Safiya Malik

The High Court of Kerala, Single Bench of Justice C. Pratheep Kumar has set aside an injunction earlier granted in favour of the government-owned Metal Industries Limited against a private firm using the name “Shornur Metal Industries.” The Court held that the terms “metal” and “industries” are generic and descriptive, and therefore not capable of exclusive ownership under the Trade Marks Act. Although the state enterprise was the registered proprietor and long-term user of the mark “Metal Industries,” the Bench found no evidence of confusion, deception, or damage to sustain claims of infringement or passing off.

The dispute originated when The Metal Industries Limited, a state-owned enterprise incorporated nearly ninety-four years ago, filed a civil suit seeking a permanent injunction against Shoranur Metal Industries LLP, alleging trademark infringement and passing off. The plaintiff claimed to have a registered trademark and trade name 'Metal Industries' under the Trade Marks Act, 1999, and contended that the defendant’s firm name, which included the words 'Shoranur Metal Industries', was deceptively similar and caused confusion among the public. The plaintiff also asserted that it had long-standing goodwill and reputation, with its products bearing the brand name 'Tusker'.

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The defendants denied these allegations, asserting that their business was distinct and their products differed in nature and design. They contended that the words 'Metal' and 'Industries' are generic terms widely used by manufacturers across India and that no exclusive right could be claimed over them. The defendants also maintained that their registered trade name was established independently and without intent to mislead the public. The trial court, after evaluating oral and documentary evidence, decreed in favour of the plaintiff, issuing a permanent injunction restraining the defendants from using 'Metal Industries' and directing them to remove the phrase from all business materials. Aggrieved, the defendants filed the present appeal before the High Court.

The Court noted that "the words 'Metal' as well as 'Industries' are generic names and as such, the plaintiffs cannot claim exclusive right to use such generic words." Referring to Section 30(2)(a), the Court cited the statutory provision that a registered trademark is not infringed when the use merely indicates the kind, quality, quantity, or characteristics of goods.

The judgment recorded, "The words 'Metal' and 'Industries' are either generic or descriptive terms and as such, the plaintiffs are not entitled to monopolize those words by registering them under the trade marks." The Court observed that the plaintiff had not established that these words had acquired a "secondary or subsidiary meaning" as required under trademark law for descriptive marks to gain distinctiveness.

In support of its reasoning, the Court relied on several precedents, including Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani and Yatra Online Ltd. v. Mach Conferences and Events Ltd., both of which held that commonly descriptive or generic words could not be monopolized. The Court also referred to Pornsricharoenpun Co. Ltd. v. L’Oreal India Pvt. Ltd., observing that a descriptive mark can be registered only if it has acquired secondary meaning.

It observed that "though the words 'passing off' are absent, the ingredients of 'passing off' are present," but ultimately found that there was no evidence of actual damage or deception caused by the defendants. The judgment cited Mahavir Rice, Pulse Mills Bareja v. Jaikrishnan Trading Company, noting that for a passing off action to succeed, a plaintiff must prove misrepresentation, goodwill, and damage.

The Court also referred to Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and Mariyas Soaps and Chemicals v. Wipro Enterprises Ltd., explaining that deceptive similarity alone does not suffice to establish passing off unless accompanied by evidence of confusion or loss. The Court stated, "In order to maintain an action for passing off, in addition to establishing deceptive similarity between the trade name used by the plaintiffs and the defendants, the plaintiffs also have to prove that they enjoy goodwill and reputation and also that they have suffered damage or that they are likely to suffer damage."

Considering the evidence, the Court held that there was no proof of irreparable injury or likelihood of damage to the plaintiff arising from the defendants’ use of the name. It recorded that the brand names used by both parties—'Tusker' for the plaintiff and 'K.Kumar Tools' for the defendants—were dissimilar, and therefore "there is absolutely no chance for the consumers to get confused in the products of the plaintiffs and the defendants." The Court concluded that the trial court erred in granting the injunction merely because the plaintiff had a registered trademark.

The Bench stated, "The impugned judgment and decree of the trial court granting a decree of permanent injunction in favour of the plaintiffs is liable to be set aside and the suit is liable to be dismissed."

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"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." The Court held that the plaintiff had failed to establish infringement under Section 29 or any successful claim of passing off.

"In the result, this appeal is allowed and the impugned judgment and decree of the trial court is set aside and the suit, O.S. 1/2023, on the file of the District Court, Palakkad, is dismissed. Considering the facts, I direct both the parties to suffer their respective costs. All pending interlocutory applications in the appeal will stand dismissed."

Advocates Representing the Parties

For the Appellants: Shri. Harikumar G., Advocate

For the Respondents: Shri. Saji Varghese T.G., Smt. Mariam Mathai, Smt. Sreepriya K.U., and Shri. Abraham Joseph, Advocates

Case Title: Shoranur Metal Industries LLP & Anr. v. The Metal Industries Limited & Anr.

Neutral Citation: 2025: KER:69913

Case Number: RFA No. 287 of 2024

Bench: Justice C. Pratheep Kumar