Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors. v. Anchor Health & Beauty Care Pvt. Ltd.;
30.05.2014; FAO(OS) No. 241 of 2014 before the Division Bench of the Delhi High Court
Respondent was Regd. Proprietor of the mark ALLROUND claiming user since 2004. Appellant started using ‘ALL-AROUND PROTECTION’ for tooth paste and ALL ROUNDER for Tooth Brush.
The Respondent filed a suit towards infringement of trade mark and passing off. In suit, Appellant raised the following defences:
• The mark ALL ROUND is descriptive.
• The Respondent is not using the mark as a Trade Mark.
• Respondent’s mark has not acquired any secondary meaning and goodwill.
• The Registration of Respondent’s mark is invalid.
• The trade mark ‘ALL ROUND’ is common to trade.
Appellant had already applied both the marks in USA and now cannot approbate and reprobate. The Appellant uses the expression ALL-AROUND PROTECTION as a stand alone mark and by use of ALL ROUNDER and ALL–AROUND infringes the Respondent’s mark ALL ROUND.
The Learned Single Judge injuncted the Appellant. The Appellant filed an appeal before the Division Bench of the Delhi High Court.
The Appeal was rejected on the following grounds:
Neither the Registrar of Trademarks nor anyone else, at the time when the Respondent/Plaintiff applied for registration of the trademark ―ALL ROUND objected thereto on any of the grounds mentioned in Section 9 of the Trade Marks Act, 1999.
Not only the Registrar of Trademarks in India but even the Registrar of Trademarks in USA did not consider that the trademark ― ALL ROUND in relation to toothpaste was devoid of any distinctive character or was not capable of distinguishing the said goods or was descriptive.
ALLROUND PROTECTION cannot be said to be descriptive.
At this interim stage, we are inclined to go along with the affirmation by the Division Bench in Indian Hotels Company Ltd. with the view in Automatic Electric Ltd.