VAPORUB vs. VAPORIN: When a Giant’s Grip on VAPO Meets Its Match

Registration No.	Trade Mark	Application Date	Class
162610		February 1, 1954	05
328354	VAPORUB	August 30, 1977	05
1974989	VICKS VAPORUB	June 4, 2010	05
1564959		June 4, 2007	05
575530	VICKS VAPOSYRUP	June 19, 1992	05
1994236	VAPOCOOL	July 15, 2010	05, 30
2162714	VAPOINHALER	June 20, 2011	05
5222974	VAPOPATCH	November 25, 2021	03
5425412	VAPOSTEAM	April 27, 2022	05
1501137		November 3, 2006	03, 05, 30

O.P. No.	Registration No.	Mark	Class
O.P.(TM) No.48 of 2024	3897775	VAPORIN	03
O.P.(TM) No.49 of 2024	4285435	VAPORIN COLD RUB	05
O.P.(TM) No.50 of 2024	3461733*		03

* The registration number for O.P.(TM) No.50 of 2024 is stated as 3461733 in the order’s prayer clause and as 3462733 elsewhere in the order (para 16);

Notably, IPI India, the defendant in the present case, also contended before the Court that a related infringement proceeding between the same parties, concerning the very question of whether IPI’s use of the mark infringes P&G’s trade mark, is pending before the Hon’ble High Court of Bombay, and that P&G was under a duty to disclose the pendency of that proceeding to the Madras High Court, a submission the Court’s order records but does not appear to have separately adjudicated in its final reasoning.

The Contentions

P&G’s Case

• Priority and reputation: P&G’s marks predate IPI’s by decades, and VAPORUB holds independent brand value, goodwill, and registration distinct from the house mark VICKS.
• Deceptive similarity: The marks VAPORUB and VAPORIN share the prefix VAPO and are alleged to be phonetically, visually, structurally, and conceptually similar when compared as a whole, from the perspective of an average consumer with imperfect recollection — the standard drawn from the landmark ruling in Amritdhara Pharmacy v. Satya Deo Gupta[1].
• Trade dress and packaging: The bottle, size, dimension, colour scheme, and overall trade dress of IPI’s product were contended to be deceptively similar to P&G’s packaging thereby, constituting an attempt to ride on P&G’s goodwill.
• Dishonest adoption: The choice of the nearly identical prefix VAPO was alleged to be a deliberate and dishonest attempt to associate with P&G’s established VAPO-formative marks.

In addition to the case law above, P&G’s counsel relied on Sections 9 and 10 of the Trade Marks Act, 1999 — the absolute grounds for refusal of registration and the limitation as to colour — and, beyond Amritdhara case, cited Parle Products (P) Ltd. v. J.P. and Co., Mysore [2], Indian Hotels Company Ltd. v. Jiva Institute of Vedic Science and Culture[3], Ultra Tech Cement Ltd. v. Alaknanda Cement Pvt. Ltd.[4], and Neon Laboratories Ltd. v. Themis Medicare Ltd.[5], in support of the ‘overall similarity/imperfect recollection’ test and against the respondent’s publici juris defence.

IPI India’s Defence

• VICKS is the badge of origin: The dominant and source-identifying element in P&G’s product is VICKS, not VAPORUB. It is VICKS that consumers associate with P&G, and VAPORUB is merely descriptive of the product’s nature, i.e., a vapour rub formulation.
• No registration for the mark VAPO alone: P&G holds no standalone registration for VAPO or VAPOUR, both of which are ordinary English words/abbreviations that are descriptive and common to the trade. P&G cannot, therefore, claim exclusivity over a generic prefix.
• Marks must be compared as a whole: Under Section 17 of the Trade Marks Act, 1999, a trade mark must be viewed in its entirety; thus, when taken as a whole, VICKS VAPORUB and VAPORIN are structurally, visually, and phonetically distinct.
• VAPO is publici juris: The term VAPO is a widely used abbreviation of vapour in the trade. IPI placed before the Court a list of 75 words beginning with VAPO, together with evidence of numerous third-party products in the same trade using VAPO- or vapour-prefixed names – among them Softskin Vaporizing Chest Rub, Menthodex Vaporizing Rub, Careway Vapour Rub, Mentholatum Vapour Rub, SnuffleBabe Vapour Rub, and Numark Vapour Rub. IPI argued that no single trader can arrogate to itself the exclusive right to use a word that has entered the public domain.
• Long use and passive acquiescence: IPI has continuously used and promoted VAPORIN since 2013, a period of nearly a decade before P&G’s cease-and-desist notice. P&G’s prolonged inaction was argued to amount to passive consent under Section 33 of the Trade Marks Act, 1999.

IPI India’s counsel also relied on Sections 2(m) and 2(zb) of the Trade Marks Act, 1999 (the statutory definitions of ‘mark’ and ‘trade mark’) and, in addition to the authorities discussed below, on J.R. Kapoor v. Micronix India[6] , which held that a common technical or descriptive prefix (there, ‘micro’) cannot have a monopoly claim where the uncommon elements of the competing marks are themselves dissimilar.

The products in question

*Image taken from court order

Judicial Reasoning

The Court framed three issues for determination:

• Whether VICKS VAPORUB and IPI’s marks VAPORIN and VAPORIN COLD RUB are deceptively similar.
• Whether the adoption of these marks by IPI was done with dishonest intent.
• Whether the term VAPO is publici juris.

Court’s Order and Observations:

On Deceptive Similarity

Applying the standard of the average man of ordinary intelligence and imperfect recollection, as articulated by the Hon’ble Supreme Court in Amritdhara and Parle Products (P) Ltd. v. J.P. & Co., Mysore[7], the Court found that when the rival marks are compared as a whole without dissection, they are not similar. The visual appearance of the marks is distinct, and the colour, size, packaging, and letter configuration are not deceptively similar. The Court declined to adopt P&G’s approach of isolating VAPO as the dominant feature, holding this to be an impermissible dissection of a composite mark, contrary to both Section 17 of the Act and the settled principle that trade marks must be compared in their totality.

On Dishonest Intention

The Court noted that many products beginning with the term VAPO were available and common in the trade. Given the widespread use of the prefix across the industry, the Court concluded that IPI’s adoption of VAPORIN could not be characterised as dishonest. The Court was of the view that there could be no monopoly over a descriptive prefix in common commercial parlance.

On VAPO Being Publici Juris

The Court held that VAPO is merely an abbreviation of the ordinary English word vapour, is descriptive term for vapour-based or vapour-action medicinal preparations, and has become part of the public domain – publici juris -in the relevant trade. Drawing on the Supreme Court’s ruling in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Private Ltd[8]. and the Delhi High Court’s decision in Scherring Corporation v. Alkem Laboratories Limited[9], the Court affirmed the established principle that where a common feature in two competing marks is descriptive and publici juris, consumers will tend to disregard that common feature and pay greater attention to the uncommon elements.

Critical Analysis

One of P&G’s contentions was that its extensive portfolio of VAPO-formative marks -VAPOCOOL, VAPOINHALER, VAPOPATCH – created a family of marks entitling it to broader protection against any VAPO-prefixed product. The Court implicitly rejected this argument by finding that VAPO is itself generic. The family-of-marks doctrine, even where recognized, cannot be invoked to monopolise a descriptive element that belongs to the trade at large.

IPI’s argument under Section 33 of the Trade Marks Act that P&G’s inaction for nearly a decade amounted to passive consent was a potent one, though the Court arrived at its conclusion primarily on the merits without explicitly adjudicating on acquiescence. This nonetheless serves as a practical lesson for brand owners that vigilance is not merely a strategic choice but a legal necessity. IPI’s submission regarding the pendency of a parallel infringement suit before the Bombay High Court – and P&G’s alleged duty to disclose it – raises a forum-conduct point that merits attention in the parties’ further proceedings, even though the Madras High Court did not rest its decision on this ground.

Conclusion

The dismissal of P&G’s petitions in Procter & Gamble v. IPI India is a well-reasoned application of settled trade mark principles to a commercially significant dispute. It reinforces several important propositions:

• A well-known mark does not confer a blanket right to suppress competitors who use descriptive, generic, or common-to-trade elements.
• Trade mark comparisons must be conducted holistically, not by surgical isolation of a preferred prefix or suffix.
• Where a term has entered the public domain as descriptive, no private entity, however dominant, can claim exclusivity over it.
• Brand owners must act promptly upon discovering potential infringers; inaction can undermine their legal position.
• Parties litigating the same underlying dispute across multiple forums should ensure full and candid disclosure of parallel proceedings before each court seized of the matter.Our Coverage on LinkedIn:
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[1] 1962 SCC OnLine SC 13

[2] 1972 1 SCC 618

[3] 2008 SCC OnLine Del 1758

[4] 2011 SCC OnLine Bom 783

[5] 2014 SCC OnLine Bom 1087

[6] 1994 Supp (3) SCC 215

[7] 1962 SCC OnLine SC 13

[8] (1969) 2 SCC 716

[9] 2009 SCC OnLine Del 3886