Yesterday, I had published a post about the Single Judge’s decision of 9 May, 2014 with respect to the trademark dispute between Anchor and Proctor & Gamble. One of the major issues involved therein was whether the plaintiff’s mark “ALLROUND PROTECTION” was descriptive or not. The Single Judge decided this issue and rightly so, using the principle of approbate and reprobate. However, he did not come to a finding on the descriptiveness of the plaintiff’s mark. I had discussed that question on a hypothetical level yesterday and stated the possible issues that could have arisen, had the Court engaged on the descriptiveness issue. However, there is no further need to view this issue hypothetically, as it has been brought to our attention that the Division Bench of the Delhi High Court heard the appeal of P&G and has come out with a decision four days ago, on the 30th of May.
The Division Bench was hearing the appeal filed by P&G at the admission stage itself with the consent of both the parties.(Although the parties are appellant and respondent now, I will be referring to them as plaintiff(Anchor) and defendant(P&G) for convenience and uniformity between the two posts). The Divison Bench, unlike the Single Judge went straight ahead and addressed the issue of whether the plaintiff’s mark ‘ALLROUND PROTECTION’ was descriptive under the two prongs of first, whether the mark described the quality, functionality and property of goods in general or specifically and secondly, whether ‘ANCHOR’ and not ‘ALLROUND PROTECTION’ was the primary trademark of the plaintiff.
On the first issue, the defendant had argued that the expression “ALLROUND PROTECTION” was descriptive of toothpaste in general. The Court held that the test of descriptiveness, especially in the context of long-term usage, was not whether it was descriptive the day after such long-term usage in relation to a particular good/ services but whether it was descriptive the day before such use. The Court held that, applying this test, it was prima facie satisfied that “ALLROUND PROTECTION” was not generally descriptive of toothpaste before the day of first use of the expression in relation to toothpaste and the reason it was descriptive of toothpaste today, was only because the expression has been in usage for a comparatively long time by the plaintiff as its slogan/tagline.
The defendant also claimed that the plaintiff’s mark described the quality, functionality and property of their toothpaste specifically and was therefore, descriptive. In this context , the Court clarified between general descriptiveness and specific descriptiveness. It had already held that the plaintiff’s mark was not generally descriptive of toothpaste. On specific descriptiveness, the Court held that S. 9(1)(b), Trademarks Act which states that marks which “designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services” shall not be registered cannot be read to include “to include words/marks which designate the quality, intended purpose or values, not generic to the goods and services but unique to the goods of one and which may not be present in the same goods and services provided by another.” This essentially means that words/marks, even though descriptive of the quality, intended purposes or values of goods, will be considered distinctive and not descriptive, so long as such description is specific and unique to goods of just one trader. The rationale for the same is that such a word/mark helps the consumer differentiate between the goods and services provided by one from those provided by another, thereby satisfying the primary purpose of trademarks. Hence, it appears that the bar under S.9(1)(b),Trademarks Act is limited to general descriptiveness and not specific descriptiveness. In the instant case, it has been already noted that the plaintiff’s mark is not generally descriptive of toothpaste. Moreover, the Court noted that while till date, other toothpaste brands had marketed their goods as providing whiter teeth or fresher breath or healthier gums, the expression “ALLROUND PROTECTION” which encompasses all these three features were unique to the plaintiff. Thus, while “ALLROUND PROTECTION” does describe a peculiar quality of the toothpaste, it cannot be said to be descriptive as it is unique to the plaintiff’s toothpaste.
Therefore, the Court has answered one of the questions posited by me yesterday by ruling that “ALLROUND PROTECTION” cannot be stated to be descriptive because it possibly describes the quality or property or functionality of the toothpaste, as such description is specific to the product.
It is interesting to note that the Division Bench considered another important factor to come to the conclusion that the plaintiff’s mark was not descriptive. This was the fact that neither the Registrar in India nor the Registrar in the United States had objected on the grounds of descriptiveness when the plaintiff and the defendant respectively, had gotten their trademarks registered. In India although the Registrar had objected to the defendant’s trademark, it was in the context of similarity to the plaintiff’s trademark and not on account of descriptiveness. This further emphasizes the importance of registration in determining the validity of trademarks.
Interestingly, the defendant’s answer to the ‘approbate and reprobate’ problem pointed out by the Single Judge, was to argue at the appellate stage that first, the mark was mistakenly applied for and obtained and secondly, that in any event, it was willing to surrender the mark. The Court did not find merit in these arguments as they were only made during the hearing and were absent in both the written statement as well as in the pleadings in the appeal. The Court held that, “The appellants / defendants, when so caught on the wrong foot, cannot be permitted to get away by, during the course of hearing call their action a mistake.” Thus, on the approbate and reprobate ground as well, the Court held that the plaintiff’s mark was not descriptive.
The second issue to be addressed is the defendant’s argument that only ‘ANCHOR’ and not ‘ALLROUND PROTECTION’ was the primary trademark of the plaintiff. The Division Bench stated that such an argument could not be accepted as it made the whole process of advertising redundant. Essentially, the Court was stating that if the mere name of the brand was sufficient to grab the consumer’s attention and to enable them to distinguish between products, it was wholly unnecessary that crores of rupees were being spent every year in the advertising process, which includes developing slogans/taglines such as “ALLROUND PROTECTION’. In the instant case, the Court held that as “ALLROUND PROTECTION” was a slogan/tagline used by the plaintiff in its advertisements, and as it was identified with the plaintiff, it was a trademark under S.2(m) r/w S. 2(zb), Trademarks Act. Such slogan/tagline also serves the purpose of trademark as it enables consumers to identify the goods and services provided by one from those provided by another. Moreover, the Court stated that there was no bar in law against the use of two trademarks in relation to the same product. Therefore, the Court ruled that “ANCHOR” and “ALLROUND PROTECTION” are both trademarks that can co-exist in relation to the same product.
The question I had raised yesterday was whether the fact that “ANCHOR” was a trademark would result in a situation where it could be observed that the intended trademark was “ANCHOR” and not “ALLROUND PROTECTION”. This was in context of the third test of descriptiveness as laid down in Carlsberg v. Radico Khaitan which questions whether the product contains any other mark intended to appear as the trademark. The Division Bench has answered this question by ruling that the plaintiff intended both “ANCHOR” and “ALLROUND PROTECTION” to be trademarks that serve the purpose of grabbing the attention of the consumer and being distinctive of the plaintiff’s toothpaste as the brand name and slogan/tagline respectively.
Thus, in my opinion, the Division Bench has given a sound and well-reasoned decision on the issue of test of descriptiveness of trademarks, and has sufficiently answered the queries that was raised yesterday.
