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Bombay High Court
Anheuser Busch Inbev India ... vs Jagpin Brewerise Limited And 2 Ors on 8 December, 2025
Digitally
signed by
2025:BHC-OS:24174
MEERA comip-19--06-2.doc
MEERA MAHESH
MAHESH JADHAV
JADHAV Date:
2025.12.10
17:25:34
+0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL IP SUIT NO.19 OF 2006
Anheuser Busch Inbev India Ltd. ...Plaintiff
Versus
Jagpin Brewerise Limited & Ors. ...Defendants
-----
Mr. Ashutosh Kane, Ms Amruta Thakur and Ms Sumana Roychowdhary i/b W. S.
Kane & Co. for Plaintiff.
-----
CORAM : ARIF S. DOCTOR, J.
RESERVED ON : 20th NOVEMBER 2025
PRONOUNCED ON : 8th DECEMBER 2025
JUDGMENT:
1. The Plaintiff has filed the present suit seeking inter alia (i) permanent
order of injunction restraining Defendant Nos. 1 and 2 ("the Defendants")
from infringing the Plaintiff's registered trade mark No.436744 i.e.
"HAYWARDS 5000", as well as trade mark No.1521743 "FIVE
THOUSAND" both registered in Class 32 by using the mark "COX 5000"
("impugned trade mark") or any other trade mark deceptively similar to the
Plaintiff's registered trade mark and (ii) from passing off the Defendants'
goods as and for the Plaintiff's goods. The Plaintiff has also sought damages
of Rupees Five Lakhs.
2. The First Defendant is a company incorporated under the Companies Act,
1956, and carries on the business of manufacturing, marketing and selling
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beer. The Second Defendant is in the management and control of the First
Defendant company.
3. The Third defendant, i.e., Shaw Wallace & Co. Limited was the Plaintiff's
predecessor in title and was later deleted as a party to the Suit by an Order
dated 13th March, 2013. The pleadings stood accordingly amended.
Brief Background
4. The Plaintiff is the registered proprietor of two trade marks, (i) the label
mark "HAYWARDS 5000" bearing Registration No. 436744 ("the label
mark") and (ii) the word mark "FIVE THOUSAND" bearing Registration No.
1521743 ("the word mark"). Both the Plaintiff's registrations are in Class
32 and are in respect of beer. These marks are collectively referred to as
("the said trade marks").
5. The trade mark "HAYWARDS 5000" was originally adopted in 1983 by the
Plaintiff's predecessor in title, Shaw Wallace & Co. Ltd. ("Shaw Wallace")
who had in the year 1985, applied for and secured registration of the label
mark under registration No.436744. It is the Plaintiff's case that since the
year 1983 Shaw Wallace, and then the Plaintiff, including through
licensees, have been continuously and extensively manufacturing and
selling beer under the label mark "HAYWARDS 5000".
6. In 2003, pursuant to an order passed by the Delhi High Court in Shaw
Wallace and Co. Ltd. and Anr. vs Superior Industries Ltd. 1, the Plaintiff's
label mark "HAYWARDS 5000" was declared as a well-known trade mark
1 2003 (27) PTC 63
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and has since been included in the list of well-known marks as maintained
by the Registrar of Trade Marks.
7. By a Deed of Assignment dated 27th May 2005, Shaw Wallace assigned and
transferred the registered label mark "HAYWARDS 5000", together with
the goodwill associated therewith, to the SKOL Breweries Ltd., as the
Plaintiff was formerly known. On 27th May 2005, SKOL Breweries Limited
filed Form TM-23 to enter its name in the Register of Trade Marks as the
proprietor of the said label mark. This application was duly accepted.
8. Sometime in January 2005, the Plaintiff's predecessor came to learn that
the First Defendant was brewing, bottling and marketing beer ("the
impugned beer") under the trade mark "COX 5000", of which "5000"
formed an essential and leading feature. Aggrieved by the same, the
Plaintiff's predecessor, through its Attorneys, addressed a Cease-and-Desist
Notice dated 18th January, 2005, calling upon the First Defendant to inter
alia cease and desist the use of the impugned trade mark in respect of the
impugned goods. The First Defendant responded to the Plaintiff's
predecessor's aforesaid Notice vide their Advocate's reply letter dated 1 st
February, 2005, denying the contents of the aforesaid Notice and refusing
to comply with the requisitions contained therein.
9. The Plaintiff thus filed the present Suit on 24 th August 2006.
10.By an order dated 21 st September, 2006, this Hon'ble Court was pleased to
grant the Plaintiff ad-interim reliefs in terms of prayer clauses (a), (b) and
(c) of the Notice of Motion No. 2990 of 2006.
11.The Defendants challenged the said ad-interim order by filing Appeal No.
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805 of 2006, which was dismissed by the Division Bench of this Court vide
Order dated 15th November, 2006. Hence, the ad-interim order stood
confirmed.
12.The Defendants then filed their Written Statement on 30th January 2007
in present Suit, inter alia raising a preliminary objection to the jurisdiction
of this Court to entertain the present Suit.
13.The Plaintiff thereafter, in the year 2007, applied for registration of the
word mark "FIVE THOUSAND" under Registration No. 1521743 in Class
32 inter alia in respect of 'beer'.
14.The Plaintiff then, in the year 2007, also applied for registration of the
word mark "FIVE THOUSAND", which was subsequently granted in 2010
under Registration No. 1521743 in Class 32.
15.The Defendants, thereafter sometime in 2007, also filed an Application for
Rectification2 of the Plaintiff's registered label mark No. 436744 in Class
32 before the Intellectual Property Appellate Board ("IPAB").
16.On 14th September 2011, the IPAB, by a detailed order, rejected the
Defendants' Application for Rectification of the Plaintiff's label mark.
17.The Defendants' preliminary objection as to jurisdiction was then rejected
by this Court by an Order dated 13 th February 2012. This order was not
challenged by the Defendant.
18.The following Issues which arose for determination were then framed by
an Order dated 18th April 2013 which are as follows:
Issues
2 ORA/170/2007/TM/KOL
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1. Whether the Plaintiff proves that by the use of the impugned
trade mark 'COX 5000' or the impugned label shown at Exhibit 'L' to
the Plaint in respect of beer, the Defendants have infringed the
Plaintiff's registered trademark Nos.436744 and/or 1521743 both in
Class 32?
2. Whether the Plaintiff proves that by the use of the impugned
trademark 'COX 5000' or the impugned label shown at Exhibit 'L' to the
Plaint in respect of beer, the Defendants are passing off their beer as and
for the beer of the Plaintiff?
3. Whether the Defendants prove that the numeral '5000' is
common to the trade and is hence 'public juris' for use in sale of beer?
4. Whether the Plaintiff is entitled to damages or in the alternative
profits earned by the Defendants by the use of the impugned trademark
'COX 5000' or the impugned label shown at Exhibit 'L' to the Plaint?
5. Whether the Plaintiff is entitled to the reliefs of permanent
injunction, as prayed?
6. What Order? What Relief?
19.Despite being granted multiple opportunities, the Defendants failed to lead
evidence in the Suit. Accordingly, vide its Order dated 10 th June 2013, this
Court treated the Defendants' evidence as closed. Subsequently, the
Plaintiff's documents in evidence were marked, and the Plaintiff's Witness
(PW-1) was cross-examined by the Defendants' Advocate. Thereafter, by
an Order dated 18th January, 2016, this Court recorded that the cross-
examination of Plaintiff's Witness (PW-1) was over, as the Plaintiff was not
leading further evidence.
20.In February 2019, the Defendants filed Notice of Motion No. 500 of 2019
for stay of the Suit under the provisions of Section 124 of the Trade Marks
Act, 1999. Thereafter, sometime in July 2019, the Defendants took out
Chamber Summons No. 860 of 2019, seeking to amend the Written
Statement. However, both the Notice of Motion and the Chamber Summons
were dismissed for want of prosecution by an order dated 8th August
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2024.
21.The Suit then came up for final hearing on 3 rd January 2023, 26th August
2024, 9th June 2025, 24th June 2025, and 3rd November 2025, and on each
of the said dates, none appeared on behalf of the Defendants. This Court,
vide the order dated 3 rd November 2025, listed the Suit for final hearing on
13th November 2025 and had directed the Plaintiff's Advocates to give
notice of this date to the Defendants. Accordingly, the Plaintiff gave notice
of the aforesaid date of hearing to the Defendants. The Plaintiff has also
tendered an Affidavit of Service proving that the notice was duly served
upon the Defendants. Despite this, the Defendants have not appeared.
22. It was thus that the matter was taken up for final hearing.
Submissions of Mr. Kane on behalf of the Plaintiff
23.Mr. Kane at the outset pointed out that the Defendants had, in the Written
Statement, inter alia, taken the following defences: (i) the Defendants
adopted the impugned trade mark "COX 5000" sometime in 2003 and
have been using the same in respect of the impugned beer since then (ii)
the rival marks, i.e. , "HAYWARDS 5000" and "COX 5000", are dissimilar
(iii) the Plaintiff's label mark "HAYWARDS 5000", registered under No.
436744 in Class 32, has never been used by the Plaintiff, and the Plaintiff
has abandoned the said registered label mark (iv) the Plaintiff cannot claim
any right in respect of the numeral "5000", and the numeral "5000" is
common to the trade (v) the registration of the label mark "HAYWARDS
5000" under No. 436744 in Class 32 does not grant the Plaintiff any
exclusive right over the numeral "5000", and the said numeral "5000" has
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been disclaimed.
24.Mr. Kane, however, pointed out that while the Defendants had taken these
contentions in the Written Statement, the Defendants had not, despite
being given multiple opportunities, any evidence in support of the case
pleaded in the Written Statement.
25.He then made the following submissions, issue-wise.
"(1) Whether the Plaintiff proves that by the use of the impugned trade
mark 'COX 5000' or the impugned label shown at Exhibit 'L' to the
Plaint in respect of beer, the Defendants have infringed the Plaintiff's
registered trademark Nos.436744 and/or 1521743 both in Class 32?"
26.Mr. Kane submitted that the Plaintiff is the registered proprietor of both
the label mark "HAYWARDS 5000" and the word mark "FIVE THOUSAND"
in Class 32 in respect of "beer". He pointed out that the Defendants'
application for cancellation of the Plaintiff's registration of the label mark
was dismissed by the IPAB vide a detailed order which remained
unassailed by the Defendants. He submitted that to the best of the Plaintiff's
knowledge, the Defendants have not disputed the Plaintiff's registration of
the word mark "FIVE THOUSAND". He thus submitted that the Plaintiff by
virtue of the said registrations, had the statutory right to the exclusive use
of the registered trade marks in respect of beer.
27.Mr. Kane then submitted that the Plaintiff's label mark was a composite
trade mark label comprising the word "HAYWARDS" and numeral "5000"
both of which were the distinctive, essential and leading features of the
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said label mark. He then pointed out that Section 28 of the Trade Marks
Act, 1999, gives the registered proprietor of a trade mark, the exclusive
right to use the registered trade mark. He thus submitted that in the
present case, the Plaintiff's registration under No. 436744 for the label
"HAYWARDS 5000" includes the numeral "5000", which was the leading
and essential feature of the label mark.
28.Mr. Kane then pointed out that the Defendants' impugned trade mark
"COX 5000", which contained the numeral "5000" as an essential feature,
was identical to the numeral in the Plaintiff's label mark "HAYWARDS
5000", since it contained the same numeral "5000" as its leading and
essential feature. He also pointed out that the rival goods are identical and
it was thus that the Defendants had by the use of the impugned trade mark
in respect of identical goods i.e., "beer", infringed both the Plaintiff's label
mark as also the Plaintiff's word mark.
29.Mr. Kane submitted that the Defendants' contention that there can be no
infringement because their mark "COX 5000" was distinct and
distinguishable from the Plaintiff's trade mark "HAYWARDS 5000" was
wholly untenable. He pointed out that even a cursory comparison of both
the marks made clear that the leading, essential, and memorable feature of
the impugned mark was the numeral "5000", which was identical to the
essential feature of the Plaintiff's registered word mark "FIVE THOUSAND"
as well as the Plaintiff's registered label mark "HAYWARDS 5000".
30.Mr. Kane further pointed out that this Court has, on multiple occasions,
recognised that the numeral "5000" constituted the dominant and essential
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feature of the Plaintiff's "HAYWARDS 5000" mark. In support of this
submission, he relied upon the following decisions: Shaw Wallace and Co.
Ltd. & Anr. v. Mohan Rocky Spring Water Breweries Ltd.3, SKOL Breweries
Ltd. v. Som Distilleries & Breweries Ltd .4, SKOL Breweries Ltd. v. Fortune
Alcobrew Pvt. Ltd.5 and Sabmiller India Ltd. v. Jagpin Breweries6.
31. Mr. Kane then submitted that infringement is established if the essential
feature of a registered mark is adopted without authorisation. He also
pointed out that when comparing the two competing marks, the Court
must consider the overall and broad impression rather than a meticulous,
side-by-side comparison. He submitted that the emphasis must be on the
essential, dominant and memorable features of the mark, as these are what
consumers are most likely to recall. He submitted that, if the essential
features are reproduced, minor differences in details such as colour
schemes, get-up or packaging do not suffice to avoid infringement. He
submitted that the applicable test is that of the ordinary, unwary consumer
of average intelligence and imperfect recollection, whose impression
determines whether the rival mark is deceptively similar. In support of his
contention he placed reliance upon the judgements in the case of Reckitt &
Colman of India Ltd. vs Wockhardt Ltd. 7 , Pidilite Industries Limited v.
Jubilant Agri & Consumer Products Limited 8, Jagdish Gopal Kamath v. Lime
& Chilli Hospitality Service9 and James Chadwick & Bros. Ltd. v. The
3 MIPR 2007 (2) 185
4 2011 SCC OnLine Bom 1750
5 2012 (6) Mh.L.J. 265
6 2014 SCC OnLine Bom 4842
7 [Bombay High Court] Appeal No.1180 of 1991 in Notice of Motion No. 2141 of 1991 in Suit No. 2970 of 1991
8 2016 SCC OnLine Bom 14093
9 2015 SCC OnLine Bom 531
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National Sewing Thread Co. Ltd.10
32.Mr. Kane then submitted that the Defendants' contention that the Plaintiff
had never used and had therefore abandoned its registered label mark
"HAYWARDS 5000" was wholly misconceived. He submitted that the
Plaintiff had been openly, continuously, and exclusively using the trade
mark "HAYWARDS 5000" registered under No. 436744, as well as several
other label marks in which the leading, prominent, essential, and
distinctive feature is the expression "HAYWARDS 5000". He submitted
that these label marks were, in substance and overall commercial
impression, the same as or substantially similar to the registered label
"HAYWARDS 5000". He then placed reliance upon Section 55 of the Trade
Marks Act, 1999, to point out that such use of a trade mark was
specifically recognised. He also placed reliance upon the decision of this
Court in SKOL Breweries Ltd. particularly paragraphs 19 and 20, which
affirm that the use of a mark in a modified or updated label does not
amount to non-use so long as its essential features remain intact. He thus
submitted that the allegation of abandonment was therefore entirely
untenable both in fact and in law.
33.Mr. Kane then submitted that the Defendants' adoption of the impugned
mark was plainly dishonest and undertaken solely with the intention of
exploiting the Plaintiff's tremendous reputation and goodwill. He pointed
out that the Defendants had no plausible reason to adopt the numeral
"5000" except to trade upon the established market recognition of the
10 AIR 1951 Bom 147
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Plaintiff's well-known mark, "HAYWARDS 5000". He further submitted
that the Defendants were under a duty to conduct a search of the Register
of Trade Marks prior to adopting the impugned mark, and had the
Defendants done so, the same would have revealed the Plaintiff's
registrations. He submitted that the Defendants' failure to undertake even
this basic due diligence, coupled with the adoption of a mark so closely
approximating the Plaintiff's, made clear that the Defendants' conduct was
tainted with dishonesty and mala fides. In support of his contention that
the adopter of a trade mark is obliged to carry out a search of the Trade
Marks Register, Mr. Kane placed reliance upon the decision of the Division
Bench of this Court in Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. &
Anr.11, as well as a recent judgement of this Court in Petrofer Chemie H.R.
Fischer GMBH & Co. KG. and Anr. v. United Petrofer Limited 12.
34.He thus submitted that the Plaintiff had successfully proved that the
Defendants have infringed the Plaintiff's label mark as well as the word
mark by using the impugned trade mark "COX 5000".
Issue No.2 -
"(2) Whether the Plaintiff proves that by the use of the impugned
trademark 'COX 5000' or the impugned label shown at Exhibit 'L' to
the Plaint in respect of beer, the Defendants are passing off their beer
as and for the beer of the Plaintiff?"
35.Mr. Kane then submitted that the Plaintiff had, in addition to continuously
and extensively using the label mark "HAYWARDS 5000" since its
adoption in 1983, also widely advertised and publicised the said mark
11 2001 SCC OnLine Bom 1176
12 [Bombay High Court] Order in IA. No. 2143 of 2021 in COMIP Suit No. 275 of 2021
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across India. He pointed out that the Plaintiff's beer was marketed and sold
throughout the country through a large and well-established distribution
network built up by the Plaintiff/the Plaintiff's predecessors. He then also
pointed out that, owing to decades of substantial sales and extensive
advertising in leading publications, periodicals, and other media, members
of the trade and public have come to associate the label mark "HAYWARDS
5000" and, in particular, the numeral "5000" exclusively with the Plaintiff.
36.He submitted that the Plaintiff's uninterrupted and consistent use of the
mark since 1983 has resulted in the acquisition of extraordinary goodwill,
reputation and fame, placing the Plaintiff's marks in the category of
famous trade marks that enjoy widespread recognition. Mr. Kane further
emphasised that the well-known status of the Plaintiff's mark
"HAYWARDS 5000" has been expressly recognised not only by this Court
but also by the Delhi High Court in Shaw Wallace & Co. Ltd. & Anr. v.
Superior Industries Ltd. He then submitted that such was the recognition of
the Plaintiff's trade mark that the same has been included in the list of
well-known marks maintained by the Registrar of Trade Marks.
37.Mr. Kane thus submitted that the Defendants' impugned trade mark, "COX
5000", being deceptively similar to the Plaintiff's well-known mark,
"HAYWARDS 5000", would necessarily result in misrepresentation, and the
Defendant, by adopting and using the very same numeral "5000" for
identical goods, was leading members of the public and the trade to
believe, wrongly, that the Defendants' beer originates from, or is in some
manner connected with, the Plaintiff.
comip-19--06-2.doc
38.Mr. Kane further submitted that the Defendants vide their Written
Statement, have claimed the use of the impugned mark "COX 5000" since
the year 2003. However, the Defendants have not produced an iota of
proof to substantiate such a user since 2003. The Defendants have not
given any sort of explanation or reasoning to explain the adoption and use
of the impugned mark for the impugned beer. The Defendants have not
given credible rationale behind the impugned mark which contained
essential and prominent feature, i.e., the numeral "5000", which is identical
to the prominent feature of the Plaintiff's label mark.
39.He submitted that the Defendants were using the mark "COX 5000" in
respect of identical goods, namely beer, and a mere glance at the
photographs of the Defendants' beer bottles and those of the Plaintiff's
makes clear that the numeral 5000 is the central and eye-catching
element of the impugned mark. The comparison of Plaintiff's and
Defendants' products is as follows:
Plaintiffs' Product - Defendants' Product -
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He also pointed out that when compared with the Plaintiff's mark
"HAYWARDS 5000", in which the numeral "5000" is the leading, essential
and memorable feature, the Defendants' numeral "5000" is exactly the
same as the Plaintiff's mark.
40.Mr. Kane then also pointed out that the impugned mark is applied on
round bottles, and when viewed from certain angles, only the numeral
"5000" of the mark appearing on Defendants' products is visible, and the
same being identical to that of the Plaintiff's mark thereby causes a
likelihood of deception. He thus submitted that in these circumstances, a
consumer who encounters the Defendants' beer is likely to feel confused
and may be misled into believing that the Defendants' product originates
from or is associated with the Plaintiff's well-known "HAYWARDS 5000"
beer.
41.He submitted that it is a settled principle of trade mark law that the
Plaintiff is not required to prove actual instances of confusion, and a
likelihood of confusion or deception is sufficient to prove passing off. In
support of his contention, he placed reliance upon the decision of the
Hon'ble Supreme Court in Rustom & Hornsby Ltd. v. Zamindara
Engineering Co.13, paragraph 6 of which holds as follows:
"6. The action for infringement is a statutory right. It is
dependent upon the validity of the registration and subject to
other restrictions laid down in Sections 30, 34 and 35 of the
Act. On the other hand the gist of a passing off action is that A
13 AIR 1970 SC 1649
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is not entitled to represent his goods as the goods of B but it is
not necessary for B to prove that A did this knowingly or with
an intent to deceive. It is enough that the get-up of B's goods
has become distinctive of them and that there is, a probability
of confusion between them and the goods of A. No case of
actual deception nor any actual damage need be proved. At
common law the action was not maintainable unless there had
been fraud on A's part. In equity, however, Lord Cottenham L.
C. in Millington v. Fox (1838) 3 My & Cr 338 held that it was
immaterial whether the defendant had been fraudulent or not
in using the plaintiff's trademark and granted an injunction
accordingly. The common law courts, however adhered to
their view that fraud was necessary until the Judicature Acts,
by fusing law and equity, gave the equitable rule the victory
over the common law rule."
Issue Nos. 3, 4 and 5
"(3). Whether the Defendants prove that the numeral '5000' is common
to the trade and is hence 'public juris' for use in sale of beer?"
"(4). Whether the Plaintiff is entitled to damages or in the alternative
profits earned by the Defendants by the use of the impugned trademark
'COX 5000' or the impugned label shown at Exhibit 'L' to the Plaint?"
"(5). Whether the Plaintiff is entitled to the reliefs of permanent
injunction, as prayed?"
42.Mr. Kane then submitted that the burden of proving Issue Nos. 3 and 4 lay
upon the Defendants and that the Defendants had not led any evidence
whatsoever in the matter, nor were there any admissions by the Plaintiff's
witness in cross-examination by which these Issues could be deemed to
have been answered in favour of the Defendants. He submitted that all
these Issues would therefore necessarily have to be answered in the
negative.
43. In dealing with Issue No. 3, Mr Kane pointed out that the Intellectual
Property Appellate Board (IPAB) had, vide an order dated on 14 th
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September 2011, rejected the Defendants' Rectification Application and
decided the said Issue in favour of the Plaintiff. He further pointed out that
the Defendants, despite being given multiple opportunities, failed to
produce any material on record in support of its contention that there
were others who were using the numeral "5000" in relation to beer and
therefore it is common to the trade. He submitted that as per settled law,
the burden lies completely on the Defendants to prove that the numeral
"5000" has become common to the trade of "beer" and reiterated that the
Defendants had failed to discharge the said burden in the present case. In
support of his contention that the burden of proving that the Plaintiff's
trade mark is common in the industry is upon the Defendants. Mr. Kane
placed reliance upon the judgements in the case of Pidilite Industries Ltd. v.
S.M. Associates & Ors.14 and Corn Products v. Shangrila Food Products15.
44.In dealing with Issue No. 4, Mr. Kane submitted that by reason of the
aforesaid acts of infringement and passing off, the Defendants have caused
loss and/or damage to the Plaintiff, which the Plaintiff estimates at
Rs.5,00,000/- (Rupees Five Lakhs Only). He thus submitted that the
Plaintiff was entitled to either the damages estimated by the Plaintiff or
another sum that this Court may consider appropriate. He submitted that
in the alternative, the Plaintiff is entitled to all the profits earned by the
Defendants by the use of the impugned trade mark.
45.While dealing with Issue No. 5, Mr. Kane then submitted that the Plaintiff
had successfully proved that the Defendants had infringed both the label
14 2003 SCC OnLine Bom 143
15 AIR 1960 SC 142
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mark and the word mark and that the Defendants were passing off its beer
as being that of the Plaintiff by using the impugned marks in respect of
identical goods. He further submitted that the Defendants had also failed to
establish that the numeral '5000' is common to the trade or is public juris
in relation to "beer".
Reasons and Conclusion
46.After having heard Mr. Kane, Learned Counsel for the Plaintiff, and having
perused the evidence on record and the case law upon which reliance has
been placed, I find as follows:
A) At the outset, it is crucial to note that though the
Defendants have taken several defences in the written
statement, including prior adoption of the impugned mark,
dissimilarity of the rival marks, non-use or abandonment by
the Plaintiff, that the numeral "5000" is common to the trade,
and suppression of material facts, consent, and estoppel, the
Defendants have chosen not to lead any evidence to
substantiate any of the pleas taken in the written statement.
B) Conversely, the Plaintiff has established, through certified
copies obtained from the Register of Trade Marks, that the
Plaintiff is the registered proprietor of (i) the label mark
"HAYWARDS 5000" (having Registration No. 436744) and (ii)
the word mark "FIVE THOUSAND" (having Registration No.
1521743), both being in Class 32 in respect of beer. Crucially,
the rectification application filed by the Defendants to the
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Plaintiff's label trade mark "HAYWARDS 5000" was dismissed
by the IPAB vide a detailed order dated 14 th September 2011,
which order was never challenged by the Defendants and
therefore is finalised. Furthermore, the Defendants have never
disputed the validity of the registration of the wordmark "FIVE
THOUSAND." Thus, the Plaintiff's registration in respect of both
the label mark and the word mark stands admitted and
unimpeached, entitling the Plaintiff to the statutory protection
afforded to the registered proprietor of a trade mark under
Sections 28 and 29 of the Trade Mark Act.
C) The Plaintiff's label mark is a composite mark in which both
the word "HAYWARDS" and the numeral "5000" constitute
essential, distinctive and leading features. Under Section 28 of
the Trade Marks Act, the Plaintiff, as registered proprietor,
enjoys the exclusive statutory right to use these marks for beer
and to prevent others from using identical or deceptively
similar marks and infringing the Plaintiff's statutory rights.
From the evidence which has been placed before me, I am
satisfied that the Plaintiff has established continuous, open and
extensive use of the label mark "HAYWARDS 5000" since 1983.
The evidence produced by the Plaintiff also bears out that the
Plaintiff has consistently been using the label which is identical
or materially similar to the registered label. Thus, under Section
55, such use constitutes valid use of the registered mark.
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D) A bare perusal of the impugned mark adopted by the
Defendants, i.e., "COX 5000", leaves no doubt that the numeral
"5000" is the dominant, essential, and memorable feature of the
mark. The Defendants are using the impugned mark in respect
of the very same goods, i.e., beer, for which the Plaintiff uses its
registered trade marks. A visual comparison of the rival marks
shows that the numeral is the most prominent and striking
element in both marks, and since the numerals are identical,
this confirms the Defendants' attempt to copy the Plaintiff's
mark. The decisions in Shaw Wallace v. vs Superior Industries
Ltd., SKOL Breweries v. Som Distilleries & Breweries Ltd and
SABMiller v. Jagpin Breweries have all held that "5000"
constitutes the essential and distinctive feature of the Plaintiff's
label mark.
E) The fact that the Defendants have used the very same
numeral i.e. "5000" in the impugned mark makes it abundantly
clear that the Defendants have copied the prominent and
distinctive feature of the Plaintiff's registered marks. It is well
settled that the test for passing off is the perception of an
average consumer with imperfect recollection. In the facts of
the present case, a consumer is highly likely to be confused or
left in a state of wonderment regarding the origin of the
Defendants' beer and may readily assume an association with
the Plaintiff's product, since both marks prominently feature
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the identical numeral "5000". Accordingly, the mere use of a
different prefix, namely "COX", by the Defendants does not in
any manner dilute or negate the likelihood of confusion.
F) It is well settled that the test for infringement requires the
Court to assess the overall and broad impression of the marks
rather than a meticulous, side-by-side comparison. What is to
be considered are the essential, dominant and memorable
features of the rival marks and not the minor differences in
detail, as held in the case of Reckitt & Colman v. Wockhardt
Ltd., Pidilite v. Jubilant Agri & Consumer Products Limited ,
Jagdish Kamath v. Lime & Chilli Hospitality Services and James
Chadwick Bros. ltd. v. The National Sewing Thread Co. Ltd.
Applying the principles laid down in these decisions, on an
examination of the rival marks, i.e., the Plaintiff's label mark
and the impugned mark that the Defendants have used the very
same numeral "5000" in a manner that is identical to the
Plaintiff's registered trade mark.
G) Furthermore, the circumstances also strongly suggest that
the Defendants' adoption of "5000" is plainly dishonest. The
Defendants have not provided any explanation or reasoning for
using the same numeral, i.e., "5000". The Defendants also
failed to indicate any independent use as well as market
presence since 2007, though alleged. As held in Bal Pharma v.
Centaur and Petrofer v. United Petrofer , a party adopting a
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mark must first conduct a trade mark registry search, failing
which dishonesty is inferred. The Defendants have provided no
evidence of honest adoption or the basis for adopting "5000". It
is thus clear that the Plaintiff's mark is a well-recognised trade
mark and entered into the registered trade marks the
Defendants have, in a calculated manner, tried to come as close
to the said trade mark only in an attempt to ride on the
Plaintiff's immense reputation and goodwill.
H) The Defendants' plea of non-use or abandonment is
untenable. The Plaintiff has produced evidence which
establishes long and continuous use of the trademark under the
"HAYWARDS 5000" label. The Plaintiff's reliance upon the
decision of this Court in SKOL Breweries v. Som Distilleries, is
entirely apposite since the said decision holds that use of labels
substantially similar to the registered label constitutes use of the
registered mark. In these circumstances, the essential feature of
the Plaintiff's registered marks having been used by the
Defendants in respect of identical goods, the Plaintiff has
established a case of infringement in respect of both of the
Plaintiff's trade marks.
I) On the issue of passing off, the Plaintiff has led clear and
cogent evidence establishing that the Plaintiff has been using
the trade mark "HAYWARDS 5000" or such similar marks
continuously, openly, and extensively since 1983. The Plaintiff
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has also demonstrated that the mark has been widely advertised
and publicised across India and, crucially, included in the list of
well-known trade marks maintained by the Registrar of Trade
Marks. Both this Court in Shaw Wallace and Co. Ltd. & Anr. v.
Mohan Rocky Spring Water Breweries Ltd. and the Delhi High
Court in Shaw Wallace & Co. Ltd. v. Superior Industries Ltd.
have also taken judicial note of the fact that the Plaintiff's trade
mark HAYWARDS 5000 enjoys a high degree of recognition
across India. Through decades of uninterrupted commercial
use, extensive nationwide distribution, and sustained
promotion, the Plaintiff has therefore built substantial goodwill
and reputation in its mark.
J) As already noted in paragraph (E) above, the Defendants'
adoption and use of the mark "COX 5000" for identical goods
(beer), incorporating the very same numeral "5000", is
inherently likely to mislead and confuse the average consumer.
The very same numeral "5000" is identical to the one used by
Plaintiff. The numeral part "5000" constitutes the essential and
prominent feature of the Plaintiff's trade mark. Thus, any
average consumer, with imperfect recollection, encountering
the Defendants' product in the market is likely to be left in a
state of wonderment or confusion as to the origin of the goods
and to be led to believe that the same emanate from or have a
connection with the Plaintiff. Mere use of a different prefix, i.e.,
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"COX", along with the same number would not enable the
average consumer to differentiate between Plaintiff's and
Defendants' products. Given the Plaintiff's immense goodwill
and reputation, such confusion and misrepresentation would
lead to a real and tangible likelihood of damage to the Plaintiff's
goodwill, inasmuch as consumers or persons in the trade are
likely to associate the Defendants' beer with that of the Plaintiff.
K) It is well settled that, in an action for passing off, the
Plaintiff is not required to prove actual confusion, and it is
sufficient to establish a likelihood of confusion or deception.
The Hon'ble Supreme Court held in Rustom & Hornsby Ltd. v.
Zamindara Engineering Co., that the real test to establish
passing off is the overall impression created on the average
consumer with imperfect recollection, and a Plaintiff is not
required to show specific instances of deception if such
deception is reasonably likely. As noted in (I) above, such
likelihood is clearly established in the present case. The
photographs of the Defendants' bottles show that the numeral
"5000" is the most prominent and eye-catching element of the
impugned mark and is identical to Plaintiff's use of the numeral
"5000". This similarity is further accentuated by the fact that
both marks are used on round bottles, such that when viewed
from different angles, it visually resemble the Plaintiff's
product, thereby raising the chances of confusion.
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L) The burden of proving Issue No. 3 was on the Defendants.
The Defendants, however, did not lead any evidence, nor has
the Plaintiff's witness in evidence admitted the case of the
Defendants on the basis of which any of these Issues could be
said to have been proved. The contention that the numeral
"5000" is common to the trade was rejected by the IPAB in its
order dated 14th September 2011 dismissing the Defendants'
rectification application.
M) Insofar as the claim for damages is concerned, I find that
the Plaintiff has not led any evidence whatsoever to establish
the quantification of the said amount or to demonstrate any
actual loss suffered. No financial statements, sales figures,
comparative market data, consumer complaints, or any
material showing diversion of trade have been placed on
record. Equally, the Plaintiff has not produced any evidence of
the profits earned by the Defendants so as to sustain an order
for rendition of accounts or award of profits. It is well settled
that damages are not awarded as a matter of course and must
be specifically proved. In the absence of any such proof, the
Plaintiff's claim for damages cannot be granted. The present
Suit, being a Commercial Suit, Section 35 of the Civil Procedure
Code, 1908, as amended by Section 16 of the Commercial
Courts Act, 2015 would apply, entitling the Plaintiff to an order
of costs towards the legal fees and all other expenses incurred
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in connection with the proceedings. Hence, having due regard
to the Defendants' conduct in the present matter, the
infringement established on record, and the Defendants'
persistent abstention from the proceedings despite service, the
Plaintiff is entitled to an order of permanent injunction and to
costs.
47.In the aforesaid backdrop, I proceed to now answer the Issues as follows:
i. For the reasons recorded in paragraphs (B) to (H) and (J)
hereinabove, Issue No. 1 is answered in the affirmative.
ii. For the reasons recorded in paragraphs (I) and (K) hereinabove, Issue
No. 2 is answered in the affirmative.
iii. For the reasons recorded in paragraphs (A) and (L) hereinabove,
Issue Nos. 3 is answered in the negative.
iv. For the reasons recorded in paragraph (M) Issue No. 4 is answered
in the negative and Issue No. 5 is answered in the affirmative.
48.Thus the Suit is therefore decreed and disposed of in terms of prayer
clauses (a) and (b) which read thus :
"(a) that the First and Second Defendants by themselves, their
directors, servants, agents, stockists, and dealers, be restrained
by a permanent order of injunction of this Hon'ble Court from
infringing the registered trade mark bearing No. 346744 and
or 1521743 both in Class 32 by using in relation to beer the
trade mark "COX 5000" or the label shown at Exhibit "L"
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hereto or any trade mark containing the numeral "5000" or
any other trade mark deceptively similar to registered trade
mark No.436744 and or 1521743 or in any other manner
whatsoever;
(b) that the First and Second Defendants by themselves, their
directors, servants, agents, stockists, and dealers, be restrained
by a permanent order and injunction of this Hon'ble Court
from manufacturing, selling, distributing, exhibiting for sale
or advertising beer bearing the trade mark "COX 5000" or
label shown at Exhibit "L" hereto or any trade mark containing
the numeral mark "5000" or any other trade mark deceptively
similar to the Plaintiff's trade mark "HAYWARDS 5000" and
"FIVE THOUSAND" so as to pass off or enable others to pass off
the said Defendants' beer as and for beer of the Plaintiff."
50. The Defendants shall pay costs of Rs. 10,00,000/- to the Plaintiff.
(ARIF S. DOCTOR,J.)
