Procter & Gamble Home Products Pvt. Ltd., the proprietor (Petitioner) of the well-known marks “VICKS” and “VAPORUB”, approached the Madras High Court seeking rectification of three registered trade marks standing in the name of the first respondent, M/s VAPORIN Pharmaceuticals (Defendant).
The impugned registrations covered the marks “VAPORIN”, “VAPORIN COLD RUB”, and a device mark. The petitioner sought removal of these entries from the Trade Marks Register on the ground that they were deceptively similar to its long-standing and reputed marks, particularly “VICKS VAPORUB”.
Rectification Petitions Filed
Three rectification petitions were filed:
- O.P.(TM) No.48 of 2024 – seeking removal of Registration No.3897775 (Class 03)
- O.P.(TM) No.49 of 2024 – seeking removal of Registration No.4285435 (Class 05)
- O.P.(TM) No.50 of 2024 – seeking removal of Registration No.3461733 (Class 03)
All three registrations stood in the name of the first respondent.
Background: The Petitioner’s Rights and the Impugned Marks
Procter & Gamble, is one of the world’s largest consumer goods companies. Its healthcare brand VICKS was launched internationally in 1890. VICKS VAPORUB was introduced in India in 1964. The marks VICKS and VAPORUB have been registered in India since 1954 and 1977 respectively. VICKS is recorded as a well-known trademark in Trade Mark Journal No. 2144 dated 19 February 2024 (at Serial No. 8).
Under the VAPO-formative family, P&G markets a range of products including VICKS VAPORUB, VICKS VAPOCOOL, VICKS VAPOPATCH, VICKS VAPOEASE, VICKS VAPAPADS, VICKS COUGH DROPS, and VICKS INHALER. The company also claims copyright in the artistic packaging of its products.
The dispute arose when P&G discovered that IPI India Private Limited was marketing products under the marks VAPORIN and VAPORIN COLD RUB, with the tagline ‘Vapor In, Stress Out. Anytime, Anywhere’. IPI India claimed use of VAPORIN since 2013. A cease and desist notice was issued on 27 September 2022. Three rectification petitions followed, seeking removal of the impugned registrations on the ground that they were deceptively similar to VICKS VAPORUB.
Issues and the Single Judge’s Findings
| # | Issue | Single Judge’s Finding |
| 1. | Whether VAPORIN and VAPORIN COLD RUB are deceptively similar to VAPORUB | Not deceptively similar. Names, colour, size, packing, and lettering are different. Marks are phonetically dissimilar. Taken as a whole and without dissection, the marks are not similar. |
| 2. | Whether ‘VAPO’ is descriptive, common to trade, and publici juris | Yes. ‘VAPO’ is an abbreviation of ‘vapour’, descriptive in nature, and common to trade. 75 registered products beginning with VAPO were produced. No monopoly can be claimed over an abbreviation that has become publici juris. [NOTE: This finding has been stayed by the Division Bench on 17 February 2026.] |
| 3. | Whether the registrations are liable to be removed under Section 47 or 57 | No. Rectification petitions dismissed. Registrations stand. |
Reasoning of the Single Judge
1. Overall comparison without dissection
The Court applied the settled test for deceptive similarity: marks must be compared as a whole and from the perspective of an average person of ordinary intelligence with imperfect recollection, not by meticulous side-by-side dissection. On that test, the Court found that VICKS VAPORUB and VAPORIN were phonetically dissimilar, visually distinct in overall appearance, colour scheme, packaging layout, and lettering, and that no reasonable consumer would associate the two as originating from the same source.
The Court also accepted that IPI India had produced substantial evidence of commercial use, including tax invoices showing widespread sales and advertising in metro trains and online platforms, which corroborated the existence of a distinct market identity for VAPORIN independent of VICKS.
2. Section 17 and the limits of composite mark protection
The Court relied on Section 17 of the Trade Marks Act, 1999, which provides that registration of a mark confers exclusive rights to the mark taken as a whole. Where a mark contains matter that is common to trade or non-distinctive, no exclusive right is conferred over that part separately. The Court held that P&G’s case amounted to an impermissible claim of exclusivity over the prefix VAPO, a component it could not monopolise under Section 17.
3. ‘VAPO’ as publici juris
The most significant and contested finding of the single judge was that VAPO is an abbreviation of the ordinary English word vapour, descriptive of vapour-based medicinal preparations, and common to trade in the pharmaceutical and healthcare categories. The first respondent produced details of 75 products registered or in use that begin with VAPO. The Court accepted this evidence and held that VAPO had become publici juris, incapable of monopolisation by any party.
This finding has been stayed
P&G appealed this finding to the Division Bench. On 17 February 2026, Justices C.V. Karthikeyan and K. Kumaresh Babu stayed the specific observation that ‘VAPO’ is publici juris, holding that it requires further examination. The stay does not affect IPI India’s ability to use its registered mark. Whether ‘VAPO’ is publici juris, and the legal consequences of that finding for P&G’s portfolio and for the trade generally, will be determined by the Division Bench in the pending appeal.
4. Rejection of dishonest adoption
P&G alleged that IPI India adopted VAPORIN dishonestly with the intent to capitalise on the goodwill of VICKS. The Court rejected this, holding that bad faith cannot be presumed and must be established through clear pleadings and supporting evidence. The evidence of IPI India’s sustained commercial use since 2013 under its own brand identity was a significant factor in this assessment.
Why This Decision Matters: The Tension Between Brand Families and Descriptive Matter
This case sits at the intersection of two principles that courts routinely balance in pharmaceutical and healthcare trademark disputes: the protection of brand families built around a common formative element, and the public interest in keeping descriptive or generic language available for the trade.
P&G’s VAPO-formative family is a classic example of a brand architecture built around a distinctive prefix. The family approach is commercially valuable precisely because it creates a network of associations. But that commercial value depends on the formative element being capable of protection, which in turn depends on it not being descriptive of the products it appears on.
Descriptive language cannot be fenced off simply because it forms part of a famous brand. If a word or abbreviation describes the nature or function of the product, courts will be reluctant to allow monopolisation. Long-standing use does not automatically convert descriptive matter into exclusive property.
The single judge’s finding that VAPO is publici juris, if upheld by the Division Bench, would mean that P&G’s exclusivity over its VAPO-formative family depends entirely on the VICKS house mark and on the overall get-up and secondary meaning of each specific product mark, rather than on any claim to the VAPO prefix alone. That is a significant narrowing of the enforceability of the brand family.
The Division Bench’s decision to stay that finding signals that the question is not straightforward. The 75-product list produced by IPI India may establish that VAPO appears frequently in the trade, but frequency of use is not the same as descriptiveness. The question of whether VAPO describes vapour-based medicinal preparations, or whether it has acquired such association with VICKS specifically that it functions as a sub-brand identifier, is a genuinely difficult one. That is presumably why the Division Bench found it worthy of further examination.
Strategic Lessons for Brand Owners and New Entrants
1. Build distinctiveness around inherently protectable elements
If a product descriptor is descriptive of the product’s nature or mode of action, the enforceability of the brand depends on the house mark and the overall get-up rather than on the descriptor itself. For P&G, the strongest protection lies in VICKS, in the overall VICKS VAPORUB trade dress, and in the accumulated secondary meaning of specific product marks. The VAPO prefix was always a vulnerable foundation for exclusivity claims against third parties.
2. Market evidence is decisive on descriptiveness
The respondent’s ability to produce a list of 75 products beginning with VAPO, combined with evidence of sustained commercial use since 2013 under its own brand identity, significantly undermined the allegation of dishonest adoption and the claim of exclusive association. In pharmaceutical and healthcare markets, where generic descriptors are widely adopted, building an evidentiary record of the trade landscape is as important as the legal argument.
3. Market evidence is decisive on descriptiveness
The respondent’s ability to produce a list of 75 products beginning with VAPO, combined with evidence of sustained commercial use since 2013 under its own brand identity, significantly undermined the allegation of dishonest adoption and the claim of exclusive association. In pharmaceutical and healthcare markets, where generic descriptors are widely adopted, building an evidentiary record of the trade landscape is as important as the legal argument.
4. A house mark is not automatically sufficient without independent product mark strength
P&G’s argument depended in part on VICKS being the house mark and VAPORUB being a secondary product mark. The Court’s analysis treated VAPORUB as the relevant mark for comparison rather than VICKS. This underscores that a product mark must be independently strong and distinctive. Relying on the house mark to carry the protection for a descriptive product mark is a structural weakness in brand architecture.
5. For new entrants: common descriptive language is permissible; mimicking overall identity is not
The judgment offers space for new entrants using common descriptive prefixes, but not immunity. IPI India’s registered marks, sustained commercial use, distinct packaging, and different phonetic profile were together the basis for the finding. A new entrant using VAPO as a prefix but adopting visual identity, packaging colour, bottle shape, or overall get-up resembling VICKS VAPORUB would face a very different outcome.
What to Watch: The Division Bench Appeal
The Division Bench appeal is the more important development for practitioners and brand owners. The stay of the publici juris finding means that the question of whether VAPO can be monopolised, even partially, within a specific product category remains open. The Division Bench’s determination will have implications beyond this specific dispute for the broader question of how courts treat formative elements in brand families when those elements have both acquired distinctiveness through use and descriptive characteristics in the trade.
Three questions are likely to be central in the Division Bench proceedings. First, whether the 75-product list demonstrates that VAPO is genuinely common in the vapour-based pharmaceutical trade, or merely that it appears in unrelated or minor products. Second, whether VAPO’s association with VICKS VAPORUB has acquired such secondary meaning in India that it should be treated as distinctive despite its descriptive character. Third, whether the correct approach is the Section 17 analysis applied by the single judge or whether a fuller passing off and infringement analysis should govern.
Conclusion
The single judge’s decision in Procter and Gamble Company v. IPI India Private Limited is a well-reasoned application of the settled principle that descriptive or generic matter cannot be monopolised, even where it forms part of a well-known mark. The finding that VAPO is publici juris is doctrinally defensible and commercially significant.
The Division Bench’s decision to stay that finding ensures that it does not immediately reshape the trade while the legal question is fully examined. Whatever the Division Bench decides, the case is already a useful marker of the limits of brand family protection built around descriptive prefixes, and of the evidentiary weight that courts will give to third-party trade use when assessing claims of exclusive association.
Governing Law
Trade Marks Act, 1999: Section 2(m), Section 2(zb), Section 9, Section 10, Section 17, Section 33, Section 34, Section 47, Section 57, Section 125
