Madras High Court: In petitions filed under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (‘Trade Marks Act’), seeking rectification of the Register of Trade Marks by removal of the respondent’s marks “VAPORIN” and “VAPORIN COLD RUB”, a Single Judge Bench of N. Senthilkumar, J., held that the rival marks were not deceptively similar to “VICKS VAPORUB”. The Court observed that “VAPO” is merely descriptive, common to trade, and therefore publici juris. Consequently, the petitions for rectification were dismissed.
Background:
The petitioner is a multinational company engaged in manufacturing and trading of health care, personal care and hygiene products, with its leadership brand “VICKS” launched internationally in 1890 and in India in 1964. Under the VAPO formative marks, the petitioner offers products such as VICKS VAPORUB, VICKS VAPOCOOL, VICKS VAPOPATCH, VICKS VAPOEASE, VICKS VAPAPADS, VICKS COUGH DROPS, and VICKS INHALER.
The petitioner claimed that its trademarks “VICKS” and “VAPORUB” are extremely valuable intellectual property, registered in India since 1954 and 1977 respectively, and recognized by various Courts.
The dispute arose when the petitioner discovered that the respondent was carrying on business with products named “Vapor In, Stress Out. Anytime, Anywhere”, “VAPORIN COLD RUB” and “VAPORIN”. A cease-and-desist notice was issued, followed by petitions seeking removal of the respondent’s registrations.
The petitioner contended that the respondent’s marks were phonetically, visually, structurally and conceptually deceptively similar to “VAPORUB”, and that the respondent’s packaging, trade dress, colour and layout were deceptively similar, adopted with dishonest intention to capitalize on the petitioner’s goodwill. Reliance was placed on Sections 9 and 10 of the Trade Marks Act.
On the other hand, the respondent argued that the petitioner’s product is invariably perceived as “VICKS”, with “VAPORUB” playing a secondary and descriptive role. The respondent’s mark “VAPORIN” was said to be structurally and phonetically distinct, adopted in a unique manner with a different theme. It was contended that “VAPO” is descriptive and common to trade, that the petitioner has no registration for “VAPO” alone, and that prolonged inaction amounted to passive consent under Section 33 of the Trade Marks Act. The respondent also produced evidence of extensive use and advertisements to argue that descriptive terms cannot be monopolised.
Analysis and Decision:
The Court emphasised that the issue was whether the petitioner’s product “VICKS VAPORUB” and the respondent’s products “VAPORIN” and “VAPORIN COLD RUB” were deceptively similar, whether there was dishonest intention, and whether the term “VAPO” is publici juris.
The Court noted that a mere comparison of the trademarks showed that the names, colour, size, packing and letters were not deceptively similar. It was observed that when the rival marks are taken as a whole and compared without any dissection or meticulous comparison, the marks are not similar, and it cannot be stated that the product of the first respondent would create a doubt or impression in the mind of an average man with ordinary intelligence and imperfect recollection that the products are originating from the petitioner, as the marks are phonetically dissimilar and the visual appearance is also distinct.
The Court highlighted that 75 other products beginning with the name “VAPO” are available in the market and that it is common to the trade. The Court noted that it cannot be said that there was dishonest intention on the part of the first respondent in adopting the impugned trademarks. It was observed that Section 17 of the Trade Marks Act clearly states that registration confers exclusive right to the use of the trademark taken as a whole, and that no exclusive right can be claimed over a part of the mark which is common to trade or non-distinctive.
The Court further emphasised that the term “VAPO” is merely an abbreviation of the word vapour, and it is descriptive and common to the trade, and therefore publici juris, and nobody can claim an exclusive right to use any abbreviation which has become publici juris. The Court concluded that the use of the word “VAPO” in the respondent’s mark will not render it deceptively similar to that of the petitioner’s mark.
Accordingly, the Court held that the petitioner’s product “VICKS VAPORUB” and the respondent’s products “VAPORIN” and “VAPORIN COLD RUB” are distinct and not similar, and thus the petitions stand dismissed with no costs.
[Procter and Gamble Company v. IPI India (P) Ltd., 2026 SCC OnLine Mad 750, decided on 06-01-2026]
Advocates who appeared in this case:
For the Petitioner: Abishek Jenasenan
For the Respondent: Ramesh Ganapathy for M/s Mission Legal