Use of descriptive phrase held to be in good faith

The decision of the division bench of the Delhi High Court in Marico Ltd v Agro Tech Foods Ltd (FAO (OS) 352/2010, November 1 2010) follows the line of cases benchmarked by the SUGAR FREE decision on the protection (or lack thereof) afforded to descriptive marks. The judgment arose from an appeal by Marico Ltd against a decision of the trial court in which the latter had vacated an interim injunction.
Marico sought to restrain Agro Tech Foods Ltd from using the words 'low absorb technology' in relation to edible oil. Marico claimed that such use infringed its registered trademark LOSORB and amounted to passing off. Agro Tech argued that its use of the words 'low absorb technology' for a product containing anti-foaming agents (which have 'low absorption' properties, resulting in reduced oil absorption during the process of frying or cooking food) constituted a good-faith description of the characteristics and quality of the goods in question.
Before the trial court, Marico was unsuccessful in making out a case of infringement and passing off. The single judge declared that Agro Tech's use of the expression 'low absorb technology' was descriptive and in good faith. Moreover, the judge found that the labels/packaging of the parties' products were dissimilar, especially as the products were marketed under the respective trademarks SAFFOLA and SUNDROP. Importantly, the trial judge also questioned the validity of the registration for the mark LOSORB.
The appeal court, deciding on the issue of passing off, held that there were enough differentiating features between the packaging of the two products to avoid any possibility of confusion.
The court further held that 'low absorb' is not a coined expression and not an “unusual syntax”. At best, it is a combination of two popular English words which are descriptive of the nature of the product. By adopting a descriptive mark, Marico ran the risk that others in the inductry would also be entitled to use similar phrases. The court emphasised that, in order to acquire distinctiveness, a mark must withstand the test of time - it cited the example of GLUCON D, which has been used for 60 years.
Relying heavily on Cadila Healthcare Ltd v Gujarat Cooperative Milk Marketing Federation (2001 (41) PTC336), in which it was held that the expression ‘sugar free' was descriptive and, therefore, could not be monopolised by one party, the court sent out a strong signal to discourage businesses from adopting purely descriptive trademarks:

 "[I]t is high time that those persons who are first off the blocks in using a trademark which is a purely descriptive expression pertaining to the subject product ought to be discouraged from appropriating a descriptive expression…"
Significantly, the court held that the trial judge was justified in looking into the validity of Marico’s trademark for the purposes of deciding the interlocutory application for an injunction - the court referred to the words “if valid”, which may be found in Section 28 of the Trademarks Act 1999 (rights conferred by registration) and related provisions of Section 31 (registration is prima facie evidence of validity).
On the issue of infringement, the court stated that Marico’s plea had failed because, on the date on which the application for registration was made, no evidence of distinctiveness existed and the application was filed on a 'proposed to be used' basis. The application was thus liable to be rejected based on the absolute grounds for refusal set forth in Section 9(1)(b) of the act.
The court then emphasised that evidence of distinctiveness acquired post-registration can be considered only in cancellation proceedings, and not in a civil action for infringement of a registered trademark. The court further noted that the evidence of distinctiveness could be examined only from the date of application to the date of registration. In the case at hand, Marico’s mark had not acquired any distinctiveness during this period. The court also held that Agro Tech was justified in using the words 'low absorb technology' in any and every manner that it so chooses...”. 
The court concluded that Agro Tech's use of the expression 'low absorb technology' was descriptive, and the fact that its trademark, SUNDROP, was prominently displayed on the packaging evidenced its good faith. The appeal was thus dismissed.
Dhruv Anand, Anand and Anand, Noida

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