The BOLT vs. VOLT Battle

Co-authored by Ms. Zoya Nafis, LexOrbis Associate and Mr. Ayush Puri, first year student of Campus Law Centre, University of Delhi.

bolts_voltsThe present case [1] deals with certain principles regarding the quality and standard of evidence to be adduced at the interim stage. In 2012, the mark “BOLTS” was conceived and adopted to sell certain glucose chewy tablets. The defendant introduced a similar product marketed as “VOLT”.

The senior counsel for the plaintiff contended that “BOLTS” and “VOLT” had phonetic and visual similarity and the defendants adopted an identical colour scheme, BOLT device, get up for its packaging and tagline. An interim injunction against the defendant was sought for the same.

The Hon’ble Madras High Court observed that both the plaintiff and defendant were using their respective trademarks i.e. BOLTS and VOLT along with their house names i.e. GLUCOVITA BOLTS and GLUCON-D VOLT respectively. The plaintiff cannot have any exclusive right over BOLTS as it was a common and generic word especially when both had used a prefix or suffix with their respective words for distinction (2009 (5) LW 369 – Nutrine Confectionery Co. Ltd. v. Icon Household Products).

The Court reiterated the settled legal position that each case has to be decided based on the factual aspect of that case. Also, a word acquires a secondary meaning (and could become an exclusive right) by continuous, long and uninterrupted usage which was not the case here as BOLTS was in usage only since the past 2 years.

The argument of visual similarities, identical colour scheme and get up was dismissed as it was held that the trade dress must be seen in its entirety and not in isolation. It must be viewed as whole. Any such similarity or whether the word has a secondary meaning has to be ascertained only during the course of the trial. Moreover, many similarities submitted by the plaintiff were found to be dissimilar by the Court. Other alleged similarities such as the price in perforated circle and flash of lightening were found to be a common industrial practice and a descriptive device symbolic to energy respectively.

The plaintiff used the tagline “INSTANT ENERGY, ANYTIME, ANYWHERE” whereas same for the defendant was “ENERGY OF GLUCON-D … ANYWHERE, ANYTIME”. The court observed that the term “ANYTIME, ANYWHERE” was not used by the plaintiff in the trademark sense to denote origin/source of the product; rather it was used in a descriptive sense. The term was found only on the jar containing the products of the plaintiff and not on the cylindrical plastic tube, which contained the chewing tablets. There was nothing to show that the plaintiff had undertaken extensive advertising, was using the said term for a long time and was associated only with the plaintiff’s products that could give exclusive rights over the tagline to the plaintiff. Furthermore, the court held that what was conveyed through the tag line “ENERGY OF GLUCON-D ANYWHERE, ANYTIME” is that the consumer can just pop into their mouth the glucose based energy bite and get the same benefit as GLUCON-Ds in water. Hence, the submission of the senior counsel appearing for the plaintiff that the expression “INSTANT ENERGY. ANYTIME, ANYWHERE.” found on the label ought to be protected by way of injunction was not accepted.

Hence the interim application for temporary injunction was rejected by the Hon’ble Court.

[1] Wipro Enterprises Limited vs. Heinz India Pvt. Ltd, [C.S. No. 23 of 2015, Madras High Court]

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