P&G told that it cannot "approbate and reprobate" in ALLROUND case

India

In Procter and Gamble Manufacturing Co (Tianjin) Co Ltd v Anchor Health & Beauty Care Pvt Ltd  (FAO (OS) 241/2014), the Division Bench of the Delhi High Court has dismissed Procter and Gamble (P&G)'s appeal and upheld an order of the single judge of the Delhi High Court restraining P&G from using the trademarks ALL-AROUND PROTECTION and ALL-ROUNDER.

The dispute arose when P&G started using the trademarks ALL-AROUND PROTECTION and ALL-ROUNDER in relation to toothpaste. Anchor objected to P&G's use of the marks and filed a suit for trademark infringement and passing off, relying on its trademarks ALLROUND PROTECTION and ALLROUND.

Anchor's product:

P&G's products:

In its defence, P&G contended, among other things, that:

  • Anchor’s trademarks were descriptive;
  • Anchor had not used ALLROUND as a trademark and the mark ALLROUND PROTECTION had always been used to indicate qualitative features of the Anchor brand, which is the primary mark;
  • The by-line 'allround protection' is used only as an addendum of a descriptive nature;
  • P&G had no intention of using ALL-AROUND PROTECTION as a trademark; and
  • Anchor was not using the mark ALLROUND per se, as it was used as part of the by-line 'allround protection'.  

The single judge was not convinced and passed an interim order restraining P&G from using the marks ALL-AROUND PROTECTION and ALL-ROUNDER on the basis that:

  • P&G’s use of the marks ALL-AROUND PROTECTION and ALL-ROUNDER in relation to identical goods amounted to infringement of Anchor’s registered mark ALLROUND;
  • P&G itself had filed an application for the mark ALL-ROUNDER and obtained registration for the mark ALL-AROUND PROTECTION in the United States, so it could not "approbate and reprobate" and claim that Anchor’s marks were descriptive;
  • P&G’s packaging showed that the mark ALL-AROUND PROTECTION was used by P&G as a standalone mark and not to describe a quality of the product; and
  • based on Anchor’s use of the mark ALLROUND PROTECTION instead of ALLROUND, it could not be said that there was non-use of the mark ALLROUND.  

P&G filed an appeal with the Division Bench of Delhi High Court, which dismissed it on the basis of observations made by the single judge. Additionally, the court based its dismissal on the following:

  • In its response to the objection raised (on the basis of non-distinctiveness) in the examination report/office action issued by the Indian Trademarks Registry, P&G had submitted that its marks were distinctive;
  • the Indian Trademarks Registry and US Patent and Trademark Office (USPTO) had considered the marks to be distinctive; and
  • slogans like 'allround protection' may be trademarks within the meaning of the Trademarks Act 1999.

This decision is important for in-house trademark counsel, as well as companies with global trademark portfolios, as it shows that they must maintain a consistent stand globally in relation to the adoption and registration of trademarks. Most of the trademark offices around the world have digitised their records, which can be accessed from anywhere in the world. Anchor was successful since it was easy for it to access P&G’s trademark records with the USPTO and the Indian Trademarks Registry, where P&G had taken a stand on the registrability of its marks which was inconsistent with its defence before the single judge and the appeal court.

Adheesh Nargolkar, Shailendra Bhandare and Raj Rao, Khaitan & Co, Mumbai

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