The main legal point established in the judgment is that the descriptive nature of a tagline and its use as a trademark are crucial factors in determining passing off and infringement claims under the Trade Marks Act.

JUDGMENT

Amit Bansal, J. - I.A. No. 11451/2018 (O-39 R-1 & 2)

1. By way of the present judgment, I shall dispose of the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) seeking interim injunction against the defendants, restraining the defendants from using the tagline "STIMULATES MIND. ENERGIZES BODY.", which is claimed to be deceptively similar to the plaintiff's registered trademark/tagline "VITALIZES BODY AND MIND.".

2. The present suit was filed in August, 2018 and thereafter, vide order dated 24th September, 2018, the parties were referred for mediation. However, the mediation did not bear fruits and accordingly, on 05th December, 2018, the matter was fixed for arguments on the present application. Replies to the application were filed by the defendants on 14th and 27thFebruary, 2019.

Plaintiff's Submissions

3. Counsel for the plaintiff made the following submissions:

I. The plaintiff and its group of companies have been manufacturing and marketing, inter alia, energy drinks sold under the trademark "Red Bull", since the year 1987.

II. In relation to its product, the plaintiff is using the tagline "VITALIZES BODY AND MIND." since the year 1987.

III. The aforesaid tagline of the plaintiff has been registered as a trademark in 73 different countries around the world.

IV. In India, the aforesaid tagline was registered by the plaintiff in 2010, with effect from 21st January, 2004 under Class 32.

V. 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 has acquired distinctiveness in relation to the products of the plaintiff.

VI. Plaintiff enjoys the dominant market share in respect of energy drinks all over the world, including India, as stated in paragraphs 22 and 23 of the plaint.

VII. The plaintiff spends enormous amounts on the marketing of its product in relation to the aforesaid tagline of the plaintiff, as stated in paragraphs 27 and 28 of the plaint.

VIII. The defendants launched their energy drink "STING" in India in the year 2017 and adopted the tagline "STIMULATES MIND. ENERGIZES BODY.", which is deceptively similar to the plaintiff's registered tagline.

IX. The words "BODY" and "MIND" have been copied by the defendants, whereas the words "STIMULATES" and "ENERGIZES" are both synonyms of the term "VITALIZES" used by the plaintiff. Therefore, the term is conceptually identical to the plaintiff's registered mark.

X. The aforesaid tagline has been used by the defendants with mala fide and dishonest intention since the aforesaid tagline is not used by the defendants anywhere else in the world.

XI. The defendants have adopted the plaintiff's tagline to ride upon the goodwill and popularity of the plaintiff's tagline, which amounts to infringement as well as passing off.

XII. Reliance is placed on the judgment of the Division Bench of this Court in Proctor & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. v. Anchor Health & Beauty Care Pvt. Ltd., 211 (2014) DLT 466 (DB); Shree Nath Heritage Liquor Pvt. Ltd. & Anr. v. Allied Blender & Distilleries Pvt. Ltd., 221 (2015) DLT 359 (DB); and Anil Verma v. R.K. Jewelers SK Group & Ors., 2019 (78) PTC 476 (Del).

Defendant's Submissions

4. Per contra, senior counsel appearing for the defendants made the following submissions:

I. The get up and layout of the cans in which the products of the plaintiff and the defendants are sold is totally different. In this regard, attention of the Court is drawn to page 7 of the written statement, where a comparison has been drawn out between the two products. Therefore, there can be no question of any deception and consequently, no action of passing off can be made out.

II. In terms of Section 28 of the Trade Marks Act, 1999 (Trade Marks Act), 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.

III.