Pepsico takes Red Bull by the horns
This order passed by the Delhi High Court emphasises the complexity of enforcing rights tag lines/slogans used in advertising a brand. Plaintiff, Red Bull AG (Red Bull) filed the suit against Defendant, Pepsico India Holdings Pvt Ltd & Anr (Pepsico), alleging trademark infringement and restraining the latter from using the tagline ‘STIMULATES MIND. ENERGIZES BODY’. Pepsico has launched an energy drink under the brand name ‘STING’ that has irked Red Bull to bring this action.
The post discusses the result of the preliminary injunction application filed by Red Bull and opposed by Pepsico.
Red Bull in support of its case stated:
- They are manufacturing and marketing, among other things, energy drinks sold under the trademark ‘Red Bull’ and using the tagline ‘VITALIZES BODY AND MIND’ with its product since the year 1987.
- The tagline mentioned above is registered as a trademark in several countries of the world. In India, the tagline is registered in class 32 since 2004.
- On account of extensive use, the tagline has acquired distinctiveness, and it has become the source identifier of Red Bull.
- Pepsico launched its energy drink ‘STING’ in India in 2017 and adopted the tagline ‘STIMULATES MIND. ENERGIZES BODY’ which is deceptively similar to Red Bull’s slogan. The words ‘BODY’ and ‘MIND’ have been copied, whereas, the words ‘STIMULATES’ and ‘ENERGIZES’ are synonyms of the term ‘VITALIZES’, which is conceptually identical to Red Bull’s registered tag line.
- The adoption of the tagline ‘STIMULATES MIND. ENERGIZES BODY’ is dishonest to ride upon the goodwill of Red Bull’s tagline ‘VITALIZES BODY AND MIND’, which amounts to infringement and passing off.
Pepsico countered the injunction on the following:
- They use the brand name ‘STING’, a registered trademark. The tagline is being used only in a descriptive manner, and no registration has been sought as a trademark. Thus, no case of injunction is made out.
- The get-up and layout of the cans in which the rival products are sold are different; thus, there is no chance of any deception, and consequently, no action for passing off will lie.
- The tagline used by Red Bull is descriptive, and registration ought not to have been granted by the Trademark Registry. The rectification filed against Red Bull’s mark is pending adjudication.
- Pepsico uses the tagline ‘STIMULATES MIND. ENERGIZES BODY’ in a descriptive manner to indicate the kind and quality of its product. Therefore, they are entitled to benefit from Section 30(2)(a) and Section 35 of the Trademarks Act.
- The images of the product would show that the brands ‘Red Bull’ and ‘STING’ are prominently displayed on the cans. Further, as the layout and colour scheme is different, apparently no confusion or deception would be caused to the consumers, and no case of passing off is made out.
- Pepsico contends that registration has been wrongly granted to Red Bull as the tagline ‘VITALIZES BODY AND MIND’ is descriptive in nature and ought not to have been registered. Red Bull acknowledges that the tagline has been used to describe the attributes or quality of its drink. A person who consumes Red Bull energy drink has an assurance that it will rejuvenate, stimulate and energize the body as well as the mind. The tagline directly references the quality, intended purpose, values, and other product characteristics. Even in reply to the examination report of the Trademark Registry Red Bull has not claimed that the tagline is not descriptive and has relied on long use and extensive amounts spent to claim distinctiveness. Pepsi has already filed a rectification petition against Red Bull’s mark and it is pending adjudication.
- ‘STIMULATES MIND. ENERGIZES BODY’ is the tagline used by Pepsico comprising of four words of the English language to describe the features and quality of its drink. The tagline appears in small font, and Pepsico has not sought any registration regarding the aforesaid tagline. Thus, Red Bull’s contention that Pepsico is using the impugned tagline in a manner that is likely to be taken as being used as a trademark is not correct. As the rival products are energy drinks, descriptive or laudatory taglines regarding such products have necessarily to communicate the same idea. Moreover, whether the tagline VITALIZES BODY AND MIND has acquired distinctiveness and secondary meaning is an issue to be decided at trial.
- Red Bull has failed to make out a prima facie case, and considering Pepsico’s product has been in the market for five years, the balance of convenience is also in their favour.
The Court accordingly dismissed the injunction application filed by Red Bull.