It is a common principle that trademarks cannot infringe as they are inanimate and intangible entities which can commit neither good nor evil. The offence of infringement is a tort manifested by a physical act, which the innocent trademark cannot perform. Thus, each sub-section of Section 29 of the Trade Marks Act, 1999 (the Act) refers to infringement of a registered trademark “by a person” as it is the person who infringes and not the trademark.
In a recent judgement of Pepsico Inc. & Anr. vs Parle Agro Private Limited [C.S. (COMM) 268/2021, I.A. 7170/2021 & I.A. 9591/2021], the Hon’ble High Court of Delhi decided on the controversy around the tagline “For The Bold” (hereinafter referred to as the “subject tagline”) which formed the fulcrum of this case. The present suit was instituted by PepsiCo, Inc. and PepsiCo India Holdings Private Ltd. (hereinafter collectively called “PepsiCo” as the case may be) seeking a permanent injunction against Parle using the tagline “For The Bold” in relation to its products.
The factual matrix of this case is that the Plaintiffs hold a valid and subsisting trademark registration of the tagline “For The Bold” in class 30 in respect of “coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; snack foods based on flour, corn, cereal, rice; processed cereal seeds”. In this regard, the Plaintiffs had filed an application seeking an interlocutory injunction. In contrast, the defendant, i.e., Parle, filed an application under Section 124(1)(a)(ii) of the Act for a grant of leave to file a rectification proceeding against the registration of the subject tagline.
PepsiCo argued that among its famous products consumed by youngsters and old people was the DORITOS range of tortilla chips. The brand name DORITOS was adopted in 1961, and Plaintiff No. 1 holds registration for “DORITOS” in classes 29 and 30. The Plaintiffs further submitted that this range of tortilla chips was introduced with a campaign called “For The Bold,” which was to urge the consumers of DORITOS to live boldly, break out of the norm of everyday life and experience more. The subject tagline has been used internationally since 2013 and since 2015 in India.
Thus, the extensive and continuous use of the subject tagline by PepsiCo was said to have been inalienably identified with PepsiCo’s DORITOS tortilla chips, and the same was also established by producing promotional and marketing materials by Plaintiffs from its social media extracts. The exponential sales made by Plaintiffs for the said brand DORITOS were also submitted before the Court. However, in November 2020, the Plaintiffs came across the defendant’s newly launched beverage, B FIZZ, with the packaging where the subject tagline “For The Bold” was prominently visible. It was further submitted that the defendant had advertised the said drink on its social media pages with the subject tagline.
A few representative excerpts from the Defendant’s Facebook page were also shown, such as and . An additional umbrage taken by the Plaintiffs was that the defendant had applied for the registration of the tagline “Be The Fizz! For The Bold!” as a trade mark on a “proposed to be used” basis, which the Plaintiffs opposed. In view of the above, the Plaintiffs alleged infringement of its subject tagline under Section 29 of the Act and passing off by the defendant. However, the defendant’s counsel differentiated the products, tagline, goods applied for and the sales of the respective products, further claiming that due to such differences, there exists no likelihood of confusion.
The defendant further contended that the vision behind its product “B Fizz” was to provide a beverage that, while non-alcoholic, would replicate the bold flavour of beer. For this purpose, the bottle, as well as its label, were printed in bold red colour and had, since its production, achieved exponential sales. It was also alleged that PepsiCo does not use the tagline “For The Bold” on all its packs of DORITOS chips.
The defendant also brought to the Court’s notice that the Plaintiffs, in its Examination Report, issued for the mark “Fort The Bold” under Sections 9 and 11 of the Act, differentiated itself from various marks listed to be similar to the subject tagline. The defendant also pointed out that PesiCo had applied for registration of the subject tagline on 21 March 2013 on a “proposed to be used” basis. It indicated that there was no use of the subject tagline mark by PepsiCo prior to 21 March 2013, which was granted registration on 19 December 2016. It could not, therefore, be said that, prior to the date of registration, the tagline “For The Bold” had acquired a distinctive character as a result of use or was a “well-known trademark”.
It was also submitted that “Bold” was a common word in the English language. Later, the counsel for the defendant submitted that the defendant was also not using the tagline “Be The Fizz! For The Bold!” as a trade mark; thus, the defendant was willing to withdraw its application. He further stated that the Plaintiffs were incorrect in comparing PepsiCo’s “For The Bold” registered trade mark with Parle’s latter part of its mark “Be The Fizz! For The Bold!”. The same was alleged to be contrary to Section 17 of the Act, which does not permit the dissection of the mark into its individual parts unless the individual parts were themselves registered trademarks.
Moreover, the Defendants also stated that their “B Fizz” beverage was very different from the plaintiffs’ tortilla chips, further mitigating any likelihood of confusion. The plaintiff further filed a rejoinder and denied all the allegations alleged by the Defendants in its Written Statement. The Plaintiffs also contended the “triple identity test”, which is used to determine whether infringement did or did not exist, and the same stood satisfied in the present case, as Parle adopted the entirety of the plaintiff’s registered trade mark. The goods in respect of which the taglines were used would cater to the same consumer segment as these goods were allied and cognate.
The Defendants then filed their surrejoinder, denying the allegations made by the Plaintiffs in their rejoinder. After hearing both sides, the Court analysed that Section 124 of the Act was a self-contained provision and was not trammelled by any provisions of any other Act. Section 124 of the Act does not specifically envisage the grant of leave by the Court before rectification proceedings can be filed. However, it does envisage a specific protocol being followed prior to the filing of such a petition/application.
Where the challenge was by the defendant to the plaintiff’s mark, this protocol sequentially involves (i) a plea by the defendant that the plaintiff’s trade mark was invalid, (ii) satisfaction by the Court that the challenge was prima facie tenable, (iii) framing of an issue in that regard by the Court, (iv) adjournment of the proceedings by three months in order to enable the defendant to file a rectification petition challenging the plaintiff’s mark and (v) filing of such a rectification petition by the defendant within the time period.
The Court further explained that “Prima facie tenability”, within the meaning of Section 124 of the Act, implies only a prima facie view that the challenge to the validity of the mark of the opposite party, as raised in the plaint or in the written statement, was a challenge worth consideration. It cannot amount, in any manner of speaking, to an expression of opinion, even tentative or perfunctory, regarding the merits of the said challenge. In view of the above, the Court held that the defendant was able to make out a case of prima facie tenable challenge to the validity of the plaintiff’s subject tagline and formed the issue “Whether the registration of the tagline “For The Bold” as a trade mark in favour of PepsiCo is valid?”
In view of the above, the Court analysed that C.O. (COMM. IPD-TM) 5/2021 already filed by the defendant for rectification proceeding should be rejected as premature on that date. The Court should grant three months to the defendant to enable it to refile the same petition. However, considering the peculiar facts of this case, the Court treated the above-mentioned suit to have been filed under Section 124(1)(ii). Further, as per Section 124(5) of the Act, the Court explained that what was stayed was trial in the suit and not the suit per see.
Thus, the power of the Court to adjudicate on an application seeking interlocutory relief stands preserved, even if a rectification petition was filed and trial in the suit was stayed. The Court also stated that even if an issue were formed on the validity of the plaintiff’s mark, the rights of the registrant, i.e., the plaintiff, would continue to flow as per Section 31(1) of the Act as long as was not held in the rectification proceedings that the plaintiff’s mark was invalid. Further, the defendant’s contention that the plaintiffs did not use the subject tagline as a trademark was outrightly rejected on the ground that once a mark is registered, the Court only analyses whether the ingredients laid down under Section 29 of the Act were met.
The Court further accepted that the goods in respect of the subject tagline and the goods in respect the defendant’s “Be The Fizz! For The Bold!” mark were allied or cognate as consumption of items such as chips along with alcoholic beverages was known to be a common practice. Further, it was held that the defendant used the tagline “For The Bold” both as part of the label on its “B Fizz” bottle as well as in its advertisement campaign on its social media webpages. Both constituted “use” within the meaning of Section 29(6) of the Act, as the two taglines were not different and would result in confusion in the mind of the average consumer. Thus, infringement ought to have been committed.
However, it was also held that the subject tagline is very hard to notice on the defendant’s product packaging, and only a customer who was particularly searching for the subject tagline would be able to notice it as the label reflects, prominently, the bold capital letter “B”, with “Fizz” prominently showing below it. However, with regards to the defendant’s advertisement campaign, it was held that the same showcased the subject tagline as the most prominent feature. Thus, the manner in which the defendant used the subject tagline “For The Bold” on its packaging was non-infringing.
In contrast, the manner of use of the subject tagline on its social media pages for advertisement was considered to be infringing in nature. In view of the above, the Court also held that no prima facie case of passing off could be made out for the use of the defendant’s tagline “Be the Fizz! For The Bold!” on its packaging. The Court also directed the defendant to place on record a C.A. certificate verifying the sales of its “B Fizz” beverage, using the label which contains the subject tagline from the time the use of the said slogan had commenced and for the sales of every two months from the date of this decision. Thus, the application of the plaintiffs seeking an injunction against the defendant’s use of the subject tagline on its packaging was rejected. However, using the subject tagline on the defendant’s social media pages was directed to be removed and ceased.
Authored by: Manisha Singh and Garima Chopra