Kerala High Court Overturns Injunction in Trademark Dispute Between Shoranur Metal Industries LLP and Metal Industries Limited
Court rules that generic terms "Metal" and "Industries" cannot be monopolized without secondary meaning; dismisses suit for infringement and passing off.
In a significant decision, the Kerala High Court has overturned a lower court's ruling that had granted an injunction in favor of Metal Industries Limited against Shoranur Metal Industries LLP. The case, RFA No. 287 of 2024, revolved around the alleged infringement and passing off of the trade name "Metal Industries."
Metal Industries Limited, a company established over 94 years ago and registered under the Trade Marks Act, claimed that Shoranur Metal Industries LLP was using a deceptively similar trade name, leading to public confusion. The plaintiffs sought a permanent prohibitory injunction and damages, asserting exclusive rights over the name due to its registration.
The trial court initially ruled in favor of Metal Industries Limited, granting an injunction against Shoranur Metal Industries LLP. However, the defendants appealed, contending that the terms "Metal" and "Industries" are generic and commonly used in the industry, thus not subject to exclusive rights under the Trade Marks Act.
In his judgment, Justice C. Pratheep Kumar emphasized the importance of a trade mark acquiring a secondary or subsidiary meaning to qualify for exclusivity. The court found that Metal Industries Limited failed to demonstrate that the terms had gained such meaning or that they suffered any irreparable harm or damage due to the defendants' use of the name.
Citing the Trade Marks Act, particularly Sections 29, 30, 134, and 135, the court held that the plaintiffs could not monopolize generic terms. The court also noted the absence of evidence for goodwill, misrepresentation, or damage necessary to substantiate claims of passing off.
The decision references several precedents, including the Supreme Court's judgment in Ramdev Food Products P. Ltd. v. Arvindbhai Rambhai Patel, and Delhi High Court's ruling in Pornasricharoenpun Co.Ltd v. L'Oreal India Private Limited, which align with the principle that generic terms cannot be monopolized without distinctiveness.
Ultimately, the High Court allowed the appeal, setting aside the trial court's decree and dismissing the suit, while directing both parties to bear their respective costs.
Bottom Line:
Trade Marks - The registration of generic or descriptive terms as trademarks does not grant exclusive rights to monopolize such terms unless they have acquired a secondary or subsidiary meaning - Plaintiffs must establish goodwill, misrepresentation, and damage to succeed in claims of infringement or passing off.
Statutory provision(s): Sections 29, 30, 134, 135 of the Trade Marks Act, 1999
Shoranur Metal Industries LLP v. Metal Industries Limited, (Kerala) : Law Finder Doc Id # 2781184
