Introduction:The dispute between The Procter & Gamble Company, a global giant in consumer goods, and IPI India Private Limited, a local player in similar product categories, exemplifies this tension. This case revolves around the petitioner's established brands "VICKS" and "VAPORUB," which have become synonymous with relief from cold and respiratory ailments, and the respondent's marks "VAPORIN" and related variants, which the petitioner argued were crafted to ride on the goodwill of their iconic products.
Filed under Sections 47, 57, and 125 of the Trade Marks Act, 1999, the petitions sought rectification of the trademark register by removing the respondent's registrations, asserting that the impugned marks were deceptively similar in phonetics, visuals, structure, and concept, leading to potential confusion among consumers.
The Madras High Court's adjudication in this matter not only underscores the principles of trademark law in India but also reinforces the protection afforded to well-known marks against dishonest adoption. By examining the historical use, registration details, and market presence of both parties, the court delved into whether the respondent's marks crossed the threshold of permissible similarity, ultimately weighing factors like consumer perception, trade channels, and the overall impression created by the marks.
This analytical article dissects the judgment, providing insights into how courts apply the anti-dissection rule, the test of imperfect recollection, and the concept of house marks in resolving such conflicts, offering valuable lessons for trademark practitioners and businesses alike.
Factual Background: The Procter & Gamble Company, founded in 1837 and headquartered in Cincinnati, Ohio, United States, stands as one of the world's leading multinational corporations in the manufacture and trade of health care, personal care, and hygiene products. Among its portfolio, the brand "VICKS" holds a flagship position, particularly for pharmaceutical and medicinal preparations aimed at alleviating cold, cough, and respiratory issues.
Launched internationally in 1890 and introduced to the Indian market in 1964, "VICKS" has cultivated immense recognition and loyalty among consumers and the trade. Complementing this, the company has developed a family of marks under the "VAPO" formative prefix, including "VICKS VAPORUB," "VICKS VAPOCOOL," "VICKS VAPOPATCH," "VICKS VAPOEASE," "VICKS VAPAPADS," "VICKS COUGH DROPS," and "VICKS INHALER." These products, especially "VAPORUB," have garnered tremendous goodwill through extensive marketing, sales, and consistent quality, becoming household names associated with instant relief.
The petitioner's trademarks "VICKS" and "VAPORUB" were registered globally as early as 1928, with Indian registrations dating back to 1954 for "VICKS" in Class 5 and 1977 for "VAPORUB" in the same class. Additional registrations include device marks and labels from 2007 and 2008, alongside copyrights in the distinctive packaging artistry.
Courts across India have repeatedly acknowledged and protected these marks, affirming their well-known status. In contrast, IPI India Private Limited, based in Telangana, India, entered the market with products under marks like "VAPORIN COLD RUB" and "VAPORIN," promoted with slogans such as "Vapor In, Stress Out. Anytime, Anywhere." These products targeted similar categories—personal care and medicinal preparations in Classes 3 and 5—leading the petitioner to discover their existence and perceive them as imitations designed to capitalize on established reputation.
Upon learning of the respondent's registrations (No. 3897775 in Class 3, No. 4285435 in Class 5, and No. 3461733 in Class 3), the petitioner issued a cease and desist notice on September 27, 2022, alleging deceptive similarity and dishonest intent, which prompted the filing of rectification petitions to expunge these entries from the trademark register.
Procedural Background: The proceedings commenced with the filing of three original petitions under Sections 47 (removal for non-use), 57 (rectification or variation of register), and 125 all in the name of the first respondent, IPI India Private Limited, with the Registrar of Trade Marks as the second respondent. The petitions were consolidated for a common hearing given the overlapping issues.
The petitioner argued prior registration, deceptive similarity, and dishonest adoption, citing extensive evidence of their marks' global and Indian presence, sales figures, and judicial recognitions. The first respondent countered by claiming that "VAPO" was descriptive and common to trade, thus not monopolizable, and that their marks were distinct enough to avoid confusion.
Reasoning and Decision of Court:The Madras High Court's central reasoning was the test for deceptive similarity under Section 2(1)(h) of the Trade Marks Act, which deems marks similar if they are likely to cause confusion. The court rejected the respondent's plea to dissect the marks, invoking the anti-dissection rule from precedents like Amritdhara Pharmacy, where the Supreme Court held that marks must be compared as wholes, considering phonetic, visual, structural, and conceptual resemblances from the viewpoint of a person of average intelligence with imperfect recollection.
Here, "VAPORUB" and "VAPORIN" were found phonetically akin, with the shared "VAPOR" prefix dominating the impression, and the suffixes "UB" and "IN" insufficient to differentiate, especially in spoken trade where pronunciation overlaps. Visually and structurally, the marks' composition mirrored each other, heightening confusion risks.
The court noted the identical goods—cold rubs and medicinal preparations—sold through overlapping channels to the same consumer base, amplifying the likelihood of deception. Dismissing the respondent's argument that "VAPO" is descriptive (evoking vapor for ointments), the court observed that the petitioner's long use had rendered it distinctive, and the respondent's adoption of a similar formative element betrayed dishonest intent to freeride on goodwill, as evidenced by similar packaging, colors, and layouts.
The house mark "VICKS" was recognized as a common identifier, making "VAPORUB" the key differentiator, which the respondent's marks encroached upon. Relying on Section 9's absolute grounds for refusal (lack of distinctiveness, potential for confusion) and Section 11's relative grounds (similarity to earlier marks), the court found the registrations violative.
Prior user rights under Section 34 were upheld for the petitioner, given their 1964 Indian launch versus the respondent's later entry. Judicial precedents, including Corn Products Refining Co. v. Shangrila Food Products Ltd., reinforced that initial interest confusion could harm reputation. Ultimately, the court allowed all three petitions, directing the Registrar to remove the impugned registrations from the register and awarding costs to the petitioner, emphasizing that trademark law safeguards consumer interests and prevents unjust enrichment.
Point of Law Settled in the Case: This judgment solidifies the application of the deceptive similarity test in cases involving formative marks, clarifying that prefixes like "VAPO," when acquired distinctiveness through prolonged use and market dominance, cannot be appropriated even if arguably descriptive, as such adoption evidences bad faith. It reiterates that trademarks must be assessed holistically, without dissection, from the lens of an ordinary consumer's imperfect recollection, and that similarity extends beyond words to trade dress and packaging. The decision underscores the primacy of prior user rights and the well-known status of marks, as per Section 2(1)(zg), in rectification proceedings, establishing that house marks do not dilute the independent protection of sub-brands within a family. Furthermore, it affirms that registrations granted in error, causing confusion or deceiving the public, warrant expungement under Sections 47 and 57, prioritizing public interest over registrant's claims of commonality. This precedent serves as a deterrent against parasitic branding, particularly in pharmaceutical sectors where consumer health and trust are paramount, and highlights the courts' role in maintaining the integrity of the trademark register.
Case Title: The Procter & Gamble Company Vs. IPI India Private Limited & Anr.
Date of Order: January 6, 2026
Case Number: O.P.(TM)Nos.48, 49 and 50 of 2024
Name of Court: High Court of Judicature at Madras
Name of Hon'ble Judge: Mr. Justice N. Senthilkumar
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suggested Titles:
Deceptive Similarity in Trademarks: Insights from Procter & Gamble v. IPI India (Madras High Court, 2026)
Protecting Formative Marks: Analysis of the VAPORUB vs. VAPORIN Dispute
Madras High Court's Stance on Trademark Rectification for Dishonest Adoption
Suggested Tags:
Trademark Rectification, Deceptive Similarity, Well-Known Marks, Vicks Vaporub, Procter & Gamble, Intellectual Property Law, Madras High Court, Trade Marks Act 1999, Phonetic Similarity, House Marks, Consumer Confusion
