FACTS:
A petition was filed by the plaintiff for an injection against the usage of the defendant’s tagline under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The defendants were using the tagline “Stimulates Mind. Energizes Body.” and the plaintiffs were using the tagline “Vitalizes Body and Mind,” therefore, petitioners claimed that the taglines are deceptively similar and this amounts to both passing off and infringement as the plaintiff is a well-known and well-advertised brand.
ISSUES:
- Whether the plaintiff’s aforementioned tagline has developed secondary meaning as a result of its continuous use, giving it distinctive character?
- Whether the act of the defendants amounts to infringement?
- Whether the plaintiff has established a case of passing off against the defendants?
ARGUMENTS OF THE PLAINTIFF:
The plaintiff has a registered trademark “Red Bull” and along with their chain of companies, they have been involved in the business of manufacturing, marketing, and selling energy drinks under this brand since 1987 which included the usage of the tagline “Vitalizes Body and Mind”. They have established business in over 73 countries across the globe. The plaintiff registered their tagline in India under Class 32 in the year 2010, with effect from 21st January and the tagline became the identity of the product due to the long and vast usage. They contend that it has obtained a distinct nature with respect to their products and that they have a dominant market share in relation to energy drinks across the globe. They are also spending huge money on marketing of the products along with the tagline.
They contend that the defendant’s product “Sting” with the tagline “Stimulates Mind. Energizes Body.” was brought in 2017 in India with an intention to deceive as the tagline is deceptively similar to that of plaintiff. The plaintiff further contended that the words “Body and Mind” were copied while the word “Stimulates and Energizes” are synonyms for “Vitalizes” and that they are conceptually identical. They claimed that the defendants utilized the aforementioned tagline with mala fide and dishonest intent because the defendants do not use the aforementioned phrase any other place across the globe and since the usage was in order to profit from the plaintiff’s goodwill and popularity, which qualifies to infringement and passing off.
They have cited the cases: “Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. v. Anchor Health & Beauty Care Pvt. Ltd.,[1] Shree Nath Heritage Liquor Pvt. Ltd. & Anr. v. Allied Blender & Distilleries Pvt. Ltd.,[2] and Anil Verma v. R.K. Jewelers SK Group & Ors.[3]
ARGUMENTS OF THE DEFENDANTS:
The defendants have highlighted that the cans of the energy drinks sold by the plaintiff and defendants are different and contended that there has been no deception and subsequently, there is no passing off. They have referred to Section 28 of the Trademarks Act, 1999 stating that the exclusive rights can be asked only in the case where there is a valid registration. The defendants have filed a rectification petition under Section 124 of the Trademarks Act on the grounds that the registration granted to the plaintiff for the tagline is in violation of Section 9 of the Act. Since the plaintiff’s tagline is totally descriptive, the Trademark Registry should not have granted registration in accordance with Section 9(1)(b) of the Trade Marks Act. The plaintiff relies on paragraph 10 of the plaint to argue that it recognises that it is simply utilising the aforementioned tagline in a descriptive capacity.
The defendants market their beverage under the trademark “STING,” for which they have received registration. The defendants, on the other hand, argued that they are just using the tagline in a descriptive capacity, and so no trademark registration has been requested. As a result, there is no basis for an injunction under Section 29 of the Trade Marks Act.
The highlighted that the Registry objected to the plaintiff’s registration on the grounds that the aforementioned tagline “designates the quality of goods.” Since the plaintiff did not respond to the aforementioned Registry Examination Report, registration for the aforementioned tagline should not have been granted to the plaintiff. The defendants contended that they are entitled to the benefit of Section 30(2)(a) and Section 35 of the Trade Marks Act because the impugned mark is used in a descriptive way by the defendants to signify the sort and quality of its product. They referred the cases Marico Limited v. Agro Tech Foods Limited [4] and Stokley Van Camp, Inc. v. Heinz India Private Limited. [5]
The Court was drawn to a Facebook post by the defendants on their Facebook page on October 6, 2017, to show that the current suit is barred by delay and laches because the product bearing the defendants’ impugned mark was launched in India in October 2017, and the current suit was filed only in August 2018, after the defendants had established their presence in the Indian energy drink market.
REASONING OF THE COURT:
Passing-Off
The court referred to Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd. [6] which clarifies that the goal of a passing off action is to prevent confusion and deception among consumers and the general public. The Court has observed that there is no similarity regarding layout of the cans, brand names, colour scheme, fonts, colour, and background in which the taglines are written and that the taglines are written in small font on both the products when compared to the product name. Hence, it was held that there is no such confusion considering the above-mentioned difference and consequently, there is no passing-off action.
Infringement
To understand if there was infringement, the question of “whether the plaintiff’s aforementioned tagline has developed secondary meaning as a result of its continuous use, giving it distinctive character.” The defendants contend that the plaintiffs are using the tagline as a descriptive and complimentary in nature is the reason why the registration wasn’t done by the registry in the first instance, and it was granted only after the same was challenged by the defendant. Although, the court observed that the nature of the use of tagline by the defendants is also descriptive. The court referred to Marico Limited v. Agro Tech Foods Limited [4] where the court decided against granting injunction under Section 30(2)(a) of the Trade Marks Act as the expression “Low Absorb Technology” was used in a descriptive manner.
The court has observed that in an infringement case, there are two stages/tiers of defence. The first is for registration cancellation under Section 57. Nothing will sustain the infringement action if the registration is terminated. The second tier is that even if the registration is genuine, there are still valid defence outlined in Sections 30 to 35 of the Act that will bar the plaintiff from receiving relief in a trademark infringement action.”
The court has made it clear that the word mark is in fact a simple modification of a descriptive word indicating the kind, quality, intended purpose, or other characteristics of the goods and when rights are claimed over a word mark as a trade mark it is not permissible to argue with the reason that the respondent is using the descriptive word mark in fact solely a part of a sentence as a description along with another independent word mark. Even if it is assumed that the descriptive wordmark independently, then also the position remains the same. The court questioned the validity of defendants’ argument that the exclusive rights cannot be given to the plaintiff as the usage is purely for descriptive purposes, even if the defendants are also using for the same purpose.
The court noted that if they support such an argument then what is not allowed to happen directly will be happening indirectly. This is a double-edged sword wherein if the court says that there is no infringement then there will be many similar taglines consisting of descriptive marks which can be copied or similar phrases can be used while claiming this case as a precedent and at the same time, simply with a reason that the defendant making use of the same trademark it can be considered as a infringement.
The plaintiff does not possess any exclusive rights over the use of trademark as it comes under the purview of Section 30(2)(a) as it is indicating the kind, quality, intended purpose, or other characteristics of the goods and hence, the defendant has rights to use the trademark in whatsoever manner it wants to. Another intriguing issue would be “at what instance does the question of prohibiting the defendant or anyone from the use of a particular trademark come into picture if there are no existing rights for the plaintiff, especially when it involves adoption of a descriptive mark with Section 30(2). The same has been done by the defendant in the existing case.
The court observed that the on-going case is very similar to the case of Marico Limited v. Agro Tech Foods Limited wherein the plaintiff were “Sundrop” using the words “LOSORB and LO-SORB” and the defendant were “Saffolla” used the words “LOW ABSORB TECHNOLOGY”. Since it was a descriptive mark as per Section 30(2)(a), the court held that injunction cannot be awarded against the defendant.
The court doesn’t suggest to include the phrase “bona fide” in Section 30(2)(a) since the subject areas of the two sections, Section 32 (a) and Section 35, are similar in certain ways but function in different fields. In another perspective, the “bona fide” aspect can be said to be very much included in Section 30(2)(a), but since the use of words that indicate their relationship to the goods for “the kind, quality, intended purpose, or other characteristics etc., of the goods” is clearly only a bona fide user of the same, and that “bona fideness” doesn’t have to be proven further. The court also opines that if a defendant is prominently using his own word mark as a trade mark in addition to the descriptive word mark that the plaintiff claims to be his trademark, then nothing else is required to establish the defendant’s bona fides.
JUDGEMENT:
In the current case, the plaintiff has failed to demonstrate a prima facie case for the award of an interim injunction in its favour. Both the plaintiffs and defendants’ taglines are used in a descriptive and complimentary manner. Only at trial can it be determined if the plaintiff’s aforementioned slogan has gained distinctiveness or secondary meaning in relation to the plaintiff’s products. The defendants’ products have been selling in the market with the impugned tagline for almost five years, so the balance of convenience favours them in not granting an interim injunction. As a result, the current application is dismissed under CPC Order XXXIX Rule 1 and 2. It was determined any observations or expressions of opinion in this judgement will have no influence on the case’s merits. On the 09th of May, 2022, it is scheduled to appear before the Roster Bench.
CONCLUSION:
Considering the Marico case, Section 30(2)(a) and the fact that the tagline is not a dominant feature of the trademark, the author opines that there are more chances for the defendants to be allowed to use their tagline. In Stokely Case [5], Reebok India Case [7], Proctor case [1] and a few other landmark cases it was explicitly held that the plaintiff has to prove that their tagline has acquired a secondary meaning overtime with the wide range of usage. In this present case, the plaintiffs have failed to establish the same. Therefore, I believe that there are more chances for the defendant to win the case unless it is proved that there exists a secondary meaning.
FOOTNOTES
[1] Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. v. Anchor Health & Beauty Care Pvt. Ltd., 211 (2014) DLT 466 (DB).
[2] Shree Nath Heritage Liquor Pvt. Ltd. & Anr. v. Allied Blender & Distilleries Pvt. Ltd., 221 (2015) DLT 359 (DB).
[3] Anil Verma v. R.K. Jewelers SK Group & Ors., 2019 (78) PTC 476 (Del).
[4] Marico Limited v. Agro Tech Foods Limited, 174 (2010) DLT 279 (DB).
[5] Stokley Van Camp, Inc. v. Heinz India Private Limited, 171 (2010) DLT 16.
[6] Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145.
[7] Reebok India Company v. Gomzi Active, 2007 (34) PTC 164 (Karn).
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Submitted by :
Sri Vaishnavi .M.N.
Inten_CIPRA