It is a well-settled principle of trademark law that marks declared or recognised as well-known by the Trade Marks Registry or Courts enjoy a higher degree of protection. However, trademark owners often operate under the assumption that such protection grants blanket exclusivity across all classes of goods & services and even against remotely similar marks. The recent judgement of Madras High Court in case of The Procter and Gamble Company Vs IPI India Private Limited [O.P.(TM)Nos.48, 49 and 50 of 2024] reiterates that this assumption does not always hold true, particularly where the mark in question contains generic or publici juris elements.

Procter & Gamble Company (P&G), owner of the iconic and well-known brand Vicks VapoRub initiated cancellation actions seeking removal of trademark registrations granted in favour of IPI India Private Limited for the marks “VAPORIN”, “VAPORIN COLD RUB” and related variants in classes 3 and 5. P&G asserted long standing statutory and common law rights in the ‘VICKS’, ‘VAPORUB’ and various VAPO formative marks, relying on extensive registrations and the well-known status accorded to many of them. They claimed that IPI’s VAPORIN marks were deceptively similar, created overall similar commercial impression and were likely to dilute the distinctiveness of its well-known brands.

IPI, on the other hand, contended that the term ‘VAPO’ is an abbreviation of the common generic word “vapour”, which is common to trade. They placed reliance on the numerous VAPO formative registrations of third parties in classes 3 & 5 to support their claim and further argued that the packaging, colour scheme and trade dress of their products were distinct from P&G’s marks, thereby eliminating any likelihood of confusion.

After considering the submissions of both parties, the Court reiterated the fundamental principle of trademarks to be seen as a whole and held that when the rival marks are compared without any dissection or meticulous comparison, they were not similar. Viewed from the standpoint of an average consumer with ordinary intelligence and imperfect recollection, the Court held that the marks were phonetically dissimilar and the visual appearance is also distinct. The Court also emphasized that VAPO is publici juris and as such, the use of the word in other marks would not render them deceptively similar. Consequently, the cancellation petitions were dismissed in favour of IPI.

Key takeaways for Brand Owners:

This judgement reinforces a critical nuance in trademark law: well-known status does not confer absolute exclusivity. While a well-known mark enjoys enhanced protection including protection across dissimilar goods and services, such protection is not without limits. Importantly:

  • All-class protection primarily extends to identical or deceptively similar marks, where dilution or confusion is highly likely
  • Generic or descriptive components of a well-known mark cannot be monopolised
  • Distinctive overall presentation, trade dress and phonetic differences can outweigh the presence of a shared generic element

In essence, the judgment serves as a reminder that even well-known trademarks are subject to foundational principles of trademark law. Owners cannot claim exclusivity over common or generic terms merely because such terms form part of a well-known brand.

Written by Keerthana K