Feb 1 Bulletin-
INDIA: Court Recognizes the Protection of Slogans and Expressions
Contributor: Mohan Dewan,R K Dewan & Co.,
INTA Bulletins Law and Practice—Asia-Pacific Subcommittee
Verifier: Sushant Singh, Advocate, Supreme Court of India and Delhi High Court, New Delhi, India
In Joy Creators Pvt Ltd vs Natures Essence Pvt Ltd, CS(COMM) 632/2018, the High Court of Delhi on September 20, 2018 recognized the protection of slogans and expressions which are ordinary linguistic spoken words.
The plaintiff manufactures and markets a wide range of cosmetic lotions, and in 1996 launched and began marketing a variety of products under the mark 'Honey and Almonds' in India and other areas. In addition, the plaintiff also used the slogan in Hindi 'Poshan Wala Lotion' meaning "Lotion providing Nutrition."
In 2013, the defendant was found marketing cosmetic lotions with the mark "Nature's Essence Almonds & Honey Body Lotion," by the Plaintiff's wherein the part 'Almonds and Honey' was written prominently (see images below). The shape of the bottle, packaging, color scheme, and trade dress were found to be similar by the plaintiff's. In addition, the defendant adopted a tag line in Hindi: "Sampoorna Poshan Wala Lotion" meaning "Lotion providing Complete Nutrition."
The plaintiff then filed the suit at the Delhi High Court against the defendant seeking permanent injunction, trademark infringement, and passing off, claiming that the mark "Honey and Almonds" had acquired distinctiveness.
The court made two significant observations with respect to the dispute raised by the parties. First, regarding the defendant's use of the expression ALMONDS & HONEY, the court noted that the expression ALMONDS & HONEY has been given greater prominence than the defendant's brand name Nature's Essence and held that if, as the defendant argued, the term ALMONDS & HONEY is merely used as a descriptor, then the defendant should use the expression in a less prominent manner.
The second observation relates to the recognition of the distinctiveness in the plaintiff's slogan "POTION WALA LOTION" in ordinary language, which is incorporated into the defendant's slogan "SAMPOORNA POSHAN WALA LOTION." The court held the defendant misused the plaintiff's slogan POSHAN WALA LOTION and injuncted the defendant from using the said slogan.
Further, the court also injuncted the defendant from using the shape of the bottle to prevent consumer confusion and deception.
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