Marico Limited vs Agro Tech Foods Limited
- Appeal before the Delhi High Court by the Appellant/ Plaintiff, praying
to set aside the order passed by the Single Judge Bench of the Delhi High
- The impugned order had dismissed the injunction application filed by the
said Plaintiff and in addition had allowed the vacation application by
Respondent/ Defendant of injunction and thus vacated the ex-parte interim order.
- The Single Judge Bench had also held that no case of infringement was
found on using Low Absorb by Respondent/ Defendant as contended by the
Appellant/ Plaintiff against their registered trademark LOSORB or LO-SORB.
Also no case of passing off was found on using LOW ABSORB against the
Appellant/ Respondentís unregistered trademark LOW ABSORB.
- The Appellant claimed of coining the words LOSORB and LO-SORB which were
trademarked and used for edible oils which the technology of low oil
consumption. These trademarks were used in besides trademarks Saffola and
- Defendant is using expression WITH LOW ABSORB TECHNOLOGY under their
trademark Sundrop to ell edible oil, which also has the characteristic of
retarding oil absorption.
on 1 November, 2010
The High Court of Delhi -
CS(OS) No. 1590/2009,
Hon'ble Mr. Justice Sanjay Kishan Kaul,
Hon'ble Mr. Justice Valmiki J. Mehta
- Whether Defendantís use of their expression amounts to passing off
of unregistered trademark of Plaintiff
- Whether registration gives exclusive right to use trademarks LOSORB
- Whether there is a case of infringement due to the use of
deceptively similar trademark?
- Whether registration confers prima facie validity only and allows
Courts to deny injunction applications despite registration?
- Whether appellant is entitled to relief of injunction if Defendant
shows that the use was within statutory limits?
The Appellant relied on the extensive sale under the trademarks and huge amounts
of money spent for advertising of said edible oils. Appellant also claimed that
the trademark under dispute has developed secondary meaning.
The Respondent relied on the fact that the term used by the Appellant is a
descriptive word and no monopoly can be availed over it.
- Using descriptive words and acquiring secondary meaning to it
does not prevent others from using it as per Cadila Healthcare Ltd. Vs. Gujrat
Co-operative Milk Marketing Federation Ltd & Ors [i]. No exclusive ownership of
term LOW ABSORB since it is a common descriptive word. High time for those who
are in the first of the blocks in using descriptive terms, to stop from claiming
exclusive rights over it.
As per Section 9, marks or indications which are used to designate kind,
quality, quantity, etc., which can basically be said to be of descriptive nature
are refused registration on absolute grounds. However, they may be allowed if
they have developed secondary meaning and is of distinct nature. Now they
question before the Court was, what does distinctive mean under Section 9 and
does the mater in question qualify as such. The Court said distinctiveness has
been discussed in many judgements and even can be derived from the definition of
Trademark and Well-known trademarks.
A trademark is said to be distinctiveness
when it is immediately connected with a certain product, manufacturer or owner
in the minds of the public. A trademark needs to be in use for a long period of
time, in such a way that the description is relatable only and only to that
source, such as in the case of Heinz Italia and Another Vs. Dabur India Ltd, [ii] period
of 60 years of use of Glucon-D was considered a considerable long period of time
and thus distinctiveness of descriptive nature would be accepted, albeit it is a
tweaked form of normal descriptive word Glucose.
Another aspect regarding passing off I that the two products are visually
different from each other, the trademark Sundrop on the Respondentís packaging
is prominent in size, and also much larger than the size of the term WITH LOW
ABSORB TECHNOLOGY. The colour of Respondentís packaging in blue, while the
Appellantís is orange. The Court said that just because they tend to the same
audience and their trade channels is same, there cannot be said to have
possibility of confusion, they are differentiated from each other to avoid any
No exclusivity, therefore no case of passing off.
- Exclusive right for a trademark is available only if the
trademark is valid, this is derived from the expression if valid
under Section 28 of the Act which talks about rights conferred by
registration. This means that the trademark should bypass grounds of
refusal. In addition to that, even after registration an aggrieved
person is entitled to apply for cancellation of the trademark
registration under Section 57. It is only when cancellation
proceedings come to finality, can it be said that a mark for which
there is an absolute ground for refusal has acquired distinctive
character, or is a well-known trademark and thus a valid
Here, the trademark is not valid since the term registered is a descriptive
mark, thus a ground for absolute refusal and therefore, no right of exclusivity
can is entitled. However, under the proviso of Section 9, a mark cannot be
refused for registration if it has gained distinctiveness. Here, that also is
Evidence of distinctiveness is seen up to the date of application
filed, which is 2001 and under Section 31(2) is extended to date of
registration, which is 2005. Evidence of distinctiveness cannot be seen up to
the year 2009 when the suit was filed (i.e. post registration) as that is seen
only in cases where registration is declared invalid under Section 57 and seen
not by the civil Court but under proceedings under Section 57 before the
Registrar or Appellate Board.
- Section 29(1) talks about case of infringement of registered
trademarks by use of a deceptively similar or nearly identical
trademark in same or similar goods as the registered trademark
In case the trademark is not identical, case infringement will be made out only
if the registered trademark has a reputation in India, as per Section 29(4). An
owner cannot sue for infringement if the trademark used is falling under the
exception in Section 30 which talks about limits on effect of registration of
trademark and 35 which says that certain trademarks depicting description of
product, personís own name etc. cannot be sued by the proprietor or registered
- Registration is only prima facie evidence of its validity and
the presumption of prima facie validity of registration is only a rebuttable
The suit may be stayed until the decisions under Section 57 of the Act. If
Section 57 is not availed the Court, if satisfied may adjourn the case for three
months after framing issues and allow the Defendant to apply under Section 57 as
per Section 113. Section 124(5) provides that despite registration,
interlocutory orders can be made by Court before which action is filed, which
may include granting or dismissing injunction orders.
The Learned Single Judge was entitled to look into the matter of registration in
the present case, owing to the expression if valid under Section 28. Section
31 which provides that original registration and subsequent transmission is
prima facie validity of trademark registered, can be claimed only if the
registration is valid, which is not so in this case.
- Appellant is not entitled to the relief of injunction since the
registration is invalid and even if hypothetically speaking, the
registration is valid in the present case, the Appellant would not
have been entitled since the packaging is completely different from
one another. Besides, Ss. 30 and 35 are exceptions to the
infringement actions of the Appellant under Section 28 and 29, thus
the Defendant can take recluse under the first two sections
mentioned and use them to defeat infringement actions.
Appellant dismissed, Appellant did not have a prima facie case, parties to bear
their own costs.
Descriptive words are highly discouraged to be registered as trademarks, even if
there is a proviso which exempts them from refusal of registration owing to
distinctiveness. This question of distinctiveness further is a question of fact,
different for each case. The proviso ideally ought not be availed by ordinary
trademarks as it adds to back log of cases, thereby it should be discouraged in
the first instance itself.
A trademark, after registration, is not free from the scrutiny as the Defendant
can apply for procedure under Section 57 before the Appellate Board or
Registrar. In addition to that Court can pass interlocutory orders. Second line
of defence is that once the registration is said to be valid, the trademark can
take protection under Section 30 and 35 of the Act.
Descriptive words are mere English words which are used to describe or indicate
characteristics or properties of a product, usually to boost oneís sale or for
the knowledge of the public and no person can claim ownership over something so
- 2009 (41) PTC 336: 2009 (8) AD (Delhi) 350.
- (2007) 6 SCC 1
- N.R. Dongre Vs. Whirlpool Corp. 1995 (34) DRJ 109 (DB), para 31.