Madras High Court allows Cycle trademark for ‘Incense sticks’ and ‘Edible Oil’ to coexist

The Court holds Cycle to be an arbitrary adoption for the products such as incense sticks/ Agarbathi. However, it refuses to grant broader protection for the mark CYCLE, holding it is a common English dictionary word. The Plaintiff, N. Ranga Rao & Sons Private Ltd, (Ranga Rao), filed the suit against Defendant, Sree Annapoorna Agro Foods (Annapoorna) alleging trademark infringement, passing off, etc., and to safeguard their rights in the trademark ‘CYCLE’ for incense sticks and restrain the latter from using the same in relation to edible oils.

Ranga Rao in the suits contends: 

  1. They are a leading manufacturer and supplier of incense sticks and other allied products since 1948. They conceived and adopted several trademarks, including Cycle Brand, Cycle Brand Three in One with the Cycle device, and all the marks are registered, valid, and subsisting. The said trademarks have been extensively used for several decades for products ranging from cosmetics to food products. 
  2. The ‘CYCLE’ brand is registered in relation to several products including food products in classes 29 and 30. They hold registration for ‘Hair oil’ in class 3 and for preserved and dried and cooked fruits and vegetables, jellies, jam, milk, and dairy in class 29.
  3. The trademark ‘CYCLE’ was adopted in the year 1954 and is exclusively associated with them. The cycle brand logo contains the device in a unique and distinctive artistic work, which is also their house mark and is protected under the Copyright Act.
  4. Annapoorna has adopted an identical mark ‘CYCLE’ in relation to edible oils, and their use will cause confusion about the origin of goods. The cease-and-desist letter addressed to Annapoorna was replied, claiming that the products are different and there is no chance of confusion.

Annapoorna is the written statement states:

  1. They have been carrying on the business of manufacturing edible oils under the trademark ‘CYCLE’ since 2009. 
  2. They honestly adopted the trademark ‘CYCLE’ as it is an arbitrary choice for edible oils. Ranga Rao uses the mark ‘CYCLE’ for incense sticks and agarbathies and has never used the trademark ‘CYCLE’ for food products. 
  3. Ranga Rao has not filed any document evidencing that they are dealing with food products under the mark ‘CYCLE’ and their registration for the mark ‘CYCLE’ in class 29 and 30 are liable to be cancelled for non-use. 
  4. The mark ‘CYCLE’ is not a coined word, and adoption of a dictionary word for a particular product will not give exclusive rights in the said name. The word ‘CYCLE’ is used by several persons across various products and services. Annapoorna is the prior user of the mark for edible oil and has better rights. 

Both sides filed evidence and examined witnesses to substantiate their case.

After trial and hearing oral arguments, the Court decided the matter in favour of Annapoorna, observing:

  • The fact that Ranga Rao is a pioneer in incense sticks and other related goods under the trademark ‘CYCLE’ with cycle device is proved through documents. Annapoorna has filed documents from the year 2010 to prove use of the name ‘CYCLE’ for edible oil. As of date, there is no evidence to infer that Ranga Rao is trading in edible oil by using their brand name ‘CYCLE’. Thus, the prior user of the trademark ‘CYCLE’ for edible oil is Annapoorna. Documents show that at least eight years prior to the suit, Annapoorna is using the mark ‘CYCLE’ in relation to edible oil.
  • There is force in Annapoorna’s argument that as Ranga Rao has arbitrarily chosen ‘CYCLE’ name for Agarbathies and other incense sticks, they have adopted the name for its edible oil and using without any objection for more than seven years. 
  • From the registration certificates and the other documents, it is evident that Ranga Rao has no registration for edible oil, which is one of the goods under class 29. Moreover, their witness also admits, it has no documents to prove that they trade in edible oil. 
  • The word ‘Cycle’ per se is common. It is arbitrarily used for products like Agarbathi (incense sticks) by Ranga Rao. The distinctiveness in the mark is not the device ‘Cycle’ or word ‘Cycle’ per se but the combination of the words, viz., ‘Cycle brand agarbathies (incense sticks) and the oval design in which the cycle device is placed. Thus, ‘Cycle’ is a weak mark and has acquired distinctiveness only with the combination of other words and devices.
  • Even if it is taken as an identical adoption, Ranga Rao has not discharged the burden of establishing that the use of the ‘CYCLE’ mark by Annapoorna is without due cause or is detrimental to the distinctive character or reputation of its trademark. 
  • Ranga Rao’s ‘CYCLE’ is associated with incense sticks, scented products used externally, not in relation to products that can be internally consumed. Thus, the distinction between edible and non-edible products are palpable and obvious. Whatever reputation claimed to have been gained by Ranga Rao through advertisements and turnover is only for agarbathies, and the apprehension that the general public will be confused with the origin of products is without any basis.
  • The plea of prior user in respect of edible oil is in favour of Annapoorna. Moreover, there is no evidence that they are using the trade mark ‘CYCLE’ in respect of any other products, except edible oil. To date, Ranga Rao has no registration for edible oil in Class 29.
  • The rival marks are coexisting for more than eight years before the institution of the suit. Thus, Annapoorna’s right to continue the business using the mark ‘CYCLE’ for edible oil is justified, and there is no malafide on their part. 

In view of the above findings, the Court dismissed the suit filed by Ranga Rao.

Please follow and like us: