T.V. Venogopal vs Ushodaya Enterprises Ltd. & Anr on 3 March, 2011
34.5 Re. plea that POWER FLEX is a descriptive mark, and cannot
be injuncted - Section 35
34.5.1In the impugned judgment, the learned Single Judge has also
gone on to distinguish between descriptive marks and suggestive
marks. Marks which are descriptive are not capable of being
registered, in view of Section 9(1)(b)47 and cannot be injuncted
because of Section 35; however, marks which, though not
descriptive, are merely suggestive, may be registered, and can be
injuncted. The position in law, in this regard, stands settled by the
judgment of the Supreme Court in T.V. Venugopal v. Ushodaya
Enterprises.16
34.5.2The learned Single Judge has referred to various tests that
have been evolved from time to time to decide whether a mark is
distinctive or suggestive. In the facts of the present case, we do not
deem any detailed discussion on that aspect to be necessary as, in
our view, the word POWER FLEX is not even suggestive of
footwear. The mark POWER FLEX does not bring, to mind,
footwear. It cannot, therefore, be regarded as "(descriptive) of the
character or quality" of the leather footwear of Leayan, within the
meaning of Section 35.