Delhi High Court: In a case wherein an application under Order XXXIX Rules 1 and 2 of Civil Procedure Code, 1908 was filed by the plaintiffs and application under Section 124(1)(a)(ii) of the Trade Marks Act, 1999 (‘the TM Act’) filed by the defendant, C. Hari Shankar, J.*, rejected the interlocutory injunction against the use of the defendant’s ‘For the Bold’ part of the label on its ‘B Fizz’ bottle and accordingly disposed of the application filed by the plaintiff. The Court, however restrained the defendant during the proceeding from using the tagline ‘For the Bold’ as part of its advertising campaign.
In the instant case, PepsiCo, the plaintiff instituted a suit against Parle, the defendant to seek permanent injunction against the defendant for using the tagline ‘For the Bold’. The plaintiff had also filed an application to seek an interlocutory injunction. Thereafter, during the pendency of the suit, the defendant had filed an application under Section 124(1)(a)(ii) of the TM Act for grant of leave to the defendant file a rectification petition challenging the registration of the petitioner’s ‘For the Bold’ trade mark. The defendant had also filed the suit for cancellation of the plaintiff’s registration of ‘For the Bold mark’.
Analysis, Law, and Decision
The Court referred to Patel Field Marshal Agencies v. P.M Diesels Ltd, (2018) 2 SCC 112 and opined that the Supreme Court had conferred an exclusive jurisdiction with regard to the rectification petition on Intellectual Property Appellate Board (‘IPAB’). The Court under Section 124(1)(a)(ii) of the TM Act, could only pronounce that whether the issue was arguable or not and any observation beyond ascertaining the tenability would influence the IPAB, which was the only authority to adjudicate the rectification petition and pronounce on the challenge to the validity of the mark.
The Court further opined that the Court while examining the prima facie tenability of the challenge to the validity of the mark under Section 124(1)(a)(ii) of the TM Act, only required to ascertain that the pleadings were sufficient to make out a challenge that was worth considering.
The Court while considering the issue whether the issue defendant’s mark ‘Be the Fizz! For the Bold! infringed the plaintiff’s ‘For the Bold!’ mark, opined that the it had to be seen whether a customer of average intelligence who saw the plaintiff’s mark, when came across the defendant’s mark was likely to wonder as to whether the two marks had an association with each other.
The Court examined Section 29(2)(b) of the Act and opined that the Court was required to examine the following:
- Whether the rival marks were similar
- Whether the goods or services covered by the rival marks were identical or similar
Whether owing to such similarity of the marks there was either likelihood of confusion or association
Thus, the Court opined that when the aforementioned requisites are cumulatively found to exist, an infringement would follow.
The Court noted that in the label of the defendant’s ‘B Fizz’ bottle, it took an effort to notice the ‘For the Bold’ tagline as it was printed upside down. The slogan was comparatively small in size and the least conspicuous part of the defendant’s label was ‘For the Bold’ tagline and the customer who was particularly searching for the tagline would notice it.
Thus, the Court applied the principle of the two marks as a whole, coupled with the aspect of likelihood of confusion or association between the two marks in the minds of a customer of average intelligence and imperfect recollection, the Court opined that the mark ‘For the Bold!’ was not infringing as per Section 29(2) of the TM Act.
The Court noted that the defendant used the plaintiff’s registered mark in two ways, one as a part of its label, while the other as a part of its advertising campaign. The Court opined that the Court could not injunct a mark, it could injunct the infringing use of the mark which could be injuncted. Thus, the Court opined that the defendant’s use of ‘For the Bold’ on the label on ‘B Fizz bottle’ was not injuncted, but the manner in which the defendant used ‘For the Bold’ in its advertising campaign on Facebook had to be injuncted.
The Court applied the test laid down in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 SCC OnLine SC 14 and opined that the defendant’s use of the impugned slogan on the ‘B Fizz’ product was sufficiently distinct and different from the plaintiff’s use of the impugned slogan. The Court further opined that there was no likelihood of confusion between the plaintiff’s registered ‘For the Bold’ mark and the defendant’s ‘Be the Fizz! For the Bold!’ tagline.
The Court opined that a passing off could be returned only if at the first instance plaintiff proved that there existed sufficient goodwill and reputation of the mark which it sought to assert. The Court further opined that since in in the present case, there was no evidence of any goodwill and reputation being earned by the plaintiff for its use of the ‘For the Bold’ mark, the passing off plea could not sustain.
The Court allowed the application filed by the defendant and opined that the challenge by the defendant to the registration of the ‘For the Bold’ mark was found to be tenable and the Court did not express its opinion on the merits of the challenge.
The Court rejected the interlocutory injunction against the use of the defendant’s ‘For the Bold’ part of the label on its ‘B Fizz’ bottle and accordingly disposed of the application filed by the plaintiff. The Court however restrained the defendant from altering its label on the ‘B Fizz’ bottle without prior approval of the Court. The Court further restrained the defendant form using the tagline ‘For the Bold’ as part of its advertising campaign.
The Court directed the defendant to place on record the entire returns earned by the sales of its ‘B Fizz’ beverage, which contained ‘For the Bold’ label from the time the use of the said label commenced, duly certified by a Chartered Accountant. The Court further directed the defendant to continue to file duly certified figures od returns of sales from ‘B Fizz’ beverage during pendency of the suit.
The Court further listed the suit filed by the defendant for cancellation of the registration of the ‘for the Bold’ mark to 17-10-2023.
[Pepsico Inc v. Parle Agro Pvt. Ltd., 2023 SCC OnLine Del 5823, decided on 18-9-2023]
*Judgment authored by- Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiffs: Mr. Amarjit Singh Chandhiok, Senior Advocate with Manish Jha, Dhruv Nagar, Avni Sharma, Advocates;
For the Defendant: Sudhir Chandra, Senior Advocate with Ankur Sangal, Pragya Mishra and Shashwat Rakshit, Advocates