INTRODUCTION
In the symphony of marketing, a tagline presents an unforgettable melody that lingers in the audience's minds. Picture this: before sinking your teeth into the delectable burgers at McDonald's, has not the catchy jingle of 'I'm Lovin' It' already played in your head? Before embarking on your fitness journey with Nike, has not the empowering call of "Just Do It" already ignited a surge of motivation? Taglines are concise and memorable phrases or slogans encapsulating a brand, product, or service's essence. It focuses on selling the benefits rather than the features, and uses positive language to radiate positive emotions, leaving an impression on the customers.
The significance of a tagline in brand development is very crucial. A well-crafted tagline is a representation of the brand's identity, values, and promises. A compelling tagline is more than just a marketing tool; it can be used as a headline, a call-to-action, thereby forming an important element of brand success.
SAFEGUARDING TAGLINES UNDER THE IP LAWS IN INDIA
Taglines or slogans may be categorised as a literary work under Section 2 (o) of the Copyright Act, 1957, i.e., the definition of literary work. However, there has been a reluctance in upholding such protection or in categorizing them as literary work. One reason for this reluctance is that taglines are often short and simple phrases that lack originality or creativity, both of which are necessary for copyright protection.1
Taglines may be recognized as trade marks under Trade Marks Law in India and much like other trade marks, taglines also require the fulfilment of conditions prescribed under the Trade Marks Act, 1999. If a tagline is unique, coined or has been extensively used for a long time, it stands a better chance of receiving legal protection.2 However, certain taglines may be descriptive of the goods or services offered. Accordingly, in order to secure registration for the same, it would be imperative to adduce cogent evidence of its use (like invoices, promotional and advertising material) to showcase that enviable goodwill has been garnered by these over time. 3
Irrespective of registration, as with any other traditional trade mark, an unregistered tagline can also be protected under common law. 4 Put differently, if the owner has not registered the trade mark / tagline, a passing-off can be initiated. In a broader sense, passing off is a common law tort that protects the goodwill and reputation of a business. It occurs when one party misrepresents their goods or services in a way that is likely to cause consumer deception, damaging the goodwill and reputation of the other party.
COURT'S VIEW ON THE PASSING OFF ACTION FOR TAGLINES
While registration is a valid proof of ownership, courts in India have regularly recognized passing off actions for tagline similarity and have considered several factors in determining whether a passing off claim is valid. The broad ingredients for passing off, therefore, include the following:5
- nature of the tagline,
- the nature of the goods or services it is associated with,
- the degree of similarity between the taglines and
- the likelihood of confusion or deception among consumers.
In the case, Godfrey Phillips India v Dharampal Satyapal, 6 the Hon'ble Delhi High Court noted that for initiating a passing off action, brand owners must prove that their tagline has acquired a reputation sufficient to be associated exclusively with them by the consumers. It further noted that it needs to be shown that a tagline has become so unique of the products that it has acquired a 'secondary meaning', and thus, any use of such tagline or deceptively similar tagline by anyone is likely to deceive the customers. Simultaneously, in the caseBennett Coleman and Co. Ltd. v. ARG Outlier Media Pvt. Ltd., 7 the Hon'ble Delhi High Court refused to grant an injunction while adjudicating a claim of passing off concerning the tagline, 'Nation Wants To Know', 8 as the evidence was not sufficient enough to show conclusively that the said tagline had acquired immense goodwill associated solely with the plaintiff.
Similarly, in a recent judgment, Pepsico Inc. v. Parle Agro., 9 the Hon'ble Delhi High Court laid down a few prerequisites to establish a case of passing off on taglines. The Court held that the owner of the tagline must prove that there is a substantial amount of goodwill and reputation associated with the tagline, that there is some level of misrepresentation being caused or is likely to be caused to the public in the course of trade by use of a similar tagline, and that such misrepresentation has caused or is likely to cause damage on the goodwill and reputation associated with the tagline.
In the case above, PepsiCo Inc. ("PepsiCo") averred that Parle Agro Private Limited ("Parle"), by using its trade mark, 'FOR THE BOLD' in its tagline "BE THE FIZZ! FOR THE BOLD" ("Impugned Tagline") was trying to pass off its products as those of PepsiCo. While the Court noted the importance of establishing 'goodwill' and 'reputation' associated with the tagline, it reiterated that such goodwill should be exclusively regarding the tagline. In other words, while the Court did appreciate the exorbitantly high sales figures that were placed on record by PepsiCo for its 'products bearing the mark', it refused to accept that the same related to the 'standalone' use of the "FOR THE BOLD" mark. Consequently, it held that no case of passing off could be made out.
CONCLUSION
The jurisprudence about the registrability and protection of unregistered taglines is heavily tilted towards acquired distinctiveness and secondary meaning of the tagline, which can be proven by extensive and continuous usage. Instances of tagline emulation, as seen in disputes involving PepsiCo and Parle, illuminate the complexities of intellectual property rights in the branding arena. Such legal debates underscore the challenges brands face when competitors tread the fine line between inspiration and infringement.
In the light of the above, it is suggested that businesses and brand owners consider using their intended taglines in an expansive, open manner, giving visibility to the same in advertising. While using the tagline with products allows consumer association, businesses may also consider shelling out a portion of the budget for promotion of the relevant taglines to prove that substantial efforts have been taken to promote and popularise the same. In the digital world, where mala fide and blatant copying of brand names and taglines are rampant, primarily to encash upon the goodwill and reputation garnered by a brand, such measures may aid in safeguarding statutory and common law rights vested in a tagline.
Footnotes
1 Pepsi Co. Inc. and ors. v. Hindustan Coca Cola and ors. 2003 SCC OnLine Del 802
2 Ibid; Reebok India Company v. Gomzi Active, 2006 SCC OnLine Kar 371
3 Red Bull AG v. Pepsico India Holdings 2022 SCC OnLine Del 969; Also refer: Indian Shaving Products Ltd. & Anr v. Gift Pack & Anr 1998 SCC OnLine Del 829
4 Cadila Health Care v. Cadila Pharmaceuticals Ltd (2001) 5 SCC 73.
5 Ibid
6 Godfrey Phillips India v. Dharampal Satyapal, 2012 (51) PTC 251 (Del).
7 Bennett Coleman and Co. Ltd. v. ARG Outlier Media Pvt. Ltd. and Ors. (23.10.2020 - DELHC): MANU/DE/1918/2020
8 Ibid.
9 Pepsico Inc. v. Parle Agro (P) Ltd., 2023 SCC OnLine Del 5823
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
