Last month, the High Court of Delhi decided a trademark dispute between Anchor Health and Beauty Care Pvt Ltd and Proctor and Gamble Manufacturing Co Ltd. The plaintiff (Anchor Health) had a registered trademark ‘ALLROUND’ and they stated that the defendant’s use of the mark “ALL-AROUND PROTECTION’ vis-a-vis their toothpaste brand ORAL-B constituted an infringement of the plaintiff’s trademark.This case involved three major issues, first, whether the plaintiff’s mark was descriptive, secondly, whether it had fallen into disuse and thirdly, in any event, whether the defendant’s use of the mark “ALL-AROUND PROTECTION’ constituted an infringement of the plaintiff’s.
On the first issue, it was argued by the defendant that the plaintiff’s mark was descriptive/generic and therefore, did not satisfy the basic function of trademarks, namely, distinguishing the goods of one from those of the other. The defendant also argued that they were using “ALL-AROUND PROTECTION” to indicate the kind and quality of their goods and hence, this use did not constitute an infringement of trademark (S. 30(2) r/w S. 35, Trademark Act).
The Court decided the first part of this issue based on the legal principle of ‘approbate and reprobate’. Approbate and Reprobate means to approve and to disapprove. This principle is based on the doctrine of election which states that “a person cannot say at one time that a transaction is valid and thereby obtain some advantage, to which he could only be entitled on the footing that it is valid, and then turn round and say it is void for the purpose of securing some other advantage.” (Verschures Creameries, Ltd. v. Hull and Netherlands Steamship Company, Ltd. (1921) 2 K.B. 6D8) In the instant case, the defendant had applied for registration of the mark “ALLROUNDER” and obtained registration for the mark “ALL-AROUND PROTECTION” in USA. Therefore, the Court, after citing cases on this point such as Rajneesh Kumar Singhal v State and Automatic Electric v. R.K. Dhawan, held that it was not permissible for the defendant to approbate and reprobate. They, therefore held that as the defendant themselves had applied for registration for trademark protection of “ALLROUNDER” and “ALL-AROUND PROTECTION”, they cannot claim that the plaintiff’s mark “ALLROUND” did not deserve trademark protection.
Additionally, the Court held that the defendant’s mark was standalone and was not indicative of the quality of goods. The Court noted that the qualities of the defendant’s product was described separately on its packaging. Therefore, it held that the defendant could not claim non-infringement on the grounds that “ALL-AROUND PROTECTION” was describing the qualities of the product.
The second issue was whether the plaintiff’s mark had fallen into disuse as it has not used the registered mark “ALLROUND” and has instead been using the mark “ALLROUND PROTECTION”. In cases with analogous facts such as Ruston v. Zamindara Engineering Co and Laxmikant Patel v. Chetanbhai Shah, the Courts had held that adding a suffix or a prefix to the registered trademark does not imply that the registered mark had fallen into disuse, especially if the distinctive part of the mark remained the registered mark. Thus, applying these cases, the Court held that there was no merit in the submission of the defendants in the instant case.
On the third issue of whether the defendant’s mark infringed upon the plaintiff’s mark, the Court restated the test for infringement, The test is that in order to determine whether one mark is deceptively similar to another, it is necessary that the broad and essential features of the two marks are considered to determine whether there is an overall similarity between the two marks. The Court has to judge the overall impression made by the marks in the minds of the general public and not merely consider the dissimilarities between the marks. Applying this test, the Court held that the defendant’s marks “ALLROUNDER” and “ALL-AROUND PROTECTION” infringed upon the plaintiff’s mark “ALLROUND”. The Court stated that the essential feature of both the plaintiff’s and the defendant’s marks was “ALLROUND”. Therefore, the broad and essential features of the marks was identical. Moreover, the Court stated that the many similarities between the two marks were likely to deceive and confuse a customer. Therefore, the Court held that the plaintiff had discharged their burden of proving a prima facie case of infringement of their trademark. Moreover, the Court held that the conditions of irreparable injury and balance of convenience were also in favour of the plaintiff as the defendant had just started marketing their toothpaste with the impugned trademarks and was therefore, unlikely to suffer an irreparable loss in contradistinction to the plaintiff who had been marketing their toothpaste with their trademark for years now. Therefore, the Court granted the interim injunction in favour of the plaintiff restraining the defendants from using the impugned trademarks or any trademark deceptively similar to the plaintiff’s mark till the disposal of the suit.
It is seen that in this case, the Court has not restricted itself to determining whether the three requirements for a temporary injunction has been satisfied and has gone beyond to consider issues of descriptiveness v. distinctiveness of trademarks and disuse of trademarks. However, on the issue of descriptiveness of the plaintiff’s mark, the facts of this case did not require the Court to analyse the test of descriptiveness as the principle of approbate and reprobate squarely applied to it. However, presuming that the Court had to undergo such an analysis in the instant case, it can be analysed whether the plaintiff’s mark in the instant case was descriptive. The tests of descriptiveness was considered a few years back by the Delhi HC in Carlsberg v. Radico Khaitan, (Mathews’ post on this case is available here). In that case, in the context of determining numeral trademarks, the Court stated a three-fold test of descriptiveness, first, whether the said mark indicates the quality, functionality, property or content of the product, secondly, whether the said mark is prominently placed such as to appear as a trademark and thirdly, whether the product contains any other mark intended to appear as the trademark. Applying the second tests to the instant case, it is clear that the plaintiff has prominently placed “ALLROUND PROTECTION” such as to appear as a trademark. However, it cannot be stated with certainty that the product does not contain any other mark intended to appear as a trademark. A question that arises is whether “ANCHOR” could be considered as an intended trademark by the plaintiff. Moreover, under the first test, while it can be argued that the quality and content of the toothpaste are described elsewhere in the packaging, it is possibly open to interpretation whether “ALLROUND PROTECTION” describes the functionality or property of the plaintiff’s toothpaste. Therefore, on these factual matters (as always) lie the balance of descriptiveness in this particular hypothetical.