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Red Bull Loses its Wings to STING in Trademark Infringement- India

September 5, 2022
intellectual property

By Priya Adlakha and Shilpi Sinha

The Hon’ble Delhi High Court in its judgement1 in the case titled as RED BULL AG vs. PEPSICO INDIA HOLDINGS PVT LTD & ANR, refused to provide protection to Red Bull’s registered tagline ‘VITALIZES BODY AND MIND’ in a trademark infringement and passing off suit filed against Pepsico for the use of the tagline ‘STIMULATES MIND. ENERGIZES BODY’ for the energy drink ‘Sting’.

The Plaintiff claimed that it had been manufacturing and marketing its energy drink under the trademark ‘Red Bull’ and had been using the tagline ‘VITALIZES BODY AND MIND’ since 1987. The said tagline is registered in India since 2010 with effect from 2004 in class 32, and 73 other countries around the world.

The Plaintiff claimed that the usage of the aforesaid mark has become a source identifier of the Plaintiff’s products and on account of long and extensive usage, it had acquired distinctiveness in relation to its products. The Plaintiff also stated that it had spent enormous amounts on the marketing of its product in relation to the aforesaid tagline and enjoys the dominant market share in respect of energy drinks all over the world, including India.

Submissions made by the Plaintiff

The Plaintiff contended that Defendants’ launched their energy drink STING in India in 2017 with the tagline STIMULATES MIND. ENERGIZES BODY., which was deceptively similar to the Plaintiff’s registered tagline ‘VITALIZES BODY AND MIND’, wherein the words BODY and MIND have been copied by the Defendants, whereas the words STIMULATES and ENERGIZES are both synonyms of the term VITALIZES as used in the Plaintiff’s tagline. Therefore, the Defendant’s tagline was conceptually identical to the Plaintiff’s registered mark and had been used by the Defendants with mala fide and dishonest intention, as the same has not been not used by the Defendants anywhere in the world.

The Plaintiff placed reliance upon the judgment of the Division Bench of this Court in Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. v. Anchor Health & Beauty Care Pvt. Ltd.2 ; Shree Nath Heritage Liquor Pvt. Ltd. & Anr. v. Allied Blender & Distilleries Pvt. Ltd.3 ; and Anil Verma v. R.K. Jewelers SK Group & Ors.4

Submissions made by the Defendants

The Defendants drew a comparison between the getup and layout of the cans of the products of both the parties and contended that they are totally different, therefore no action of passing off could be made out.

With regard to the claim of infringement, the Defendants contended that the exclusive right to use the mark under Section 28 of the Act, can be averred only if the registration is valid and the same is subject to other provisions of the Trade Marks Act.

Defendants filed a rectification petition against the said tagline registration of the Plaintiff, on the ground of it being in contravention of Section 9 of the Act, alleging that the tagline was completely descriptive and the Plaintiff is using the same in a descriptive matter. Therefore, registration ought not to have been granted by the Trade Marks Registry in terms of Section 9(1)(b) of the Trade Marks Act.

Defendants further averred that they are selling their drink under their registered trademark STING and the tagline was used only in a descriptive manner and no registration had been sought in respect thereof, as a trademark. Hence, there was no case of injunction made out under Section 29 of the Act.

The Defendants took the defence of Sections 30(2)(a) and 35 of the Trade Marks Act, placing reliance upon the Division Bench judgments of this Court in ‘Marico Limited v. Agro Tech Foods Limited’ 5 and ‘Stockley Van Camp, Inc. v. Heinz India Private Limited’.6

In addition, the Defendants also submitted that the suit is hit by delay and laches as the product of the Defendant was launched in the Indian Market in October 2017, whereas the suit was only filed by the Plaintiff in August 2018, after the Defendants had established their presence in the market.

Plaintiff’s Submissions in the Rejoinder

The Plaintiff contented that its tagline is not descriptive and is rather used an imaginative phrase. It also averred that as per the terms of Section 31 of the Act, the registration of a mark is prima facie evidence of its validity and prima facie registration has to be assumed to be valid. Further, Defendant’s use of the tagline is not in a descriptive manner, as alleged.

Court’s Observations and Order

Hon’ble Mr. Justice Amit Bansal of the Delhi High Court, made the following observations and held:

Trademark Passing Off

In regards to the case of Passing off, the Hon’ble Court stated that the basic premise for passing off, is deception caused on account of the Defendant attempting to show its goods as that of the Plaintiff. The Hon’ble Court relying on the case of Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd.7 , stated that common law remedy of passing off restrains a Defendant from riding on the reputation and goodwill earned by a Plaintiff, being the prior user/owner of a distinctive mark. The purpose of an action of passing off is to prevent confusion and deception amongst consumers and the public at large.

Comparison of Plaintiff’s and Defendants’ Products

HelloComparison of Plaintiff’s and Defendants’ Products

After referring to a comparison of the products being sold by both the parties, the Hon’ble Court noted that there is no similarity between the two products and that the layout of the cans is totally different, therefore, no case for passing off was made out.

Trademark Infringement

The Hon’ble Court observed that the Defendants were using their tagline in a descriptive manner and not as a trademark, relying upon the principles laid down in ‘Marico Limited v. Agro Tech Foods Limited’ and ‘Stockley Van Camp, Inc. v. Heinz India Private Limited’. The Hon’ble Court noted that while the Plaintiff’s tagline had been granted registration in India in 2010, the rights granted upon registration under Section 28 of the Trade Marks Act are not absolute, and are therefore subject to other provisions of the act.

While making a reference to paragraph 10 of the plaint, the Hon’ble Court stated that it was a clear acknowledgement on behalf of the Plaintiff that the aforesaid tagline/mark had been used by the Plaintiff in a manner so as to describe the attributes or quality of its drink. The Hon’ble Court took a prima facie view that the tagline used by the Plaintiff was of a descriptive/laudatory character, which ought not to have been granted registration in view of Section 9(1)(b) of the Trade Marks Act.

While also noting that the Defendants had not sought any registration for their tagline and that the use of the said tagline was also in a descriptive/laudatory manner and not as a trademark, the Hon’ble Court was of the view that the Defendants would be entitled to protection under Section 30(2)(a) and Section 35 of the Trade Marks Act.

Delay and Laches

As for the issue pertaining to delay and laches, the Hon’ble Court observed that the Defendants had been selling their product now for a period of five years with the aforesaid impugned tagline and therefore the balance of convenience would be against the grant of interim injunction.

The said judgement is in appeal before the Division Bench of the Hon’ble Delhi High Court as is fixed for hearing on November 30, 2022.

Conclusion/Author’s Comments

Though the Hon’ble Court has rightly observed in this case that there was no similarity in the two conflicting taglines, however, the reasoning given behind such conclusion that the ‘Plaintiff has used the aforesaid tagline in a descriptive manner since it appears as a sentence on the can of the Plaintiff’s product, wherein the first word ‘VITALIZES’ has the alphabet ‘V’ in capital letters and the sentence ends with a full stop, raises a pressing concern pertaining to the protection of registered trademarks in a descriptive phrase/tagline despite the fact that it may have acquired a distinctiveness and secondary meaning, as most taglines are descriptive in nature.

1 CS Comm 1092/2018
2 211 (2014) DLT 466 (DB)
3 221 (2015) DLT 359 (DB)
4 2019 (78) PTC 476 (Del).
5 174 (2010) DLT 279 (DB)
6 171 (2010) DLT 16
7 (2004) 6 SCC 145

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