DECISION I: Losorb vs Low Absorb
The first of these cases was a refusal to grant an injunction on the use of “Low Absorb” as passing off or infringing the registered trademarks “Losorb” or “Lo-Sorb” in a case between two FMCG giants Marico and Agrotech Foods. In a 50-page decision, which you can access here, the court discusses at length about descriptive marks, and acquired distinctiveness. (Image from here).
SpicyIP guest poster Suchita Saigal had referred to the Single Judge Bench’s decision in this case in passing in her post on the Manjal TM issue. The original order held no case for infringement had been made out. This Division Bench order comes on an appeal against the original decision.
Marico is the registered trademark owner of Losorb and Lo-sorb since 2001 in connection with edible oil. The oil sold also used the trademarks “Sweekar” and “Saffola” along with “LOSORB” and LO-SORB”. Agritech Foods sells its edible oil under the trademark “Sundrop”, whose packaging also contains the expression “WITH LOW ABSORB TECHNOLOGY”. This formed the cause of action for a passing off and infringement case here.
1. Descriptive marks
Here, the court drew parallels with another Division Bench decision of the Delhi HC, Cadila Healthcare v. Gujarat Co-operative Milk Marketing Federation. There, “Sugar Free” was not accepted as a coined expression, and instead was held to be descriptive and generic. Here too, “LOW ABSORB” only described the characteristic of the edible oil and was ordinarily/ normally incapable of being distinctive.
In an acerbic comment on the tendency of claiming trademark monopoly over descriptive words, the court here said:
“It is high time that those persons who are first of the blocks in using a trade mark which is … purely descriptive [of the] product ought to be discouraged from appropriating [such] a descriptive expression … for claiming the same to be an exclusive trademark and which descriptive word mark bears an indication to the products kind, quality, use or characteristic etc.”
The court also took up the matter of minor word-play with descriptive expressions, as Marico appears to have done with “Losorb” and the phrase “Low Absorb”. Claiming partly-tweaked descriptive words as being coined words, the court said, would lead to an absurd situation, because a descriptive word AS-IS would in fact be deceptively similar to the tweaked word which has been registered. “Such a position … must be struck down with a heavy hand.”
Sundrop/Agritech’s distinctive packaging made it more difficult for Marico to make out its case, with the court noting that there could be no possibility of confusion, because there were more than enough differentiating features on the packaging to avoid any issue of passing off.
2. Acquired distinctiveness of a descriptive mark
This defence also fell through on Marico’s end.
“Courts should ordinarily lean against holding distinctiveness of a descriptive trademark unless the user of such trademark is over such a long period of time of many many years that even a descriptive word mark is unmistakably and only and only relatable to one and only source i.e. the same has acquired a secondary meaning.”
To make things clearer, the court accepted that an undisturbed use of 60 years, as in the 2007 Supreme Court case involving Glucon-D, would qualify as acquired distinctiveness. Marico’s use was only for about seven years, which wasn’t enough to make the cut.
The court also held that a court should consider user evidence to determine distinctiveness only upto the date of registration; and not anything after registration — at least while passing interim orders. In cancellation proceedings, though, post-registration use could be considered as well to assess distinctiveness.
3. Descriptive TMs, if registered, are prima facie invalid
According to the court, both the trademarks “LOSORB” and “LO-SORB” were a minor variation on the descriptive phrase “LOW ABSORB”. The phrase itself was not an unusual juxtaposition of English words. The fact that Marico had filed for registering the marks as “proposed to be used” meant that the Registrar of TMs had no evidence of distinctiveness. Being prima facie invalid registrations, no infringement action could be raised.
In this regard, the court held that a trademark that otherwise came under Section 9(1) (a) to (c) of the Trade Marks Act could not be registered on a “proposed to be used” basis. Such marks had to submit evidence of user as on the application date, or at least, by the date of registration.
Just about a week after the Losorb/Low Absorb decision, the DB adjudicated on a similar matter in the case involving another pair of FMCG majors, Stokely van Camp (SVC) and Heinz India. The registered mark was the phrase “Rehydrates, Replenishes, Recharges” used by SVC on its isotonic drink brand Gatorade. Heinz India allegedly launched its own “Glucon D Isotonik” using the expression “Rehydrates Fluids; Replenishes Vital Salts; and Recharge Glucose”. Image from here.
Relying heavily upon, and quoting extensively from, its decision in the Marico case, the court ruled against the grant of an injunction. It also made similar observations, i.e., that the registered expression was clearly descriptive, and such marks should be discouraged. This mark, too, having been registered on a “proposed to be used” basis was held to be wrongly registered. Further, trademark registration was only prima facie proof of validity and could be rebutted. The court ought not to consider post-registration use to assess distinctiveness of a mark.
Minor afterthought — These two decisions make the position on descriptive trademarks abundantly clear, but it remains to be seen if trademark owners are deterred from registering or attempting to register such marks.