Insights

Descriptive and Laudatory Words Nixed as Trademarks

In the recent judgment in Soothe Healthcare Private Limited v. Dabur India Limited, CS(COMM) 18/2022, the Delhi High Court, on March 3, 2022, emphasized that descriptive and laudatory words cannot be protected as trademarks.

The plaintiff obtained trademark registrations for SUPER CUTESTERS, SUPER CUTES, and SUPER CUTEZ, as follows:

 

                                                   

 

The defendant adopted the trademark SUPER PANTS. The plaintiff filed an action alleging infringement as well as passing off, along with an application for interim injunction.

The plaintiff claimed that the defendant’s trademark was deceptively similar with respect to identical goods, namely diapers. The plaintiff also stated that it is the prior user of the trademark and that the defendant did not have bona fide adoption. Further, it was clear that the defendant copied the essential elements of the plaintiff’s trademarks.

The defendant, in response, submitted that “SUPER” is a laudatory word and that it is using it in a descriptive manner. Further, it was evident that the mark SUPER is commonly used by various diaper manufacturers. The defendant clarified that (1) it only sought registration for the logo/device mark which includes SUPER PANTS and the defendant’s brand, DABUR’; and (2) the packaging of the products is completely different, as follows:

 

                                                    

 

The defendant further submitted that the rights conferred by registration are not absolute and that the mark SUPER is not entitled to registration. It also argued that registration of a composite mark will not confer an exclusive right to the plaintiff to any part of the composite mark.

The court observed that other than the word “SUPER” occurring in the packaging of both the plaintiff and the defendant, there was no other similarity between the parties’ marks. Therefore, the defendant was not passing off its goods as those of the plaintiff. The court also observed that the word “SUPER” has been used in a laudatory manner by the plaintiff as well as the defendant.

The court also considered that the registration granted to the plaintiff was for the composite word marks and not the mark SUPER per se. Considering the facts of the case and the submissions made, the court refused to grant an interim injunction in favour of the plaintiff.