Every brand that is granted the protection of intellectual property (hereinafter “IP”) rights, has an extent to which it can be protected. It means that the class and category to which the brand/product belongs and the time period when it acquired IP protection and other such factors matter when it comes to understanding the limit of protection that the law can provide based on IP rights. Through this particular case law, we will understand the extent to which trademark protection is provided to a particular brand and whether similar trademarks can co-exist or not.
Brief insights on the case
|NAME OF THE CASE||N.RANGA RAO & SONS PRIVATE LTD
SREE ANNAPOORNA AGRO FOODS
|CITATION OF THE CASE||C.S. NO. 259 OF 2017|
|NAME OF THE COURT||HON’BLE HIGH COURT OF
JUDICATURE AT MADRAS
|HON’BLE JUDGE||HON’BLE DR. JUSTICE
|PLAINTIFF IN THE CASE||N.RANGA RAO & SONS PRIVATE LTD.|
|DEFENDANTS IN THE CASE||SREE ANNAPOORNA AGRO FOODS|
|DATE OF JUDGEMENT||17TH AUGUST 2021|
Relevant facts of the case
The plaintiff i.e, N.Ranga Rao & Sons Private Ltd., manufactures and supplies incense sticks and dhoops since 1948. The aforementioned ‘Cycle’ trademark has been extensively used by the plaintiff since 1954 i.e., for almost 70 years. The plaintiff further registered trademarks such as ‘Cycle Brand Three in One’ having the ‘Cycle’ device, Woods, Lia, Heritage, etc in successive years.
The ‘Cycle’ brand is registered in association with various food products in Classes 29 and 30. Such as dried, preserved and cooked fruits and vegetables, jam, jellies, pickles, milk and dairy products. They further hold registration for incense sticks, dhoop and hair oil under Class 3.
The logo of the plaintiff’s brand contains the ‘Cycle’ device was stated to be unique, artistic and distinctive, which is protected under the Copyright Act, 1957. The plaintiff’s products under the brand ‘Cycle’ have gained high brand value, tremendous reputation and goodwill.
The plaintiff’s mark is known mark having a reputation all over India. In addition, the plaintiff stated that they are exporting their incense sticks to over forty different countries. The plaintiff stated that they hosted various sports and cultural events, including international cricket matches. The plaintiff stated that through advertising in the aforementioned events, their mark has attained recognition even in remote parts of the country. It was also stated that the public associates the mark ‘Cycle’ with the plaintiff and their products such as incense sticks, oil and other allied products. Therefore, the mark ‘Cycle’ has attained the status of a well-known mark as per Section 2(1)(zg) of the Trademarks Act, 1999. The plaintiff thus stated that the use of the ‘Cycle’ mark by the defendant for their cooking oil is detrimental to the distinctive character and reputation of their ‘Cycle’ mark. Since the said mark gained such reputation through several decades with a huge turnover, after incurring exorbitant expenditures for advertisements. Accordingly, a cease and desist notice dated was issued by the plaintiff to the defendant on 18th November 2016.
On the other hand, the defendant i.e., Sree Annapurna Agro Foods stated that they have been manufacturing and selling edible oils since 2009 under the trademark ‘Cycle’. The defendant stated that they adopted the trademark ‘Cycle’ in honest practices for their edible oils and no malafide was intended. Moreover, the plaintiff only used the said mark for incense sticks and allied products but not for food products.
The defendant further stated that the plaintiff did not file any document proving that they also deal in food products with the said mark ‘Cycle’ under Classes 29 and 30 of the Trademarks Act, 1999. Thus, such registration is liable to be cancelled for non-usage.
The defendant also stated that the mark ‘Cycle’ is not a coined word and exclusive rights for a particular product by adopting the dictionary word/name ‘cycle’ cannot be granted. The said word/name ‘Cycle’ is used by many for various products and services and it was stated that the defendant is the prior user of the mark ‘Cycle’ for edible oils and therefore they have better rights compared to the plaintiff.
Consequently, both the plaintiff and defendant filed evidence and examined witnesses to support their case and reserve the right over the mark ‘Cycle’.
Issues raised in the case
- Whether the defendant can be restrained by the plaintiff from using the mark ‘Cycle’ or any other identical/similar mark for their products?
Prior user as per Registration of the Trademark
The Hon’ble High Court of Madras (hereinafter ‘court’) held that the fact that the plaintiff is a leading manufacturer of incense sticks is proved through the documents submitted. On the other hand, the defendant submitted documents to prove that they have been manufacturing edible oils under the name ‘Cycle’ since 2010 i.e., for eight years prior to the filing of this suit. The court further submitted that no evidence was produced indicating that the plaintiff also dealt in edible oils under the disputed mark. Therefore, the prior user for the mark ‘Cycle’ in the category of edible oils is the defendant i.e., Sree Annapurna Agro Foods.
From the registration certificates and the other documents, it is proven that the plaintiff holds no registration for edible oil under class 29 of the Trademarks Act, 1999.
Usage of a common word/name as a Trademark
It was further held that the word ‘Cycle’ is a common English word. It is arbitrarily used for products like incense sticks, dhoop and hair oil by the plaintiff. The unique and distinctive nature of the mark is not embedded in the word/device ‘Cycle’ in itself; the combination of ‘Cycle’ with other words, such as ‘Cycle Brand Agarbatthis’ (incense sticks) and the oval design in which the cycle device is found makes it unique. Therefore, the mark ‘Cycle’ acquired its unique and distinctive nature only after combining with other words/devices.
The court further stated that in case the defendant adopts an identical mark, even then the plaintiff has however failed to showcase how the use of the ‘Cycle’ mark by the defendant is detrimental to the reputation and distinctive nature of the plaintiff’s trademark.
Products differ based on the 4th Schedule of Trademark Rules, 2002
The plaintiff used the mark ‘Cycle’ for incense sticks i.e., scented products used for external consumption including hair oil. However, the defendant used the said mark for edible oil which is meant for internal consumption. When comparing the products of both parties, it is evident that there is a huge difference between them.
It was further held that the goodwill and reputation that the plaintiff gained are restricted to products such as incense sticks, dhoop and hair oil. Thus, it is highly unlikely that the public will get confused between the products of the defendant and the plaintiff and thus, it was held that such a claim of the plaintiff is baseless in toto.
Judgement of the case
The Hon’ble High Court of Madras decided the case in favour of the defendant i.e., Sree Annapurna Agro Foods. The court stated that the defendant shall use the mark ‘Cycle’ for their product i.e., edible oil based on the concept of the ‘prior user’. The court also observed that the defendant has not used the said mark for any other product other than edible oil and on the other hand the plaintiff holds no registration for edible oil under Class 29. Further, both the parties used the same mark for more than eight years i.e., the mark ‘Cycle’ was co-existing before the filing of this suit.
The court observed that the defendant’s right to continue their trade under the mark ‘Cycle’ for the manufacturing and selling of edible oil is lawfully justified and is done in good faith. Based on the above, the court disposed of the suit filed by the plaintiff i.e., N. Ranga Rao & Sons Pvt. Ltd. thereby denying the grant of a permanent injunction restricting the defendant from using the mark ‘Cycle’ for their business.
From this case law, it is evident that the co-existence of trademarks is very much possible based on factors such as prior user, category of goods, etc. It is observed that in the present case the plaintiff cannot restrict the defendant from using the brand name ‘Cycle’. Through this case, we understand that every protection given by the law has its own limits which may prove to be detrimental to one party and beneficial to the other.
- Ranga Rao & Sons Private Ltd vs Sree Annapoorna Agro Foods on 18 November 2016 – https://indiankanoon.org/doc/25237434/
- The Fourth Schedule to Trade Marks Rules, 2002 – https://ipindiaonline.gov.in/tmrpublicsearch/classfication_goods_service.htm
- Copyright Act, 1957 – https://copyright.gov.in/documents/copyrightrules1957.pdf
- Section 2(1)(zg) of Trademarks Act, 1957 – https://indiankanoon.org/doc/899174/
- Trademarks Act, 1999 – https://legislative.gov.in/sites/default/files/A1999-47_0.pdf
- Madras High Court allows Cycle trademark for ‘Incense sticks’ and ‘Edible Oil’ to coexist – https://www.lexology.com/library/detail.aspx?g=9cbb0872-40bc-4f95-b843-3e9c9b82d1d1
- IP and Business: Trademark Coexistence – https://www.wipo.int/wipo_magazine/en/2006/06/article_0007.html
To read judgment/ order: Download Here