Saffola and Sundrop in an oily dispute

In the recent case of Marico Limited v Agro Tech Foods Limited, the plaintiff, Marico Limited, claimed infringement of its registered trademarks Losorb and Lo-Sorb by the defendant, Agro Tech, which was using the mark Low Absorb on its edible oil products.

A single judge of the Delhi High Court denied the plaintiff’s application for an interim injunction for infringement of trademark, passing off and dilution. The judge also lifted an exparte interim injunction order granted earlier in favour of Saffola.

It was held that the use of the mark Low Absorb by the defendant, Agro Tech, did not result in any infringement of the plaintiff’s registered trademarks Losorb and Lo-Sorb and that there was no cause of action for granting a remedy for a passing off.

Facts of the case

The facts of the case are as follows. The plaintiff, Marico Limited, obtained registration of the marks Losorb and Lo-Sorb in class 29 under the Indian Trade Marks Act, 1999, which includes products such as oil and ghee (traditional Indian clarified butter used for cooking).

The plaintiff was using these registered marks alongside it main trademark, Suffola, in relation to edible oil that contained an anti-foaming agent which resulted in less oil being absorbed by food during frying.

Similarly, the defendant was selling sunflower seed oil that contained an anti-foaming agent similar to the plaintiff’s under the main trademark Sundrop, along with the phrase “low absorb technology”.

The plaintiff claimed that the use of the mark “low absorb technology” by the defendant amounted to infringement of its registered marks Losorb and Lo-Sorb, and also that such use enabled the defendant to pass off its goods as those of the plaintiff.

Relying on the judgment in Cadila Healthcare Ltd v Gujarat Co-operative Milk Marketing Federation & Others, the court refused to grant an interim injunction against the defendant on the grounds that the disputed marks were not capable of inherent distinctiveness and were merely descriptive terms to explain the quality of the edible oil sold by the defendant.

It was noted that the mark Low Absorb was not an “unusual juxtaposition of words” that could take away the descriptive nature of the expression, and thus the mark was incapable of “inherent distinctiveness”. Further, the court observed that the expression was used in a functional sense in view of the character or kind of the goods, and thus fell within the ambit of section 9(1)(b) of the Trade Marks Act, 1999.

Prima facie invalid

On the contention of the plaintiff that the said mark had acquired distinctiveness by use and thus was a valid mark, the court observed that validity of the mark, and the question as to whether the mark had acquired distinctiveness in such a manner, could only be ascertained in the final adjudication of the suit, or in cancellation proceedings to determine whether the mark had acquired any distinctive character or a secondary meaning or was a well-known mark.

The court held that for the purpose of deciding the interim injunction application, the marks Losorb and Lo-Sorb were, prima facie, invalid. The court relied on the fact that the plaintiff’s application for registration of the marks stated that the marks were proposed to be used, which implied that at the date of application the marks were not in use and had therefore not acquired any secondary meaning.

It was further held that the said marks had no distinctive character and constituted mere descriptive expression.

Passing off

Regarding the issue of passing off, the court observed that the products of the defendant promi- nently used the trademark Sundrop, and that the expression Low Absorb Technology was in a smaller and less prominent font.

It was further observed that the colour scheme of the plaintiff’s label was blue, while the colour scheme of the defendant’s label was orange.

The court pointed out that the mere fact that both the products belonged to the same trade channel did not imply the possibility of confusion, thus there was no possibility of passing off by the defendant, which was selling its products under an entirely different trademark.

Hence, the present case falls squarely under section 30(2)(a) of the Trade Marks Act, 1999 because use of the mark Low Absorb by the defendant was only descriptive use of normal English words demonstrating the kind, quality or intended purpose of the goods concerned.

Court’s opinion

Concluding on the relevance that distinguishing between two marks may have to the public at large, the court opined that: “… when two identical trademarks are used by two parties in the market, or … a use of a descriptive word by a defendant can be confused with the trademark of a plaintiff, then a court is always entitled to ensure that such distinction is brought or conditions are imposed qua the two identical or deceptively similar trademarks by imposing such conditions of use on both or either of the parties so that a third vital/important stakeholder in these intellectual property rights disputes viz. the public, is not in any manner deceived/confused and whose rights are not prejudicially affected…”.

Manisha Singh Nair is a partner at Lex Orbis, an intellectual property practice law firm headquartered in New Delhi