Britannia Industries Ltd. v. Pepsi Co Inc. & Ors.
Britannia Industries Ltd. v. Pepsi Co Inc. & Anr.
Before the Intellectual Property Appellate Board, Circuit Bench, Kolkata
OA/11/2007/TM/KOL
2013 (55) PTC 605[IPAB]
Decided on: 26.08.2013
The Appellant (hereinafter referred to as Britannia) filed an appeal before the Intellectual Property Appellate Board (herein after referred to as IPAB) against the decision of Deputy Registrar of Trade Marks. The Deputy Registrar of Trade Marks had allowed the opposition filed by the Respondent No. 1 (hereinafter referred to as Pepsi) to Registration of the Trade Mark ‘SNAX’ by Britannia in Class 30 for biscuits, breads, buns, etc.
The Learned Registrar of Trade Marks held the word ‘SNAX’ to be phonetically, structurally and visually equivalent to the English word ‘Snacks’ which means “a light, casual or a hurried meal, a small amount of food eaten between meals” and therefore descriptive.
Britannia’s Case
- They are using the mark ‘SNAX’ since 1965.
- The word ‘SNAX’ was not disclaimed in the earlier Registration of the mark ‘Britannia Snax’.
- ‘SNAX’ is a coined term.
- Britannia is First to adopt the mark ‘SNAX’.
Basis of Registrar’s order:
- ‘SNAX’ being phonetic equivalent of ‘Snacks’ which is a generic term cannot form to be a subject of trade mark registration.
- Word ‘Snacks’ is directly characteristic of the goods in question and cannot be monopolized by any one as the same shall be required by other legitimate traders to describe their products in the course of trade.
- Evidence was filed for ‘Britannia Snax’ and not for ‘SNAX’ exclusively.
- A descriptive mark can attain distinctiveness whatever be the amount of duration of use.
- A descriptive word shall always be known as descriptive and shall always carry the same impression in the mind of purchaser of the concerned goods.
IPAB
In Appeal, the IPAB dismissed all the contentions of Britannia and upheld the order passed by the Deputy of Registrar of Trade Marks on the following grounds:
- ‘SNAX’ is phonetically similar to ‘Snacks’.
- The word which has a direct reference to the character or quality of the goods it may be difficult to establish that it has lost its primary significance and has acquired a distinctive character.
- Britannia’s other registrations are not for the word ‘SNAX’ alone but for the word ‘SNAX’ along with the house mark ‘Britannia’.