Document Fragment View

Matching Fragments

10. In Marico Limited's case (supra) an issue which was also decided was an issue as to the entitlement of a manufacturer/seller to use the expression ―LOSORB‖, and this Court held that since ―LOSORB‖ was just an abbreviation of a larger descriptive expression ―LOW ABSORB‖, therefore the abbreviated form ―LOSORB‖ was such that the abbreviation of the descriptive wordmark-trademark cannot be appropriated by any one manufacturer or seller exclusively for himself. The Division Bench of this Court in para 6 of the judgment in the case of Marico Limited (supra) has referred to the fact that merely because a person is first off the blocks in using descriptive words as a trademark or its abbreviation, that will not entitle such person to exclusively use the descriptive wordmark or its abbreviation as a trademark, and for this purpose reference has been made to the provisions of Sections 9, 30 and 35 of the Trade Marks Act, 1999. In fact the Division Bench in the case of Marico Limited (supra) has further observed that even if a descriptive wordmark or its abbreviation is got registered, even then such registration can be CS(COMM) 750/2018 page 20 of 36 sought to be got cancelled. The relevant paras 6, 10, 15 and 19 of the judgment in the case of Marico Limited (supra) read as under:-

13. Therefore, this suit is liable to be and is accordingly dismissed by holding that plaintiff has no real prospect to succeed by alleging that defendant is passing off its goods as that of the plaintiff allegedly because defendant is also using the expression ―VAC-PAC‖ which is used by the plaintiff. The plaintiff cannot succeed on the claim of passing off because of complete difference of the main trademarks of the plaintiff and the defendant which are found to be totally different being SUPERON and GMM/arc, as also the complete CS(COMM) 750/2018 page 31 of 36 difference in the get up and packaging of the products of the plaintiff and defendant as has been demonstrated above. Independent of the plaintiff having failed in making out a case of passing off for the aforesaid reasons, the suit will also have to be dismissed by applying the ratio of the judgment in the case of Marico Limited (supra) that Courts should not and will not allow ordinary descriptive words or their abbreviations to be appropriated, or if I can say so misappropriated, by one or more manufacturer or seller etc. The facts of the present case are more or less identical to the facts of the case in Marico Limited (supra) where a manufacturer/seller was held disentitled to use the wordmark ―LOSORB‖ which was an abbreviated form of ―LOW ABSORB‖, and in the facts of the present case once the plaintiff itself admits/does not dispute that 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 CS(COMM) 750/2018 page 32 of 36 Pack/Vacuum Packaging or its abbreviated form VAC-PAC in view of Sections 9, 30 and 35 of the Trade Marks Act . Also in the opinion of this Court the use of the expression ―VAC-PAC‖ for only about 13 years will not be such a large length of time as to make the abbreviation of descriptive words an exclusive distinctive trademark of the plaintiff. The ratio of the judgment in the case of Marico Limited (supra) is to be taken with the fact that the subject suit is a commercial suit and would be governed by Order XIII-A CPC as applicable to commercial cases and as interpreted by this Court in the judgment in the case of Godfrey Phillips India Limited (supra).

15. Accordingly, since the present suit is a gross abuse of process of law, and the plaintiff has chosen to file the same in spite of the settled law laid down in the case of Marico Limited (supra), which holds that there does not arise any issue of passing off not only because of use of primary trademarks as wordmarks being different of both the parties but also that there is complete difference in get up and packaging of the products of the respective parties, and finally with respect to disentitlement of any person to claim descriptive wordmarks or their abbreviated forms for their exclusive entitlement in view of provisions of the Trade Marks Act, therefore this suit is dismissed with actual costs. Defendant will file an affidavit of costs incurred by it for engaging its lawyer in the present case and this affidavit of costs supported by the necessary documents will be filed within a period of two weeks from today. Costs stated in this affidavit will be paid by the plaintiff to the defendant within a period of two weeks thereafter.