• Contributor: Mohan Dewan, R K Dewan & Co., Mumbai, India

INTA Bulletins Law and Practice — Asia-Pacific Subcommittee

Verifier: Sushant Singh, Supreme Court of India and Delhi High Court

On April 2, 2018, in Superon Schweisstechnik India v. Modi Hitech India Ltd./CS (COMM) No.750/2018, the High Court of Delhi ruled on the issue of abbreviations of words being used as trademarks for goods sold, techniques adopted, or materials used.

The plaintiff, Superon Schweisstechnik India, was operating a business geared to the repair and reclamation of welding electrodes. The company’s “umbrella” trademark was SUPERON, along with which the company used the term “VAC PAC” for electrodes that are vacuum packaged. The defendant, Modi Hitech India Ltd., used the trademark GMM/arc for its products and also used the term “VAC PAC” with its trademark to indicate that its electrodes were vacuum packaged.

The plaintiff argued that “VAC PAC” was a term coined by them and, with its widespread use and passage of time, the term had gained a secondary meaning indicating that products containing the term belonged to their company.

However, the court disagreed with the plaintiff’s arguments and held that the main trademark used by both parties was prominently different (SUPERON and GMM/arc respectively). Further, the color scheme used by the defendant was blue, white, and red, whereas that of the plaintiff was dark yellow, blue and black, which clearly distinguished their respective marks. The court first said that the scope of protection for descriptive words—and in particular, abbreviations as trademarks—was extremely limited. The court also asserted that persons using descriptive trademarks that are merely common words in the English language and who choose to juxtapose such words to make them look like creations should be discouraged.

The court observed that the term “VAC PAC” was merely an indication of the packaging style, i.e., “vacuum packaged.” Moreover, such vacuum packaging was crucial for the welding electrodes to sustain a long life. Considering these facts, the court ruled in favor of the defendant. Furthermore, the court ordered costs of litigation incurred by the defendant to be reimbursed by the plaintiff for initiating a case found to be an abuse of the process of law.

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