Bombay High Court rejects defendant's 'descriptive sub-brand' defence


In Hem Corporation Pvt Ltd v ITC Limited (April 11 2012), the Bombay High Court has ruled that use of a descriptive word that is identical or similar to a prior registered trademark on product packaging will amount to infringement if use of the word is likely to be perceived as use as a trademark.

Plaintiff Hem Corporation Pvt Ltd claimed to be the registered proprietor of the following trademarks in Class 3 of the Nice Classification (incense sticks and perfumery):

  • MADHUR GULAB (Hindi for 'Sweet Rose');
  • MADHUR (Hindi for 'sweet'); and
  • the word 'Madhur' in Devnagri (Hindi) script.

The plaintiff filed suit against the defendant for using the expression 'Madhur 100' on the label of its Mangaldeep-branded incense sticks. 'Madhur 100' was written to the right of the brand name Mangaldeep in smaller letters. 

The defendant’s arguments were as follows:

  • It did not use the word 'Madhur' as a trademark, but only as a descriptor. Its incense sticks are sold under the umbrella brand Mangaldeep, and it uses this brand in conjunction with descriptors such as 'Mogra' (the name of a flower), 'Jasmine', 'Sandalwood', 'Madhur' and 'Madhur 100', which indicate the quality and characteristics of the product.
  • The word 'Madhur' is descriptive of goods such as incense sticks and, therefore, is inherently incapable of being registered. Hence, the trademark MADHUR had been wrongly registered by the Trademarks Registry, and it was open to the court to refuse to grant an injunction.
  • Section 30(2)(a) of the Trademarks Act 1999 states that a registered mark is not infringed where the mark is used to indicate the kind, quality or other characteristics of the goods. Under Section 35, a trademark owner cannot prevent a third party from using the mark in good faith to describe the character or quality of its goods.

The court held that, even if the defendant genuinely intended to use the words 'Madhur 100' only to describe the aroma of its products, this was irrelevant if use of the words was likely to be perceived as use as a trademark. Use of a registered trademark by a third party constitutes infringement if it can indicate a connection in the course of trade between the goods of the third party and the mark owner. The judge noted: “I have already come to the conclusion that use of the mark by the defendant is as a trademark and not merely as a description of the product”.

Further, the court agreed with the plaintiff that the defendant intended to use the word 'Madhur' as a trademark and not merely to describe its products. The plaintiff relied on averments in the defendant's affidavit which referred to 'Mangaldeep' as a brand, and to 'Mangaldeep Madhur' and 'Mangaldeep Mogra', among others, as sub-brands. The court observed that the affidavit revealed the manner in which the defendant used the word 'Madhur', and that the manner in which the word was used - ie, as a sub-brand - could be perceived by others. Moreover, an internet search relied upon by the defendant produced various news clippings referring to the launch of the Mangaldeep Madhur product, which showed that consumers and the trade perceived 'Mangaldeep Madhur' as a trademark.

The court also held that a sub-brand does not fall outside the ambit of trademark protection, and that reference to a 'sub-brand' indicates that the term is a brand name or a trademark. According to the court, the test is not whether a party claims to use a trademark as a sub-brand, but whether the mark is used to distinguish - or is capable of distinguishing - the goods or services of that party. The Trademarks Act does not refer to 'sub-brands'.

The court declined to consider whether it could refuse to grant an injunction if it felt that the mark had been wrongly registered; it was bound by the decisions in Hindustan Embroidery Mills Pvt Ltd v K Ravindra & Co (1976 BLR 146) and Biochem Pharmaceutical Industries v Biochem Synergy Ltd (1998 (18) PTC 267), in which it was unequivocally held that, once a mark is registered, an interim injunction can be granted even if the mark was wrongly registered.

Finally, the court held that a defendant can rely on Sections 30 and 35 only if it can establish that it uses the mark in relation to its goods to indicate their quality; however, in this case, the defendant used 'Madhur' as a trademark.

Aditi Jha and Gowree Gokhale, Nishith Desai Associates, Mumbai

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