Marico Limited v. Agro Tech Foods Limited

Relevant Acts and provisions

Trade Marks Act, 1999

Section 29Section 30(2)(a)Section 35Section 9

Provisions considered: Sections 9, 29, 30(2)(a) and 35 of the Trade Marks Act, 1999, on descriptive marks and statutory defences.

Brief facts

The appellant, registered proprietor of marks for edible oil containing an anti-foaming agent since 2001, sued the respondent for infringement and passing off over the respondent's use of a descriptive phrase on its cooking oil, which also reduced oil absorption during frying. A Single Judge dismissed the application for interim injunction, holding that the phrase was used only descriptively and that no case for infringement or passing off was made out. The appellant appealed to a Division Bench.

Issues before the Court

1. Does registration of a descriptive-sounding trade mark entitle its proprietor to restrain a competitor's descriptive use of similar words under Section 30(2)(a)?
2. Had the appellant's mark acquired sufficient distinctiveness at the interim stage to override its inherently descriptive character?

Court's findings

The Court held that the phrase in question was a common descriptive expression, being a straightforward combination of ordinary English words conveying a characteristic of the product, and that persons first adopting such descriptive expressions as trade marks must be discouraged from later claiming an exclusive monopoly over them, in keeping with the spirit of Sections 9, 30 and 35 of the Trade Marks Act, 1999.

The Court observed that registration under the proviso to Section 9 is only prima facie evidence of validity and does not foreclose a court at the interim stage from examining whether the mark had truly become distinctive.

The Court held that it should ordinarily lean against finding a descriptive mark distinctive unless it has been used exclusively and undisturbed for a very long period, and found the appellant's seven years of use insufficient at the interim stage to establish secondary meaning.

Decision

Appeal dismissed; the Single Judge's refusal of interim injunction was upheld for both infringement and passing off.

Cases cited

• Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257

Authorities referred to in the decision. Please verify each citation in the judgment itself.

Keywords

Descriptive Marks Distinctiveness Generic Marks Passing Off Secondary Meaning