Vicks vs Vaporin: Madras High Court stays finding that term ‘VAPO’ is public property

The Madras High Court has stayed a single judge's recent finding declaring the word “VAPO” publici juris (belonging to the public) [The Procter and Gamble Company Vs IPI India Private Limited].

The single bench had expressed the view in a trademark case between Procter & Gamble Company (P&G), which manufactures the popular medicine Vicks VapoRub, and IPI India Pvt Ltd, which manufactures Vaporin Cold Rub.

The single-judge Bench of the Court had dismissed P&G's petitions seeking the cancellation of registrations granted in favour of IPI India for the marks “VAPORIN”, “VAPORIN COLD RUB” and observed that the term “VAPO ” is publici juris and incapable of monopolisation.

On February 17, a Division Bench of Justices CV Karthikeyan and K Kumaresh Babu stayed the finding over 'VAPO' after hearing appeals filed by P&G. It also clarified that there is no injunction against IPI India from using its registered mark.

However, it held that the observations of the single judge, particularly the finding that the word “VAPO” is publici juris, require further examination.

"The observations of the learned Single Judge in Paragraph No.26 of the common order now under appeal requires further examination. To that extent, the observations made in Paragraph No.26 alone are stayed, particularly with respect to the observation that the word ’VAPO’ is publici juris," the Court said.

The appeals arise from an order of Justice N Senthilkumar, who dismissed three petitions filed by P&G under Section 47 (non-use removal)
Section 57 (register rectification) and Section 125 (High Court jurisdiction)of the Trade Marks Act seeking the cancellation of registrations granted in favour of IPI India for the marks “VAPORIN”, “VAPORIN COLD RUB” and related device marks under Classes 3 and 5.

P&G claimed long-standing statutory and common law rights in the marks “VICKS”, “VAPORUB” and other VAPO-formative marks.

P&G objected to IPI India marketing products such as “VAPORIN”, “VAPORIN COLD RUB” and “Vapor In, Stress Out. Anytime, Anywhere” despite their similarity with Vicks VapoRub in name, trade dress and overall commercial impression. It accused IPI India of engaging in a dishonest adoption of its marks with an intention to ride on the goodwill of the Vicks brand.

However, the single judge bench on January 6 said that rival trademarks must be compared as a whole, without dissection, and from the standpoint of an average consumer with ordinary intelligence and imperfect recollection.

The Court rejected P&G’s contention that it could claim exclusivity over “Vapo”, holding that the term is merely an abbreviated form of “vapour” and is widely used to describe vapour-based medicinal products.

Taking note of extensive third-party usage, it concluded that the term is publici juris and incapable of monopolisation. It is this conclusion that has now been stayed by the Division Bench pending further hearing of the appeals.

Senior Advocate PS Raman with Advocate Abishek Jenasenan appeared for P&G.

Advocate Ramesh Ganapathy represented IPI India.

[Read Order]