The company “Coca-Cola” sell a Thums up cola and lemon-lime soda in foreign markets such as India. However, Meenaxi has distributed a Thums up cola and Limca lemon-lime soda in the United States since 2008 and registered the trade marks “THUMS UP and “LIMCA” back in 2012. Coca-Cola bought cancellation proceedings alleging that Meenaxi was exploiting the marks to misrepresent the source of its goods.
Background
Coca-Cola began operating in India in 1950. Parle (another company) had introduced the Thums Up Cola in India in 1977 and the Limca lemon-lime soft drinks in 1971. Coca-Cola purchased Parle in 1993 and acquired Parle’s Indian registration of the Thumbs Up and Limca marks. Coca-Cola beverages are found in over 2.6 million retail outlets throughout India. The Indian High Court of Delhi concluded in 2014 that the Thums Up mark was prominent and well-established in India and in 2011 found that the Limca mark was also well-known.
Meenaxi claims to have searched the United States Patent and Trademark Office (USPTO) database for existing marks. The USPTO search revealed an application for the Thums Up mark was abandoned in 1987 and a registration for the Limca mark expired in 1996.
In 2012, Meenaxi sought to register both marks and was granted registration No. 4,205,598 for the Thums Up standard character mark in International Class 32 and was granted the Limca mark under registration No. 4,205,597 in International Class 32 for Colas; Concentrates, syrups or powders used in the preparation of soft drinks.
Coca Cola had initially won the battle however, Meenaxi made an appeal and the case had since made its way to the US Court of Appeal.
Court of Appeals Decision
Based on the evidence presented, the Court concluded that the evidence does not align with the Board’s finding that the reputation of Coca-Cola’s Thums Up and Limca marks extend to the United States. Short of such evidence, Coca-Cola did not establish reputational injury in the US. The Boards decision cancelling the 597 and 598 registration cannot stand because Coca-Cola has not established a cause of action under section 14(3) of the Lanham Trademark Act 1946.
The Court explained the majority’s opinion could easily be understood to imply that Coca-Cola could have established statutory standing if it proved that US consumers were aware of its Indian brands but this was not the case.
By Zohaib Tahir, an LLM student at Solent University
