'VAPORIN' Doesn't Infringe 'VICKS VAPORUB' Mark: Madras High Court Dismisses P&G's Plea

The Court observed that, “The term 'VAPO' is publici juris and as such the use of the word 'VAPO' in the 1st Respondent's mark will not render it deceptively similar to that of the petitioner's mark. The petitioner's product “VICKS VAPORUB” and the first respondent's products “Vapor In, Stress Out. Anytime, Anywhere” “VAPORIN COLD RUB” and “VAPORIN” are distinct and not similar and identical.”

P&G told the Court that its well-known product “VICKS VAPORUB” enjoys extensive goodwill and reputation and that the use of “VAPORIN” for similar products was deceptively similar and likely to cause confusion among consumers. It also alleged that the adoption of the mark was dishonest and intended to ride on the goodwill associated with the VICKS brand.

Opposing the pleas, IPI submitted that the claim of similarity was based on an impermissible dissection of trademarks by isolating the prefix “VAPO.” It argued that “VAPO” is merely an abbreviated form of the word “vapour,” is descriptive in nature, and has become common to the trade. IPI further stated that “VAPORIN” is phonetically, visually, and structurally distinct from “VICKS VAPORUB” and that the dominant identifier of P&G's product is the word “VICKS.”

Observing that trademarks must be compared as a whole, the Court held that no exclusive rights can be claimed over a descriptive element common to the trade.

Upon examining the record, the Court found that several products in the market use the prefix “VAPO,” demonstrating that the term has become publici juris.

“As the words 'VICKS VAPORUB' and 'VAPORIN' are phonetically dissimilar, it will not create any confusion in the minds of the users, especially, in this case, as the visual appearance of the said trademarks are also completely different. Moreover, nobody can claim exclusive right to use any abbreviation, which has become publici juris,” the Court observed.

Referring to settled principles, the court held that the rival marks were unlikely to cause confusion when viewed as a whole. It concluded that the registrations in favour of IPI were valid and not liable to be removed.

Accordingly, the Court dismissed all the rectification pleas and allowed the “VAPORIN” trademarks to remain on the Trade Marks Register.

For Petitioner: Advocate Abishek Jenasenan

For Respondents: Advocate Ramesh Ganapathy for M/s Mission Legal