Red Bull suffered defeat in a recent trademark case before the Delhi High Court when they attempted to seek an injunction against PepsiCo India and its energy drink “STING” for alleged infringement and passing off. Red Bull’s application was based on the purported deceptive similarity to their tagline “VITALIZES BODY AND MIND”, which is registered in India under Class 32.
Background:
The application was an attempt to restrain PepsiCo from using the tagline “STIMULATES MIND. ENERGIZES BODY.” in relation to Pepsi’s energy drink “STING”, which according to Red Bull was deceptively similar to their aforesaid trademarked tagline.
Red Bull, a leading brand globally for energy drinks, led their case in the High Court with the contention that the adoption of the impugned tagline by PepsiCo was malafide and intended to benefit from the goodwill and popularity of Redbull’s registered mark. Pepsi defended its use of the tagline as being descriptive of their product and not as a trademark and further stated that they had obtained registration for the brand name “STING”, under which their drink was sold. However, Pepsi clarified that they were only using the tagline in a descriptive manner for which no separate registration of trademark was sought.
Ruling:
The Court, whilst adjudging the matter, contemporaneously viewed the products and held that there was no similarity or likeness between the two products. It was further opined that the layout of the two cans were wholly different in terms of their colour schemes and fonts along with the brand names of the aforesaid products, “Red Bull” and “STING” being prominently displayed on the respective cans. Moreover, in comparison to the brand name of the defendant PepsiCo’s product, “STING”, which was displayed conspicuously on the cans, the impugned tagline only appeared in a small font. Therefore, it was apparent that no confusion or deception would be caused to the consumers of the respective products and consequently, no case of passing off could be made out.
The Court, vide its Order dated 6th April 2022, also took a prima facie stance on the fact that the aforesaid tagline used by the plaintiff was of descriptive capacity, in a manner so as to depict the attributes or quality of its drink. Further, since the impugned tagline of the defendant PepsiCo was also used in a descriptive or laudatory manner comprising of four words of the English language that intended to describe the features and quality of the drink, and not as a trademark, no case of infringement could be made out in terms of the provisions of The Trade Marks Act, 1999 in India.
The Delhi High Court dismissed Red Bull’s application by relying primarily on the ingredients that constitute a successful injunction stating that Red Bull had failed to establish prima facie case in its favour, that both taglines were descriptive and laudatory in nature and that the balance of convenience was in favour of Pepsi as their products were already being sold for almost five years prior to the filing of the plaintiff’s case.
Comment:
PepsiCo managed to successfully ward off the injunction sting in Red Bull’s trademark case and even argued that the registration of Red Bull’s tagline “VITALIZES BODY AND MIND” was in contravention of Section 9 of the statute in India. Their submission was that Red Bull’s mark was descriptive in nature and hence ought not to have received registration in the first place. It was also contended that Red Bull’s plaint itself acknowledged that the aforesaid tagline was being used by the plaintiff in a descriptive manner. It will be interesting to note how this issue further develops in the Indian legal landscape considering it is well settled that descriptive marks are traditionally not entitled to protection. There are provisions in law whereby challenges can be mounted and registrations cancelled. Only time will tell if Red Bull’s tagline registration can fly out of danger.
If you have any questions regarding the topic, you can contact Lincoln Legal Chambers.
Written by Misum Hossain, Founder, & Reshmi Hossain, IP & Commercial Law Specialist, of Lincoln Legal Chambers
