Generic/Descriptive Marks Cannot Be Monopolised Even If Registered: Kerala High Court refuses injunction over “Metal Industries” and reiterates that passing off requires proof of goodwill, misrepresentation, and damage

Introduction

In RFA No. 287 of 2024, the Kerala High Court (C. Pratheep Kumar, J.) set aside a decree of permanent and mandatory injunction granted by the District Court, Palakkad, in favour of The Metal Industries Limited (a Government of Kerala undertaking) against Shoranur Metal Industries LLP and its designated partner. The suit alleged trademark infringement and passing off on account of the defendants’ use of the business name “Shoranur Metal Industries LLP,” which the plaintiffs said was deceptively similar to their name and registered mark “Metal Industries.”

The case sits at the intersection of two recurring questions in Indian trademark law:

• Can a proprietor monopolise a mark composed of common, descriptive or generic terms (such as “Metal” and “Industries”), even if the mark is registered?
• What must be proved to succeed in a passing off claim when the impugned words appear in a firm’s name rather than on the products themselves?

The High Court answered both questions decisively: registration does not confer exclusivity over generic/descriptive words absent proof of acquired distinctiveness (secondary meaning), and passing off requires concrete proof of goodwill, misrepresentation leading to likely confusion, and damage (actual or probable)—mere similarity in trading names does not suffice.

Summary of the Judgment

Allowing the defendants’ Regular First Appeal, the High Court:

• Held that “Metal” and “Industries” are generic/descriptive terms. Even though the plaintiffs possessed a registration incorporating “Metal Industries,” they could not monopolise such words in the absence of evidence of secondary meaning. The defendants’ use of “Shoranur Metal Industries LLP” therefore did not infringe under Section 29, owing to the statutory limits on the effect of registration, especially the descriptive use exception under Section 30(2)(a) of the Trade Marks Act, 1999.
• Rejected the passing off claim for want of proof of the classical trinity—goodwill, misrepresentation likely to cause confusion, and damage or likelihood of damage. The Court stressed that the rival products were marketed under distinct house brands—“Tusker” (plaintiff) versus “K. Kumar Tools” (defendant)—and that “Metal Industries” was not used as a product mark by either party, undermining any plausible confusion at the point of purchase.
• Set aside the trial court’s decree of permanent and mandatory injunction and dismissed the suit, with parties bearing their own costs.

Detailed Analysis

Factual Background and Issues

The plaintiffs, The Metal Industries Limited (established around 94 years ago, based in Shoranur), manufacture iron and steel agricultural tools and allied equipment. Their product brand is “Tusker.” The defendants, Shoranur Metal Industries LLP (established in 2019 within a 3 km radius), operate in the same sector and sell under the house mark “K. Kumar Tools.” The plaintiffs complained that the defendants’ trading name created confusion by using the expression “Metal Industries,” allegedly infringing their registered mark and amounting to passing off.

The trial court granted injunctive relief restraining the defendants from using “Metal Industries” in their business name and directed removal of that “domain caption” from all communications and publicity.

On appeal, the High Court framed three issues:

1. Whether the defendants infringed the plaintiffs’ registered trademark?
2. Whether the defendants were entitled to the statutory defence under Section 30 of the Trade Marks Act?
3. Whether the defendants were guilty of passing off?

Precedents Cited and How They Influenced the Decision

• Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel, (2006) 8 SCC 726: Cited to reiterate core principles: a registered proprietor possesses statutory rights, and use by an unauthorised person ordinarily constitutes infringement, particularly where consumer confusion is likely. The High Court acknowledged this but distinguished the present case because the impugned words are generic/descriptive, invoking the statutory limits on the effect of registration.
• Pornsricharoenpun Co. Ltd. v. L’Oreal India Pvt. Ltd., MANU/DE/4515/2022 (Delhi HC): The Delhi High Court’s treatment of “HAIR SPA” as a descriptive/generic expression incapable of distinctiveness without secondary meaning was central. The Kerala High Court drew from its conclusions that courts can (even at interlocutory stages) examine the prima facie validity of a registered mark, and that descriptive marks composed of common words cannot be monopolised absent proof of acquired distinctiveness. The judgment also underscored that Sections 30 and 35 provide robust post-registration defences.
• Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani, AIR 2010 SC 3221: The Supreme Court’s holding that “Skyline” is a generic term widely used in trade and cannot be monopolised bolstered the High Court’s conclusion that “Metal” and “Industries” are inherently non-distinctive.
• Institute of Directors v. Worlddevcorp Technology and Business Solutions Pvt. Ltd., 2023 SCC OnLine Del 7841: Reinforced the legal position that commonly used English words, or a non-distinctive combination thereof, cannot be monopolised merely by obtaining registration. This directly supported the dismissal of the plaintiffs’ infringement claim.
• Yatra Online Ltd. v. Mach Conferences and Events Ltd., 2025 SCC OnLine Del 5610: Recognised “Yatra” as a generic term (“travel” in Hindi) incapable of acquiring protectable distinctiveness on its own. The Kerala High Court used the same reasoning to characterise “Metal”/“Industries” as generic/descriptive.
• Lake Mount Educational Society v. Global Educational Trust, 2025 ICO 1273 (Ker HC): The High Court’s own recent decision acknowledged that even a combination of generic words (e.g., “Global Public School”) can acquire secondary meaning in appropriate cases. The present case was contrasted because the plaintiffs led no evidence that “Metal Industries” had acquired such secondary meaning.
• T.V. Venugopal v. Ushodaya Enterprises Ltd., (2011) 4 SCC 85: The Supreme Court protected “Eenadu” after it acquired extraordinary goodwill, explaining how descriptive terms can be protected upon proof of secondary meaning. The High Court distinguished this case because the plaintiffs did not plead or prove that “Metal Industries” had gained a secondary or subsidiary meaning.
• Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952: Provided the classic factors to assess deceptive similarity and passing off, including the nature of the marks, similarity, the goods, class of purchasers, mode of purchase, and surrounding circumstances. Applying these, the Court noted that the competing product brands (“Tusker” vs “K. Kumar Tools”) differed and the generic words did not feature as product identifiers.
• Mahavir Rice and Pulse Mills Bareja v. Jaikrishan Trading Co., 2009 (4) KLT 593: Restated the “classical trinity” for passing off—goodwill, misrepresentation, damage or likelihood of damage; stressed the need for evidence of reputation and consumer perception. The High Court applied this to find the plaintiffs’ proof lacking.
• Mariyas Soaps and Chemicals v. Wipro Enterprises Ltd., 2023 (4) KHC 473 (DB): Even with deceptive similarity (there, “Chandrika” vs “Chandra”), absence of evidence of economic loss led to the appellate court’s interference with injunction—used here to emphasise the evidentiary burden in passing off.
• Delmon Diagnostics & Research Centre (DDRC) v. Doctors Diagnostics & Research Centre, 2015 (3) KHC 14; Shakti Ceramics v. Supreme Ceramics, 2011 KHC 2924: Both underline that beyond similarity, plaintiffs must prove reputation and likelihood of loss; the High Court explicitly invoked these principles to reject the passing off claim.
• Heinz Italia v. Dabur India Ltd., (2007) 6 SCC 1: Mentioned as an interim relief case (“Glucon-D” vs “Glucose-D”), with the High Court noting it does not bind final decision on merits. It was not determinative here but provides context on prior-user advantage in distinct mark scenarios.

Legal Reasoning and Application

1. On infringement:
   • The Court accepted that the plaintiffs held a registration incorporating “Metal Industries,” but emphasised the statutory limits on the effect of registration. Section 30(2)(a) (explicitly extracted and relied upon) shields descriptive use that indicates the kind, quality, intended purpose, or other characteristics of goods/services. “Metal” and “Industries” are, by their very nature, descriptive/generic of the kind of business and goods in issue.
   • Absent proof that “Metal Industries” had acquired a distinctive secondary meaning identifying the plaintiffs as the sole source, the law does not permit monopolisation of such words. The Court explicitly noted that the plaintiffs did not even set up such a case of acquired distinctiveness.
   • Result: No infringement under Section 29 could be made out in the teeth of Section 30(2)(a)’s exception. The Court therefore declined injunctive relief.
2. On the defendants’ statutory defence:
   • Although the trial issues framed referred to Section 30(2)(b), the Court’s analysis is rooted in Section 30(2)(a) (descriptive use), consistent with the cited Delhi and Supreme Court precedents on generic/descriptive marks.
   • The judgment contains a stray reference to Section 32(1)(a) while recognising the defendants’ entitlement to use generic words; read in context, the operative reasoning is anchored in Section 30(2)(a). The principle remains clear: registration does not defeat the descriptive-use defence.
3. On passing off:
   • Even though “passing off” was not expressly pleaded, the Court assessed the pleadings and evidence on substance and treated the claim as raised—consistent with judicial practice where pleadings bring in the necessary ingredients.
   • Applying the classical trinity (goodwill, misrepresentation, and damage/likelihood of damage), and the Cadila factors, the Court found:
     • Goodwill: The plaintiffs undoubtedly have longevity in the market, but their consumer-facing product identity is “Tusker,” not “Metal Industries.”
     • Misrepresentation/Confusion: The defendants sell under “K. Kumar Tools.” Neither side uses “Metal Industries” on products. The competing house marks and trade dress were different; the impugned words appeared primarily as part of a business name. These facts undermined the likelihood of consumer confusion at the point of purchase.
     • Damage: No evidence of actual damage or credible likelihood of damage was adduced. Mere geographic proximity (within 3 km) and similarity in descriptor words were insufficient.
   • Result: The passing off claim failed; the trial court’s injunction could not be sustained on this head either.

Impact and Significance

This judgment consolidates and localises (within Kerala High Court jurisprudence) a line of authority that places meaningful limits on the scope of trademark registrations composed of generic/descriptive words. Key takeaways for stakeholders:

• Registration of marks comprising common descriptors (“Metal,” “Industries,” “Global,” “Public,” “School,” “Yatra,” etc.) does not automatically enable proprietors to injunct others from using the same words in their trade names or descriptors, unless the proprietor proves acquired distinctiveness (secondary meaning) in those words as a source identifier.
• For infringement, Section 30(2)(a) provides a robust defence where the impugned use is descriptive of the goods/services. Courts will look closely at the nature of the words, how they are used, and whether they function as a source identifier or simply a descriptor.
• For passing off, plaintiffs must lead concrete proof of goodwill associated with the impugned indicia, misrepresentation likely to deceive consumers, and actual or probable damage. Mere similarity of firm names, particularly where product brands differ and the common element is generic, is insufficient.
• Corporate and LLP naming: Businesses using common descriptive or industry-generic terms in their firm names are less likely to face successful infringement actions, but should still ensure their trading gets-up, house marks, and online presence are not misleading. Conversely, owners of registrations over such terms should focus enforcement on contexts where the words are used as primary brand indicators and where evidence of confusion and damage is demonstrable.
• Strategic branding: The judgment incentivises selection and cultivation of distinctive house marks for products and services and discourages reliance on generic descriptors as primary identifiers.

Complex Concepts Simplified

• Generic vs. Descriptive vs. Suggestive/Arbitrary/Fanciful:
  • Generic terms name the class of goods/services (e.g., “metal,” “truck,” “yatra” for travel). These can never function as trademarks for those goods/services.
  • Descriptive terms describe qualities, characteristics, or attributes (e.g., “creamy,” “fast,” “medical”). These are protectable only if they have acquired a secondary meaning that consumers associate with a single source.
  • Suggestive, arbitrary, and fanciful marks are inherently distinctive and typically stronger (e.g., “Apple” for computers—arbitrary; invented words are fanciful).
• Secondary Meaning (Acquired Distinctiveness): When evidence (sales volumes, advertising, surveys, media recognition, consistent usage) shows that consumers perceive an otherwise descriptive or weak term as uniquely identifying a single source. Without this, such terms cannot be monopolised.
• Infringement vs. Passing Off:
  • Infringement protects registered marks against unauthorised use that is identical/similar for identical/similar goods/services, creating a likelihood of confusion. However, statutory exceptions (like descriptive use under Section 30(2)(a)) limit the scope.
  • Passing off is a common-law tort protecting unregistered commercial goodwill. The plaintiff must prove goodwill, misrepresentation likely to deceive, and damage/likelihood of damage—the “classical trinity.”
• Section 29 and Section 30 of the Trade Marks Act, 1999: Section 29 defines infringement by unauthorised use of registered marks. Section 30 sets out limits/defences—most relevant here is Section 30(2)(a), which permits use of descriptive terms indicating characteristics of goods/services.
• Effect of Registration over Composite Marks: While registration confers exclusive rights, those rights are generally to the mark as a whole. Common or descriptive components are often disclaimed or cannot be monopolised absent secondary meaning. Registration does not override statutory limits or the public domain status of generic terms.
• “Domain caption” in this case: The judgment uses “domain caption/domain name” to refer broadly to the trading or business name. It is not an internet domain name dispute; the analysis centres on trademark and passing off principles.

Why the Trial Court’s Injunction Could Not Stand

• The lower court granted a blanket injunction restraining use of “Metal Industries” across media. The High Court found this overbroad for two independent reasons:
  • Infringement failed because the impugned words are generic/descriptive and the defendants’ use falls within Section 30(2)(a)’s exception; no secondary meaning was proved.
  • Passing off failed due to lack of evidence of confusion-causing misrepresentation or damage, particularly given the distinct house marks (“Tusker”/“K. Kumar Tools”) and the absence of the impugned words as product-level source indicators.
• Consequently, the trial court’s decree was set aside and the suit dismissed, with parties bearing their own costs and all pending IAs dismissed.

Practical Guidance for Businesses and Counsel

• When adopting marks:
  • Prefer distinctive/suggestive/arbitrary/fanciful marks as house brands for products/services.
  • If using descriptive terms in a trade name, pair them with a distinctive house mark to reduce confusion risk and bolster defensibility.
• When enforcing marks consisting of common words:
  • Assemble proof of secondary meaning (market surveys, sales figures, ad spend, media recognition, consumer affidavits) tied specifically to the impugned words functioning as a source identifier.
  • Show concrete evidence of confusion and damage/likely damage, especially where the impugned words are not used on products or as the primary brand.
• When defending:
  • Invoke Section 30(2)(a) where your use is descriptive or non-trademark use.
  • Emphasise differences in house marks, packaging, trade dress, and point-of-sale presentation to negate misrepresentation/confusion.

Conclusion

The Kerala High Court’s decision in Shoranur Metal Industries LLP v. The Metal Industries Limited is a clear reaffirmation of the principle that registration does not transform generic or descriptive expressions into monopolies. Absent evidence of acquired distinctiveness, words like “Metal” and “Industries” remain in the public domain for traders to fairly describe their goods and businesses. On passing off, the Court insists on adherence to the classical trinity—goodwill, misrepresentation, and damage—and refuses to infer confusion from mere similarity in firm names where consumer-facing brands are distinct and evidence of damage is lacking.

The judgment is likely to influence future disputes involving corporate/trade names made up of descriptive or generic words, particularly in sectors where industry descriptors are commonly embedded in business names. It sends a strong signal that litigants must bring evidence—of secondary meaning, of confusion, and of damage—rather than rely on registration alone, when the core of the dispute lies in common descriptive words.

Case Citation

Shoranur Metal Industries LLP and another v. The Metal Industries Limited and another, 2025 KER 69913 (Kerala High Court, 18 September 2025), RFA No. 287 of 2024 (from OS No. 1 of 2023, District Court, Palakkad).