“Descriptive & Generic”: Kerala High Court Sets Aside Injunction Granted Over Use Of 'Metal Industries' Trademark

The Kerala High Court has recently set aside an injunction granted to government company Metal Industries Limited against use of trade mark 'Metal Industries' after noting that the words metal and industries are generic and descriptive.Even though the company was the registered owner and long-term user of the trade mark 'Metal Industries', Justice C. Pratheep Kumar found that there was no ground to grant relief to it under infringement or passing off.The 1st respondent/plaintiff is a company called Metal Industries Ltd. founded around 94 years ago with registered office in Shoranur. The plaintiff is into the manufacture of iron and steel agricultural tools and has a brand name 'Tusker' with emblem. The 1st appellant/defendant is a firm called Shoranur Metal Industries LLP established in 2019, functioning near the plaintiff company and having brand name 'T.Kumar Tools'.The plaintiff filed a suit against the defendant alleging trade mark infringement and passing off. Trial court decreed the suit and granted permanent prohibitory injunction restraining defendants from using 'Metal Industries'. Aggrieved, the defendants have filed the present appeal.The plaintiffs contended that since it is the registered owner of 'Metal Industries', it is entitled to relief in view of Section 29 of the Trade Marks Act. It was also submitted that the defendants ought to have objected to the use of the name before registration and not at this stage. The plaintiffs further argued that courts can grant relief to prior user even if the words are generic or descriptive, if they attained secondary meaning or extraordinary goodwill and reputation.The defendants relied upon Section 30(2)(a), which is an exception to Section 29, to contend that since the words 'metal' and 'industries' are generic. Referring to Pornasricharoenpun Co.Ltd and Ors. v. L'Oreal India Private Limited and Ors (2022), it was argued that the right to impugn a trade mark exists not just at the stage of registration but thereafter as well.The Court looked into various decisions, including Institute of Directors v. Worlddevcorp Technology and Business Solutions Pvt. Ltd. & Ors., Yatra Online Limited v. Mach Conferences and Events Limited, T.V. Venugopal v. Ushodaya Enterprises Ltd. and another (2011) and others. It found that the plaintiffs have no case that 'Metal Industries' has acquired secondary or subsidiary meaning. It observed:“it is to be held that the words 'Metal' as well as 'Industries' are either generic or descriptive terms and as such, the plaintiffs are not entitled to monopolized those words by registering them under the trade marks. Therefore, though the plaintiffs have registered the trade mark 'Metal Industries', by virtue of Section 32(1)(a) of the Trade Marks Act, the defendants are entitled to use those words and as such, the trial court was not justified in granting a permanent prohibitory injunction against the defendants and in favour of the plaintiffs on the ground of infringement.”Considering the argument of “passing off” in the instant case, the Court found that if the elements of confusion and misrepresentation are absent, then a claim of “passing off” cannot stand. It found that the brand names of the parties, namely Tusker and K.Kumar Tools, are dissimilar and cannot cause confusion among customers. Moreover, since the plaintiffs had not brought evidence to show irreparable harm and injury in terms of reputation and money, then “passing off” cannot arise.The Court went on to observe that the trial court ought not have granted injunction merely because the plaintiffs have been using 'Metal Industries' for decades. It, thus, allowed the appeal and set aside the judgment and decree of the trial court.Case No: RFA No. 287 of 2024Case Title: Shoranur Metal Industries LLP and Anr. v. The Metal Industries Ltd.Citation: 2025 LiveLaw (Ker) 650Counsel for the appellants: Harikumar G.Counsel for the respondents: Saji Varghese T.G., Mariam Mathai, Sreepriya K.U., Abraham Joseph Click to Read/Download judgment

“Descriptive & Generic”: Kerala High Court Sets Aside Injunction Granted Over Use Of 'Metal Industries' Trademark

K. Salma Jennath

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