Introduction:
In the competitive world of fast-moving consumer goods, trademarks are not just identifiers but powerful tools that encapsulate brand identity and consumer trust. The case of Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Others vs. Anchor Health & Beauty Care Pvt. Ltd., decided on May 30, 2014, by the Delhi High Court, is a landmark dispute that underscores the complexities of trademark law in India. This case revolves around the alleged infringement of the trademark "ALLROUND" and the expression "ALLROUND PROTECTION" by Procter & Gamble’s use of "ALL-AROUND PROTECTION" and "ALLROUNDER" in their toothpaste products. The dispute highlights critical issues of trademark distinctiveness, the descriptive nature of marks, and the principle of approbate and reprobate, offering valuable insights into the protection of slogans and taglines under Indian trademark law.
Detailed Factual Background:
Anchor Health & Beauty Care Pvt. Ltd., part of the Anchor Group, is a prominent player in the Indian FMCG sector, known for its dental care products, including toothpaste, under the brand "ANCHOR." Since 2005, Anchor has used the trademark "ALLROUND" and the expression "ALLROUND PROTECTION" for its toothpaste, claiming that these have acquired secondary meaning and distinctiveness. The trademark "ALLROUND" was registered on August 26, 2008, under the Trade Marks Act, 1999, following an application filed on September 2, 2005. Anchor asserted that "ALLROUND PROTECTION" was extensively used in advertising, including in regional languages through transliteration, and had become synonymous with its brand.
Procter & Gamble (P&G), a global conglomerate, entered the Indian toothpaste market in July 2013 with its "ORAL-B" brand, launching products labeled with "ORAL-B ALL-AROUND PROTECTION" and "ORAL-B ALLROUNDER." Anchor alleged that P&G’s use of these terms infringed its registered trademark "ALLROUND" and the well-known expression "ALLROUND PROTECTION," accusing P&G of attempting to capitalize on Anchor’s established goodwill. P&G, comprising Procter & Gamble Manufacturing (Tianjin) Co. Ltd., Procter & Gamble Business Services Canada Company, and Gillette India Ltd., countered that "ALLROUND" was a descriptive term, incapable of trademark protection, and that their use of "ALL-AROUND PROTECTION" was merely descriptive of their product’s qualities.
Detailed Procedural Background:
Anchor filed a suit (CS(OS) No. 1431/2013) in the Delhi High Court, seeking a declaration that "ALLROUND PROTECTION" was a well-known mark, a permanent injunction against P&G’s use of "ALL-AROUND PROTECTION" and "ALLROUNDER," and ancillary reliefs like delivery up and rendition of accounts. Alongside the suit, Anchor applied for an interim injunction under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908, to restrain P&G pending the suit’s outcome. No ex-parte interim relief was granted.
The Single Judge, on May 9, 2014, allowed Anchor’s application, granting an interim injunction against P&G, effective after four weeks to allow compliance. The Single Judge’s order was based on findings that P&G’s use of the disputed terms was not merely descriptive and that their prior trademark applications contradicted their defense. Aggrieved, P&G filed an appeal (FAO(OS) No. 241/2014) under Order XLIII Rule 1(r) of the CPC, challenging the interim injunction. The Division Bench, comprising the Chief Justice and Justice Rajiv Sahai Endlaw, heard the appeal at the admission stage with consent and delivered its judgment on May 30, 2014.
Issues Involved in the Case
The case presented several pivotal issues for adjudication:
Whether Anchor’s registered trademark "ALLROUND" and the expression "ALLROUND PROTECTION" were distinctive or merely descriptive, and thus entitled to protection? Whether P&G’s use of "ALL-AROUND PROTECTION" and "ALLROUNDER" infringed Anchor’s trademark rights or constituted a bona fide descriptive use?Whether P&G’s prior applications for registration of "ALLROUNDER" in India and "ALL-AROUND PROTECTION" in the United States estopped them from claiming these terms as descriptive? Whether Anchor’s use of "ALLROUND PROTECTION" instead of "ALLROUND" constituted non-use of the registered trademark, thereby weakening its claim?
Detailed Submission of Parties:
Anchor’s Submissions:
Anchor argued that "ALLROUND" was a distinctive trademark, registered since 2008, and "ALLROUND PROTECTION" had acquired secondary meaning through extensive use since 2005. They highlighted that the trademark was used in advertisements and packaging, including in regional languages via transliteration, indicating its role as a brand identifier rather than a descriptor. Anchor pointed out that P&G’s application for "ALLROUNDER" in 2010 faced objections from the Registrar of Trademarks due to similarity with "ALLROUND," and P&G’s response did not claim the term as descriptive but as distinctive. Similarly, P&G’s U.S. registration of "ALL-AROUND PROTECTION" disclaimed the word "PROTECTION," suggesting acknowledgment of the mark’s distinctiveness.
Anchor relied on several precedents to bolster its case. They cited Wander Ltd. vs. Antox India (P) Ltd., 1990 (2) SCC 399, to argue that appellate courts should not interfere with discretionary interim orders unless exercised arbitrarily. They referenced Automatic Electric Ltd. vs. R.K. Dhawan, (1999) (19) PTC 81, and Indian Hotels Company Ltd. vs. Jiva Institute of Vedic Science & Culture, 2008 (37) PTC 468 (Del), to assert that P&G’s prior trademark applications precluded them from claiming the terms as descriptive. Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co., (1969) 2 SCC 727, was cited to argue that identical marks negate the need to prove likelihood of confusion. Ruchi Pvt. Ltd. vs. Indian Flame Enterprises, (2001) PTC 876 (Del), supported their claim that use of a similar mark on cognate goods could cause deception. Finally, Amar Singh Chawal Wala vs. Shree Vardhman Rice and Genl. Mills, 2009 (40) PTC 417 (Del) (DB), was used to argue that P&G’s use during the suit’s pendency accrued no rights.
P&G’s Submissions
P&G, represented by senior counsel Dr. A.M. Singhvi and Mr. Sanjay Jain, contended that "ALLROUND" was inherently descriptive and incapable of trademark protection under Section 9 of the Trade Marks Act, 1999. They argued that Anchor never used "ALLROUND" as a standalone trademark but only as part of "ALLROUND PROTECTION," which described the qualitative features of its "ANCHOR" toothpaste. P&G asserted that their use of "ALL-AROUND PROTECTION" was bona fide and descriptive, not as a trademark, and that their brands "ORAL-B" and Anchor’s "ANCHOR" were distinct, eliminating confusion.
P&G challenged the Single Judge’s reliance on Automatic Electric Ltd., arguing it was overruled by the Division Bench in Marico Limited vs. Agro Tech Foods Ltd., 2010 X AD (Del) 214, which held that descriptive marks like "LOW-ABSORB" were not protectable. They cited Veerumal Praveen Kumar vs. Needle Industries (India) Ltd., 93 (2001) DLT 600 (DB), and Fedders Lloyd Corporation Ltd. vs. Fedders Corporation, 2005 (30) PTC 353 (Del) (DB), to argue that non-use of the registered mark "ALLROUND" disentitled Anchor to protection. P&G admitted to mistakenly applying for "ALLROUNDER" in India and "ALL-AROUND PROTECTION" in the U.S., offering to withdraw these registrations. They relied on Rhizome Distilleries P. Ltd. vs. Pernod Ricard S.A. France, 2010 (42) PTC 806 (Del) (DB), to argue that laudatory or descriptive words cannot be exclusively claimed.
Detailed Discussion on Judgments and Citations:
The parties and the court referenced several precedents, each contextualized to address specific legal points:
Wander Ltd. vs. Antox India (P) Ltd., 1990 (2) SCC 399: Anchor cited this Supreme Court decision to argue that appellate courts should not lightly interfere with discretionary interim orders unless they are arbitrary or perverse. The court implicitly accepted this principle, as it thoroughly evaluated the Single Judge’s reasoning before upholding it.
Automatic Electric Ltd. vs. R.K. Dhawan, (1999) (19) PTC 81: Anchor relied on this Single Judge decision, which held that a defendant registering a mark abroad (e.g., "DIMMER" in Australia) could not claim it as generic in India. P&G argued it was overruled by Marico Limited, but the Division Bench noted its affirmation in Indian Hotels Company Ltd., reinforcing the principle of approbate and reprobate.
Indian Hotels Company Ltd. vs. Jiva Institute of Vedic Science & Culture, 2008 (37) PTC 468 (Del): Anchor cited this Division Bench decision, which approved Automatic Electric Ltd., holding that a party applying for a mark’s registration cannot later claim it as descriptive. The court relied on this to reject P&G’s claim that "ALLROUNDER" and "ALL-AROUND PROTECTION" were descriptive.
Marico Limited vs. Agro Tech Foods Ltd., 2010 X AD (Del) 214: P&G heavily relied on this Division Bench decision, which denied interim relief for the mark "LOW-ABSORB," deemed descriptive. The court distinguished it, finding "ALLROUND PROTECTION" not generically descriptive but indicative of a unique product quality.
Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co., (1969) 2 SCC 727: Anchor cited this Supreme Court case to argue that identical marks negate the need to prove confusion. The court did not directly address this but implicitly accepted that the similarity between "ALLROUND" and P&G’s marks warranted protection.
Ruchi Pvt. Ltd. vs. Indian Flame Enterprises, (2001) PTC 876 (Del): Anchor used this to argue that use of a similar mark on cognate goods could deceive consumers. The court’s focus on similarity in essential features aligned with this principle.
Amar Singh Chawal Wala vs. Shree Vardhman Rice and Genl. Mills, 2009 (40) PTC 417 (Del) (DB): Anchor cited this to argue that P&G’s use during the suit’s pendency accrued no rights. The court did not directly address this but upheld the injunction, implying agreement.
Veerumal Praveen Kumar vs. Needle Industries (India) Ltd., 93 (2001) DLT 600 (DB): P&G cited this to argue that non-used trademarks are unprotected. The court rejected this, finding Anchor’s use of "ALLROUND PROTECTION" constituted use of the registered mark.
Fedders Lloyd Corporation Ltd. vs. Fedders Corporation, 2005 (30) PTC 353 (Del) (DB): P&G used this to support non-use arguments, but the court found it inapplicable given Anchor’s evidence of use.
Rhizome Distilleries P. Ltd. vs. Pernod Ricard S.A. France, 2010 (42) PTC 806 (Del) (DB): P&G cited this to argue that descriptive or laudatory words are not protectable. The court distinguished it, holding that "ALLROUND PROTECTION" was not generically descriptive.
Pankaj Goel vs. Dabur India Limited, 2008 (38) PTC 49 (Del) (DB), Castrol Limited vs. A.K. Mehta, 1997 (17) PTC 408 (DB), and Prakash Roadline vs. Prakash Parcel Service, 1992 (2) Arbitration Law Reporter 174: The court cited these to dismiss P&G’s argument that third-party use negated interim relief, affirming that infringement by others does not preclude protection against a specific defendant.
Stokely Van Camp, Inc. vs. Heinz India Private Limited, 171 (2010) DLT 16, affirmed in MANU/DE/3132/2010, SLP dismissed on April 8, 2011: The court referenced this comprehensive case law discussion to avoid redundant analysis, noting its relevance to trademark disputes.
Detailed Reasoning and Analysis of Judge
The Division Bench provided a meticulous analysis, rejecting P&G’s appeal and upholding the interim injunction. The court’s reasoning was multifaceted:
Distinctiveness of "ALLROUND": The court noted that neither the Indian nor U.S. Registrar of Trademarks objected to "ALLROUND" as descriptive under Section 9 of the Trade Marks Act, suggesting prima facie distinctiveness. The Registrar’s objection to P&G’s "ALLROUNDER" application due to similarity with "ALLROUND" further supported this view.
Slogans as Trademarks: The court recognized "ALLROUND PROTECTION" as a slogan or tagline, falling within the definition of a trademark under Sections 2(m) and 2(zb) of the Act. It emphasized that slogans are powerful marketing tools that enhance brand equity, often lingering in consumers’ minds more than the primary brand. The court rejected P&G’s claim that "ALLROUND PROTECTION" was descriptive, arguing that its association with toothpaste arose from Anchor’s long use, not inherent descriptiveness.
Test of Descriptiveness: The court proposed a novel test: a mark’s descriptiveness should be assessed before its use, not after prolonged association with a product. Before Anchor’s use, "ALLROUND PROTECTION" was not inherently descriptive of toothpaste, unlike generic terms like "whiter teeth" or "fresher breath." The court distinguished between marks describing generic qualities and those highlighting unique product features, classifying "ALLROUND PROTECTION" as the latter.
Approbate and Reprobate: The court upheld the Single Judge’s application of this principle, noting that P&G’s applications for "ALLROUNDER" and "ALL-AROUND PROTECTION" contradicted their claim of descriptiveness. P&G’s U.S. registration, disclaiming "PROTECTION," reinforced that "ALL-AROUND" was the distinctive element. The court dismissed P&G’s claim of mistaken applications as unconvincing, lacking sworn evidence.
Use of Registered Mark: The court rejected P&G’s argument that Anchor’s use of "ALLROUND PROTECTION" constituted non-use of "ALLROUND." P&G’s U.S. registration, disclaiming "PROTECTION," indicated that suffixing did not negate the mark’s use. Anchor’s advertisements and invoices further evidenced use of "ALLROUND" as a trademark.
Third-Party Use: The court dismissed P&G’s claim of third-party use, citing precedents that infringement by others does not preclude relief against a specific defendant.
Case Law Analysis: The court reconciled conflicting precedents, affirming Automatic Electric Ltd. via Indian Hotels Company Ltd. and distinguishing Marico Limited based on the unique nature of "ALLROUND PROTECTION." It relied on Stokely Van Camp for comprehensive trademark law principles.
Final Decision:
The Division Bench dismissed P&G’s appeal, upholding the Single Judge’s interim injunction restraining P&G from using "ALL-AROUND PROTECTION," "ALLROUNDER," or any deceptively similar mark during the suit’s pendency. The court clarified that its observations would not influence the trial’s outcome.
Law Settled in This Case:
This case settled several key principles in Indian trademark law:
Slogans as Trademarks: Slogans or taglines, if distinctive and capable of distinguishing goods, qualify as trademarks under the Trade Marks Act, 1999, enhancing brand equity through consumer recall.Test of Descriptiveness: A mark’s descriptiveness should be assessed before its use, not after prolonged association with a product. Marks highlighting unique product features, rather than generic qualities, are protectable. Approbate and Reprobate: A party applying for or obtaining registration of a mark cannot later claim it as descriptive, as this contradicts their prior conduct.Use of Registered Mark: Suffixing a registered mark with additional words does not necessarily constitute non-use, especially if the core mark remains prominent.Interim Relief: The balance of convenience favors the plaintiff when the defendant’s infringing use is recent, and third-party use does not preclude interim relief against a specific defendant.
Case Title: Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Others Vs. Anchor Health & Beauty Care Pvt. Ltd.
Date of Order: May 30, 2014
Case No.: FAO(OS) No. 241/2014
Name of Court: High Court of Delhi at New Delhi
Name of Judge: Chief Justice and Justice Rajiv Sahai Endlaw
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
