Unpacking Descriptive Trade Marks
Facts: The story of this case begins with a company called The Metal Industries Limited, which is owned by the government of Kerala. This company has been around for about 94 years, starting way back, and its main office is in Shoranur. They make things like tools for farming, such as sickles, spades, shovels, pickaxes, axes, saws, cutleries, and mammatties. Their products are sold under the brand name Tusker, which comes with a special emblem. Over the years, this company built a good name for itself, and people know it well, especially in the area. They even registered their company name, Metal Industries, as a trade mark under the law that protects such names, specifically Section 27 of the Trade Marks Act, 1999. Because it's based in Shoranur, folks often call it Shoranur Metal Industries informally.
Now, enter the other side: Shoranur Metal Industries LLP, a newer firm started in 2019, also in the same area, just about three kilometers away. This firm is run by Krishnakumar as the main partner, and they too make iron and steel tools for farming, similar to what the older company does. Their products go by the brand name K.Kumar Tools. In 2020, the older company noticed that the new firm's name was causing mix-ups among people. Customers and traders started thinking the new firm was part of or the same as the old one because both used Metal Industries in their names. The old company sent a legal notice asking the new firm to stop using that name, but the new firm replied saying they weren't doing anything wrong. That's when the old company decided to go to court, filing a lawsuit asking for a court order to stop the new firm from using Metal Industries in their name, to remove it from all their papers and ads, and even for some money as damages, about Rs.1,00,000. They said this was breaking the rules under Sections 134 and 135 of the Trade Marks Act.
The new firm fought back, saying their business wasn't exactly the same. They claimed their tools are made specially for customers' needs, unlike the old company's standard products. They argued that words like Metal Industries are just common words describing what they do, and lots of companies across India use similar names. So, no one can own those words exclusively. They also said the old company isn't really known as Shoranur Metal Industries officially, and there's no real confusion or harm.
Procedural Details: The lawsuit started as Original Suit No.1 of 2023 in the District Court at Palakkad. The old company was the plaintiff, and the new firm and its partner were the defendants. The court looked at the claims and set up six main questions to decide, like whether there was copying of the name, if it caused confusion, and if the old company deserved protection.
Both sides presented evidence. The old company had a witness (PW1) and showed documents like their registration papers (Exts.A1 to A15). The new firm had their own witness (DW1) and documents (Exts.B1 to B4). After hearing everything, the District Court sided with the old company. It gave a permanent order stopping the new firm from using Metal Industries in their business name and ordered them to remove it from all communications, ads, newspapers, social media, and so on. The new firm wasn't happy with this and appealed to the High Court of Kerala.
The appeal was filed as Regular First Appeal No.287 of 2024. The High Court heard arguments from both lawyers: Harikumar G. for the new firm (appellants) and Saji Varghese T.G. for the old company (respondents). The case was heard on August 26, 2025, and the judgment came on September 18, 2025. The judge looked at three main points: Did the new firm copy the registered name? Could they use a defense under the law? And was there something called passing off, where one business pretends to be another?
Dispute: The main fight was about whether the new firm could use the name Shoranur Metal Industries when the old company had registered Metal Industries as their trade mark. The old company said this was straight-up copying, or infringement, because their name was protected by law, and the new name was too similar, causing people to get confused and think the new firm was connected to them. They wanted the court to stop it and make the new firm change their name.
The new firm said no, because words like metal and industries are just everyday words that describe the kind of business—they're generic or descriptive. Under the law, you can't own such common words exclusively unless they've become super special over time, like gaining a second meaning that points only to your business. They also said there's no real harm or confusion since their actual product brands are different: Tusker for the old company and K.Kumar Tools for them. Plus, the name Metal Industries isn't even on the products themselves.
Another part of the dispute was about passing off. Even if not directly copying a registered mark, if the new firm was tricking people into thinking their stuff came from the old company, that could be stopped. But the new firm said there's no proof of any damage or real trickery.
Detailed Reasoning: The judge started by explaining what the law says about trade marks. A trade mark is like a special sign or name that tells people where a product comes from. It's protected so no one else can use something too similar and confuse customers. The old company had registered Metal Industries, so under Section 29 of the Trade Marks Act, 1999, if someone uses a similar name for similar goods, that's infringement, and the owner can stop it.
But there's a catch in Section 30(2)(a), which says a registered mark isn't infringed if the use just describes the kind, quality, or other features of the goods, like their type or where they're from. The new firm leaned on this, saying metal and industries are just describing a business that deals with metal products. The judge agreed, calling these words generic—common terms anyone can use—or descriptive, meaning they explain what the business does.
To back this up, the judge looked at several past court decisions. First, there's Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel and others, decided by the Supreme Court in 2006, reported as (2006) 8 SCC 726. In that case, the court explained that a trade mark connects goods to their maker and builds trust in quality. If registered, others can't use it without permission, or it's infringement. But the court also said usually there's only one owner for a mark, and if two people use it, it can confuse people and even be like cheating the public. However, in our case, the judge noted that the old company didn't show their name had become uniquely tied to them beyond the common words.
Next, the judge discussed a Delhi High Court case: Pornsricharoenpun Co. Ltd. and Ors. v. L'Oreal India Private Limited and Ors., from 2022, with the citation MANU/DE/4515/2022. Here, the fight was over Low Absorb for hair products. The court said courts can check if a registered mark is valid even during early stages of a case, based on what the other side says in their defense. Some marks can't be distinctive, like common words. A descriptive mark—one that just describes the product—needs to gain a special second meaning to be protected. If it's just English words combined, like Low Absorb Technology, the owner has to live with some confusion risk. No one can own common words exclusively. The judge in our case used this to say the new firm could challenge the registration, and since Metal Industries is descriptive, like saying what the business is about, it doesn't give exclusive rights. The Delhi court also said this defense works under Sections 30 and 35 of the Trade Marks Act, even against a registered mark.
In the same Pornsricharoenpun case, the court looked at Hair Spa. The appellant used Hair Spa for cosmetics, but the defendants were using it too. The court said Hair Spa isn't made-up; it's just hair and spa put together, describing hair treatment. It's generic, lacking the uniqueness needed for protection. In paragraph 21, the court explained that such common expressions describe the product and can't identify one source only. Applying this, our judge said Metal Industries is similar—just common words for a metal business.
Another Supreme Court case mentioned was Skyline Education Institute (India) Private Ltd. v. S.L. Vaswani and Another, from 2010, reported as AIR 2010 SC 3221. There, skyline was used for schools. The court said skyline is a generic word in English and trade, used by many companies. In paragraph 18, it noted over 100 companies in India and others abroad use it, so no one can claim it exclusively. Our judge used this to show common words like metal industries are shared.
Then there's Institute of Directors v. Worlddevcorp Technology and Business Solutions Pvt. Ltd. & Ors., a 2023 Delhi High Court case, 2023 SCC OnLine Delhi 7841. The plaintiff registered Institute of Directors for conferences. Defendants used Directors Institute. In paragraph 32, the court said registering common English words like that means accepting others might use similar ones. No monopoly on ordinary combinations. This supported the idea that Metal Industries can't block others.
Yatra Online Limited v. Mach Conferences and Events Limited, another 2025 Delhi case, 2025 SCC OnLine Delhi 5610, dealt with Yatra, meaning travel in Hindi. The plaintiff claimed it as dominant in their mark, but the court said generic descriptive words like that never gain distinctiveness on their own. In paragraph 53, it said words from everyday language can't be owned. Yatra is common, so no monopoly. Our judge applied this to say Metal Industries is descriptive and common.
The old company cited T.V. Venugopal v. Ushodaya Enterprises Ltd. and another, a 2011 Supreme Court case, (2011) 4 SCC 85. There, Eenadu, a descriptive word, gained a second meaning over time, becoming tied to the company's newspaper and TV in Andhra Pradesh. In paragraph 19, the court protected it because of that special reputation. But in our case, the judge said the old company didn't prove Metal Industries had such a second meaning—it's just common words without that extra layer.
On passing off, which is when someone misleads people into thinking their goods are someone else's, even without registration. The plaint didn't say passing off directly, but had hints like confusion and intent to trick. The judge cited Anwar Mohammad Khan v. Sri. Taj Mohammad Khan, 2006 (3) AWC 2166, where the court said if the core claims show passing off elements, the words don't matter. Elements are: goodwill, misrepresentation, and damage.
The Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952, listed factors for deceptive similarity, like mark nature, resemblance, goods type, customer class. In Mahavir Rice, Pulse Mills Bareja v. Jaikrishnan Trading Company, Miroli and Others, 2009 (4) KLT 593, paragraph 12, the court said passing off needs proof of reputation, deception likelihood, and damage. Also cited Laxmikant V. Patel v. Chetanbhai Shah (2002) and Heinz Italia v. Dabur India Ltd. (2007).
Our judge said for passing off, you need harm or likely harm. In Mariyas Soaps and Chemicals v. M/s Wipro Enterprises Limited, 2023 (4) KHC 473, even with similar marks, no injunction without damage proof. In paragraph 18, it stressed the "classical trinity": goodwill, misrepresentation, damage.
In Delmon Diagnostics and Research Center v. Doctors Diagnostics and Research Center, 2015 (3) KHC 14, paragraph 6, goodwill, misrepresentation leading to belief goods are plaintiff's, and damage. In Shakti Ceramics v. Supreme Ceramics, 2011 KHC 2924, deceptive similarity alone isn't enough; need reputation, goodwill, and loss.
The old company cited Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1, where interim stop was given for Glucose-D similar to Glucon-D, but our judge noted it was temporary, not final.
Overall, the judge said no proof of damage here. Brands are different (Tusker vs. K.Kumar Tools), name not on products, no second meaning for Metal Industries. So no infringement or passing off.
Decision: The High Court allowed the appeal, canceling the District Court's orders. No injunction against the new firm; they can keep using Shoranur Metal Industries. The original suit was dismissed. Both sides pay their own costs.
Case Title : Shoranur Metal Industries LLP & Another Vs. The Metal Industries Limited & Another
Order Date: 18th September 2025
Case Number: RFA No. 287 of 2024
Neutral Citation: 2025:KER:69913
Name of Court: High Court of Kerala at Ernakulam
Name of Hon'ble Judge: The Honourable Mr. Justice C. Pratheep Kumar
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
