Beruflich Dokumente
Kultur Dokumente
MIPR
2010 (3) 273
Table of Contents
Table of Contents....................................................................................................... 1
Facts of the case........................................................................................................2
Issue:..........................................................................................................................2
Propositions laid down by appellants:.........................................................................3
Contention of the Appellants:.....................................................................................4
Court’s interpretation:...............................................................................................6
Findings of the Court:.................................................................................................9
Conclusion................................................................................................................ 10
1
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
Plaintiff/ Appellant
Stokely Van Camp, Inc. and Anr., manufacturers of sports drink named
“Gatorade”. The trademark "Rehydrates, Replenishes, Recharges" has been
registered for the purpose of advertisement and promotion of the product.
Defendant/ Respondent
Heinz India Private Ltd., manufacturers of "Glucon D Isotonik" launched in
February 2010. The respondent used the expression "Rehydrates Fluids;
Replenishes Vital Salts; and Recharge Glucose". This expression is said to be
deceptively similar to the appellants’ mark/expression.
Issue:
2
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
(i) The courts generally are reticent in upholding the plea of invalidity of
registration during the stage of hearing of an injunction application.
(ii) The courts look with this favour the use by the defendant of a registered
trademark of the plaintiff.
(iii) With respect to the slogans and registered trademarks when the
defendant can use alternatives, the defendant must do so otherwise its
action will lack commercial honesty. The actions of a defendant would be
dishonest unless it uses the descriptive words in an insignificant way as part
of a sentence only.
(iv) The counsel for the appellants, in addition to sections referred to in the
case of Marico1 placed strong reliance upon Sections 29(7) and (8) as also
Section 2(2) (c) (i) of the said Act.
1
Marico Limited -v- Agro Tech Foods Limited, decided on 01.11.2010
3
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
When rights are claimed over a word mark as a trademark and which word
mark is in fact a mere tweak of a descriptive word indicative of the kind,
quality, intended purpose or other characteristics of the goods, it is not open
to urge that although the respondent is using the descriptive word mark in
fact only as a part of sentence as a description alongwith another
independent trademark, yet the use of descriptive words are to be injuncted
against.
Court herein dismissed appellant’s contention because though the words are
used by respondent, they are only intended descriptively and form part of a
larger whole; thus while describing one’s product with using common English
words, registered terms cannot imply to monopolise its usage in a like
purpose. If such line of argument is permitted, in the long run it will be the
norm of the day and flagrant violation of trademarks will take place on the
pretext of serving only descriptive purpose of a product.
4
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
mischief to play by way of Section 30(2)(a) of the Act, the broader purpose of
protection is defeated.
5
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
Court’s interpretation:
6
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
and permits a party to apply for cancellation or rectification, the court can
pass any interlocutory order as it thinks fit under Sub-Section 5 of Sec 124.
7
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
8
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
(ii) The mark in question of the appellants was wrongly registered because a
mark which is a deceptive mark could have only have been registered after
extensive user to make such mark distinctive, however, the mark was
registered on a proposed to be used basis.
(iii) The learned Single Judge for the purpose of deciding the interlocutory
application was justified in looking into the prima facie validity of registration
because the registration is only a prima facie proof of validity and is a
rebuttable presumption, inasmuch as, it is not that there have been
cancellation proceedings initiated with respect to the registered trademark
and which cancellation proceedings have been finally dismissed.
(iv) This Court would not look into the evidence of user post registration of
the trademark so as to claim distinctiveness on the basis of such user. We
find substance in the stand of the respondent that there is almost no
evidence as on record as at this stage showing user of the mark so as to
make the same distinctive as on the date of registration.
9
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
(v) Even assuming that there was finality of registration of the trademark,
the respondent has taken valid defences under Sections 30 (2) (a) and 35 of
the said Act inasmuch as the subject mark only describes the product
namely the sports drink.
Conclusion
(i) A mark which is sought to be used as a trade mark, if, is one falling under
Section 9(1)(a) to (c), then the same ordinarily ought not to be afforded
protection as a trade mark.
(ii) Before the marks which fall under Section 9(1) (a) to (c) are given
protection as a trade mark, the distinctiveness must of an undisturbed user
of a very large/considerable number of years, with the emphasis being on
discouragement on appropriation of such marks which fall under Section 9(1)
(a) to (c).
(iii) A civil court in a suit filed for infringement of a registered trade mark is
entitled (if there is no earlier judgment which has achieved finality in
cancellation proceedings) to consider the validity of registration for the
purpose of passing an interlocutory order including of grant or refusal of an
interim injunction- once the objection as to invalidity of registration is taken
up in the pleading/written statement.
(iv) A trademark which falls under Section 9(1) (a) to (c) cannot be registered
on proposed to be used basis. Evidence on distinctiveness with respect to
trade marks falling under Section 9(1) (a) to (c) should be the evidence of
user evidencing distinctiveness as on the date of application for registration
or at the best of evidence up to the date of registration.
10
Case Analysis: Stokely Van Camp, Inc. and Anr. Vs. Heinz India Private Ltd. MIPR
2010 (3) 273
(vi) Even if there is finality to registration of a trade mark even then the
defendant in infringement action can take statutory defences under Sections
30 to 35 to defeat the infringement action.
11