Decision highlights difficulty in protecting taglines

India
In Stokely Van Camp Inc v Heinz India Private Limited (CS (OS) 514/2010, May 31 2010), the Delhi High Court has ruled in favour of Heinz India Private Limited in a dispute over use of similar taglines for energy drinks.
 
The plaintiffs, which are part of PepsiCo Inc USA, manufacture the popular energy drink Gatorade. They sought to restrain Heinz’s use of the expression “Rehydrates fluids; replenishes vital salts; recharges glucose” in relation to its Glucon D Isotonik energy drink. The claim was based on a trademark registration for the words 'Rehydrate Replenish Refuel' and on common law rights. The plaintiffs also alleged that:
  • Heinz infringed the copyright in their promotional material and packaging; and
  • Heinz's actions had the potential of diluting the plaintiffs' trademark.
In its defence, Heinz stated as follows:
  • the expression “Rehydrates fluids; replenishes vital salts; recharges glucose” was used in a descriptive manner, and not as a trademark;
  • the plaintiffs themselves do not use the phrase “Rehydrate Replenish Refuel” as a trademark;
  • both expressions are commonly used in the English language, particularly for sports drinks;
  • the plaintiffs' mark was registered in error;
  • under Section 35 of the Trademark Act 1999, a trademark owner cannot prevent a third party from using the mark in good faith to describe the character or quality of its goods; and
  • the plaintiffs copied Heinz by selling their product in powder form.
First, the Delhi High Court held that “[t]his case is a classic specimen of what corporate fights are all about, and how they are increasingly going to turn commercially ugly in days to come".

The court noted that there was no dispute that both sides were in the business of manufacturing and selling energy drinks. It went on to hold as follows:

  • The registration for the words 'Rehydrate Replenish Refuel' was invalid and, therefore, no injunction could be granted.
  • Based on the materials produced by Heinz, it was accepted that the words making up the plaintiffs’ mark are part of the current language, and are commonly used in trade to describe the character, quality and attributes of energy drinks.
  • There was no evidence - in the form of a consumer survey, for example - which could convince the court that the words 'Rehydrate Replenish Refuel' were perceived as a trademark by consumers. Mere use does not necessarily mean that a mark has acquired secondary meaning.
  • Heinz’s contention that the plaintiffs themselves used the mark descriptively was accepted.
  • The plaintiffs failed to make out a case of passing off, as the colour and trade dress of the goods are different, and the trademarks under which the goods are sold are prominently displayed.
The decision highlights the fact that taglines, such as “Rehydrate Replenish Refuel”, are difficult to protect. Moreover, in a growing number of cases, the courts have refused to grant exclusive rights over the use of ordinary words.

Binny Kalra, Anand And Anand Advocates, New Delhi

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