There is difference between a trademark being common on the register and common to trade
Introduction: This case explores the nuanced distinction in trademark law between a mark being merely common on the register and truly common in actual trade. The High Court of Madras, in deciding the dispute between Apex Laboratories’ mark “ZINCOVIT” and Knoll Healthcare’s mark “ZINOLVITA,” examined whether the plaintiff’s mark, although derived from descriptive elements, had acquired distinctiveness in real-world commerce that merited protection, despite the presence of similar marks on the register.
Factual Background: Apex Laboratories coined and adopted the trademark “ZINCOVIT” in 1988 for vitamin and mineral supplements, combining the words zinc and vitamins. The mark was registered under registration number 487453 and had been used continuously and extensively across India for decades, supported by high sales turnover and strong brand recall. The plaintiff also obtained copyright registration over the artistic work of the product’s packaging. In or about 2014, the defendant Knoll Healthcare adopted the mark “ZINOLVITA,” which also combined references to zinc and vitamins, and initially used packaging closely resembling that of the plaintiff. Apex Laboratories alleged that this created confusion among consumers and amounted to infringement and passing off, particularly given the similar phonetic structure and identical market segment.
Procedural Background:Apex Laboratories instituted C.S. No.355 of 2020 seeking a permanent injunction restraining the defendant from infringing its registered trademark and copyright, along with rectification proceedings O.P.(TM) No.1 of 2023 to remove “ZINOLVITA” from the register. The defendant filed O.P.(TM) No.2 of 2023 seeking to impose a limitation on the plaintiff’s mark by disclaiming exclusivity over the prefix “ZIN,” arguing it was descriptive and common in the trade.
Legal Issue:The central legal issue was whether “ZINCOVIT,” despite containing descriptive elements, had through use and reputation acquired distinctiveness that warranted protection against “ZINOLVITA,” and whether the defendant could defeat the infringement claim by arguing that similar marks were common on the register, even if not common in active trade?
Discussion on Judgments: The plaintiff cited Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, to stress the stricter standard for medicinal products, where even small similarities can deceive due to public health implications. The plaintiff also referred to Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd., (2014) 57 PTC 617 (Bom), to assert that long-standing and exclusive use can make a coined mark distinctive, even if it is partly descriptive.
The defendant relied on Marico Ltd. v. Agro Tech Foods Ltd., 2010 SCC OnLine Bom 470, arguing that common descriptive elements cannot be monopolized. The defendant also invoked J.R. Kapoor v. Micronix India, (1994) Supp (3) SCC 215, where the Supreme Court held that words which are essentially descriptive of the product’s quality or content are generally ineligible for exclusive rights. Both parties discussed Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, on the classic test of deceptive similarity, and Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142, emphasizing phonetic and visual similarity.
The Court in its discussion highlighted that merely pointing to the presence of similar marks on the register is insufficient unless it is shown that such marks are actively used in the market and recognized by consumers, as the real question is whether the mark is common in actual trade, not just on paper.
Reasoning and Analysis of the Judge: The court carefully analyzed evidence of the plaintiff’s extensive and continuous use of “ZINCOVIT” since 1988, substantial sales figures, and the market’s association of the mark with the plaintiff’s goods. The Court distinguished between a mark being common on the register—which might only reflect the presence of other registrations that are dormant or unused—and being genuinely common in the trade, meaning widespread and active use by multiple traders leading to dilution of distinctiveness. The defendant failed to show evidence that marks similar to “ZINCOVIT” were widely used in the market and recognized by consumers, rather than being merely registered.
The Court observed that the defendant’s adoption of “ZINOLVITA,” which not only reproduced similar phonetic elements but also initially copied the plaintiff’s packaging design, suggested a deliberate intent to trade on the plaintiff’s goodwill. The judge held that “ZINCOVIT” had acquired distinctiveness as a composite mark through decades of use, and that the defendant’s arguments based on descriptiveness and presence of similar marks on the register could not override evidence of actual consumer association with the plaintiff’s mark.
Final Decision:The Court decreed the suit in favour of Apex Laboratories by granting a permanent injunction restraining the defendant from using “ZINOLVITA” or any deceptively similar mark. It also directed removal of the defendant’s mark from the trademark register, dismissed the defendant’s rectification plea seeking to disclaim exclusivity over “ZIN,” and awarded costs to the plaintiff.
Law Settled in This Case:The judgment reaffirmed that to weaken a claim of infringement, it is not enough for a defendant to show that similar marks are common on the register; it must be proved that such marks are genuinely common in trade and actively used in the marketplace. The Court clarified that even descriptive or partially descriptive marks can acquire distinctiveness through long, exclusive, and extensive use, making them protectable under trademark law.
Case Title: Apex Laboratories Pvt. Ltd. Vs Knoll Healthcare Pvt Ltd.:Date of Order: 19 June 2025:Case Number: C.S. No.355 of 2020 :Neutral Citation: 2025:MHC:1441:Name of Court: High Court of Judicature at Madras:Name of Judge: Hon'ble Justice Senthilkumar Ramamoorthy
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
