At the outset, the Madras HC judgment in Wipro Enterprises Ltd v. Heinz India Pvt. Ltd deals with certain settled concepts. It, however, gives practical guidance vis-à-vis the expectation of Court on the quality of evidence which needs to be adduced at the interim stage.
The plaintiff, in the year 2012, conceived and adopted the mark “BOLTS” to sell the new segment of glucose based chewy tablets. In the year 2014, the first defendant had launched a similar product bearing the mark “VOLT” along with their brand name GLUCON-D. As the plaintiff is the prior user of the mark “BOLTS”, citing phonetic and visual similarity between “VOLT” and “BOLTS”, the plaintiff sought interim injunction against “VOLT”. The defendant inter alia argued that “the word BOLTS is a common and generic word and the plaintiff cannot have any exclusive right over the said word.” The issue, therefore, was whether the plaintiff had a strong case for obtaining interim injunction against the defendant.
1. No exclusive right over common, generic word
The Court noted that “BOLTS” has been in use since 2012. It was held that “when a sub brand of the plaintiff is distinctive in nature and that was used along with the house name of the plaintiff, unless the plaintiff establishes that the word BOLTS has acquired secondary meaning by continuous, long and uninterrupted usage, they are not entitled for interim injunction at this stage.”
The Court reiterated the principle that a common or say, a generic word attains legal protection only when it acquires a secondary meaning. It shall be enquired at the ‘time of trial’ and not during the interim injunction proceedings.
2. Visual similarities
The Court, on comparing the packages of “VOLT” and “BOLTS”, dismissed the argument of visual similarities. The Court, therefore, held as follows: “it could be seen that the trade dress or rather the whole thing must be seen in its entirety and not in isolation. Therefore, I am not inclined to accept the submission made by the learned senior counsel appearing for the plaintiff that there are lot of similarities between their products. Further, I am of the opinion, the issue as to whether there is any similarity between the two labels has to be gone into only during the course of trial.”
It may be, however, pertinent to take a look at the ‘aspects’ submitted before the Court (which can be taken as an indicative list for practical purposes): a) the font and font size of the mark; b) background colour; c) the very flavor of the tablet; d) graphics; e) categorization of the products (as mentioned by the respective companies); f) colour combination and g) tag line.
3. Protection of tag line
While the plaintiff has been using the tag line “INSTANT ENERGY, ANYTIME, ANYWHERE”, the first defendant has been using the tag line “ENERGY OF GLUCON-D … ANYWHERE, ANYTIME”. In this context, it is pertinent to take a look at the observations of the Court: “In my considered opinion, as contended by the learned senior counsel appearing for the defendants, the term “ANYTIME, ANYWHERE” is not used by the plaintiff in the trademark sense to denote original / source of the product, rather it is used in a descriptive sense. Further, no material was produced before this Court to show that the plaintiff has advertised their products in the tag line “ANYTIME, ANYWHERE”. The term “ANYTIME, ANYWHERE” was found only on the jar containing the products of the plaintiff and not on the product i.e., on the cylindrical plastic tube, which contains the chewing tablets. In this regard, learned senior counsel has relied upon the judgment reported in 2014 (59) PTC 421 (Del) (DB) – Procter & Gamble Manufacuring (Tianjin) Co. Ltd. & Ors v. Anchor Health & Beauty Care Pvt. Ltd., in support of his contention that the tag line is also entitled for protection. The factual aspect of that case would show that in that case, the tag line “ALL ROUND” was used by the respondent / plaintiff for a long time as a slogan or a tag line. But, in the instant case, as observed earlier, no document was produced before this Court that the term “ANYTIME, ANYWHERE” was advertised extensively by the plaintiff and the said term was associated only with the plaintiff’s products. On the other hand, what is 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-D in water. Hence, I am not inclined to accept the submission of the learned senior counsel appearing for the plaintiff that the expression “INSTANT ENERGY. ANYTIME, ANYWHERE.” found on the label of the plaintiff has to be protected by way of injunction.”