Recently, Coca-Cola lost a case before the
Facts of the Case:
Parle
Before the Trademark Trial and Appeal Board (TTAB):
The TTAB found that Coca-Cola had a statutory entitlement to bring a cancellation claim because of the following reasons:
- Coca-Cola's Thums Up and Limca would likely be familiar to much of the substantial Indian-American population in
the United States . - Coca-Cola reasonably believed that damage can caused by the continued registration by
Meenaxi of Thums Up and Limca, asMeenaxi's use of the Thums Up and Limca marks could cause harm stemming from the upset expectations of consumers.
The Board further held that
Before the
- Whether Coca-Cola has sufficient cause of action under the Lanham Act?
- Whether Coca-Cola suffered any reputational injury?
With regard to the first issue, the court did not agree with the TTAB's decision and stated, "Coca-Cola lacked a cause of action under the Lanham Act because of the territoriality principle, the court said that the resales of Coca-Cola products in
As regards the second issue i.e. reputational injury, the CAFC noted that "Coca-Cola did not rely on a famous-marks exception, and instead argued only that it experienced reputational injury in
Thus, the CAFC reversed the order of the TTAB and ruled in favor of
Analysis:
This case has highlighted the two major principles of the trademark law i.e. "Principle of Territoriality" and "Exception under Well-Known Marks", which Coca-Cola was unable to prove while establishing the case before the CAFC.
Well-Known Marks
The origin of well-known marks can be found in the
- Article 6bis of the
- Article 16(2) of the TRIPS Agreement extends the aforementioned obligation to services.
- Article 16(3) of the TRIPS Agreement refers to the circumstances under which registration of a mark used or proposed to be used for goods and services dissimilar to those for which a registered trademark exists can be denied.
- https://www.moneycontrol.com/news/world/coca-cola-loses-bid-to-cancel-us-trademarks-of-its-indian-soft-drinks-8759101.html;
- https://iprlawindia.org/understanding-the-nuances-of-well-known-marks-an-indian-perspective/;
- https://www.mondaq.com/india/trademark/668364/universality-territoriality-doctrine-reference-well-known-trademarks;
- https://www.tiplpr.com/post/resolving-the-battle-between-territoriality-universality-of-trademarks;
As aforementioned, in the present case, Coca-Cola could not take this exception under well-known mark and also failed to bring any substantial loss before the CAFC.
Principle of Territoriality
The Territoriality principle stipulates that intellectual property rights do not extend beyond the territory of the sovereign state which had granted the rights in the first place. It favors the notion that the reputation of a product or service is limited to the territory of the country in which that trademark was granted the status of a well-known trademark.
This principle has been known globally and affirmed by the CAFC as well as Indian courts in number of cases.
In the present case, Coca-Cola was unable to establish the use of its Indian trademarks in
INDIAN JURISPRUDENCE
In the present case, it has been discussed that both the marks in question i.e. "THUMPS US" and "LIMCA" are "famous & well-known marks" as affirmed by the
Section 2(1)(zg) of the Trade Marks Act, 1999 provides the definition of the well-known marks that "in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first- mentioned goods or services."
Section 11(2) of the Act specifically mentions that even where the subsequent deceptively similar mark is for different goods/services, if the prior mark is well-known, then the subsequent mark shall not be registered.
Till the Trademark Rules 2017 were introduced, well-known marks were determined by the Indian Courts and Tribunals, and the Trademark registry, as per the judicial pronouncements, had made a list of such well-known marks. Some of them include Benz,
Under the Trade Mark Rules, 2017, a new procedure has been created that allows the Registrar to proclaim a particular trademark as "well known". According to the new rule, a trademark owner can file an application in form TM-M with a request made to the Registrar for declaring the mark to be "well-known".
As mentioned above,
With regard to territoriality principle, this has been discussed at length by the
Thus, in
Conclusion
The trademark law provides a proprietor or the trademark holder an opportunity to initiate a suit in case the sales of their goods are affected by the use of a deceptively similar trademark by another enterprise in the same category of products. While, at one end, the trademark owner enjoys the right, on the other hand, it is the onus of the right holder to prove they have suffered an injury in light with the well established principles of the trademark law.
In the present case, Coca-Cola could neither establish a ground to bring the case before CAFC for cancellation of the alleged trademarks, nor could it show that it had suffered any reputational as well as sales injury.
References
- https://www.ipwatchdog.com/2022/06/29/coca-cola-win-reversed-cafc-case-indian-soda-trademarks/id=149907/#;
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