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Be Bold but Never Break the Trademark Mold:Implications of Delhi HC’s Decision in PepsiCo v. Parle Agro

June 10, 2024 Trademark
Trademark Mold

Introduction                            

When Parle Agro (an offshoot of Parle Products, an Indian multinational food and beverage processing industry, headquartered in Mumbai) launched its product “B-Fizz” on 15th October 2020[1], little did it know that is going to disrupt the world of Intellectual Property instead of the beverage industry in India. Roping in mega stars such as Priyanka Chopra Jonas (for its Pan India promotions) and Jr. NTR (for its South India promotions), B-Fizz, a malt-flavored apple juice-based carbonated drink, was to metamorphose the palate experience of the consumers but ended up stirring legal trouble for Parle Agro.

PepsiCo had registered the tagline “For the Bold” as a trademark in 2013 for its Doritos tortilla chips and used it extensively for promotions when it was launched in India in 2015. In November 2020, when PepsiCo got to know that the tagline for B-Fizz was “Be the Fizz! For the Bold!”, it filed for a trademark infringement and unfair advantage suit in the court against Parle Agro. It sought a compensation of Rs. 2 crores[2] for the same.

The decision of the Delhi HC, pronounced on 18th September 2023, penned by Hon’ble Justice C Hari Shankar, in this matter over the tagline “For the Bold” has caused ripples in the field of Intellectual Property Rights. We shall now discuss the case in depth by looking at the arguments of both the parties and the rationale behind the ruling of the court.

Arguments Advanced by the Plaintiff, PepsiCo

PepsiCo highlighted how the copious and widespread use of the tagline which forms the fulcrum of the controversy acquired goodwill and reputation for the company among the consumers over the years. PepsiCo contended in the court, how the tagline “Be the Fizz. For the Bold” incorporated in its entirety the registered trademark “For the Bold”. It also, added how the use of identical mark in the same industry could cause confusion in the minds of the consumers which could prompt them into buying B-Fizz (a newly launched product) with Doritos (an established product with sales worth 183 crores in the last five years) considering they are snacks likely to be consumed together. The plaintiffs argued that the in Parle Agro’s label, “For the Bold” was prominently displayed and emphasis was given to the contested tagline in all the advertising campaigns. As evidence, advertisements featuring on Parle’s Facebook Page on 28th November 2020 and 3rd January 2021 were presented before the court.

Plaintiffs submitted to the court that on 19th September 2020, Parle had applied for the registration of the trademark, “Be the Fizz! For the Bold!” on “proposed to be used” basis. The said application being presently pending, having been opposed by PepsiCo, Parle could not infringe on the trademark registration in the name of PepsiCo. Hence, under Section 29 of the Trade Marks Act, 1999[3], Parle infringed the trademark of PepsiCo.

PepsiCo demanded a decree of permanent injunction, restraining Parle from using its registered trademark tagline “For the Bold”, apart from damages and costs for the irreparable injury caused by the actions of Parle.

Defense Submitted by the Defendant, Parle

Parle contested the very validity of the registered trademark of PepsiCo in the court under Section 9(1) of the Trade Marks Act, 1999[4]. It argued that the tagline “For the Bold” was non-descript and unassuming which means that it was a common English phrase and that PepsiCo used it like a promotional slogan instead of a trademark. Also, it merely described the bold flavor of the Doritos tortilla chips. They said that it lacked distinctive character under Section 9(1)(a) of the Trade Marks Act, 1999[5]. They referred to Supreme Court’s judgement in Lamxikant Patel v. Chetanbhai Shah 2002 SCC 65 to assert that a descriptive mark is ex facie invalid.

Trademark Mold
[Image Sources: Shutterstock]

They also argued that their mark had to be seen in its entirety as per Section 17[6] which was not similar to PepsiCo’s mark. Further, B-Fizz was in the Class 32[7] of the classification of goods while Doritos was in Class 30[8] hence it was unlikely to cause confusion to the general public. Parle highlighted the distinct trade dresses of the products in question making confusion unlikely as per Section 29(2)(b)[9]. It referred to Supreme Court’s decision in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories AIR 1965 SC 980 to assert the overall dissimilarity in get-up is relevant in assessing infringement.

Parle also claimed that its sale and advertising figures for B-Fizz exceeded those by PepsiCo for Doritos, establishing priority in use and reputation. They cited balance of convenience as held in the case of Wander Ltd. V. Antox India (P) Ltd. 1990 Supp SCC 727 as B-Fizz was a newly launched product and stopping its production could cause massive losses to Parle.

Parle, in its written statement, added that PepsiCo did not consistently use the registered trademark on its Doritos chip packaging. Parle included instances when lines such as “For More Bold Experience”, “Snack Boldly”, “Do You Snack Bold”, “Bold Crunch” and “Bold Flavor”[10] were featured. These however, backfired since these packages were all produced abroad and intended for sale only in abroad and Parle couldn’t present a Dorito packaging in India which did not contain “For the Bold” tagline.

Analysis of the Court’s Decision

The Delhi High Court came up with a balanced ruling which resolved the dilemma which courts often face which is choosing between preserving validity of registrations as opposed to preventing misuse of trademarks. By restraining prominent use in advertisements of the tagline “For the Bold” by Parle while allowing the label use of the same, the Court differentiated between infringing and non-infringing use of the mark and balanced both parties’ interests. The court framed an issue on validity of PepsiCo’s registration and permitted Parle to pursue rectification proceedings, while staying the infringement suit. To sum up, PepsiCo obtained injunction against infringing use in advertisements but Parle was allowed to continue with the same packaging pending outcome of rectification proceedings. This decision ensures that big businesses can operate pending litigation, reducing the chances of any irreparable harm.

The Court analyzed the ingredients required under Section 29(2)(b) of the Trade Marks Act, 1999[11] to establish trademark infringement which include similarity of marks, identical/similar goods and likelihood of confusion by the consumers. On similarity, the Court found that Parle’s use of “For the Bold” in advertisements was identical to PepsiCo’s registered trademark. However, in the B-Fizz label it was only an insignificant part of the entire label, printed in upside down format. The Court also ruled that the goods were similar and held that tortilla chips and juices were likely to be consumed together by the consumers. However, on likelihood of confusion, the Court ruled that Parle’s label was sufficiently distinct hence the tagline would not cause initial interest confusion. Hence, there was no passing off.

The Court very meticulously followed established principles on comparing marks as a whole and avoiding dissection. This nuanced approach sets a good precedent which focuses on evaluating overall context rather than just the mark. This case will definitely have a far-reaching impact on brand advertising and labelling strategies in the industry. It strongly reiterated that trademarks must be created, protected and above all ethically used.

Author:-Ishita Singh, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or   IP & Legal Filing.

References

  1. PepsiCo Inc & Anr v Parle Agro Private Limited CS(COMM) 268/2021, I.A. 7170/2021 & I.A. 9591/2021
  2. Prashant Jha and Prashant Jha, PepsiCo v Parle: Delhi High Court Rejects Plea to Restrain Parle from Using For The Bold Tagline on B Fizz Bottles, Cans, (September 20, 2023), Bar and Bench – Indian Legal News, available at https://www.barandbench.com/news/pepsico-v-parle-delhi-high-court-restrains-parle-tagline-for-the-bold-ad-campaigns-b-fizz.
  3. Thapliyal N. and Law L., Using “For The Bold” Tagline  | Delhi High Court Resricts “Parle” From Using It For Advertising “B Fizz” Drink, (September 20, 2023), Live Law, available at https://www.livelaw.in/high-court/delhi-high-court/delhi-high-court-parle-for-the-bold-tagline-advertising-b-fizz-drink-trademark-infringement-suit-pepsico-238185.
  4. Delhi HC Restrains Parle from Using “For the Bold” Tagline in Its Advertisement Campaigns | SCC Blog, (September 27, 2023), SCC Times, available at https://www.scconline.com/blog/post/2023/09/21/delhi-hc-refuses-restrains-parle-from-using-for-the-bold-campaign-label-legal-news/.
  5. Singh M. and Joardar S., Delhi High Court Holds Parle’s Challenge against PepsiCo’s ‘For the Bold!’ Mark Prima Facie Tenable, (October 16, 2023), Lexology, available at https://www.lexology.com/library/detail.aspx?g=032f7752-b427-4581-93db-e9e4a6c1eb48.
  6. PEPSICO INC. & ANR. v. PARLE AGRO PRIVATE LIMITED, (September 26, 2023), SC IP, available at https://www.sc-ip.in/post/pepsico-inc-anr-v-parle-agro-private-limited.
  7. Tnn, High Court Rejects Pepsi’s Plea against Parle on Tagline Use, (September 21, 2023), The Times of India, available at https://timesofindia.indiatimes.com/business/high-court-rejects-pepsis-plea-against-parle-on-tagline-use/articleshow/103849257.cms?from=mdr.
  8. Mittal I., Parle versus PepsiCo: Delhi HC Restrains Parle from For the Bold in Ads, (September 20, 2023), News9live, available at https://www.news9live.com/business/companies/parle-versus-pepsico-delhi-hc-restrains-parle-from-using-for-the-bold-in-ads-2293183.
  9. Delhi High Court Rejects PepsiCo’s Plea in “For The Bold” Trademark Dispute with Parle, (September 21, 2023), Afaqs!, available at https://www.afaqs.com/news/mktg/delhi-high-court-rejects-pepsicos-plea-in-for-the-bold-trademark-dispute-with-parle.
  10. Ranipeta S., PepsiCo India Takes Parle Agro to Court over Tagline ‘For the Bold’, (June 17, 2021), CNBCTV18, available at https://www.cnbctv18.com/legal/pepsico-india-takes-parle-agro-to-court-over-tagline-for-the-bold-9673421.htm.
  11. The Law Advice – News – Delhi High Court Sides with PepsiCo, Bars Parle “For the Bold” Tagline in B Fizz Ad Campaigns, available at https://www.thelawadvice.com/news/delhi-high-court-sides-with-pepsico-bars-parle-for-the-bold-tagline-in-b-fizz-ad-campaigns.
  12. Admin, Delhi High Court Restrains Parle From Using ‘For The Bold’ Tagline As Predominant Part Of Advertising ‘B Fizz’ Drink In Suit By PepsiCo, (September 21, 2023), The Law Communicants, available at https://thelawcommunicants.com/delhi-high-court-restrains-parle-from-using-for-the-bold-tagline-as-predominant-part-of-advertising-b-fizz-drink-in-suit-by-pepsico/.

[1] PepsiCo Inc & Anr v Parle Agro Private Limited CS(COMM) 268/2021, I.A. 7170/2021 & I.A. 9591/2021

[2] Yadav K., Delhi HC Dismisses PepsiCo’s Plea against Parle Agro, Mint (September 18, 2023, 05:29 PM) https://www.livemint.com/companies/news/delhi-hc-dismisses-pepsico-s-plea-against-parle-agro-11695035214289.html.

[3] Section 29 in THE TRADE MARKS ACT, 1999 [Act No. 47 of Year 1999].

[4] Section 9(1) in THE TRADE MARKS ACT, 1999 [Act No. 47 of Year 1999].

[5] Section 9(1)(a) in THE TRADE MARKS ACT, 1999 [Act No. 47 of Year 1999].

[6] Section 17 in THE TRADE MARKS ACT, 1999 [Act No. 47 of Year 1999].

[7] IndiaFilings, Trademark Class 32: Water and Non-Alcoholic Beverages, (March 18, 2020), IndiaFilings – Learning Centre, https://www.indiafilings.com/learn/trademark-class-32-water-and-non-alcoholic-beverages/.

[8] IndiaFilings, Trademark Class 30: Food Products, (April 12, 2018), IndiaFilings – Learning Centre, https://www.indiafilings.com/learn/trademark-class-30-coffee-tea-bread-and-sugar/.

[9] Section 29(2) in THE TRADE MARKS ACT, 1999 [Act No. 47 of Year 1999].

[10] Tiwari A., Legal Clash: Delhi High Court Halts Parle’s Use of ‘For the Bold’ Tagline in ‘B Fizz’ Drink Advertising Following PepsiCo’s Suit, (October 19, 2023), The IP Press. https://www.theippress.com/2023/10/20/legal-clash-delhi-high-court-halts-parles-use-of-for-the-bold-tagline-in-b-fizz-drink-advertising-following-pepsicos-suit/.

[11] Supra Note 9

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