Lowenbrau Ag & Another vs Jagpin Breweries Ltd & Another
2009 Latest Caselaw 73 Del

     CS(OS) NO.1810/2007          Page No.1




                                                REPORTABLE

*                IN THE HIGH COURT OF DELHI AT NEW DELHI


+ I.A. Nos. 11355/2007 & 13772/2007 in CS(OS) No. 1810 of 2007

%                          Date of Decision : January 14th , 2009.

LOWENBRAU AG & ANR.                                  .... Plaintiffs.

                               Through Mr. Sudhir Agarwal,
                               Sr.Advocate with Mr. Hemant Singh,
                               Ms. Mamta Jha, Mr. Aparajit
                               Bhattacharya, Ms. Megha Sen & Mr.
                               Manish K. Mishra, Advocates.

                               VERSUS

JAGPIN BREWERIES LTD. & ANR.                        .... Defendants.

                               Through Mr. Shailen Bhatia & Ms.
                               Ekta Nayar Saini, Advocates.

CORAM:

HON'BLE MR. JUSTICE SANJIV KHANNA

1.

Whether Reporters of local papers may be

allowed to see the judgment?

2. To be referred to the Reporter or not ? YES

3. Whether the judgment should be reported

in the Digest ? YES

SANJIV KHANNA, J:

1. This Order will dispose of the application for interim

injunction, I.A. No. 11355/2007 and the application for vacation of

the ex parte interim injunction order, IA No.13772/2007.

CS(OS) NO.1810/2007 Page No.2

2. Lowenbrau AG and InBev India International Pvt. Ltd. (hereinafter collectively referred to as the plaintiffs, for short) have filed the present suit for permanent injunction, rendition of accounts, mandatory injunction in form of delivery up against Jagpin Breweries Ltd and Lowenbrau Buttenheim (hereinafter collectively referred to as the defendants, for short). The plaintiffs claim exclusive right to use the mark/word "LOWENBRAU", device of lion and seek a restraint order against the defendants from using the mark "LOWENBRAU", device of lion or any other trade mark or device mark identical or deceptively similar. By an ex parte injunction order dated 3rd October, 2007 the defendants have been restrained from manufacturing, selling and advertising under the mark/word "LOWENBRAU", device of lion or any other trade mark/device mark identical or deceptively similar to the said mark or device.

3. Lowenbrau A.G., plaintiff no.1 and Lowenbrau Buttenheim,

defendant no.2 are entities incorporated under the laws of

Germany. Both of them manufacture beer, which is sold in

Germany and other countries. The beer manufactured by the

plaintiff No.1 is sold under the mark/name "LOWENBRAU" with or

without other word/mark, while the beer manufactured by the

defendant no.2 is sold under the mark "LOWENBRAU

BUTTENHEIM" along with other words/marks in Germany and

other countries.

4. Both the plaintiff no.1 and the defendant no.2 claim

substantial turnovers and sales in Germany and other third CS(OS) NO.1810/2007 Page No.3

countries. There is also no dispute that the plaintiff no.1 and

defendant no.2 are not presently involved in any litigation on the

right to use the mark/word "LOWENBRAU" in any country except

in India. Both parties agree that there was litigation in Germany in

respect of right to use the mark/word "LOWENBRAU" which was

decided more than 100 years back in 1903 in favour of the

defendant no.2. It was held that the mark/word "LOWENBRAU"

cannot be monopolised as there were a number of breweries in

Germany who had been using the said word/mark for a long time

and therefore the mark/word "LOWENBRAU" cannot be used to

differentiate beer of one brewery from another.

5. Faced with the above factual background, the plaintiffs have based their claim/cause on infringement of the registered mark/word "LOWENBRAU" and their statutory rights under the Trademarks Act, 1999 (hereinafter referred to as the Act, for short). It may be however noticed that the cause title of the plaint states that the suit of the plaintiffs is both for infringement and passing off.

6. The plaintiff No.1's mark/word "Lowenbrau Export - Bier"

was registered in 1960 with the disclaimer qua the mark/word

"LOWENBRAU" and device of lion. Subsequently, the plaintiff No.1

got the mark/label "Lowenbrau munchen" registered in India in

1972. In 1994, the plaintiffs got the mark/word "LOWENBRAU"

registered in India but this time without any disclaimer. Similarly in CS(OS) NO.1810/2007 Page No.4

1969, the plaintiffs have got the mark black stylised lion registered

in India. In nutshell, the case of the plaintiffs is that the defendants

cannot use the mark/word "Lowenbrau Buttenheim" as the plaintiff

No.1 is the registered proprietor of the mark/word "LOWENBRAU"

without disclaimer and therefore in terms of the statute, i.e. the

Act, the defendants have no right to use the mark/word

"LOWENBRAU" in India. It was submitted that the use of the

mark/word "LOWENBRAU" by the defendants outside India is

irrelevant and the defendants cannot take advantage/benefit of

territorial use of the mark/word "LOWENBRAU" outside India to

defeat the statutory rights of the plaintiffs. The plea of prior user, it

was stated, is not available to the defendants as the mark was

used by the defendants for the first time in India in 1999 and on

that date the plaintiff No.1 was already the registered owner of the

mark "LOWENBRAU".

7. At this stage, only interim applications for injunction/vacation

have to be disposed of on the basis of prima facie case, balance

of convenience and irreparable harm and loss. Factual disputes

are a matter of trial and de-registration/cancellation of registration

of the mark/word "LOWENBRAU" in favour of the plaintiff No.1 is a

matter to be decided by the Registrar and in appeal.

      CS(OS) NO.1810/2007             Page No.5




7.       The    Act    including   the   earlier   enactment   Trade   &

Merchandise Marks Act, 1958 were enacted to provide for

registration and better protection of trade-marks and for prevention

of use of fraudulent marks. The Act was also passed to amend and

consolidate the law relating to trade mark. Historically, protection

of intellectual property rights in form of trade- mark, etc. is a

common law right. The object of the trade mark legislations is to

provide registration, to confer certain statutory rights to enable the

registered proprietor to sue for infringement rather than merely

passing off. The two rights, Common Law rights and statutory

rights are inter-connected and the test of deception remains the

same. The distinction between the two as explained by the

Supreme Court in Ruston Hornsby Ltd versus The Zamindara

Engineering Company, reported in (1970) 2 SCR 222 is that in

case of registration Courts are not required to examine whether

infringement is likely to deceive or cause confusion and actual

deception or actual damage need not be proved. The test is

whether the defendant's mark is same or imitation of the registered

mark. In case of passing off Courts have to examine and decide

whether the defendant is selling goods so marked as to be

designed or calculated to lead purchasers to believe that the

goods are the plaintiff's goods.

CS(OS) NO.1810/2007 Page No.6

8. Conscious of the Common Law rights, the statutory

legislations relating to trade-marks have protected unregistered

owners of marks from action or claims by registered owners. While

conferring statutory rights, the Act consciously did not affect right

of action against any person for passing off or remedies in respect

thereof. There is no penalty for those who do not register their

mark. Section 27(2) of the Act reads as under:-

" No action for infringement of unregistered trade mark

1) xxx

2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof."

9. It will be appropriate to refer to the observations of the

Supreme Court in The Registrar of Trade Marks versus

Ashok Chandra Rakhit, Ltd reported in AIR 1955 SC 558 :

"8. The third thing to note is that the avowed purpose of the section is not to confer any direct benefit on the rival traders or the general public but to define the rights of the proprietor under the registration. The registration of a trade mark confers substantial advantages on its proprietor as will appear from the sections grouped together in Chapter IV under the heading "Effect of Registration". It is, however, a notorious fact that there is a tendency on the part of some proprietors to get the operation of their trade marks expanded beyond their legitimate bounds. An illustration of an attempt of this kind is to be found in In re Smokeless Powder Co.'s Trade Mark. Temptation has even led some proprietors to make an exaggerated claim to the exclusive use of parts CS(OS) NO.1810/2007 Page No.7

or matters contained in their trade marks in spite of the fact that they had expressly disclaimed the exclusive use of those parts or matters. Reference may be made to Greers Ltd. v. Pearman and Corder Ltd. commonly called the "Banquet" case. The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks."

11. Section 28 of the Act while referring to rights conferred on

registration begins with the words "registration of trade-marks

shall, if valid, ..... ". Rights under Section 28 flow when the

registration of the mark is valid. Registration is only prima facie

evidence of its validity (Refer, P.M. Diesels Pvt. Ltd. versus

Thukral Mechanical Works reported in AIR 1988 Del. 282).

12. Section 124 of the Act reads :

"124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.

(1) Where in any suit for infringement of a trade mark-

(a) the defendant pleads that registration of the plaintiff's trade mark is invalid ; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark,

the court trying the suit (hereinafter referred to as the court), shall,-

(i) if any proceedings for rectification of the register in relation to the plaintiff's or CS(OS) NO.1810/2007 Page No.8

defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's trademark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in subsection (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of suit for the infringement of a trade mark under this section shall not preclude the court from making any CS(OS) NO.1810/2007 Page No.9

interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attracting any property), during the period of the stay of the suit."

13. A defendant can set up a defence challenging validity of

registration as provided in Section 124 of the Act but the civil

court trying the suit is mandated to stay the suit when in defence

plea of invalidity of registration is raised, to await outcome of the

rectification proceedings and if no proceeding is pending and the

court is satisfied that the plea of invalidity is prima facie tenable,

adjourn the case for a period of three months from the date of

framing of the issues to enable the defendant to approach the

authorities for rectification of the registration. Thereafter on filing

of an application for rectification trial in the suit is to be stayed till

disposal of the rectification proceeding (see, Section 124(2) of the

Act). Sub-section 4 of Section 124 states that the suit will be

disposed of on the basis of the order passed by the authorities

and the question of validity of registration will be binding on the

court. Sub-section (5) to Section 124, however, stipulates that the

civil court will be competent to pass an interlocutory order even

when procedure under sub-sections 1 to 4 is to be followed and

order of the Registrar/authorities is awaited and the suit is stayed.

CS(OS) NO.1810/2007 Page No.10

14. In view of Section 124(5) of the Act, this Court is competent

to adjudicate and decide the interlocutory application for

injunction. While deciding the interlocutory application in view of

language of Sections 28 and 124 of the Act, the Court is

competent to take prima facie view on the question of validity of

registration of the mark in favour of either side. Merely because

the mark is registered, injunction will not automatically follow,

when validity of registration is questioned in the written

statement/pleadings. While deciding whether injunction should be

granted or not, a tentative view is required to be taken on the

question of validity of registration and principles for grant of

injunction applied. However, final decision on validity of

registration is to be taken by the authorities and not by the civil

court. Registration is prima facie regarded as valid but mere

registration alone is not conclusive and is not binding on the civil

court when the application for injunction is considered and

decided. Onus however, will be on the party which questions

validity of registration to show that the registration is prima facie

and tentatively bad or invalid.

15. Section 31 of the Act reads:-

"Section 31. Registration to be prima facie evidence of validity (1)In all legal proceedings relating to a trade mark registered under this Act (including applications CS(OS) NO.1810/2007 Page No.11

under 57), the original registration of the trade mark and all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.

(2) In all legal proceedings, as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration."

16. The said section has to read harmoniously with Sections 28

and 124 of the Act. At the stage of interim application the court is

required to examine question of validity. Registration is prima

facie evidence of validity but not conclusive even at this stage.

Sub-section 2 to Section 31 of the Act, stipulates that registration

of the mark will not be held to be invalid on the ground that the

mark could not have been registered under Section 9 of the Act

except upon evidence of distinctiveness and there was failure to

submit such evidence before the Registrar, provided evidence is

filed in the legal proceedings to prove that the mark had acquired

distinctiveness on the date of registration. Legal proceedings will

include Suits filed by the registered owner of the mark against

third parties. Section 32 of the Act, states that if a mark

stands registered contrary to Section 9(1) of the Act and

registration is bad for lack of distinctiveness on the date of CS(OS) NO.1810/2007 Page No.12

registration, the party can defend the challenge by showing that

they have acquired a distinctive character after registration but

before commencement of the legal proceedings. These sections

also show that question of distinctiveness can be examined at the

stage of grant of interim injunction by the courts.

17. Section 9(1) of the Act is reproduced below:-

" 9. Absolute grounds for refusal of registration (1) The trade marks

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered:

Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark."

18. Thus whether there was violation and failure to meet

conditions of Section 9(1) of the Act, can be examined and a CS(OS) NO.1810/2007 Page No.13

tentative opinion formed by the court for deciding the interim

application.

19. One of the grounds on which registration of a mark can be

challenged is fraud. Fraud with reference to registration of trade

mark has been interpreted by Bombay High Court in Indo

Pharma Pharmaceutical Works Pvt Ltd versus

Farbenfabriken Bayer Aktiengesel reported in 1976 Bom.L.R.

1972 to mean :-

"What is meant by fraud in the context of S.32(a) has not been precisely defined. It might be a fraud for a person to procure registration of a trade mark of which he knows he is not entitled to claim the exclusive use for instance, if he knows that it is in use by another trader if an applicant is aware that there is another party, who ought to be registered, the assertion may be regarded as a deliberate attempt to deceive the Registrar which would amount to fraud such as to prevent registration in Part A from becoming conclusive after seven years."

20. It is an admitted case of the plaintiffs that the registration

granted in 1960 was subject to disclaimer qua the mark/word

"LOWENBRAU" and the device of lion. There is hardly any

evidence or material placed on record by the plaintiffs to show

and establish that the plaintiffs had started extensive marketing of

their product (beer) in India and the mark/word "LOWENBRAU"

came to acquire distinctiveness and association with the plaintiff CS(OS) NO.1810/2007 Page No.14

No.1 and disclaimer was withdrawn. Therefore withdrawal of

disclaimer/condition in 1994 (or 1972 as alleged in the plaint)

cannot prima facie be justified. The plaintiffs have not given their

sale figures in India for the period 1960 onwards. Intermittent and

minuscule sales in duty free shops, select hotels in the facts of

the present case are not sufficient to create and establish

distinctiveness.

21. It is the case of the defendants that registration in 1972 was

in respect of label "Lowenbrau Munchen" and the said contention

appears to be correct. On 18th Oct.,1994 the word/mark

"LOWENBRAU" was registered without any disclaimer in favour of

the plaintiff No.1 with their particulars mentioned in the certificate

as "Lowenbrau AG (a company duly organised under the laws of

Germany) Nymphenburger Strasse 4D-80335 Munchen

Germany, manufacturer and merchant". At the same time, the

1960 registration with disclaimer on "LOWENBRAU" and device

of lion still continues and has been repeated extended.

22. The defendants to question validity of the registration and

violation of Section 9(1) of the Act, in addition to disclaimer

made/admitted by the plaintiff No.1 themselves, have evidence in

form of judgment of a competent court in Germany in which the

plaintiff no.1 was denied exclusive right to use the mark/word CS(OS) NO.1810/2007 Page No.15

"LOWENBRAU". The defendants have also placed on record

ample evidence to show that the mark/word "LOWENBRAU" is

extensively used by several brewers of beer in Germany. It is not

only the plaintiff no.1 and the defendant no.2 but there are several

others who are using the said mark for beer. The mark/word

"LOWENBRAU" does not distinguish or distinctive of the plaintiffs,

the defendants or any of the parties dealing with beer. Users of

the said mark/word or the source, is distinguished by addition of

other words or use of suffix or prefix with the word

"LOWENBRAU". There is no evidence that selective availability of

the plaintiffs or the defendants products in duty free shops,

exclusive hotels etc. in India in the present case was sufficient to

create distinctiveness qua them in respect of the mark

"LOWENBRAU" in India. The trans-border factor and

distinctiveness has been examined alongwith the issue of prior

user.

23. Prior user and honest and concurrent user are good

defences to a suit based on action for infringement of the

registered mark.

24. Section 34 of the Act stipulates that a registered user or

proprietor cannot interfere with or restrain a third person from

using a mark identical or resembling the registered mark which he CS(OS) NO.1810/2007 Page No.16

has continuously used from a date prior to the plaintiff's first use

or from the date of registration, whichever is earlier. Who had first

used the mark/word "LOWENBRAU" in India is a disputed

question of fact. Extent, quantum and nature of sale to claim and

justify prior user rights is a mixed question of law and facts.

Plaintiffs have not stated their total turnover in India. Defendant

no.2-Company was incorporated in the year 1999. Subsequently

it entered into a joint venture agreement with defendant no.1 for

manufacture of beer under the mark/word "LOWENBRAU

BUTTENHEIM" in India. It is the case of the defendants that it has

been selling beer under the mark/word "LOWENBRAU

BUTTENHEIM" in India since 1999 and in 2003 the licence was

granted to defendant no.1 by the Excise Department also. It is

also the case of the defendants that beer under the mark/word

"LOWENBRAU BUTTENHEIM" was sold in India earlier also.

Sales of the defendants it appears are substantially higher than

the sales of the plaintiffs.

25. Learned counsel for the plaintiffs had submitted that prior

user in India alone is the determining factor and user outside India

is not relevant for Section 34 of the Act. This is disputed by the

defendants. This legal proposition cannot be answered in

absolute terms which will be universally applicable. Answer CS(OS) NO.1810/2007 Page No.17

depends upon facts of each case, extent of use in time, quantity,

area of use, whether the mark has become common to trade, or

to a geographical source/origin etc.

26. As per the plaintiffs the mark/word "LOWENBRAU" in

German stands for lion's drink or drink of a lion. The defendants

however claim that the said words in German also stands for

house of beer. In Germany it is commonly used for beer and

German beer is sold world over by the said name.

27. Both parties are German Companies. Both of them have

been using the mark/word "LOWENBRAU" all over the world and

are distinguished by other mark/word on their label/mark and not

by use of the mark/word "LOWENBRAU" or device of lion. In the

present case, two international brands, both of Germany origin

and marketing and selling beer across the world, want to expand

and market beer in India. In these circumstances the position as it

exists abroad and usage abroad cannot be ignored. The

mark/word "LOWENBRAU" has been extensively used in

Germany for beer and even the plaintiffs do not deny that it has

become descriptive and generic word in the said country and

other places where German beer is sold and consumed. The

mark/word "LOWENBRAU" is a part of public juris in Germany

and in most countries with German beer and is not distinctive of a CS(OS) NO.1810/2007 Page No.18

particular manufacturer. In view of this factual background,

including the litigation in Germany, I do not think in the present

case, the question of prior use can be judged or decided on the

basis of user in India alone. Indian market is opening up and

foreign or multinational brands have moved and/or are likely to

move. Similarly, Indian brands are likely to move out and expand

into markets abroad. National and manmade borders and

boundaries are gradually getting diluted and the entire world is

now seen as a common market. It may not be, therefore, proper

to ignore ground realities and position in the home country and

abroad in the present case specially when there is ample

evidence and material to show that the mark/word

"LOWENBRAU" is public juris and a generic word standing for

"German beer" and is not distinctive for any source. Trans-border

reputation has been accepted and recognised in India even when

the products are not being marketed and sold in India. It is

clarified that in a given case prior user in India may be relevant for

applying Section 34 of the Act, depending upon parties involved,

nature and type of the mark, its adoption and extent and nature of

use abroad etc. Each case therefore may have to be decided on

its own merits and factual background. In the present case

however while applying Section 34 of the Act, the position as

prevailing in the parent country and abroad should not be ignored CS(OS) NO.1810/2007 Page No.19

and the prior user has reference to user in India and abroad.

Plaintiffs cannot claim different treatment and rights in India viz.

the entire world where both parties are using the mark/word

"LOWENBRAU". It will be unjust and unfair.

28. Aktiebolaged Jonkoping Vulcean versus S.V.

Palanichany Nadar and others, reported in AIR 1969 Cal. 43,

relied upon by the plaintiffs is distinguishable. In the said case the

appellant therein was a Swedish Company that was earlier

marketing safety matches under the registered mark "Three

Stars" but due to Government policy was prohibited from selling

safety matches in India. The Indian company had sought

cancellation of the registration of the mark on the ground of non-

user. In that context reference was made to English decisions to

decide the question whether non-use of the trade-mark was due

to special circumstances. The Court also examined the question

of abandonment with reference to non-user. It was observed that

while examining the question of cancellation of registration, use

and advertisement abroad, outside the territory of India is not of

assistance. It was further held that the trade mark law is a

municipal law which is not extra territorial in nature and is

confined to territorial limits of India. The question involved in the

said case related to cancellation of registration in India. In the CS(OS) NO.1810/2007 Page No.20

present case however, the question relates to the common law

rights of the defendants and the extent to which these are

protected under the Act. If the proposition or the claim of the

plaintiffs is to be accepted then even a claim under common law

rights of passing off based on trans-border reputation cannot be

accepted. Trans-border reputation is accepted and is a legal right

which can be enforced in India. Section 34 of the Act accepts

common law rights of an unregistered user of identical or

resembling trade mark, provided he is a prior user. It may noticed

that the English Law on trans-border reputation when the foreign

manufacturer does not have business interest in the said country

is somewhat different. Goodwill is treated local and

advertisements in periodicals, media, internet and travel abroad

were not considered sufficient in many cases. Normally the

English Court's insist on a minimal business interest in the said

country. (See, pages 456 to 462 in Kerly's Law of Trade Marks

and Trade Names, Fourteenth Edition).

29. Concurrent and honest user was a valid defence against an

action for infringement under the Trade Mark and Merchandise

Marks Act,1958. Legal rights of a third party to use a mark without

causing infringement of a mark registered under the said 1958 CS(OS) NO.1810/2007 Page No.21

Act, is protected under Section 159(5) of the Act. Defendants will

be entitled to benefit and defend this action relying upon honest

and concurrent use. Even otherwise Sections 9(1), 30(1) and(2)

and 35 of the Act do recognise honest concurrent use and on the

conditions mentioned therein being satisfied, defend a suit for

infringement. Honest and concurrent user is always recognised as

a defence to action alleging infringement.

30. Section 30 (1) of the Act stipulates that a person cannot be

prevented from using a registered trademark provided the use is

in accordance with honest practices in industrial or commercial

matters and does not take unfair advantage of or is detrimental to

the distinctive character or repute of the trade mark. Similarly

Section 30(2) of the Act permits use of trade mark in relation to

goods or services indicating quality or geographical origin.

Section 35 of the Act also protects a person, who bonafidely uses

a mark, which describes character or quality of his goods or

services. It is the contention of the defendants that word

"LOWENBRAU" has become synonymous with beer of German

origin and source. The defendants have filed substantial evidence

and material in support of the said contention. The defendants

have prima facie established that the mark "LOWENBRAU" is being

bonafidely used by them and some others all over the world and CS(OS) NO.1810/2007 Page No.22

is bona fide description of the character or quality of the goods i.e.

the beer, manufactured by a German company or German Beer.

Honest and concurrent user outside India by the defendants and

others is practically admitted by the plaintiffs. For the reasons

stated above, in the facts of the present case honest and

concurrent user outside India alongwith the plaintiffs, without any

objection for last 100 years, is a valid defence when both parties

want to expand into India. Reference in this regard can be made

to the decision of this Court in SPL Ltd. Versus Himalyan Drug

Company Limited reported in 1997 (67 DLT 803) in which it was

observed :

"Any symbol, word or get up commonly used by traders in connection with their trade and in respect of which no particular trader can claim an exclusive right to use may be considered common to that particular trade, or public, juris. Further words, expressions, or devices which are descriptive of particular goods are open to use by all persons engaged in the trade. Such matters which are generally of a non distinctive character may or may not be in actual use at any particular time. What is important is that the trading public has a right to use them in connection with their business.

21. Whether a matter is or is not common to the trade is a question of fact. A feature which is common to one trade may not be so to a different trade. Similarly a mark may continue to be trade mark in some countries and public Jurisdiction in others. A mark which was common to the trade at one time may in CS(OS) NO.1810/2007 Page No.23

course of time become distinctive and vice versa. A word or words used by a number of firms as part of their designation may be considered as words in common use (See:

Law of Trade Mark and Passing Off, P.

Narayanan, 4th Edn., para 14.2)"

31. The above facts also reveal that the balance of convenience

does not justify grant of interim injunction. The defendant no.1-

Company was incorporated in 1999 and the defendant no.2 has

been marketing their products since 2003-04. In the first year the

sales were more than 9000 cases, which increased to more than

68000 cases in 2004-05. In 2005-06 its sales came down to more

than 9000 cases again to go up nearly 34000 cases in 2006-07.

The plaintiffs filed the present Suit in October 2007, after the

defendants had already set up their factory and started marketing

their products. The plaintiffs are yet to start production in India

and their turnover in India is not disclosed. The defendants have

pleaded acquiesce and estoppel alongwith delay. Both the parties

are Germans and have been marketing their products world wide

using the mark/word "LOWENBRAU" without objection from the

other. The balance of convenience does not therefore support the

plaintiffs' claim for grant of injunction. If both the parties can sell

beer all over the world with the common mark/word

"LOWENBRAU" but can be distinguished from each other, there

is no reason/cause why they cannot concurrently sell beer in India CS(OS) NO.1810/2007 Page No.24

using the same mark/word "LOWENBRAU". There are other

distinguishing features in their marks and labels to separate them.

There are no special grounds or reasons why a consumer of beer

in India will not be able to distinguish between the two beers and

will be deceived. Plea of passing off cannot be sustained.

32. In view of the above findings, the ex parte stay order is

vacated. I.A. No.11355/2007 is dismissed and I.A. No.13772/2007

is allowed. The defendants will be also entitled to cost which is

assessed at Rs.20,000/-. Observations and findings in this order

are tentative/prima facie and will not be binding on the Registrar

and appellate authorities under the Act and the suit will be

decided without being influenced by the present findings.

List before the regular Bench for further orders/directions on

28th January, 2009.

                                             (SANJIV KHANNA)
                                               JUDGE
  JANUARY         14, 2009.
  P