201806.18
2

No Exclusivity in Abbreviated Form of Descriptive Words

VAC-PAC derived from the words Vacuum Packaging or Vacuum Pack was bone of contention between the parties dealing in welding electrodes. The Plaintiff, SuperonSchweisstechnik India Limited (Superon) filed a passing off action against the Defendant, Modi Hitech India Ltd (MHIL) seeking reliefs of injunction, delivery up, rendition of accounts and damages for use of the mark VAC-PAC.

Superon in support contended:

  1. They are engaged inthe business of manufacturing,repair and reclamation of conventional welding electrodes and have collaboration with KjellbergFinsterwalde, Germany.
  2. They sell their products under the well-known trademark SUPERON. In the year 2004 they adopted the trademark VAC-PAC.
  3. VAC-PAC is a fanciful and arbitrary trademark and thus entitled to high degree of protection. The mark VAC-PAC has a unique get up, set up, lettering style and they are the owners of the mark on account of prior adoption and continuous use. They export the products under the VAC-PAC mark to about 70 countries.
  4. MHIL has dishonestly adopted an identical trademark VAC-PAC for the same goods being welding electrodes.
  5. Superoncontendedthat every manufacturer or seller is entitled to have a main trademark and also additional trademarks which are used with the main trademark. Once the additional trademarks acquire distinctiveness such additional trademarks used with the main trademark also fall in the ownership of the seller and no other manufacturer or seller can use these additional trademarks.
  6. VAC-PAC is derived from the words Vacuum Packaging or Vacuum Pack but the expression VAC-PAC is an original and unique adoption from the words Vacuum Pack/Vacuum Packaging and thus SUPERON is entitled to claim the ownership of trademark VAC-PAC.

MHIL Defence:

  • Abbreviation of descriptive words cannot and should not be given protection as a trademark.
  • MHIL is using a totally different mark GMM/arc along with VAC-PAC.
  • Superon has no real prospect of succeeding in the suit and in the circumstances the suit can be summarily dismissed (keeping in view Order XIII-A Code of Civil Procedure (CPC) applicable to commercial suits).

The court after hearing the submissions made the following observations:

  • The instant suit is one for passing off as the VAC-PAC mark by Superonis not yet registered.Superon is selling its goods using two trademarks SUPERON and VAC-PAC, whereas, MHIL is selling its goods using its primary trademark GMM/arc with addition of the words VAC-PAC on the packaging. There is also marked differences between the rival packaging with regard to colour combination and features.
  • On the aspect of passing off,Superon has no real prospect to succeed in the suit, primarily, as their main trademark is SUPERON along with the added trademark of VAC-PAC, whereas, the main trademark of MHIL is totally different being GMM/arc with the use of VAC-PAC. There is no deceptive similarity qua the aforesaid two main trademarks of the parties. The respective trademarks are distinct enough to distinguish the goods of Superon from MHIL. Thus,no case of passing off is made out.
  • The Court also considered the legal principle in relation to allowing ordinary descriptive words or their abbreviations to be appropriated by one or more manufacturer or seller. The court observed admittedly VAC-PAC is derived from Vacuum Pack/Vacuum Packaging and is a way of packaging of the welding electrodes of the parties so as to give it a longer shelf life. Thus, an abbreviated form of descriptive words will not entitle Superon to claim exclusive ownership of either the descriptive wordmark/trademark Vacuum Pack/Vacuum Packaging or its abbreviated form VAC-PAC.

The Court concluded the plaintiff has no real prospect of succeeding on the claim. Thus,dismissed the suit with cost