In Anchor Health and Beauty Care Private Ltd vs. Procter & Gamble Manufacturing (Tianjin) Co. Ltd & Ors. the Delhi High Court decided a case involving the expression “ ALLROUND” for toothpaste.
The Plaintiff is the registered proprietor of the expression/mark “ALLROUND”. The Plaintiff asserted that by virtue of continuous and extensive use of the term “Anchor ALL ROUND PROTECTION”, the term “ALLROUND” has come to be associated exclusively with the Plaintiff. The Defendant launched a tooth paste bearing the mark ORAL-B “ALL - AROUND PROTECTION”. The Plaintiff filed a suit to restrain the Defendant from using “ALL AROUND PROTECTION” / “ALLROUNDER”.
The Plaintiff submitted that the adoption by the Defendant of the mark “ALL - AROUND PROTECTION” slavishly copied its trademarks “ALLROUND” / “ALLROUND PROTECTION” and was calculated to cash in on the goodwill and reputation existing in its marks “ALLROUND” / “ALL ROUND PROTECTION”.
The Defendant contended that (i) the Plaintiff’s registered trade mark “ALLROUND” was a descriptive expression, common to the trade, devoid of any distinctive character and hence incapable of being registered as a trademark (ii) the Plaintiff had never used “ALLROUND” on a stand -alone basis but the expression “ALL ROUND PROTECTION” (iii) that the prominent feature of the Plaintiff’s mark was always “ANCHOR”. On the other hand the Defendant’s had always used the mark “ALLROUNDER” as a secondary mark in conjunction with its primary mark “ORAL-B” and as a result of which the Plaintiff was not entitled to claim any exclusive rights or reliefs for the stand-alone mark “ALLROUND” (iv) a descriptive mark could be protected only if it had acquired a secondary meaning but which the Plaintiff had otherwise failed to establish and (v) the marks “ALLROUND” / “ALL ROUND PROTECTION” were not confusingly and deceptively similar with the Plaintiff’s registered trademark “ALLROUND” and consequently there was no infringement.
The Plaintiff argued that (i) a mark could be said to be descriptive if it described the intended purpose, function or use of the product but which neither “ALLROUND” / “ALL ROUND PROTECTION” were. The mere fact that a word was defined by the dictionary did not necessarily mean that it was descriptive. (ii) the Defendant itself had applied for and obtained registration for the mark “ALL AROUND PROTECTION” in the United States and applied for registration of the mark “ALLROUNDER” in India.
After considering the rival contentions of the parties, the Court came to the following conclusions:
1. after themselves obtaining and seeking registration of the marks “ALL AROUND PROTECTION” and “ALLROUNDER” it was not open to the Defendant to content that the Plaintiff’s registered trademark “ ALLROUND” was descriptive, generic, devoid of any distinctive character and incapable of being registered. It was not permissible for the Defendant to “approbate and reprobate” to the detriment of an opponent.
2. insofar as the Defendant’s argument that it was using the impugned mark to describe the quality of the product and not as a trademark on a perusal of the impugned trademark and the packaging, the Defendant was using the impugned mark viz. “ALL AROUND PROTECTION” as a stand-alone mark and not to describe any quality of the product. The qualities of the product were described separately on the packaging.
3. on the issue that the Plaintiff had not used the mark “ ALLROUND” but rather “ALL ROUND PROTECTION” and on account of which the Plaintiff was not entitled to the relief of injunction was “only playing with words” and without any merits.
4. on the issue whether the Defendant’s use of the marks “ALL AROUND PROTECTION” and “ALLROUNDER” amounted to infringement of the Plaintiff’s registered trade mark “ ALLROUND”, the question to be decided was whether each could be said to be deceptively similar to the Plaintiff’s registered trade mark “ ALLROUND”. The broad and essential feature of the Plaintiff’s registered trademark “ALLROUND” was also the essential feature of the impugned mark. This could cause confusion and deception in the minds of consumers.
5. having due regard to the overall facts and circumstances of the case, the balance of convenience was in favor of the Plaintiff and irreparable injury was likely to be caused to the Plaintiff in the event the Defendant was not restrained by an interim injunction from using the impugned marks “ALL AROUND PROTECTION”/ “ALLROUNDER” or any other mark similar to the Plaintiff’s registered trademark “ALLROUND”.
An appeal by the Defendant challenging the order of the single judge was dismissed by a Division Bench of the Delhi High Court in the very same month.
Conclusion
In passing the order, apart from considering the similarity of the marks and the similarity of the goods, the Court took into consideration the facts that (i) despite contending that the Plaintiff’s mark “ALLROUND” was descriptive, common to the trade, devoid of any distinctive character and consequently incapable of being registered, the Defendant had itself obtained registration for “ALL AROUND PROTECTION” in the United States and had sought registration of the mark “ALLROUNDER” in India and (ii) the use by the Defendant of the essential feature of the Plaintiff’s registered trademark was certain to cause irreparable, loss harm and injury to the Plaintiff on account of the inevitable confusion/deception likely to be caused in the minds of the public/customers.
