Pepsi's Tagline "Stimulates Mind, Energizes Body" Is Prima Facie Not Similar To Redbull's "Vitalizes Body And Mind": Delhi High Court

A single judge bench of Justice Amit Bansal did not accept Red Bull's contention that Pepsi has been using the impugned mark in a manner that is likely to be taken as being used as a trademark. The court ruled that the Pepsi has not committed infringement under Section 29 (infringement of registered trademarks) of the Trade Marks Act 1999.

"…since the products of the plaintiff and defendants are of the same kind, viz. energy drinks, descriptive or laudatory taglines in respect of these products have necessarily to communicate the same idea. Therefore, it cannot be said that the adoption of the impugned mark by the defendants was not bona fide."

The court held that the defendants would be entitled to the benefit of Section 30(2)(a) in the context exceptions on restriction of usage of registered trademark which indicate the kind, quality, quantity, intended purpose, value, geographical origin etc of goods or services and Section 35 (relating to description of the character or quality of goods or services) of the Trade Marks Act. In relation to descriptive words, the court relied on a Division Bench ruling of the Delhi High Court in Marico Limited v. Agro Tech Foods Limited, 174 (2010) DLT 279 -

"when rights are claimed over a word mark as a trade mark and which word mark is in fact a mere tweak of a descriptive word indicative of the kind, quality, intended purpose or other characteristics of the goods, it is not open to urge that although the respondent is using the descriptive word mark in fact only as a part of sentence as a description (and even assuming for the sake of argument only the descriptive word mark in itself) along with another independent trade mark, yet the use of descriptive words are to be injuncted against."

In relation to Red Bull's claim of passing off, Justice Bansal observed 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 court made a few observations and concluded that there is no similarity between the two products: distinct layout of the two cans, brand names (being "Red Bull" and "Sting") being prominently displayed on the cans, colour scheme of the two cans being completely different, the tagline, being the subject of the present dispute is used in very small fonts vis a vis the brand names.

The Bench relied on the apex court's observation in Satyam Infoway Ltd. v. Siffynet Solutions (P) Ltd., (2004) 6 SCC 145 to the effect 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. In the instant case, the court ruled that there was no apparent confusion or deception that would be caused to the customers of both parties, and held that prima facie, no case of passing off is made out.

The court noted Red Bull's own acknowledgement that the tagline/mark has been used by it in a manner so as to describe the attributes or quality of its drink.

"... In fact, the aforesaid words "STIMULATE" and "ENERGIZES" have been used by the defendant in its impugned mark. The fact that the plaintiff has used the aforesaid tagline in a descriptive manner is also evidenced by the fact that the tagline appears as a sentence on the can of the plaintiff's product herein the first word "VITALIZES" has the alphabet "V" in capital letters and the sentence ends with a full stop"

The Bench's view was that Red Bull's tagline being a phrase/expression has a direct reference to the quality, intended purpose, values and other characteristics of its product.

The court took note of a prior affidavit filed by Red Bull in response to an Examination Report of the Trademark Registry (the Registry has objected to the Red Bull's mark designating quality of its products). In the said affidavit, Red Bull did not claim that the tagline was not descriptive. Despite this, the Trademark Registry proceeded to grant registration to Red Bull.

The plaintiff has been using its tagline since 1987 and submitted that it has registered the instant tagline both in India and overseas. The defendant launched its product in India in 2017 and began using the impugned mark. Red Bull argued that PepsiCo has adopted the plaintiff's tagline in a malafide manner so as to communicate the same idea.

PepsiCo argued that the layout and get up of the two cans is totally different. Further, it argued that exclusive rights in respect of the registered mark can only be claimed if the registration is valid and the same is subject to other provisions of the Trade Marks Act (Section 28). Pepsi challenged to the very grant of the trademark to Red Bull since the latter's tagline is completely descriptive, and so registration ought not to have been granted by the Trademark Registry (this is pending adjudication). PepsiCo submitted that it has also been using the tagline in a descriptive manner and not as a trademark. Lastly, it argued that the question of whether Red Bull's tagline has acquired secondary meaning on account of long usage can only be established in trial.

Red Bull, in its rejoinder submitted that contrary to Pepsi's claim of the tagline being descriptive, the trademark in question uses an imaginative phrase. It argued that registration of a mark is prima facie evidence of its validity, and at a prima facie stage, the registration has to be assumed to be valid.

The court was convinced that there is some doubt as regards registration of Red Bull's mark.

"…the Court has to take a prima facie view with regard to the validity of the registration of the mark and in my prima facie view, the tagline used by the plaintiff is of descriptive/laudatory character, which ought not to have been granted registration in view of Section 9(1)(b) of the Trade Marks Act."

The court agreed with PepsiCo's submission that whether or not Red Bull's tagline has acquired distinctiveness and secondary meaning can only be established as a matter of trial since expenses or sales revenue is relatable to the tagline of the plaintiff and what part to the brand name of the plaintiff. Further, the court took note of the fact that defendant has been selling its product with the impugned mark for almost five years, and ruled that the balance of convenience would be against the grant of interim injunction.

The court distinguished the instant case from the decision in Procter & Gamble Manufacturing v. Anchor Health & Beauty Care Pvt. Ltd., 211 (2014) DLT 466 (DB), as cited by the plaintiff. In this case, the marks being used by opposing parties, being "ALLROUND PROTECTION" and "ALLROUND" were not said to be descriptive marks.

Case Title: Red Bull AG v PepsiCo India Holdings Pvt Ltd & Anr CS(COMM) 1092/2018, I.A. No.11452/2018 (O-XXVI R-9), I.A. No.8931/2019 (u/s 124 of TM Act)

Citation: 2022 LiveLaw (Del) 301

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