Thursday, May 15, 2014

Delhi High Court Restrains the use of Anchor’s mark “ALL ROUND” in P&G’s Oral B products

In an 18-page decision pronounced on May 9, 2014, a Single Judge on the Original Side of the Delhi High Court granted an interim injunction in favour of Anchor Health and Beauty Care Pvt Ltd restraining Proctor and Gamble from using Anchor’s registered trademark “ALL ROUND” in connection with P&G’s Oral-B products. The injunction was granted in a suit filed in 2013 by Anchor against P&G. 

Anchor’s grievance was that the use of the expression as part of “ORAL B ALL AROUND PROTECTION” and “ORAL B ALL ROUNDER” by P&G in connection with the latter’s toothpaste and brush amounted to infringement of Anchor’s registered trademark “ALL ROUND”. 

Following were P&G’s defences:
1.       That the mark “ALL ROUND” was descriptive and common to the trade for which Anchor had failed to establish secondary significance. Further, P&G’s use of “ALL ROUND” was descriptive in nature and not in a trademark sense.
2.       That a rectification petition had been filed by P&G against Anchor’s registration on the mark;
3.     That P&G’s use of “ALL ROUNDER” and “ALL AROUND PROTECTION” was not deceptively similar to the Anchor’s registered mark “ALL ROUND”, and that Anchor had no registration for the expression “ALL AROUND PROTECTION”;
4.       Since the descriptive expression “ALL AROUND PROTECTION” was being used as an adjunct to Anchor’s primary trademark ANCHOR, there was no malafides in P&G’s use of the expression.

Following were Anchor’s rebuttals:
1.       P&G had a registered trademark in the US on “ALL AROUND PROTECTION” and had applied for one on “ALL ROUNDER” in India;
2.       The fact that Anchor had used “ALL ROUND” along with its primary mark did not in any way undermine its claim over “ALL ROUND”. Further, the law did not require Anchor to use ALL ROUND in a stand-alone manner and that it could be in conjunction with any other mark.

The Court’s observations:
1.       P&G’s own registrations on and applications for “ALL ROUNDER” and “ALL AROUND PROTECTION” undermined their contention that “ALL ROUND” was descriptive and common to the trade.
2.       In the facts of the case, the packaging of P&G revealed that “ALL AROUND PROTECTION” was being used by P&G as a stand-alone mark, and not in a descriptive sense.
3.       Since Anchor was indeed using ALL ROUND as part of ALL ROUND PROTECTION, P&G’s argument of non-use was ill-founded.
4.       P&G’s use of ALL ROUNDER and ALL AROUND PROTECTION was deceptively similar to Anchor’s ALL ROUND since the essential feature of the latter’s mark was being used by P&G. Consequently, a case of prima facie infringement had been established.
5.       Balance of convenience was in favour of Anchor since P&G had barely introduced the product in the market at the time of the filing of the suit.
6.       Accordingly, P&G was given four weeks time to take the necessary steps to comply with the injunction.

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