PEPSICO INC v PARLE AGRO PRIVATE LTD, 2023

CITATION	CS (COMM) 268/2021, I.A. 71790/2021, I.A. 9591/2021
DATE OF JUDGMENT	18th Sept, 2023
COURT	HIGH COURT OF DELHI
PETITIONER	PEPSICO INC
RESPONDENT	PARLE AGRO PRIVATE LTD
BENCH	C. HARI SHANKAR

INTRODUCTION

The case of “Pepsi Co Inc v. Parle Agro private ltd, 2023″ revolves around a critical dispute of trademark infringement of “For The Bold” tagline, this basically refers to the unauthorised usage of a mark that is identical or deceptively similar to a registered trademark. A classic example to understand this is when an online retailer selling electronics and using a name, logo, or design similar to that of Apple Co. This is unfortunately very common breach of the law of the land, therefore the legislature in the Trademark Act, 1999 considers direct infringement as a criminal offences and leads to imprisonment or a fine upon Rs. 5 lakhs or both.

FACTS OF THE CASE

The Plaintiffs held the trademark registration of the tagline “FOR THE BOLD” in class 30 in respect of ‘coffee, tea, cocoa, sugar, rice..’ . The plaintiffs manufactured Doritos Tortilla Chips, invariably bearing the tag of  “For the Bold” which was stated to have been commenced in India in the year 2017. Since then, the plaintiffs have sold their product under this tagline.

Parle Co, their rival company, launched a product B FIZZ under the same tagline, without any formal acceptance of the same from the plaintiffs. 

The plaintiff, suffering from such injustice, file a suit seeking for a decree of permanent injunction, that is an order from the court where Parle Co. shall be bound to refrain from using the tagline.

ISSUES RAISED

1. Whether Parle’s use “For the Bold” tagline infringe on PepsiCo’s registered trademark?
2. Whether the tagline is a valid registered trademark of PepsiCo?

CONTENTIONS OF PLAINTIFF

1. The plaintiffs humbly submit their contentions which state that, they started off with their campaigns with the tagline “ For the Bold”.
2. Parle’s use causes confusion among consumers.
3. The plaintiffs further state that the defendants have failed to establish any substantial rebuttal to Pepsi Co’s assertions regarding the reputation and worldwide renown that Doritos Tortilla chips, bearing “For the Bold” tagline, has achieved over the years.
4. The rebuttal by Parle Co is merely by way of an omnibus denial, which at least, would require a trial, during which PepsiCo is entitled to be protected.
5. The plaintiffs back their contentions by applying the principles enunciated in Wander  Ltd v. Antox India private ltd. Also referring to section 29(1) of Trade Marks Act, the tagline is not used as a trade mark either by PepsiCo or by Parle. Moreover would not apply any impugned mark of Parle is not used in respect of the goods in respect of which PepsiCo’s mark is registered.
6. The plaintiffs further submits that B Fizz malted beverage of Parle cannot be regarded as “similar” to Doritos Tortilla Chips of PepsiCo and there is no likelihood of confusion between the two products as a result of the use, by Parle, of the impugned tagline.
7. The plaintiffs emphasises the statutory structure of section 31(1), which deems registration of the mark to the ‘prima facie evidence of its validity’. The registration of PepsiCo is valid. 

 CONTENTIONS OF REPONDENT

1. The respondents contended that “B Fizz” was to provide a beverage which, while being non alcoholic, would replicate the bold flavour of beer. The company contended that the red colour off the packaging reflects the  boldness of the drink to reflect the flavours of beer.
2. Furthermore, they state that PepsiCo hasn’t incorporated the tagline in their product however, Parle Co has included it in its packaging and has provided a valid justification on why it has used this particular tag line, along with that they have attached their profits, expenses and the overall turnover to justify their contention.
3. Further they state that Section 35 cannot be invoked by Parle, as there is no pleading on its part, that the impugned mark “Be the Fizz! For the Bold” describes the quality of the beverage.
4. The defendants state that both the said products are two entirely different, distinct and distinguishable. Besides, the name of the manufacturing companies are prominently displayed on both labels.
5. Additionally the defendants claim to seek to pass off its “B Fizz” product as the product of Pepsi Co, especially as Parle’s identity is prominently reflected on the impugned label.

JUDGEMENT

The High Court of Delhi after hearing both sides of the case, and careful curation and scrutiny found that neither of the parties is entirely right. The plaintiff Pepsi Co did not mention the tagline in its product and Parle used the tagline of a different company which was already registered leading to breach.

However, the crucial aspect of the lays that the consumers may get confused and lead to disturbance. Here the court accepted that both the packaging display the manufactures identity prominently therefore reducing the scope of confusion. Therefore, the court ensures that the already existing products need not be changed, however in future Parle Co must refrain from such activities.

The High Court of Delhi partially ruled in favour of PepsiCo. The court laid down the following:

1. Interlocutory Injunction – The Court refused to grant an interlocutory injunction restraining Parle from using the tagline entirely.
2. Permanent injunction –  The Court restrained Parle from using “For the Bold” as a predominant part of its advertising campaign but allowed its use on B Fizz product labels.
3. Validity of trademark – Parle challenged the validity of PepsiCo’s trademark registration, seeking its cancellation. This aspect of the case is still ongoing.

ANALYSIS

1. Similarity of trademarks – while both used “For The Bold”, Parle used it differently and within a different context.
2. Similarity of products – Though both were beverages/snacks, categories differed(malt/ chips)
3. Likelihood of confusion – The court found a low likelihood of consumers to get confused is unlikely.
4. Trademark validity – Parle challenged the validity of PepsiCo’s trademark registration, arguing that “For the Bold” is description and lacks distinctiveness. The court found that Parle made out a “prima facie tenable challenge” and allowed Parle to file a rectification petition to change the registration.
5. Trademark Infringement – PepsiCo sought an injunction to prevent Parle from using the tagline. The court did not grant an injunction as Parle’s use was limited to packaging and not prominent in advertising. However, the court restrained Parle from using “For the Bold” as a predominant part of any advertising campaign.
6. Commercial Analysis – the case highlights the challenges of protecting generic and descriptive taglines as trademarks. It also underscores the importance of using trademarks strategically and prominently to establish stronger trademark rights.

CONCLUSION

In conclusion, the case of PepsiCo Inc v. Parle Agro Private Limited,  here the court rightfully sided with the Plaintiffs the decision partially favoured the both the parties making it fair and reasonable. The Hon’ble Court looked into both the matters and brought it in a win win situations where the best solution was brought about. It has put a partial restraint on Parle and offered a partial right to PepsiCo. However, in my personal opinion, I feel that the court should have fully ruled the decision in favour of the plaintiffs and not imposing a permanent injunction on the defendants.  Keeping my personal biases aside the court has done a remarkable job in setting a valuable legal precedent. Moreover, this is not the final judgement given by the court and there shall be new additions to it. 

REFERENCES

1. https://indiankanoon.org/
2. https://www.scribd.com/
3. Live law
4. Lexology
5. Bare act of Trade Marks Act

This Article is written by TAHITI CHATTERJEE student of PRESIDENCY UNIVERSITY, BENGALURU; Intern at Legal Vidhiya.

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