This case involves a trademark infringement suit between two global FMCG giants, PepsiCo Inc. and Parle Agro Private Limited, relating to the tagline "For The Bold." The case primarily focuses on the alleged infringement of PepsiCo's registered trademark by Parle Agro's use of the phrase in relation to its beverage product "B Fizz". PepsiCo seeks a permanent injunction restraining Parle Agro from using the allegedly infringing tagline, claiming exclusive rights over the registered trademark "For The Bold" under Class 30. Parle, in turn, challenges the validity of PepsiCo's trademark registration, contending that the tagline is descriptive and lacks distinctiveness.

Factual Background:
PepsiCo is the registered proprietor of the trademark "For The Bold" under Class 30, which includes snack foods like tortilla chips. PepsiCo introduced this tagline globally in 2013 with its DORITOS range and began using it in India in 2015. The tagline is heavily associated with PepsiCo's DORITOS brand, emphasizing bold flavors and adventurous experiences. PepsiCo claims substantial sales and advertisement expenditure for DORITOS in India, with significant market recognition and goodwill attached to the "For The Bold" mark.

In October 2020, Parle Agro launched its product "B Fizz," a malt-flavored fruit juice-based beverage. PepsiCo discovered that Parle's marketing prominently used the tagline "Be The Fizz! For The Bold!" on its products and advertising campaigns. PepsiCo alleges that the tagline is deceptively similar to its registered mark and amounts to infringement under Section 29 of the Trade Marks Act, 1999.

Procedural Background:
PepsiCo filed CS (COMM) 268/2021 before the Delhi High Court, seeking a permanent injunction against Parle Agro and an interlocutory injunction through IA 7170/2021 under Order XXXIX Rules 1 and 2 of the CPC. In response, Parle Agro filed IA 9591/2021 under Section 124(1)(a)(ii) of the Trade Marks Act, seeking leave to initiate rectification proceedings challenging the validity of PepsiCo's trademark registration.

Issues Involved in the Case:
Whether Section 124 requires only prima facie plea of invalidity of registered Trademark or a detailed examination of plea of invalidity of registered Trademark?

Submission of Parties:
PepsiCo argued that its tagline "For The Bold" has acquired distinctiveness and goodwill due to its long and consistent use on DORITOS products. The mark is arbitrary in relation to tortilla chips and deserves the highest protection. It also argued that Parle's use of "For The Bold" in its advertising campaign and product packaging creates a false association with PepsiCo and constitutes trademark infringement and passing off.

Parle Agro contended that "For The Bold" is a descriptive phrase and not inherently distinctive. It argued that PepsiCo does not use "For The Bold" as a primary identifier of its goods, as other slogans such as "Snack Boldly" and "Bold Crunch" have also been used. Parle claimed that PepsiCo's mark falls under Sections 9(1)(a), 9(1)(b), and 9(1)(c) and lacks distinctiveness. Parle further contended that their beverage and PepsiCo's tortilla chips fall in different classes (Class 32 vs. Class 30) and there is no likelihood of confusion.

Discussion on Judgments Cited by Parties:
Parle cited Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727, for the proposition that balance of convenience is critical when deciding interim injunctions, especially when the defendant's product has been in the market for a considerable time. Parle relied on Marico Ltd. v. Agro Tech Foods Ltd., 174 (2010) DLT 279 (DB), to argue that courts can assess the validity of the plaintiff's mark even at the interlocutory stage. Parle also referred to Nestlé India Ltd. v. Mood Hospitality Pvt Ltd., 168 (2010) DLT 663 (DB), to assert that trademarks must be compared as wholes without dissecting them. Stokely Van Camp v. Heinz India Pvt Ltd., 171 (2010) DLT 16 and Stokely Van Camp v. Heinz India Pvt Ltd., MANU/DE/3132/2010, were cited to contend that words like "bold" have descriptive characteristics and are widely used in common parlance. PepsiCo cited Bata India Ltd v. Chawla Boot House, 2019 SCC OnLine Del 8147, to argue that even suggestive marks are entitled to registration and protection under the Trade Marks Act. PepsiCo emphasized Section 31, which provides that registration is prima facie evidence of validity. PepsiCo also invoked the triple identity test from earlier jurisprudence to show that Parle's tagline subsumes PepsiCo's mark, creating a likelihood of confusion.

Reasoning and Analysis of the Judge:
The Court noted that Section 31 grants presumption of validity to registered trademarks, but such presumption is rebuttable. Section 124 requires only prima facie plea of invalidity of registered Trademark and not detailed examination. The Court held that Parle's challenge to the validity of PepsiCo's trademark under Section 9(1)(a) to (c) was prima facie tenable. The Court found that Parle had pleaded that the mark was descriptive, lacked distinctiveness, and had become customary in trade, thus satisfying the threshold of "prima facie tenability" under Section 124(1)(ii).The Judge observed that the tagline "For The Bold" was explained by PepsiCo as describing the bold flavors and adventurous spirit of DORITOS chips, potentially indicating its descriptive nature.The Court also agreed that the difference in trade channels and product classes (beverages vs. snacks) between Parle's and PepsiCo's products raised a genuine question regarding the likelihood of confusion.The Judge held that the Court could not conclusively decide the issue of distinctiveness or descriptiveness without a full trial, but the pleadings were sufficient to allow Parle to file rectification proceedings.The Court rejected PepsiCo's argument that Parle could not proceed with rectification without leave of Court, noting that Parle had already filed rectification proceedings (C.O. (COMM IPD TM) 5/2021) independently.

Final Decision:
The Court allowed IA 9591/2021 filed by Parle under Section 124(1)(a)(ii) and directed that the trial of CS (COMM) 268/2021 be stayed pending the outcome of Parle's rectification petition before the IPD (Intellectual Property Division) of the Delhi High Court. The Court deferred any decision on PepsiCo's interlocutory injunction (IA 7170/2021) under Order XXXIX Rules 1 and 2 CPC, allowing Parle to proceed with its rectification challenge.

Law Settled in This Case:
Section 124 requires only prima facie plea of invalidity of registered Trademark and not detailed examination .This case reiterates that while registration grants prima facie validity under Section 31 of the Trade Marks Act, defendants can raise a prima facie tenable plea under Section 124(1)(a)(ii) to challenge the validity of the mark. It clarifies that descriptive marks or phrases that lack distinctiveness or have become customary in trade may face successful rectification challenges under Section 9(1)(a)-(c) of the Trade Marks Act.The judgment also reinforces that interlocutory injunctions under Order XXXIX require the Court to balance equities, particularly where rectification proceedings are pending.

Case title: PepsiCo Inc. & Anr. vs. Parle Agro Private Limited
Date of order: 18 September 2023
Case No.: CS(COMM) 268/2021
Name of Court: High Court of Delhi at New Delhi
Name of Judge: Hon'ble Mr. Justice C. Hari Shankar

Disclaimer:
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539