Godfrey Phillips India Ltd. v. Girnar Food & Beverages (P) Ltd.

Relevant Acts and provisions

Trade and Merchandise Marks Act, 1958

Section 9

Provisions considered: Protectability of a descriptive trade mark on proof of secondary meaning, with reference to Section 9 of the Trade and Merchandise Marks Act, 1958.

Brief facts

The appellant sold tea under an umbrella mark, marketing an extra-strong variant under a two-word mark since 1987-88, and claimed substantial goodwill from advertising and sales under that name. On the respondent's use of the same expression for its own tea, the appellant sued for passing off and obtained an interim injunction from a Single Judge, which a Division Bench of the High Court set aside, holding the expression to be purely descriptive and laudatory and therefore incapable of protection. The appellant appealed to the Supreme Court.

Issues before the Court

1. Can a trade mark composed of descriptive or laudatory words ever be protected in a passing off action?
2. Did the Division Bench correctly hold a descriptive mark incapable of protection without examining whether it had acquired secondary meaning?

Court's findings

The Court held that the Division Bench's enunciation of law, that a descriptive trade mark can never be protected, was incorrect, and clarified that a descriptive mark may be entitled to protection in a passing off action if it has acquired a secondary meaning identifying it uniquely with a particular trader's product or source.

The Court declined to itself decide at that stage whether the expression was in fact descriptive or had acquired such secondary meaning, holding that this was a question requiring examination on the material before the court below.

The Court accordingly remanded the matter to the Division Bench to determine that additional question without disturbing its other findings, directing that the suit and the appeal both proceed expeditiously.

Decision

Appeal disposed of; the matter was remanded to the Division Bench for a specific finding on whether the mark had acquired a secondary meaning entitling it to protection.

Keywords

Descriptive Marks Distinctiveness Generic Marks Passing Off Secondary Meaning