriding provision to Section 29.
The reason the Madras High Court discussed the three provisions in the Orchid
Chemicals case was to apply it to the facts to determine whether "METOPROLAL", a
chemical component, is a "publici juris"
. The court found out that there are
number of registered proprietors having the prefix "METO". All of them are
identified with the common name, in view of the chemical component. Hence, it is
not as if the respondent has infringed the said word "METO". It is already in
the public domain, even much prior to the application of the appellant. Applying
the said facts when we read Section 29 of the Act, it can be concluded that the
limits on effect of the registered trade mark under Section 30 of the Trade
Marks Act, 1999, would apply with all force.
In the case on hand, the bench concurred with the single judge that the word "Aachi"
in Tamil means "grandmother". Such term is in common use throughout the State of
Tamil Nadu. Therefore, such a word, which is of general use, cannot be a
monopoly of the appellants alone be used in any other product than the one they
are doing business.
Trademark law protects marks of a proprietor in order to distinguish
their product or service from that of others’. However not every mark falling
within section 2(m) of the Trademarks Act, 1999 can be protected. A word which
is general or generic and is used in common parlance cannot be trademarked
because granting protection to such words under the Act would mean that the
proprietor has the monopoly over that word which is used by all.
generic term unlike arbitrary, suggestive or even a descriptive mark which has
gained secondary meaning, cannot be registered. It can so happen that an
arbitrary or fanciful mark may become generic due to unregulated use and
consequent dilution of the mark such as Xerox or Dettol.
Proprietors give generic terms to their brand which makes it vulnerable to
infringement even if they have been given registration under the Act. It is easy
to determine whether words like Krishna
can be protected as in the case
Baba Milk Food Industries Ltd v. Parul Food Specialities (P) Ltd (Delhi High
, because it is so common and cannot acquire a secondary meaning hence
cannot be accorded the same protection an arbitrary mark would get.
happens when a proprietor uses a word mark which is generic in another language
but not in English?
This was what was dealt in brief by the Madras High Court in
the Aachi case where the appellants used Aachi for masala and spices whereas
the respondents used Aachi for cargo services. The word Aachi means
grandmother in Tamil and is a common word in Tamil. In my opinion, the court was
right not to grant injunction in favor of the appellants because even though the
word is registered, a common word or phrase cannot be monopolized by one. If it
is already in public domain then it cannot attract section 29 of the Act.
It may be noticed that different jurisdictions have different take on this
issue. The Madras High Court relies on a strict interpretation of the law and
does not allow suits for infringement for generic words even if they are
translated, as long as it is generic in that language and has not acquired a
secondary meaning. The court looks at whether the word is in public domain by
checking how many such registrations already exist. Delhi High Court on the
other hand is more liberal in this matter as can be seen in the case of Sunil Mittal v. Darzi
on Call, 2017.
This particular revolved around the word Darzi
which was used by two proprietors in the same business that is of tailoring. The
court held that the disputed word is not generic to the trade and injuncted the
They came to this conclusion by looking at the territorial nature of
the business and the word generally used at that place. The business is
undertaken in Delhi, considering this, in my opinion, the court has erred in its
decision because Darzi is tailor in Hindi/Urdu. The court also did not look at
the mark as a whole and considered only the word even though the way it is
written and the logo with the word are completely different from each others’.
The court did not consider section 9(1)(c) which clear lays down that for a
generic mark there cannot be registration under the Act.
The Supreme Court in T V Venugopal v. Ushodaya Enterprise
, (2011) Vol 4
SCC 85, also took a similar view when the question put forth was regarding the
term Eenadu. The plaintiff used the word for incense sticks whereas the
respondents used it for newspapers printed in Telugu. Eenadu means this land
or our land in Kannada, Tamil and/or Malayalam. The court reached its
conclusion that the word is generic and only the respondents are allowed to use
the word by relying on how much imagination does it take by a consumer about
qualities characteristics, effects, purpose or ingredient of the product or
The primary difference between the Delhi High Court case and the Madras High
Court case is that in the former instance, the proprietors undertake the same
service so there may have been a likelihood of confusion. However, the Madras
High Court case involves two completely different services. But, in the case of
Eenadu it was clear to the court that the there exists a secondary meaning to
the common word at least in Telugu speaking states. But if common words are
given protection then it goes against the absolute grounds laid down under
Thus it may be concluded that, the decision of the Madras High Court in the
Aachi case, upholds the whole purpose and objective of section 28 to 30 of the
Act unlike the above two cases.