Delhi High Court takes 'Sting' out of Red Bull tail in trademark suit against Pepsi

The Delhi High Court on Wednesday refused to restrain PepsiCo from using the tagline ‘STIMULATES MIND. ENERGIZES BODY’ while selling its energy drink 'Sting' [Red Bull AG v. PepsiCo India Holding Pvt Ltd & Anr]..The Court was dealing with an application in a suit filed by Red Bull seeking an interim injunction against Pepsi. The suit claimed that the tagline used by Pepsi was deceptively similar to Red Bull's tagline: “VITALIZES BODY AND MIND”..Justice Amit Bansal held that, at this stage, it cannot be said that the tagline of Red Bull has acquired distinctiveness and secondary meaning. Therefore, there was no prima facie case to warrant grant of injunction.“Whether the aforesaid tagline of the plaintiff has acquired distinctiveness or secondary meaning in respect of the plaintiff’s products can only be established at the stage of trial. Balance of convenience is also in favour of the defendants for not granting interim injunction as the products of the defendants have been selling in the market with the impugned tagline for almost five years. Hence, the present application under Order XXXIX Rule 1 and 2 of the CPC is dismissed,” the Court said..In its suit, Red Bull said that it has been selling energy drinks under the trademark “Red Bull” since 1987, has been using the tagline “VITALIZES BODY AND MIND” since inception. It was argued that the usage of the trademark has become a source identifier of Red Bull products and on account of long and extensive usage, it has acquired distinctiveness..However, Pepsi contended that the get up and layout of the cans of the two products are totally different, and therefore there can be no question of any deception. Consequently, no action of passing off can be made out.Pepsi stated that it has challenged the registration granted to Red Bull for the tagline, on the ground that it was in contravention of Section 9 of the Trade Marks Act, as the tagline was completely descriptive. Therefore, registration ought not to have been granted by the Trade Marks Registry in terms of Section 9(1)(b) of the Trade Marks Act.It was also argued that whether the tagline of Red Bull has acquired secondary meaning on account of long usage, thereby giving it distinctive character, is a matter to be determined during trial..After hearing the parties, the Court held that no prima facie case of passing off is made out, as a look at the two products would show that there is no similarity between them.He said that the layout of the two cans is totally different, the brand names “Red Bull” and “STING” are prominently displayed on the cans, the colour scheme of the two products is completely different, fonts are different, the taglines used are in very small fonts on both the cans in comparison to their brand names, and the colour in which the taglines are written and the backgrounds in which they appear are also completely different.“In light of the above, it is apparent that no confusion or deception would be caused to the customers of both the parties in respect of their products. Therefore, in my prima facie view, no case of passing off is made out,” the Court held,.On the issue of infringement, Court said that though the tagline of Red Bull has been granted registration in India in 2010, it is of a descriptive/laudatory character, which ought not to have been granted registration in view of Section 9(1)(b) of the Trade Marks Act.It further said that the use of the tagline by Pepsi also is in a descriptive/laudatory manner and not as a trademark. It is a phrase or an expression consisting of four words of the English language that aim to describe the features and quality of its drink, the Court said.“In comparison to the brand name of the defendants’ product, “STING”, which is displayed prominently on the cans, the impugned tagline only appears in a small font. Furthermore, the defendants have not sought any registration in respect of the aforesaid tagline. Therefore, I do not accept the contention of the plaintiff that the defendants are using the impugned mark in a manner that is likely to be taken as being used as a trademark. Resultantly, no infringement has been committed by the defendants in terms of Section 29 of the Trade Marks Act.”.On Red Bull’s submission that the tagline of Pepsi gives the same impression, the Court said that since the two products are of the same kind (energy drinks), descriptive or laudatory taglines in respect of these products have to communicate the same idea. Therefore, it cannot be said that the adoption of the mark by Pepsi was not bona fide..With these observations, the application for interim injunction was dismissed. The matter will now be placed before the roster bench on May 9..Advocates Anirudh Bakhru, Abhishek Singh, Naqeeb Nawab, Himanshu Deora, Raghav Vig and Yashwardhan Singh appeared for Red Bull. PepsiCo was represented by Senior Advocate Sudhir Chandra along with Advocates Dheeraj Nair and Shruti Dass. .[Read Order]