Trademark law seeks to balance the protection of brand identity with the prevention of monopolies over common or descriptive language. Under Section 30(2)(a) of the Trade Marks Act, 1999, the use of words that merely describe the kind, quality, or characteristics of goods cannot constitute infringement, even if such words form part of a registered trademark. This legal limitation prevents any trader from claiming exclusive rights over words that are part of the everyday vocabulary of commerce and industry. Courts have consistently held that terms which are generic or descriptive must remain available for public use unless they have acquired a secondary meaning uniquely identifying a particular trader’s goods or services.
This legal boundary between proprietary rights and the public domain was emphatically reaffirmed in Shoranur Metal Industries LLP & Anr. vs The Metal Industries Limited, decided on September 18, 2025, where the Kerala High Court set aside an injunction previously granted by the District Court of Palakkad. The Court ruled that the plaintiff, a government-owned undertaking trading as Metal Industries Limited, could not monopolise the words “Metal Industries”, as they were descriptive of the goods it manufactured, metal tools and industrial equipment and lacked any secondary meaning denoting exclusive association with its business.
Background of the Case
Established nearly a century ago, the Metal Industries Limited, a Government of Kerala undertaking with registered office at Shornur, has been manufacturing iron and steel products, namely, agricultural tools and equipment under its popular “Tusker” brand. Locally, people often referred to it simply as “Shornur Metal Industries,” reflecting both its product line and its location.
According to the plaintiff, a new company, Shoranur Metal Industries LLP, established in 2019, started manufacturing iron and steel agricultural tools and equipment, just a few kilometres away, under the brand name “K. Kumar Tools.” The plaintiff’s company was concerned that this could mislead customers and harm its established reputation. After a cease-and-desist notice was sent to the defendants asking them to stop using the name ‘Shornur Metal Industries’, they sent a reply raising false contentions. Therefore, the plaintiff sued in the District Court, alleging infringement of its registered trademark “Metal Industries,” violation of its registered domain name, and passing off. The trial court accepted these arguments and issued a permanent injunction. Hence, the defendants filed an appeal before the Kerala High Court.
Plaintiff’s Contentions
The plaintiff asserted that it has exclusive statutory rights over the registered trademark “Metal Industries”. The plaintiff argued that the defendants’ adoption of the mark “Shoranur Metal Industries” was a calculated move to mislead buyers and exploit their reputation. The plaintiff relied on Section 29 of the Trade Marks Act, 1999, which treats unauthorised use of a registered mark, or one deceptively similar, as infringement.
To fortify its claim, the plaintiff cited Ramdev Food Products Pvt. Ltd. vs Arvindbhai Rambhai Patel (2006) 8 SCC 726, where the Supreme Court held that a registered proprietor enjoys an exclusive right and that the use of a mark deceptively similar to a registered trademark would amount to infringement. The plaintiff also invoked T.V. Venugopal vs Ushodaya Enterprises Ltd. (2011) 4 SCC 85, emphasising that even descriptive marks may be protected if they acquire a secondary meaning through extensive use.
Defendants’ Defence
On the other hand, the defendants relied upon Section 30(2)(a) of the Trade Marks Act. They argued that the words’ metal’ and ‘industries’ are generic and incapable of exclusive appropriation. Therefore, the plaintiffs cannot claim exclusive right to use such common words that merely indicate the kind, quality, or characteristics of goods. They argued that similar names are common across India and lack distinctiveness.
To bolster their position, they relied on several precedents stressing the limits of monopolising common words: Pornsricharoenpun Co. Ltd. vs L’Oreal India Pvt. Ltd. (Delhi HC 2022), where “Hair Spa” was held generic; Skyline Education Institute vs S.L. Vaswani (AIR 2010 SC 3221) ruling that “Skyline” cannot be monopolised; Institute of Directors vs Worlddevcorp Technology (2023 SCC OnLine Del 7841) cautioning that ordinary English words invite similar use by others; and Yatra Online Ltd. vs Mach Conferences (2025 SCC OnLine Del 5610) reiterating that common descriptive words cannot acquire trademark monopoly.
The defendants further argued that their product mark, “K.Kumar Tools”, was entirely distinct from the plaintiff’s product mark “Tusker,” thereby eliminating any real risk of consumer confusion or passing off.
Issues Before the Court
The High Court addressed three key questions for decision:
- Whether the defendants have infringed the registered trademark of the plaintiff?
- Whether the defendants were entitled to have the protection of Section 30(2)(b) of the Trademarks Act as claimed?
- Whether the defendants were passing off their goods using the domain name of the plaintiff?
Court’s Analysis and Findings
- Infringement
The Court noted that although the plaintiff held a registration for the words “Metal Industries,” these words are generic and descriptive, merely indicating the kind of goods, metal industrial tools, and not their commercial source. Citing Section 30(2)(a) and decisions such as Pornsricharoenpun and Skyline Education, the Court ruled that registration does not create an exclusive monopoly over such common words. Unlike the mark “Eenadu” in T.V. Venugopal vs. Ushodaya Enterprises Ltd. and another, the plaintiff failed to prove that “Metal Industries” had acquired a secondary meaning that uniquely identified its business, and it was held that there was no infringement.
- Protection under Section 30(2)(b)
The Court stated that Section 30(2)(a) and (b) of the Trademark Act 1999 limit the effect of a registered trademark where the impugned words merely describe the kind, quality, or other characteristics of the goods. The Court noted that “Metal Industries” directly describes a business dealing in metal products and therefore falls squarely within this exception. Relying on Institute of Directors v. Worlddevcorp (Delhi HC 2023) and Lake Mount Educational Society v. Global Educational Trust (Ker HC 2025), the Court concluded that the defendants were lawfully entitled to use the descriptive phrase “Metal Industries” in their trade name.
- Passing Off
The Court applied the classical trinity of goodwill, misrepresentation, and damage as laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (AIR 2001 SC 1952) and Mahavir Rice & Pulse Mills v. Jaikrishnan Trading Co. (2009 (4) KLT 593). The Court observed:
- The plaintiff’s consumer-facing brand is “Tusker,” while the defendants sell under the brand name “K.Kumar Tools,” thereby eliminating any similarity between the product marks.
- “Metal Industries” appears only as a business or domain name, not as a product mark for either party.
- No evidence of actual confusion, diverted sales, or loss of goodwill was produced.
Supporting precedents, such as Delmon Diagnostics vs Doctors Diagnostics (2015 (3) KHC 14) and Shakti Ceramics vs Supreme Ceramics (2011 KHC 2924), confirmed that mere similarity of a trade name is insufficient without proof of goodwill injury and damage and held that no passing off was proved.
Decision
Finding both infringement and passing off unproven, the High Court allowed the appeal, set aside the trial court’s decree of permanent injunction, and dismissed the plaintiff’s suit. Each party was directed to bear its own costs.
Significance
The ruling in this case reaffirms a consistent judicial principle that generic or descriptive terms, even when registered, can be challenged and cannot be monopolised unless there is clear evidence of secondary meaning and consumer association. Additionally, it highlights that in passing-off claims, courts need solid evidence of goodwill, misrepresentation, and damage, rather than just a mere similarity of names.
Authors: Manisha Singh and Kratika Patel
First Published by: Mondaq here