'Vapo’ is a generic term, Vicks has no exclusive right: Madras High Court rejects trademark case

The Madras High Court has held that the term “Vapo” is descriptive, generic and publici juris (belonging to the public) and Procter & Gamble Company (P&G), which markets the well-known Vicks VapoRub, cannot claim exclusive rights over its use in trademark registrations or prevent competitors from using it [The Procter and Gamble Company Vs IPI India Private Limited]..By an order dated January 6, Justice N Senthilkumar dismissed three trademark rectification petitions filed by P&G seeking removal of registrations granted in favour of IPI India Private Limited for the marks “VAPORIN”, “VAPORIN COLD RUB” and related device marks under Classes 3 and 5 of the Trade Marks Act, 1999."The term 'VAPO' is publici juris and as such the use of the word 'VAPO' in the 1st Respondent's mark will not render it deceptively similar to that of the petitioner's mark. The petitioner's product “VICKS VAPORUB” and the first respondent's products “Vapor In, Stress Out. Anytime, Anywhere” “VAPORIN COLD RUB” and “VAPORIN” are distinct and not similar and identical," the Court held..P&G approached the High Court under Sections 47, 57 and 125 of the Trade Marks Act seeking rectification of the trademark register by cancelling registrations standing in the name of IPI India for “VAPORIN” and allied marks.P&G claimed long-standing statutory and common law rights in the marks “VICKS”, “VAPORUB” and other ‘VAPO’-formative marks, asserting that Vicks was launched internationally in 1890 and in India in 1964, and that its trademarks enjoy extensive reputation, goodwill and judicial recognition.According to P&G, IPI India was marketing products such as “VAPORIN”, “VAPORIN COLD RUB” and “Vapor In, Stress Out. Anytime, Anywhere”, which were allegedly deceptively similar to Vicks VapoRub in name, trade dress, and overall commercial impression.P&G also alleged that IPI India had adopted those marks with a dishonest intention to ride on the goodwill associated with the Vicks brand.IPI India opposed the petitions, contending that “Vapo” is derived from the word “vapour”, is descriptive of vapour-based medicinal preparations, and is common to the trade. It pointed to the existence of numerous third-party products using “Vapo”-prefixed names and relied on evidence of its own long-standing use, registrations, advertisements and sales of “VAPORIN” products since 2013..The Court held that trademarks must be compared as a whole without dissection and from the standpoint of an average consumer with ordinary intelligence and imperfect recollection.On such comparison, it found that “VICKS VAPORUB” and “VAPORIN” are phonetically and visually dissimilar and that their colour schemes, packaging, layout, and trade dress are distinct. The Court held that the respondent’s products were unlikely to cause confusion or deception as to source.."In the case on hand, 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 will create a doubt or impression to 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 ruled..It rejected P&G’s core submission and held that “Vapo” is merely an abbreviated form of “vapour” and is widely used to describe vapour-based medicinal products. Taking note of extensive third-party use, the Court concluded that the term is publici juris and incapable of monopolisation..The rival marks are distinct and that “Vapo” cannot be monopolised, the Court concluded while dismissing all three petitions. .P&G was represented by advocate Abhishek Jenasenan.IPI India was represented by advocate Ramesh Ganapathy from Mission Legal..[Read Judgment].Follow Bar and Bench channel on WhatsAppDownload the Bar and Bench Mobile app for instant access to the latest legal news.