SNACKS will always be ‘some light food’ – IPAB denies Britannia the trademark SNAX

Appelant- M/s. Britannia Industries Limited

Respondent- PepsiCo Inc. and the Deputy Registrar of Trade Marks

Forum– Intellectual Property Appellate Board (IPAB)

Facts

Britannia Industries Limited had filed an application for the trademark SNAX, which they had claimed to have been using from 1965. Britannia had already registered trademarks BRITANNIA SNAX for biscuits breads, buns etc in Class 30. The trademark application for the mark SNAX was published in the Trademarks Journal in 2005 and was opposed by PepsiCo on the grounds that the mark SNAX is snacks misspelt and since snacks was a common English word; it should not be registered as a trademark.

The Deputy Registrar heard both sides in the opposition and passed and order in favour of PepsiCo, disallowing the registration of the mark.

Britannia appealed against this decision before the IPAB

Britannia’s Contentions;

Britannia argued that they had been using the term BRITANNIA SNAX from 1965 which was registered as a trademark. They stated that SNAX was a coined term and inherently distinct. Furthermore on the basis of their continuous use for close to five decades, they argued that the mark SNAX had acquired secondary meaning and was distinct.

PepsiCo’s contentions;

PepsiCo argued that the mark SNAX was a variant of the common English word snacks and since it was descriptive of the goods, the order of the Deputy Registrar in the opposition was accurate and had to be upheld

They also argued that since the previous registrations of the mark BRITANNIA SNAX were registered, subject to the disclaimer that they could not claim exclusive rights to the word SNAX, the mark cannot be treated as a trademark.

Order;

The IPAB agreed with PepsiCo on most of their contentions and held that ‘The word which has a direct reference to the character or quality of the goods it may be difficult to establish that it has lost its primary significance and has acquired a distinctive character’

The Board further held that the appellants other registrations were not for the word SNAX alone but always with their house mark Britannia.  They were all filed with the Britannia mark prominently displayed and the registration for the other marks had been granted with the disclaimer stating that there were no exclusive rights granted to the term SNAX.

The IPAB upheld the Deputy Registrar’s order that allowed the opposition in favour of PepsiCo.