Court held that common descriptive terms in trademarks cannot be claimed exclusively and must be assessed as a whole, dismissing claims of deceptive similarity.

ORDER :

O.P(TM)No.48 of 2024 has been filed (a)to remove the entry in the Register in respect of the registration under No.3897775 in Class 03 in the name of the Respondent No.1 from the register of Trade Marks and (b)to direct the first respondent to pay the cost of the proceedings.

2.O.P(TM)No.49 of 2024 has been filed (a)to remove the entry in the Register in respect of the registration under No. 4285435 in Class 05 in the name of the Respondent No.1 from the register of Trade Marks and (b)to direct the first respondent to pay the cost of the proceedings.

3.O.P(TM)No.50 of 2024 has been filed (a)to remove the entry in the Register in respect of the registration under No.3461733 in Class 03 in the name of the Respondent No.1 from the register of Trade Marks and (b)to direct the first respondent to pay the cost of the proceedings.

The brief case of the petitioner is as follows:-

4.The petitioner is one of the largest and most reputed multinational companies established in the business of manufacturing and trading of health care, personal care, personal hygiene products etc. It was founded in the year 1837. One of the leadership brands of the petitioner in respect of pharmaceutical products and medicinal preparations is “VICKS” and it was launched internationally in the year 1890 and in India, it was launched in the year 1964 and is extremely well known amongst the trade and public. Under the VAPO formative marks, the petitioner offers a wide range of products such as, VICKS VAPORUB, VICKS VAPOCOOL, VICKS VAPOPATCH, VICKS VAPOEASE, VICKS VAPAPADS, VICKS COUGH DROPS, VICKS INHALER etc. The petitioner's product under the trade mark “VICKS”, “VAPORUB” as well as the various other VICKS and VAPO formative marks earn tremendous reputation, goodwill and loyalty amongst the consumers.

5.The petitioner's trademarks “VICKS” and “VAPORUB” being its extremely valuable intellectual property have been registered in jurisdictions across the world in the year 1928. The petitioner has registered the trademark “VICKS” in India in the year 1954, the trade mark “VAPORUB” in India in the year 1977, the trademark

6.The details of the petitioner's registration for the trade mark VICKS, the VAPORUB and other VAPO formative marks in India in various classes are as follows:

7.In the meanwhile, the petitioner came to know that the first respondent is carrying out business for the similar products, namely, “Vapor In, Stress Out. Anytime, Anywhere”, “VAPORIN COLD RUB” and “VAPORIN”. Hence, they issued a cease and desist notice, dated 27.09.2022 to the first respondent. The petitioner contended that the first respondent's products are deceptively similar to petitioner's and therefore, they have filed the above petitions to remove the registration with regard to the first respondent's products.

8.Mr.Abishek Jenasenan, learned Counsel for the petitioner has made the following submissions:

(a)The registration and usage of the petitioner's well known marks “VICKS” and “VAPORUB” are significantly prior to the first respondent's marks.

(b)The trademarks “VAPORUB” of the petitioner and the trademarks “VAPORIN” of the first respondent are phonetically, visually, structurally and conceptually deceptively similar. The mark