‘SWAD’ (taste) for Rice not as tasty when it comes to enforcement
This post highlights challenges in enforcing descriptive marks. The marketers are of course more in favour of adopting descriptive marks given the consumer appeal and brand recall. On the other hand IP legal team would recommend staying away from descriptive words to be used as brands. The Court in this case was considering an injunction application filed by Jain Riceland Pvt. Ltd (JRP) against Sagar Overseas (Sagar). JRP filed the suit for trademark infringement, passing off, etc, to safeguard their rights in the registered trademarks ‘SWADI’ (tasty) and ‘SWADISHT’ (tastier) and restrain Sagar from using the mark ‘SWAAD’ (taste) in relation to rice of all kinds. The court at the admission stage granted an ex-parte injunction in favour of JRP.
JRP in support of its case contended:
- JRP is the registered proprietor of the trademark ‘SWADI’ (tasty) and ‘SWADISHT’ (tastier) in Class 30 and is also using the mark SWAD (taste) in relation to their business.
- Their predecessor in 1991 conceived and adopted the trademark ‘SWAD’ (taste) in relation to rice of all kinds.
- The artistic work bearing the title ‘SWAD’ (taste) is also registered under the Copyright Act, 1957.
- On account of long, continuous and established user coupled with reputation, purchasing public and the trade identifies and recognizes the trademark ‘SWAD’ (taste) indicating the exclusive and quality product of JRP. They are vigilant in safeguarding their rights in the mark SWAD (taste) and have initiated action against third parties encroaching upon its rights.
- JRP on becoming aware of Sagar’s use of a deceptively similar mark SWAAD in relation to rice products initiated the action. Sagar’s use amounts to infringement of JRP’s rights in the registered trademark SWADI and SWADISHT as well as passing off their ‘SWAD’ (taste) mark.
Sagar raised following contentions:
- ‘SWAD’ (tasty) is a common word and could not have been registered as a trademark.
- The word ‘SWAAD’ being used by Sagar has not been used as a trademark but only in a descriptive sense in order to describe the taste of the product and is commonly used by number of companies in different classes as well as in Class 30.
- Sagar is selling rice under the trademark “ALL SEASONS” and has used the word ‘SWAAD’ (taste) in the tagline as “SWAAD EVERYDAY RICE” on its packaging and the same has to be read as a whole and not in piecemeal manner.
- ‘SWAD’ (taste)’ is not a coined word and is a common practise in the trade to use the word ‘SWAD’ (taste) in the packaging. Documents have been placed on record to show that many companies dealing with rice are using the word ‘SWAD’ (taste) as descriptive of the product.
- Sagar in their written statement has also raised a contention regarding the validity of the registration of the SWADI and SWADISHT trademarks.
The court after considering the pleadings, documents and arguments made the following observations.
- The word ‘SWAD’/’SWAAD’ is undoubtedly not a coined word but a common word in Hindi meaning ‘taste’ and thus, descriptive.
- ‘SWAD’ (taste) is a descriptive word and in the instant case it is not even the registered trademark of JRP as the two registered trademarks are ‘SWADI’ and ‘SWADISHT’.
- Sagar has not used the word/mark ‘SWAAD’ as its trademark but as a common descriptive adjective. They are using it along with their trademark ‘ALL SEASONS’ with a tagline ‘SWAAD EVERYDAY RICE’ on its packaging.
- ‘SWAD’ (taste) being a commonly used word for edible products, JRP cannot claim any exclusivity over use of the said mark/word.
- Sagar had filed documents to show that a number of entities in the rice trade are using the name/mark ‘SWAD’/’SWAAD’. Thus, it cannot be held that a) by extensive user over a length of time and b) there being no other person using the mark SWAD, the trademark ‘SWAD’/’SWADI’/’SWADISHT’ has achieved a distinction and exclusivity in favour of JRP.
In view of the above the Court set aside the injunction earlier granted in favour of JRP.