Facts

1. Appeal before the Delhi High Court by the Appellant/ Plaintiff, praying to set aside the order passed by the Single Judge Bench of the Delhi High Court
2. The impugned order had dismissed the injunction application filed by the said Plaintiff and in addition had allowed the vacation application by Respondent/ Defendant of injunction and thus vacated the ex-parte interim order.
3. The Single Judge Bench had also held that no case of infringement was found on using Low Absorb by Respondent/ Defendant as contended by the Appellant/ Plaintiff against their registered trademark LOSORB or LO-SORB. Also no case of passing off was found on using LOW ABSORB against the Appellant/ Respondent’s unregistered trademark LOW ABSORB.
4. The Appellant claimed of coining the words LOSORB and LO-SORB which were trademarked and used for edible oils which the technology of low oil consumption. These trademarks were used in besides trademarks Saffola and Sweekar
5. Defendant is using expression WITH LOW ABSORB TECHNOLOGY under their trademark Sundrop to ell edible oil, which also has the characteristic of retarding oil absorption.

Marico Limited vs Agro Tech Foods Limited on 1 November, 2010
The High Court of Delhi - CS(OS) No. 1590/2009, Coram: Hon'ble Mr. Justice Sanjay Kishan Kaul, Hon'ble Mr. Justice Valmiki J. Mehta

Issues

1. Whether Defendant’s use of their expression amounts to passing off of unregistered trademark of Plaintiff
2. Whether registration gives exclusive right to use trademarks LOSORB and LO-SORB
3. Whether there is a case of infringement due to the use of deceptively similar trademark?
4. Whether registration confers prima facie validity only and allows Courts to deny injunction applications despite registration?
5. Whether appellant is entitled to relief of injunction if Defendant shows that the use was within statutory limits?

Arguments
The Appellant relied on the extensive sale under the trademarks and huge amounts of money spent for advertising of said edible oils. Appellant also claimed that the trademark under dispute has developed secondary meaning.

The Respondent relied on the fact that the term used by the Appellant is a descriptive word and no monopoly can be availed over it.

Judgement

1. Using descriptive words and acquiring secondary meaning to it does not prevent others from using it as per Cadila Healthcare Ltd. Vs. Gujrat Co-operative Milk Marketing Federation Ltd & Ors [i]. No exclusive ownership of term LOW ABSORB since it is a common descriptive word. High time for those who are in the first of the blocks in using descriptive terms, to stop from claiming exclusive rights over it.
   
   As per Section 9, marks or indications which are used to designate kind, quality, quantity, etc., which can basically be said to be of descriptive nature are refused registration on absolute grounds. However, they may be allowed if they have developed secondary meaning and is of distinct nature. Now they question before the Court was, what does distinctive mean under Section 9 and does the mater in question qualify as such. The Court said distinctiveness has been discussed in many judgements and even can be derived from the definition of Trademark and Well-known trademarks.
   
   A trademark is said to be distinctiveness when it is immediately connected with a certain product, manufacturer or owner in the minds of the public. A trademark needs to be in use for a long period of time, in such a way that the description is relatable only and only to that source, such as in the case of Heinz Italia and Another Vs. Dabur India Ltd, [ii] period of 60 years of use of Glucon-D was considered a considerable long period of time and thus distinctiveness of descriptive nature would be accepted, albeit it is a tweaked form of normal descriptive word Glucose.
   
   Another aspect regarding passing off I that the two products are visually different from each other, the trademark Sundrop on the Respondent’s packaging is prominent in size, and also much larger than the size of the term WITH LOW ABSORB TECHNOLOGY. The colour of Respondent’s packaging in blue, while the Appellant’s is orange. The Court said that just because they tend to the same audience and their trade channels is same, there cannot be said to have possibility of confusion, they are differentiated from each other to avoid any confusion.
   
   No exclusivity, therefore no case of passing off.
    
2. Exclusive right for a trademark is available only if the trademark is valid, this is derived from the expression if valid under Section 28 of the Act which talks about rights conferred by registration. This means that the trademark should bypass grounds of refusal. In addition to that, even after registration an aggrieved person is entitled to apply for cancellation of the trademark registration under Section 57. It is only when cancellation proceedings come to finality, can it be said that a mark for which there is an absolute ground for refusal has acquired distinctive character, or is a well-known trademark and thus a valid registration.
   
   Here, the trademark is not valid since the term registered is a descriptive mark, thus a ground for absolute refusal and therefore, no right of exclusivity can is entitled. However, under the proviso of Section 9, a mark cannot be refused for registration if it has gained distinctiveness. Here, that also is not seen.
   
   Evidence of distinctiveness is seen up to the date of application filed, which is 2001 and under Section 31(2) is extended to date of registration, which is 2005. Evidence of distinctiveness cannot be seen up to the year 2009 when the suit was filed (i.e. post registration) as that is seen only in cases where registration is declared invalid under Section 57 and seen not by the civil Court but under proceedings under Section 57 before the Registrar or Appellate Board.
    
3. Section 29(1) talks about case of infringement of registered trademarks by use of a deceptively similar or nearly identical trademark in same or similar goods as the registered trademark
   
   In case the trademark is not identical, case infringement will be made out only if the registered trademark has a reputation in India, as per Section 29(4). An owner cannot sue for infringement if the trademark used is falling under the exception in Section 30 which talks about limits on effect of registration of trademark and 35 which says that certain trademarks depicting description of product, person’s own name etc. cannot be sued by the proprietor or registered user.
    
4. Registration is only prima facie evidence of its validity and the presumption of prima facie validity of registration is only a rebuttable presumption.[iii]
   
   The suit may be stayed until the decisions under Section 57 of the Act. If Section 57 is not availed the Court, if satisfied may adjourn the case for three months after framing issues and allow the Defendant to apply under Section 57 as per Section 113. Section 124(5) provides that despite registration, interlocutory orders can be made by Court before which action is filed, which may include granting or dismissing injunction orders.
   
   The Learned Single Judge was entitled to look into the matter of registration in the present case, owing to the expression if valid under Section 28. Section 31 which provides that original registration and subsequent transmission is prima facie validity of trademark registered, can be claimed only if the registration is valid, which is not so in this case.
    
5. Appellant is not entitled to the relief of injunction since the registration is invalid and even if hypothetically speaking, the registration is valid in the present case, the Appellant would not have been entitled since the packaging is completely different from one another. Besides, Ss. 30 and 35 are exceptions to the infringement actions of the Appellant under Section 28 and 29, thus the Defendant can take recluse under the first two sections mentioned and use them to defeat infringement actions.

Held
Appellant dismissed, Appellant did not have a prima facie case, parties to bear their own costs.

Conclusion
Descriptive words are highly discouraged to be registered as trademarks, even if there is a proviso which exempts them from refusal of registration owing to distinctiveness. This question of distinctiveness further is a question of fact, different for each case. The proviso ideally ought not be availed by ordinary trademarks as it adds to back log of cases, thereby it should be discouraged in the first instance itself.

A trademark, after registration, is not free from the scrutiny as the Defendant can apply for procedure under Section 57 before the Appellate Board or Registrar. In addition to that Court can pass interlocutory orders. Second line of defence is that once the registration is said to be valid, the trademark can take protection under Section 30 and 35 of the Act.
Descriptive words are mere English words which are used to describe or indicate characteristics or properties of a product, usually to boost one’s sale or for the knowledge of the public and no person can claim ownership over something so inherent.

End-Notes:

1. 2009 (41) PTC 336: 2009 (8) AD (Delhi) 350.
2. (2007) 6 SCC 1
3. N.R. Dongre Vs. Whirlpool Corp. 1995 (34) DRJ 109 (DB), para 31.