Delhi High Court
Radico Khaitan Limited vs Carlsberg India Private Limited on 16 September, 2011
Author: Manmohan Singh
* THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 16.09.2011
I.A. No. 8122/2011 in CS(OS) 1216/2011
RADICO KHAITAN LIMITED ..... Plaintiff
Through: Mr. Neeraj Kishan Kaul, Sr. Adv. with
Mr. Vivek Dholakia, Mr. Deepak
& Ms. Navpreet Kaur, Advs.
versus
CARLSBERG INDIA PRIVATE LIMITED ..... Defendant
Through: Dr. Abhishek Manu Singhvi, Sr. Adv.,
Mr. Rajiv Nayar, Sr. Adv. Mr. Sandeep
Sethi, Sr. Adv. with Mr. Peeyoosh
Kalra & Mr. Kamal Sharma, Mr. C.A.
Brijesh & Ms. V. Mohini, Advs.
CORAM:-
HON‟BLE MR JUSTICE MANMOHAN SINGH
1. Whether Reporters of local papers may be allowed to
see the judgment? Yes
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in Digest? Yes
MANMOHAN SINGH, J.
1. By this order I shall dispose of the plaintiff's interim
application being I.A. No. 8122/2011 under Order XXXIX, Rules 1 & 2
read with Section 151 CPC. The plaintiff has filed the present suit for
permanent injunction to restrain infringement, passing off, dilution and
damages under Sections 29, 56 and 135 of the Trade Marks Act, 1999.
2. CASE OF THE PLAINTIFF
(a) The plaint states that the plaintiff has been continuously and
extensively carrying on an established and reputed business in respect of
manufacture and sale of alcoholic beverages in India, as well as
numerous countries across the world directly by itself and through its
affiliates, subsidiaries, licensees, etc. The plaintiff manufactures a host of
products including juices of various kinds, drinking water, liquor, such
as, Extra Neutral Alcohol (ENA), Industrial Alcohol (Rectified Spirit),
Indian made Foreign Liquor (IMFL), Country Liquor and Cane Juice
Spirit. Besides, the plaintiff has a tie-up with 22 bottling units all over
the country for bottling of IMFL under their popular brands.
(b) It is stated that the plaintiff commands a major presence in the
beverage industry and in connection with its business, it owns and uses
many trademarks which have acquired an enviable reputation and
goodwill. The well known brands of the plaintiff include CONTESSA
RUM, SPECIAL APPOINTMENT, MASTIH, MASTI GOLD,
OFFICER'S CLUB, AFTER DARK, EAGLES DARE apart from the
family of 8 PM marks.
(c) The plaintiff adopted the mark 8 PM in the year 1997 in
relation to whisky and has been extensively using the same since 1999.
As a matter of fact, the Plaintiff sold a record one million cases of the 8
PM whisky in the first year alone of its launch, which was recorded in the
Limca Book of Records.
(d) The Plaintiff is the Registered Proprietor of the 8 PM/8PM
family of marks not only in India but also in other jurisdictions. The mark
8 PM is registered in India in class 32 and 33 and other classes details of
which are given as under:
REGISTRATION IN INDIA
Trademark Number Class Status
8 PM 783398 33 Registered and valid
till 24.12.2017
8 PM 978842 32 Registered and valid
till 24.12.2020
8 PM Bermuda 1202398 33 Registered and valid
XXX till 29.05.2013
8 PM Royale 1332504 25 Registered and valid
(Label) till 17.01.2015
8 PM Royale 1332505 41 Registered and valid
(Royale) till 17.01.2015
8 PM Excellency 1333994 33 Registered and valid
Brandy till 24.01.2015
8 PM Bermuda 1333995 33 Registered and valid
White Original till 24.01.2015
FOREIGN REGISTRATION
Country Trademark Registration No. Class Status
Morocco 8 PM 89305 33 Registered
Bermuda 01.12.2003
XXX Original
Caribbean
Rum
Nepal 8 PM 21483 33 Registered
Bermuda 12.04.2004
XXX Original
Caribbean
Rum
Morocco 8 PM Royale 91040 33 Registered
Smooth
Indian whisky
Blended With
Scotch
Nepal 8 PM Royale 21748 33 Registered
Smooth
Indian
Whisky
Blended with
Scotch
Morocco 8 PM Special 92019 33 Registered
rare Blend of 24.05.2004
Indian whisky
& Scotch
Whisky 09.03.1999
AR Blended With Registered
Scotch
Nepal 8 PM Rare 15368/07 33 Registered
whisky 08.06.2000
Blended with
Scotch
Canada 8 PM 696618 Registered
Bermuda 17.09.2007
(e) The Plaintiff is also using the trademark 8 PM for its other
products like 8 PM Bermuda XXX Rum (2003), 8PM ROYALE (label)
(2003), 8 PM EXCELLENCY Brandy (2005), 8 PM BERMUDA
WHITE ORIGINAL CARIBBEAN RUM (2005).
(f) The Plaintiff enjoys substantial turnover from the sale of its 8
PM/8 PM range of products. The modified details of the same are
mentioned in the affidavit of Mr. Satish Chandra Pandey dated
05.07.2011 the said figures are:-
Financial Year Sales Turnover Rs.
(in Million)
2006-2007 2565.9
2007-2008 2325.7
2008-2009 2136.4
2009-2010 2325
2010-2011 2452.1
3. CASE AGAINST THE DEFENDANT AS PER THE
PLAINTIFF
(i) The defendant is engaged in manufacturing and marketing of
alcoholic beverages more specifically beers. The Defendant has been
using the brand PALONE/OKACIM PALONE in relation to its strong
beers overseas. The brand was launched by the defendant in India in the
year 2007 but it was not clicked in the Indian Market. Therefore, the
Defendant in Feb, 2011 launched PALONE 8 (alleged to be a super
strong beer) in India, numeral 8 being used in a prominent fashion and in
fact as a primary mark.
(ii) The impugned mark/numeral 8 is being used by the Defendant
as a primary mark despite PALONE/OKACIM PALONE, admittedly,
being the Defendant's main brand. The Defendant has also applied for
the registration of the PALONE 8 label on 07.02.2011 with the user
claim of 23.01.2011. Also, the website of the parent company of the
Defendant www.carlsberggroup.com lists PALONE 8 as on of its main
brands.
(iii) Being in the same trade and being well aware of the
reputation of the Plaintiff's 8 PM/ 8 P.M family of marks, the conduct of
the Defendant in adopting and using the impugned mark/numeral 8 in
respect of same goods and that too in same font and colour with mala fide
intention which is also corroborated by the fact that the Defendant is also
using a slogan ―8 KA DUM‖ similar to that of the Plaintiff's well known
campaign ―AATH KE THAATH‖. The Defendant is also using the
expression ―ROYALS‖ deliberately as ROYALE is part of the of the
Plaintiff's ―8 P.M‖ family of marks.
4. In view of the abovementioned facts, it is alleged that the
conduct of the Defendant is in violation of Plaintiff's statutory and
common law rights, therefore, the Defendant be restrained from using the
Numeral 8 in relation to their products.
5. DEFENDANT‟S CASE
(a) The defendant states that it is a company incorporated under
the Companies Act, 1956 having its registered office at Delhi.
Defendant's parent company, Carlsberg A/S, Denmark, including its
subsidiaries and affiliates is one of the leading brewery groups in the
world including beers and other beverage brands which are sold in more
than 150 countries.
(b) In India they have launched CARLSBERG, TUBORG,
OKOCIM PALONE and variants thereof. In the year 2006, Carlsberg
Group decided to enter India and incorporated South Asia Breweries
Private Limited on May 3, 2006. Later on, the said company changed its
name to Carlsberg India Pvt. Limited (Defendant herein) with effect from
February 23, 2009.
(c) By the end of year 2009, Defendant has been using three
brand names viz. CARLSBERG in ‗Super Premium Mild'; TUBORG in
‗Premium Mild'; and OKOCIM PALONE in ‗Premium Strong Beer'
(6.5% ABV - Alcohol by Volume).
(d) The brand OKOCIM PALONE is being used internationally
since the year 2005 and in India since the year 2007. OKOCIM
PALONE label is registered as a trade mark in India since the year 2007.
Considering that there is a high demand for strong beer in the Indian
market, the Carlsberg Group through Defendant, in January 2011,
launched a stronger variant of its well-established brand OKOCIM
PALONE under PALONE 8 label having Alcohol By Volume (ABV) of
approximately 8%.
(e) It was for the first time that a beer comprising approximately
8% Alcohol By Volume was launched in India. ‗PALONE 8' traces its
roots to the earlier brands OKOCIM PALONE as well as BALTIKA 8,
GRIMBERGEN GOLD 8 and DRAGON 8. Defendant filed an
application for registration of the marks ‗PALONE 8 label', ‗PALONE 8
DUMDAR MELA', and ‗8 KA DUM' with the Trade Marks Registry.
Defendant applied for registration of PALONE 8 label under
No.2096009.The product under the PALONE 8 label also became a great
success.
(f) The gross sales revenue of the same from January 2011 to
April 2011 is in the region of Rs. 262.2 million (26.2 crore).
6. The entire case of the plaintiff in nut-shell is that the use of
the numeral ‗8' by the defendant in relation to one of its products which
is beer under the mark PALONE infringes and violates the statutory and
common law rights of the plaintiff in its well known and registered mark
‗8 PM, numeral 8 being its essential, distinguishing and identifying
feature.
7. Learned Senior counsel for the plaintiff Mr. Neeraj Kishan
Kaul has made his submissions which can be enumerated as under:
a) Firstly, learned counsel for the plaintiff argued that the present
case is a case involving the infringement of the trade mark wherein
the trade mark 8 PM is registered with the plaintiff is 8pm in class
33 in respect of whisky and class 32 in respect of the juices of
various kinds, drinking water and other allied goods.
b) Mr. Kaul submits that the Trademarks Act, 1999 provides for the
registration and protection of numerals as trademarks. The
definition of the mark under Section 2 (m) of the Trade Marks Act,
1999 expressly covers numerals. Courts have consistently upheld
rights in numeral marks and have also passed the orders to restrain
from time to time in infringement cases holding the misusers of the
numeral mark liable. Learned senior counsel has referred the
following decisions in support of his first submission:
(i) Shaw Wallace & Co. v. Superior Industries Ltd.
2003 27 PTC 63 - Para 1, 5, 12, 14, 15-20, 27
(Marks Involved: Haywards 5000/Superior 5000)
(ii) Jagan Nath Prem Nah v. Bhartiya Dhoop Karyalaya
AIR 1975 Del 149 - Para 2, 8, 17-19
(Marks Involved: Kasturi 555/ Anand Durbar 555)
(iii) M/s Vrajlal Manilal v. Adarsh Bidi Co.
1995 1 Arb. L.R 471-Para 2, 7, 10-12
(Marks Involved: 22/122)
(iv) Kamal Trading v. Gillette UK Limited
1988 1 (7' O Clock)
c) It is submitted by Mr. Kaul that it is a classic case of infringement
of trademark wherein the Plaintiff is the Registered Proprietor of
the 8 PM in India but also in other countries of the world. The
details of registration are given in Para 4 of the plaint. Section 28
of the Trade Mark Act, 1999 gives the registered proprietor the
exclusive right to use of the registered mark and the use of an
―identical‖ or ―deceptively similar‖ mark by another without any
permission/authority amounts to infringement of the registered
mark under Section 29 of the Act.
d) The registration of the plaintiffs' trademarks is not challenged by
the defendant or any third party, thus it is a valid registration
within the meaning of Section 32 of the Act and the court has to
take the prima facie view of the validity of the mark at this stage.
e) In support of his submission on the question of infringement, he
has relied upon the following decisions: The defendants' usage of
the mark 8 as a trade mark without being a registered proprietor is
a clear invasion upon plaintiff's rights.
i. Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories AIR1965SC980 - at 989-
990 page wherein it was held that:
"The action for infringement is a statutory
remedy conferred on the registered proprietor
of a registered trade mark for the vindication
of the exclusive right to the use of the trade
mark in relation to those goods"
"if the essential features of the trade mark of
the plaintiff have been adopted by the
defendant, the fact that the get-up, packing
and other writing or marks on the goods or on
the packets in which he offers his goods for
sale show marked differences, or indicate
clearly a trade origin different from that of the
registered proprietor of the make would be
immaterial"
ii. In the case of American Home Products v. Mac
Laboratories AIR 1986 SC 137 in Para 36 it was held as
under:
"When a person gets his trade mark
registered, he acquires valuable rights by
reason of such registration. Registration of his
trade mark give him the exclusive right to the
use of the trade mark in connection with the
goods in respect of which it is registered and if
there is any invasion of this right by any other
person using a mark which is the same or
deceptively similar to his trade mark, he can
protect his trade mark by an action for
infringement in which he can obtain
injunction...."
iii. In the case of National Bell Co. v. Metal Goods Mfg. Co.
AIR 1971 SC 898 at page 903 it was held as under:
"On registration of a trade mark the
registered proprietor gets under Section 28 the
exclusive right to the use of such trade marks
in relation to the goods in respect of which the
trade mark is registered and to obtain relief in
respect of any infringement of such trade
mark."
f) Mr. Kaul has referred the two images of the products used by the
parties in the present case in order to show that the defendant has
taken the essential and dominate feature of the main 8 without any
valid justification.
PLAINTIFF DEFENDANT
g) Learned counsel for the plaintiff argued that the mark 8PM of the
plaintiff is registered in respect of whisky which is well known and
famous mark and the use of the mark by the defendant is in respect
of beers which are the goods of the same description
within the meaning of Section 29 (1), (2) and (4) of the Trade
Mark Act, 1999.
h) Thus, the infringement of the present trade mark 8PM of the
plaintiff is in respect of the same or similar goods and therefore the
said infringement is bound to cause confusion and deception in the
market as to the source of the goods.
8. By relying the said observations of the Apex Court, learned
counsel has explained that there is no doubt that the courts must respect
the registration and the valuable rights of the plaintiff in the form of
registration must be given due credence in the form of interim injunction
and third party use of the same mark becomes irrelevant and injunction
must follow in the present case.
9. On the aspect of an action of passing off, Mr. Kaul submits
that the defendant has deliberately and intentionally adopted and used the
essential feature of the mark i.e. numeral 8 in order to take the advantage
of the goodwill and reputation gained by the plaintiff in relation to its
business as two sets of products i.e. whisky and beers are allied and
cognate goods which are purchased by the same set of customers and
sold by the same shopkeepers. Both set of goods are placed side by side
at the selling counter and served to the consumer at the same time.
10. Mr. Kaul has thus concluded the arguments by stating that the
present case is a straightforward case of infringement of the registered
trade mark rights of the plaintiff and the prima facie case is in the favour
of the plaintiff as the defendant by misusing the numeral mark 8 has
slavishly copied or imitated the mark of the plaintiff. The balance of
convenience also falls in favour of the plaintiff as the defendant is the
recent entrant in the market. The plaintiff will suffer irreparable loss in
the event of rejection of injunction. Therefore, this court should grant ad
interim injunction restraining the defendants from infringing the plaintiff
mark 8PM.
11. Per contra, learned Senior Counsel Dr. A.M. Singhvi,
appearing on behalf of the defendants has made his submissions which
can be crystallized in the following terms.
(i) Dr. A.M. Singhvi in his first submission states that the
plaintiff is only engaged in the business of manufacturing and marketing
of ‗Whisky, Rum' (Class 33) under the brand 8 PM and is not at all in the
business of ‗beer' which falls in Class 32. The plaintiff has no
registration for the brand 8 PM for ‗beer'. Plaintiff has got registered the
mark 8 PM in Class 32 but only in respect of mineral water and not beer
etc. in Class 33. Thus, no case of infringement is made out as the
plaintiff's trademark is 8 PM in relation to Whisky and Rum etc. and
numeral 8 is admittedly not identical with the mark of the plaintiff 8 PM
Therefore, the test of passing off would apply while comparing the two
marks in question.
(ii) The defendant's brand BALTIKA 8 is being used in Russia
since the year 2001 and is registered in the USA in Class 32 in respect of
‗beer' with user claimed since October 2007. The defendant is not using
the mark 8 PM all alone. It is being used along with international brand
of the defendant who is engaged in the business of beers.
(iii) That the defendant has obtained excise registrations for its
PALONE 8 label in 24 States of the country. The said product was first
launched in January 2011 in Maharashtra. Defendant's affiliate/s
has/have been using the numeral 8 along with/as a part of famous
international brands such as BALTIKA 8, GRIMBERGEN GOLD 8,
DRAGON 8. The instant Suit was filed on May 16, 2011. On the said
date, defendant did not even had an excise approval in Delhi to sell beer
under PALONE 8 label. Therefore, the contention of Plaintiff that the
products of Defendant under PALONE 8 label are available within the
jurisdiction of Delhi is false, misleading and absurd.
(iv) That the plaintiff is not entitled to the exclusive proprietory
rights over the numeral mark ―8‖ due to following reasons:
Plaintiff has not obtained any separate registration for ‗8' or
‗P.M.' per se nor has filed any application for registration of
‗8' per se. In order to buttress his submission, learned senior
counsel has read section 17 of the Trade Marks Act which
provides for the part of the trade mark and nature of rights
available in the case of part of the trade mark. It is
contended by the learned senior counsel for the defendant
that the Plaintiff is seeking to assail Defendant's use of ‗8'
as a part of the PALONE 8 label on the basis of its alleged
registration ‗8 PM'
Plaintiff's mark 8 PM is descriptive. It attributes 8 PM to
the preferred recreation time of the evening when everyone
desires to unwind. It is argued that the registrar was
conscious of the fact that the mark of the plaintiff is
inherently non-distinctive, the Registrar (under the Trade
Marks and Merchandise Act, 1958 which has now been
repealed) granted registration to Plaintiff for its trade marks
8 PM in Part B of the Register which are comparatively
weaker trade marks and the court can question the same. As
the mark 8 PM is descriptive and non-distinctive, it does not
entitle Plaintiff to claim exclusive rights over the numeral 8
to the exclusion of others.
12. After reliance, as mentioned above, it is stated by Dr. Singhvi
that the numeral ‗8' is publici juris and common to the trade therefore,
question of any exclusivity in respect thereof to the Plaintiff alone does
not arise. As it has been mentioned in Narayanan's Law of Trade Marks
and Passing Off 6th Edition @ page 180 para 8.63 that "Numeral though
come within the scope of the definition of a mark, they are and cannot
be prima facie considered distinctive or capable of distinguishing as
they are descriptive of the number of articles...". He argues that the
trademark consisting of a single number will always be considered as
lacking distinctive character unless presented with distinctive stylization.
Single numbers which have little or no stylization will normally be open
to objection because they are often used in trade to indicate model or
catalogue reference.
13. In view of the abovementioned facts and documents referred,
Dr. Singhvi says that the plaintiff has failed to make out any case of
infringement of trademarks and passing off. In substance, the following
reasons are given:
(i) Plaintiff has no registration for the numeral ‗8'
per se and no registration in respect of beer. It
is common to the trade. The defendant is not
using the numeral 8 per se
(ii) The goods viz. beers and whisky are totally
different; and belong to different segments as
class of consumers is different; it is impossible
for one to buy whisky for beer or vice-versa;
even illiterate consumers will not be confused.
(iii) The labels/packaging/bottles of 8 PM whisky
and PALONE 8 beer are totally different.
Therefore, there has been no confusion and
deception.
(iv) Defendant's use of ‗8' is indicative of the kind,
quantity and characteristics of the product in
question. The Alcohol By Volume in
Defendant's product is approximately 8%.
Thus the use of the numeral ‗8' by Defendant is
a bona fide description of the character of its
goods.
(v) Plaintiff's whisky is priced at approximately
INR 300 whereas Defendant's beer bearing the
label PALONE 8 is priced at INR 65. The
plaintiffs sale of products and 8 PM is lower
than defendant's sale.
14. As regards the objection of the plaintiff about the Defendant's
use of slogan 8 KA DUM and the expression ROYALS on the basis of
its erstwhile campaign AATH KE THAATH and the expression
ROYALE. No relief has been claimed in the Suit in respect of the same
thus the injunction does not arise. About the mark Royal used by the
defendant is concerned it is stated that though no relief is sought in the
plaint but even the plaintiff's application of 8 PM Royale has been
opposed by the third party. It is stated that the Plaintiff has neither any
interest in ‗beer' nor has any registration in respect of ‗beer' in Class 32
for its mark 8 PM.
15. Thus, it is alleged that the plaintiff has not been able to make
out a prima facie case of infringement for the grant of injunction. This is
more so when there are several players in the whisky trade using 8
numeral but the plaintiff has chosen to sue the defendant only who is
dealing in respect of the beers, therefore, no case is made out by the
plaintiff for infringement rather in view of the peculiar facts of the present
case, the plaintiff has not met its case under Section 29(4) as the plaintiff
has not been able to show that the main 8 PM has well known status
which seems unfeasible in view of several players in the market using the
expression or numeral 8 in respect of whisky itself who have more
business than the plaintiff and their user of the mark 8 numeral is prior to
the use of the plaintiff.
16. Learned Senior Counsel Dr. Singhvi has vociferously argued
that the use of the numerals are quite common in the liquor industry as
demonstrated from the above listed drinks emanating from well known
brands. It is further argued that the numeral mark is per se non
distinctive.
Learned Senior Counsel submitted that it is difficult to ascribe
distinctiveness to the numeral unless very high degree of distinctive
character is shown. Furthermore, the said distinctiveness has to be seen
from case to case basis and the plaintiff in the present case has been
miserably failed to show any such distinctiveness with respect to numeral
8 per se in respect of whisky even due to the prevalent trade practice and
thus the plaintiff is clearly disentitle to any such protection.
17. The next submission of the learned Senior Counsel is that the
plaintiff has approached this court after inordinate delay of 5
months after attaining the knowledge about the defendant's products
under the mark PALONE 8. This has been explained by the plaintiff by
stating that Plaintiff's knowledge of the Defendant/its product dates back
to January 2011 when Defendant launched its product under PALONE 8
label in Maharashtra. Defendant's label was published on the Notice
Board of the Excise Department, Mumbai for 15 days in January, 2011
for objections, if any. Further, Plaintiff filed objections to the application
filed by Defendant with the Excise Office, Hyderabad for approval of
PALONE 8 label in February 2011, which was granted in favour of the
Defendant.
18. Lastly, Dr. Singhvi, learned senior counsel has argued that the
plaintiffs claim of passing off is also not made out due to following
reasons:
a) Defendant's products under PALONE 8 label are not so far
available in Delhi.
b) Defendant is using PALONE 8 label comprising its flagship brand
PALONE whereas Plaintiff's mark is 8 PM
c) 8 PM does not command goodwill/reputation.
d) There has been no misrepresentation on the part of Defendant.
e) The source of origin of the product bearing the PALONE 8 label
is clearly discernible.
f) The goods viz. beers and whisky are totally different; and belong
to different segments.
g) The labels/packaging/bottles of 8 PM whisky and PALONE 8
beer are totally different.
h) The Defendant's bottle is specially designed wherein its name is
clearly embossed on the bottle.
i) Class of consumers is different; it is impossible for one to buy
whisky for beer or vice-versa; even illiterate consumers will not
be confused. [Please see Khoday Distilleries Limited Vs. Scotch
Whisky Association].
j) Plaintiff's whisky is priced at approximately INR 300 whereas
Defendant's beer bearing the label PALONE 8 is priced at INR
65. [Please see White Horse Distillers Limited Vs. The Upper
Doab Sugar Mills Limited].
k) 8 KA DUM and AATH KE THAATH cannot be mistaken for
each other. In any case 8 KA DUM is a slogan used on the
product of the Defendant to indicate the strength i.e. 8% Alcohol
By Volume, whereas the campaign AATH KE THAATH was in
respect of music CDs of the Plaintiff which is no longer in use.
Therefore, it is argued by the defendant that in view of all
abovementioned factors the defendant cannot pass off its goods as that of
goods of the plaintiff.
19. I have gone through the pleadings, application, reply and
documents filed therewith and also the submissions made by the parties
at the Bar. Before dealing with the submissions of the parties, I deem it
appropriate to discuss the law on the subject on the question of
infringement of trade mark.
INFRINGEMENT
20. The law relating to infringement of a registered trademark has
been envisaged u/S 29 of the Trade Marks Act, 1999 and exclusive
rights granted by virtue of registration under Section 28 which reads as
under:-
"29. Infringement of registered trade marks -
"Infringement of registered trade marks.-
(1) A registered trade mark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted use,
uses in the course of trade, a mark which is identical with, or
deceptively similar to, the trade mark in relation to goods or
services in respect of which the trade mark is registered and in
such manner as to render the use of the mark likely to be taken as
being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted use,
uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of
the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or
similarity of the goods or services covered by such registered trade
mark; or
(c) its identity with the registered trade mark and the identity of the
goods or services covered by such registered trade mark, is likely
to cause confusion on the part of the public, or which is likely to
have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub- section (2), the
court shall presume that it is likely to cause confusion on the part
of the public.
(4) A registered trade mark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted use,
uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to
those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use
of the mark without due cause takes unfair advantage of or is
detrimental to, the distinctive character or repute of the registered
trade mark. ......‖
―28. Rights conferred by registration -
(1) Subject to the other provisions of this Act, the registration of a
trade mark shall, if valid, give to the registered proprietor of the
trade mark the exclusive right to the use of the trade mark in
relation to the goods or services in respect of which the trade mark
is registered and to obtain relief in respect of infringement of the
trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under
sub-section (1) shall be subject to any conditions and limitations to
which the registration is subject.
(3) Where two or more persons are registered proprietors of trade
marks, which are identical with or nearly resemble each
other, the exclusive right to the use of any of those trade marks
shall not (except so far as their respective rights are subject to any
conditions or limitations entered on the register) be deemed to
have been acquired by any one of those person as against any other
of those persons merely by registration of the trade marks but each
of those persons has otherwise the same rights as against other
persons (not being registered users using by way of permitted use)
as he would have if he were the sole registered proprietor.‖
By mere reading of these provisions, it is clear that a
registered trademark is infringed by a person who not being a registered
proprietor, uses in the course of trade a mark which is identical or
deceptively similar in relation to the goods or services which are identical
or similar to that in respect of which the trademark is registered without
the permission of the trademark owner.
21. So far as infringement qua different goods is concerned,
separate enactment of Section 29(4) makes it clear that the strict rigors
are prescribed as against the ordinary case of similar goods wherein a
registered proprietor has to establish that the registered trademark has
reputation in India and is of such a nature wherein the use of the mark by
the other side without due cause would tantamount to taking unfair
advantage or detrimental to the distinctive character or repute of a
trademark.
22. A reading of Section 29(4) of the Act would reveal that the
said protection qua different goods is earmarked by the Legislature for
the trademarks which are either highly reputed or well known or famous
trademarks and enjoy either high level of distinctiveness or the marks
which are inherently distinctive in nature or has become distinctive due to
their repute; the use of which will cause detrimental to the distinctive
character and repute of the trademark only when the ingredients of
Section 29(4) are satisfied conjunctively which is sub sections (a), (b)
and (c) the infringement qua Section 29(4) in relation to different goods
is attracted.
23. Let me also examine the provisions relating to the limitations
of infringement of a trademark. For the purposes of present case, Section
30(1) is relevant extract of the provision which is reproduced herein
after:-
Section 30
(1) Nothing in section 29 shall be construed as preventing the use
of a registered trade mark by any person for the purposes of
identifying goods or services as those of the proprietor provided
the use-
(a) is in accordance with honest practices in industrial or
commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to
the distinctive character or repute of the trade mark.
24. A careful reading of Section 30(1) would reveal that the said
Section provides that nothing in Section 29 shall be construed as
preventing the use of a registered trademark by any person for the
purposes of identifying the goods or services as those of the proprietor
provided that the use is in accordance with honest practices in industrial
or commercial matters. The said section is enacted within two parts
which is section 30(1) (a) and (b). In-between the two sub clauses the
word used is ‗and‖ which means that both the conditions prescribed are
to be satisfied conjunctively which means that the user of any trademark
for the purposes of identifying the goods or services as those of the
proprietor shall not be construed as infringement if the use is in
accordance with honest practices in the industrial/commercial matters at
the first place and is also not amounting to taking unfair advantage or
detrimental to the character or repute of the trademark.
25. Now, the question arises that what can be termed as the
honest practices in commercial or industrial matters as used in the sub
clause (a). The said honest practices in Industrial or commercial matters
can be interpreted either way as the honesty can be subjective terms
inasmuch as what maybe honest in the eyes of one person may not be
honest in the eyes of another. Therefore, in order to rule out the
subjectivity in the expression ―honest practices in industry or commercial
matters‖, the Courts have developed the doctrine of objectivity rather
than the subjectivity while applying the test of honest practices in the
industry and commercial matters.
26. By interpreting honest practices as those which are satisfying
the objective standards in Aktiebolaget Volvo V. Heritage (Leicester)
Ltd cited as 2000 FSR 253, the Chancery Division has said " It appears
to be now well settled that the test of honesty for the purposes of the
proviso is one that has to be judged by an objective standard and in my
judgment the appropriate question to be asked in relation to the test in
the present case is whether a reasonable motor service provider would
think the use complained of in the present case to be honest, or, rather,
in accordance with honest practices in that business (see Cable &
Wireless PLC & Anr. V. British Telecommunications PLC). The Court
further held that the application of the proviso namely "the use in
accordance with honest practices in industrial or commercial matters"
involves "looking at the particular use complained of as being an
infringement of the relevant trademark and determining whether a
reasonable person in the trade concerned, that is to say, in this case the
trade of motor car service provider, knowing all the relevant facts that
the defendant knew would think it an honest use of a trade mark
concerned - that is to say, honest use in the commercial activity in
which such a trader is involved. That, in my judgment, must involve
considering all the circumstances surrounding the use complained of
and the context in which that use was made."
27. From the above, it is clear that the honest practices in
commercial/industrial matters have to be seen from the two standpoints
of objectivity. First is the standpoint of a reasonable person in the trade
whether he will think that the said use is in the honest way after knowing
fully well about the trade and secondly from the perspective of the
practices prevalent in the industry, which means that what the other
persons/proprietors are doing in the same industry and if there is an
established practice in the industry to use such expression in the
particular manner, then it would not be unfair to call that practice as
honest.
28. The second test is relevant due to the express wordings of the
Section 30 (1) (a) which are honest practices in industrial or commercial
matters. Once the said provision provides for such honest practices in
the industrial or commercial matters as an exception to an infringement,
then the said practice in the trade becomes relevant for the purposes of
examining any case where the infringement is alleged by the proprietor.
29. Thus, the standards of determining what is honest and what is
not would be much dependent upon the practice and the manner of usage
of that expression which is prevalent in the market. After all that is what
is called objective standards rather than subjective use which may vary
from one person to another.
30. From the above discussion, another thing is clear that it is
always not necessary to infer that trade practice is honest solely because
the manner of use of the expression is in descriptive sense and not in a
prominent fashion. The converse may be true also in some cases. There
are certain industries wherein special emphasis has to be given to the said
expression upon the product or an ingredient of the product so as to catch
the customers or attract the consumer rather than using it as a small word
on the label. Just like in liquor industry wherein one has to prominently
display as to how old that liquor is by mentioning the number of years or
the volume of content of alcohol.
31. Thus, the decisive test for examining the honest practice in
industrial practice is not prominence or non-prominence of the said
expression which may though be relevant but much will be dependent
upon the manner of use of the said expression as warranted in the said
industry which will set out the limit for what can be the honest and what
can be dishonest.
32. The propositions which are emerging from the
abovementioned discussions are as under:-
a) That Section 30 acts as an exception to Section 29 which
provides for infringement of trademark;
b) Section 30(1) safeguards the use of the trademark by anyone
other than the registered proprietor if the use of the said
trademark is in accordance with the honest practices in the
industrial or commercial matters and is not such as to take
unfair advantage of or be detrimental to the distinctive character
or repute of the trade mark.
c) Honest practices in the industry/ industrial or commercial
matters have to be examined objectively and not subjectively
for which it can be tested on two-fold basis:-
i) Reasonable man having knowledge in the trade.
ii) Practice prevalent in the respective industry.
33. Let me now proceed to discuss the law relating to numeral
trademarks. Section 2(1)(m) of the Trade Marks Act, 1999 defines the
expression ‗mark' which is reproduced herein below:-
Section 2(1)(m)
"mark" includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof."
34. On bare perusal of the said definition, it becomes clear that
the said definition is an inclusive definition which includes numeral.
Mark also includes numerals which shows and denotes that the said
numeral can perform the function of a trademark. Although numeral has
been included in the definition of mark but it has to be examined as to
whether a single-numeral 8 in the facts and circumstances of the present
case can be protected while comparing the two marks of the parties, i.e.
8 PM and PALONE 8 and the two sets of goods are whisky and beer.
Likewise, Dr. Venkateswaran on Trademarks and Passing
off (5th Edition 2010) also observes about the numeral trademarks as
under:-
"Mark‖ is defined to include letters and numerals - See Section
2(1)(m). However, they notoriously lack inherent distinctiveness
on account of common and natural practice of firms and persons to
use their initials on goods, letter paper and so forth, or to use them
as symbols indicative of quality or of other characteristics.
Whether a letter or numeral mark can be registered prima
facie will therefore depend upon whether it is devoid of any
distinctive character. Letters and numerals also presented
with additional features or which are intertwined, conjoined
etc. and which have a trade mark character will be
accepted."(Emphasis Supplied"
―For example, numbers, letters which may be used in trade for
bona fide description will entail objections under Section 9(1) (c )
are:-
The date of production of goods/ provision of services (e.g.
2001, 2002)
Size, eg XL for clothes, 1600 for cars, 34R for clothing,
185/65 for tyres.
Quantity 20, 200 for cigarettes.
Dates for printed matter eg 1066 for history books, 1996 for
wines, 2003 for anything.
Telephone codes eg 022, 011, 033 etc.
The time of provision of service, eg 8 to 10
The power of goods eg 115 (BHP) for engines or cars.
Speed, eg 386, 486, 586, 686, & 166, 266 for computers.
Strength eg, "8.5% for lager."(Emphasis Supplied)
The reliance of the above referenced excerpts from the
authority would show and reveal that even it is recognized in the field of
the trade marks that there are certain numerals which are considered to
be of non distinctive character and also having some connection with the
trade. Numeral 8 is one of those numerals which are earmarked as one
which has some connection and relevance in the field of beer as
mentioned above. Further, it also clarifies the position in the law that the
numeral trade marks which are intertwined with other features can
succeed for registration. But then it is to be looked into that the monopoly
can be accorded to the numeral per se or the mark in totality.
35. The said argument that the numeral 8 is common to the trade
and also has some relevance with the alcohol trade also gains strength
when the defendants stand is examined wherein the defendants have
shown number of major players /traders in the alcohol trade to be using
the numeral 8 on their labels. Dr. Singhvi, learned Senior counsel has
relied upon the entries on the registers worldwide as well as in India and
also the labels of the current use of several alcoholic drinks so as to
demonstrate that the numeral 8 is common to the trade. The said entries
and the pictorial representation thereof of the same are reproduced
hereinafter:
Signature 8, a whisky, was
recently launched by United
Spirits Limited.
BACARDI 8 RUM - a variant
of well-known BACARDI brand
was launched in the year 2000.
CELLAR NO. 8 is a well known
Californian Red Wine. The same
is being sold since 1881.
BLACK DOG 8 whisky, a
premium scotch whisky brand, is
being sold in India by United
Spirits Ltd. since the year 2006.
V8 VEGETABLE JUICE - V8
is a well-known Vegetable juice
brand. V8 was launched in 1933
and have been available in India
since at least the year 2005. ―A
few cocktail drinks use V8, most
famously the "bloody eight" or
"eight ball", which is a Bloody
Mary with V8 instead
of tomato juice‖.
36. By citing the detailed analysis of aforementioned brands of
alcoholic drinks available in the market, the learned Senior counsel for
the defendant sought to urge that the plaintiff's grievance is nothing but a
frivolous one and it does not survive in view of the market trend
demonstrated above, and it reveals that there are not merely entries on
the register which reveal ―8‖ as one of the features of the registration but
rather there is substantive actual user by the third parties.
37. For ease of reference, reproduced hereinbelow is a list of few
‗8' and/or ‗8' formative marks in Classes 32 and 33. The list is
illustrative and not exhaustive :
LIST OF „8‟/‟8‟ FORMATIVE MARKS IN INDIA
S. No. Trade Proprietor/Date of User Status
Mark/Number Application Claimed (as per online)
Class Registration records of the
Trade Marks
Registry)
1. 8 PM and device of Baldev Pawan, Since Registered
Globe/ Ashwani Kumar April 1,
1008765/ trading as English 2001
Class 32 Food Specialties
(India), Punjab/ May
11,2001
2. Anil Gupta, Ashwani Since Pending
Aath Ke Thaath/ Kumar, November
Madikan
2063536/ Mehra, Jammu 1,2010
Tawi/
Class 32 December 6, 2010
3. Jai Baba Lai Since Pending
Industries
(JBI Groups), April 1,
Jammu
1950320/ Tawi/ 2010
Class 32 April 15,2010
4. 8 '0' Clock (Club Baldev Pawan, Since Opposed
Soda with spirit)/ Ashwani Kumar April 1,
1076845/ trading as English 2001
Class 32 Food
Specialities (India),
Punjab/ January 30,
5. 81H DAY/1212633/ Industrial Proposed Registered
Beverages
Class 32 Limited, Mauritius/ to be used
July 9, 2003
6. AQUA 8/ Pepsi Foods Private Proposed Opposed
1221399/ Limited, Punjab/ to be used
Class 32 August 7, 2003
7. AQUA 8/ Pepsi Foods Private Proposed Opposed
1221402/ Limited, Punjab/ to be used
Class 32 August 7, 2003
8. Campbell Soup Co., Proposed to Registered
be used
USA/June 16, 2005
1364360/ Class 32
9. V8/ Campbell Soup Co., Proposed Registered
1300537/ USA/ August 4, to be used
Class 32
10. AFTER 8/ Mahavir Lall Mehra Proposed Registered
374742B/ and Nirmal Mehra to be used
Class 33 trading as Mohan
Lall & Company,
New Delhi/
April 15, 1981
11. XLR8/ Guinness United Proposed Registered
684571/ Distillers & Vintners to be used
Class 33 B.V., The
Netherlands/
October 25, 1995
12. Damian Thomas Proposed Registered
Knowles, Australia/ to be used
February 9, 2007
1529710/
Class 33
13. 8 MILLION/ Jagdish Chandra Proposed Registered
to be used
1865348/ Agarwal, New
Class 33 Delhi/ September
22, 2009
14. Registered
Societe Des Proposed to
Products Nestle be used
S.A., Switzerland/
1667206/
March 19, 2008
Class 32
15. Pending
8AM/ V.R. Industries Proposed to
1574492/ Private Limited, be used
Class 32 Gurgaon/ July 02,
LIST OF „8‟/‟8‟ FORMATIVE MARKS INTERNATIONALLY
S. Trade Country/Jurisdict Proprietor/Da Status
No. Mark/Number/C ion te of
lass Application/R
egistration
1. LOW8/ Community Trade Gabriele Pending
E9406331/ Mark Ascione, Italy/
Classes 5, 30, 32 November 4,
2. one.8 United Kingdom Santeau Registered
One.8 Limited,
ONE.8/ UK/
2368274/ July 15, 2004
Classes 5, 30, 32
3. 8 Ost/ Community Trade BIS Registered
E3227121/ Mark Bremerhavener
Classes 3, 8, 9, Gesellschaft fur
12, 14, 16, 18, Investitionsford
21, 24, 25, 28, e rung und
31, 32, 33, 35, Stadtentwicklu
38, 39, 41, 42, 43 ng
mbH,
Germany/ June
16, 2003
4. United States of Baltika Registered
America Breweries
BALTIKA 8/
Corporation,
3668468/ Class
Russia
5. United States of Table Bluff Registered
America Brewing,
Inc. DBA Lost
8 STOUT/
Coast Brewery
2827476/
Corporation,
Class 32
USA/
April 29, 2003
6. HARD 8/ United States of Hard 8 Pending
85127026/ Class America Beverage
32 Company,
USA/ April 29,
7. BISTRO 8/ United States of Anheuser- Registered
3096356/ Class 32 America Busch,
Incorporated,
USA/
September
19, 2003
8. OLD NO. United States of Diageo Registered
8 BRAND/ America North America,
1310336/ Class Inc., USA/
33 October 25,
9. 8 STAGIONI/ Hong Kong 8 Stagioni Registered
301218663/ S.R.L., Italy/
Class 33 October 10,
10. 8 BILL/ Hong Kong Glory Trading Registered
301533898 (International)
Class 33 Co., Ltd., Hong
Kong
In addition to the above, the defendant submits that goods in
Classes 32 and 33 are available in Indian and International market with
the numeral mark ‗8' which is used as part of trade mark. These are:
BACARDI 8, V8, HARD 8, 8 STOUT, BISTRO 8, OLD NO.8 BRAND,
8 BALL, PLANTATION JAMAICA 8 YEAR RUM, GEORGE
DICKEL NO. 8 TENNESSEE WHISKY, BASIL HAYDEN'S 8 YEAR
STRAIGHT BOURBON WHISKY, BARBANCOURT 8 YEAR RUM,
OLD CHARTER 8 YEAR STRAIGHT BOURBON WHISKY, WILD
TURKEY 8 YEARS STRAIGHT BOURBON, BLACK DOG 8 YEARS
etc. In all the aforesaid examples, numeral '8' is used conspicuously and is
a prominent feature of the packaging.
38. It is also submitted by the defendant that plaintiff has not
obtained any separate registration for ‗8' or ‗P.M.' per se. Numeral ‗8' is
common to trade as large number of manufacturers in India and abroad
are using the Numeral ‗8' in relation to similar business as that of the
plaintiff. even some of them prior to user of the plaintiff. It is also argued
by Mr. Singhvi that Plaintiff's mark 8 PM is descriptive. It attributes 8
PM to the preferred recreation time of the evening when everyone desires
to unwind. Realizing that the mark is inherently non-distinctive, the
Registrar of Trademarks granted the registration to Plaintiff for its trade
marks 8 PM in Part B of the Register.
The defendant has also referred the search report issued by
the Trade Marks Registry as well as the Trade Marks Offices of various
countries in order to indicate numerous ‗8'/‗8' formative applications/
registrations in India and internationally standing in the name of different
entities.
39. The defendant has placed on record the evidence which
shows that there are various other international brands which use 8/8
formative marks in relation to products falling in Classes 32 and 33 and
are available internationally. Defendant has filed images of several
products using 8/8 formative marks. Few examples of such brands are
reproduced hereinbelow:
S. No. Product Page Nos.
1.
8 STOUT BEER
2.
OLD NO. 8 Brand - George
Dickel Tennesse whisky
3.
OLD CHARTER 8 years old
Straight Bourbon
4.
WILD TURKEY 8 Years Old
5.
TRAPPISTES ROCHEFORT 8
BEER
6.
―8‖ Chardonnay 2007 Wine
40. I find substance in contention of the learned counsel for the
defendant that the numeral mark 8 is prima facie of non distinctive
character. This is due to following reasons:
That the aforementioned analysis done by the defendants itself
shows that major players or competitor like Bacardi, Signature and
others etc nationally and internationally use the numeral 8 on their
label. Thus, it does not remain the case of mere formal entries on
the register but also is backed by the substantive user of the other
parties which negatives the claims of exclusivity.
There are authorities on the subject stating that there are some
numerals like 8.5 or atleast 8 which are requirement of the trade
which denotes the strength. The said aspect further clarifies that
there is some nexus of the numeral 8 in respect of alcohol drinks.
The plaintiffs are not registered for 8 per se and rather the
registration is of 8PM in Part B of the register. The mark on part B
was considered to be weak trade mark and rather prima facie
descriptive one. The exclusivity in the said mark can be defeated
by showing the evidence of non distinctiveness. In the present
case, the same thing has been shown.
Overall by reading section 30 of the Act and testing the numeral 8
on the principles of the same (which I have already dealt with
above on honest practices of trade), the use of the numeral in
these circumstances by a tradesman when there are such
overwhelming user by other parties as stated above coupled with
the nexus of numeral in the trade, it can be safely said that use of
the numeral 8 by any other person including defendant in respect
of alcohol or beers cannot be said to be dishonest and would be
protected by section 30 of the Act.
41. Thus, it is prima facie established that the numeral 8 has the
role to play in the industry of liquor, but no doubt and the defendant as
bona fide description is entitled to use the same in order to denote the
strength of the product.
42. However, one should not forget that the Apex Court has
further extended this proposition by stating that where there is a case of
infringement of trade marks wherein the marks are not identical but are
deceptively similar, the tests for measuring the case of infringement and
passing off coincide and they become the same. (See Ruston & Hornsby
Ltd. vs. The Zamindara Engineering Co., 1970 SCR (2) 222). The
same has also been upheld by this court in Allied Blenders and Distillers
P. Ltd. vs. Paul P. John and Ors., 2008 (38) PTC 568 (Del).
43. In the present case also, the competing trade marks are 8 PM
per se in respect of whisky and PALONE 8 in respect of the beers. At the
first place, the marks of both the plaintiff as well as the defendants
are not identical but at the best these can be considered as deceptively
similar as numeral 8 in both the trade marks is common.
44. It is the admitted position that the registration obtained by the
plaintiff in Clauses 32 & 33 is not pertaining to the beers as the said both
registrations on the face of it are in relation to Whisky and Mineral
Water, etc. Under Section 28, the rights are conferred by the registration
to the registered proprietor to the use trade mark in relation to the goods
or services in respect of which the trade mark is registered and to obtain
the relief in respect of the infringement of the trade mark in the manner
provided by the Act.
45. Under Section 29(1) of the Act, a registered trade mark is
infringed by a person who, not being a registered proprietor of the mark,
uses in the course of trade, which is identical with, or deceptively similar
to, the trade mark in relation to the goods or services in respect of which
the same is registered or use of the mark is likely to be taken as being
used as trade mark.
Under sub-section (2) and (3) of Section 29 postulates that in
case the Court finds similarity to the registered trade mark and the
identity and similarity of the goods or services covered by such registered
trade mark, there is a presumption that the use of mark by a person
who not being a registered proprietor is likely to cause confusion
on the part of the public or which is likely to have an association with the
registered trade mark.
46. Unless the prominent feature of the mark is proved to be
prima facie enjoying high degree of distinctiveness which may become
heart and soul of particular trade mark, such kind of monopoly cannot be
accorded to the same. This may not hold true in the case of single letter
or numeral like 8 which has been extensively used by the number of
major players selling alcohol and is a requirement of the trade as a
practice denoting strength.
47. In the present case, admittedly, the defendant is not using the
trade mark - the numeral-8, in relation to Whisky and Mineral Water for
which the plaintiff has obtained the registration in Clauses-32 & 33 of the
Act. As already stated that the present case is also not covered under
sub-section (4) of Section 29 of the Act, therefore, the plaintiff cannot
derive the benefits available in sub-section (4) of Section 29 of the Act
which provides additional protection for infringement of trade mark in
relation to dissimilar goods.
48. The other important aspect of the matter is that the main
registration obtained by the plaintiff bearing mark ‗8 PM' under
Registration No.783398 in Clause-33 as of 24.12.1997 advertised in
Journal No.9998-2 was granted under the old Act, i.e. Trade and
Merchandise Marks Act, 1958 in Part-B. In the said Act, the
registration could have been granted by the Registrar of Trade Marks in
Part- under Sections 7 & 9 of the Act due to the prevailing circumstances
at the time of granting the registration. In the said Act, under Section
29(2), in an action for infringement of a trade mark in case the
registration is granted in Part-B and the defendant is able to establish to
satisfy the Court that the mark is not likely to deceive or cause confusion
in the trade and some other person having the rights either as registered
proprietor or registered user, the relief under those circumstances shall
not be granted to the plaintiff.
49. Section 17 provides the effect of registration of parts of the
trade mark. The said Section reads as under:-
―17. Registration of trade marks subject to disclaimer.
If a trade mark -
(a) contains any part -
(i) which is not the subject of a separate
application by the proprietor for registration as a
trade mark; or
(ii) which is not separately registered by the
proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is
otherwise of a non-distinctive character;
The tribunal, in deciding whether the trade mark
shall be entered or shall remain on the register, may require,
as a condition of its being on the register, that the proprietor
shall either disclaim any right to the exclusive use of such
part or of all or any portion of such matter, as the case may
be, to the exclusive use of which the tribunal holds him not
to be entitled, or make such other disclaimer as the tribunal
may consider necessary for the purpose of defining the
rights of the proprietor under the registration:
Provided that no disclaimer shall affect any rights
of the proprietor of a trade mark except such as arise out of
the registration of the trade mark in respect of which the
disclaimer is made.‖
It is the admitted position in the present case that the numeral-
8 is a part of the trade mark which is not separately registered in favour
of the plaintiff. In fact, the plaintiff has got the registration of the trade
mark ‗8 PM'. Therefore, in view of the fact that no separate registration
is granted, the test of passing off under those circumstances
would apply.
The infringement of the mark is also not to be made out in
view of the Part B registrations relied upon by the defendant. It is now
well settled that the Part B registrations are granted to the marks which
even the registrar of the trade mark also considers to be prima facie non
distinctive or descriptive.
Section 29 of the old Act in this respect is equally apposite
which reads as under:
―29. Infringement of trade marks.
(1) A registered trade mark is infringed by a person who, not
being the registered proprietor of the trade mark or a
registered user thereof using by way of permitted use, uses
in the course of trade a mark which is identical with, or
deceptively similar to, the trade mark, in relation to any
goods in respect of which the trade mark is registered and in
such manner as to render the use of the mark likely to be
taken as being use as a trade mark.
(2) In an action for infringement of a trade mark
registered in Part B of the register an injunction or
other relief shall not be granted to the plaintiff if the
defendant establishes to the satisfaction of the court
that the use of the mark of which the plaintiff complains
is not likely to deceive or cause confusion or to be taken
as indicating a connection in the course of trade between
the goods in respect of which the trade mark is
registered and some person having the right, either as
registered proprietor or as registered user, to use the
trade mark."
Thus, the mark if it is shown to be descriptive one or the one
which does not indicate connection in the course of the trade by the
plaintiff even at during the infringement proceedings, the injunction
against the defendant cannot be granted as then it is outside the purview
of the infringement.
The said aspect becomes relevant as then the plaintiffs case of
Part B registration is overcome by the evidence of the descriptiveness or
non distinctiveness of the numeral 8. Thus, the said act is not an
infringement under the old Act.
At this stage, it is relevant to examine the saving clause of
section 159 of the Trade Marks Act which reads as under:
―159. Repeal and savings.--
(1) The Trade and Merchandise Marks Act, 1958 (43 of
1958) is hereby repealed.
(2) Without prejudice to the provisions contained in the
General Clauses Act, 1897 (10 of 1897), with respect to
repeals, any notification, rule, order, requirement,
registration, certificate, notice, decision, determination,
direction, approval, authorisation, consent, application,
request or thing made, issued, given or done under the Trade
and Merchandise Marks Act, 1958 (43 of 1958) shall, if in
force at the commencement of this Act, continue
to be in force and have effect as if made, issued, given or
done under the corresponding provisions of this Act.
(3) The provisions of this Act shall apply to any application
for registration of a trade mark pending at the
commencement of this Act and to any proceedings
consequent thereon and to any registration granted in
pursuance thereof.
(4) Subject to the provisions of section 100 and
notwithstanding anything contained in any other provision of
this Act, any legal proceeding pending in any court at the
commencement of this Act may be continued in that court as
if this Act had not been passed.
(5) Notwithstanding anything contained in this Act,
where a particular use of a registered trade mark is not
an infringement of a trade mark registered before the
commencement of this Act, then, the continued use of
that mark shall not be an infringement under this Act.
(6) Notwithstanding anything contained in sub-section (2),
the date of expiration of registration of a trade mark
registered before the commencement of this Act shall be the
date immediately after the period of seven years for which it
was registered or renewed‖
50. A bare reading of the sub section 159(5) would reveal that the
same is the non obstante clause and would therefore prevail over in
addition to what has been stated under the Act. The new Act of 1999
although extends the registration under the existing law of 1958 to the
New Act. However, the exception is carved out under sub section (5)
which states that the particular user of the mark if it is not an
infringement under the old Act then, the same shall also not to be an
infringement under this Act.
51. The combined reading of Section 29 of the old Act and saving
clause of section 159 makes it amply clear that the user of the numeral 8
would not have been an infringement under the old act and injunction
cannot be granted if it is established the said numeral does not indicate
the connection in the course of the trade with the plaintiff. Thus, the said
user cannot be extended to be an infringement under the new act by
virtue of the saving clause of section 159 of the Act of 1999.
52. There is an additional surrounding factor which is seen from
the search report relied upon by the defendant wherein the entry no.
1008765 in the name of some Baldev Pawan which reveals that the mark
8PM is registered since the year 2001 which is still renewed in respect of
Beers which is not the plaintiff concern. On the otherhand, the plaintiff
has relied upon the registration of mineral water etc to claim infringement
against beers under the same class 32. I think the said factor is also
crucial factor both for the purposes of infringement and passing off as
some third party is holding the registration of the mark 8PM in respect of
the beers and not the plaintiff. This also becomes a surrounding
circumstance for the purposes of the grant or non grant of injunction.
53. Therefore, I am of the prima facie view that the registrations
relied upon by the plaintiff do not establish the prima facie case of
infringement under section 29 (1) and 29 (2) as I have already
expressed doubts about the nature of goods being either non similar or
similar which depends number tests discussed by me along with the facts
to be proved in trial. Thus, it is more of a mixed question of law and fact.
At this stage, suffice it to say that the registration of the plaintiff clearly
do not cover beer, the said registration are in Part B which are weak
ones, the goods can be conclusive said to be similar goods, therefore, the
infringement under section 29 (1) (2) and (3) cannot be established. So
far as grounds under section 29(4) is concerned, the other surrounding
factors like extensive user of the numeral 8 by the other parties,
observations that 8 has a role in liquor industry and other factors
discussed above prevents the numeral 8 to be categorized as reputed
mark of the plaintiff and the user of the same is protected under section
30 of the Act. Therefore, I am prime facie of the view that no case is
made out in view of statutory provision of Sections 28 and 29 in order to
establish the case of infringement. The surrounding factors like no
infringement of Part B registration under the old act, 8 is not per se
registered in view of section 17 of the Act, registration of someone else
in relation to beers also act as special circumstances which militate
against the grant of injunction.
Thus, the decisions referred by the plaintiff on the point of
infringement are not applicable as in those case, two set of goods of the
parties were same. As far as proposition of law in those cases referred
to by the plaintiff is concerned, there is no dispute that law laid down in
those decisions well-established law.
54. So far as the judgments cited by the plaintiff in the cases of
Shaw Wallace & Co. v. Superior Industries Ltd., 2003 27 PTC 63,
Jagan Nath Prem Nah v. Bhartiya Dhoop Karyalaya, (Marks Involved:
Kasturi 555/ Anand Durbar 555), M/s Vrajlal Manilal v. Adarsh Bidi
Co., 1995 1 Arb. L.R 471-Para 2, 7, 10-12, & Kamal Trading v.
Gillette UK Limited, 1988 PTC 1 (7' O Clock) are concerned, the same
are distinguishable on the facts and circumstances of each case. The same
are distinguished as under:
In Shaw Wallace (Supra), the court was concerned with a mark 5000
which is not a single letter mark for strict rigors of law are applicable.
It is now well established and has even stated in the Narayanan on
Trade mark and other authorities that as the letters or numeral in the
marks grows from two to three and thereon, the said numerals or
letters comes closer to the trade mark. The relevant excerpt for the
same is reproduced herein after.
Further in Shaw Wallace, the court was concerned with the
case of Beer versus Beer wherein the plaintiff is well known in the
market which is the major point of distinction with that of the present
case with that of Shaw Wallace (supra).
Again in Jagan Nath (Supra), the court was concerned with the three
letter mark rather than a single letter mark. Further again the goods in
that case were identical which are aggarbatties. The said mark was
essential feature of the mark which was considered by the court as
distinctive. I have also held in the present case that in a given case
where it is established the essential feature of the mark is such which
is heart and soul of the mark which has enjoys distinctiveness can
enjoy equal level of monopoly. However, the same may not hold good
for a single letter mark like 8 which is supposed to be prima facie of
non distinctive character and has been used several major players in
the market to denote and connote strength of the alcoholic drink. The
said judgment is distinguishable on facts
Again in Virajlal (Supra), this court was concerned with the mark 22
which was used in the market for 5 decades in respect of bidis. The
said mark 22 per se stood registered with the plaintiff as noted by the
court. The defendant adopted the mark 122 which subsume 22 in
respect of identical goods which are bidis. The same is accordingly
distinguishable on its facts
In Kamal Trading (Supra), the court was concerned with the world
famous mark 7 O CLOCK which was used for more than 30 years
for shaving creams, shaving brushes rajors etc and the defendant
used the identical mark for tooth brushes and the Bombay Division
Bench rightly confirmed the injunction. The said case is
distinguishable on facts as in the said case, the court was concerned
with the usage of identical mark 7 O CLOCK by the defendant and
not a part of the numeral mark and the mark 7 OCLOCK is not a
single letter mark but a composite mark. All the facts are sufficient to
take out the present case from that of the judgment of Kamal Trading
(Supra).
55. Thus, the said judgments on numeral marks are
distinguishable on the facts and circumstances. Further, the judgments
relied upon the defendants upon the legal effect of registration as
rendered by the Apex court, no one is disputing the said judgments but in
the present case, the plaintiff is registered with 8 PM in respect of whisky
and the case involves use of the numeral 8 in respect of Beers which is
not falling within the registration of the plaintiffs. Thus, the said
judgments cannot aid the case of the plaintiff. Further, the tests of the
infringement and passing off coincide when the marks are deceptively
similar as laid down by the apex court itself also comes under the way of
this court to extend the effect of the registration of the plaintiff to the part
of the mark which is to the numeral 8 when it is not per se registered
under Section 17 of the Act.
PASSING OFF
56. Mr. Kaul further argues that third party usage is no defense in
a trade mark infringement and passing off action and further that a
Plaintiff is not expected to sue each and every infringer.
Bhagwan Dass Gupta v. Shri Shiv Shankar Tirath
Yatra Company Pvt. Ltd.: 93 (2001) DLT 406 - Para
"the basic test to find out whether a particular mark is
publici juris or not is that if the mark has come to be so
public because of its universal use that it does not confuse
or deceive, by the use of it, the purchasers of the goods of
the original trader."
Shri Pankaj Goel v. Dabur India Ltd.
FAO (OS) 82 of 2008 - Para 22
"22. As far as the Appellant's argument that the word
MOLA is common to the trade and that variants of MOLA
are available in the market, we find that the Appellant has
not been able to prima facie prove that the said 'infringers'
had significant business turnover or they posed a threat to
plaintiff's distinctiveness. In fact, we are of the view that the
Respondent/plaintiff is not expected to sue all small type
infringers who may not be affecting Respondent/plaintiff
business. The Supreme Court in National Bell v. Metal
Goods reported in AIR 1971 SC 898 has held that a
proprietor of a trademark need not take action against
infringement which do not cause prejudice to its
distinctiveness. In Express Bottlers Services Pvt. Ltd. v.
Pepsi Inc. and Ors. reported in 1989 (7) PTC 14 it has been
held as under:
...To establish the plea of common use, the use by other
persons should be shown to be substantial. In the present
case, there is no evidence regarding the extent of the trade
carried on by the alleged infringers or their respective
position in the trade. If the proprietor of the mark is
expected to pursue each and every insignificant infringer to
save his mark, the business will come to a standstill.
Because there may be occasion when the malicious
persons, just to harass the proprietor may use his mark by
way of pinpricks.... The mere use of the name is irrelevant
because a registered proprietor is not expected to go on
filing suits or proceedings against infringers who are of no
consequence.... Mere delay in taking action against the
infringers is not sufficient to hold that the registered
proprietor has lost the mark intentionally unless it is
positively proved that delay was due to intentional
abandonment of the right over the registered mark. This
Court is inclined to accept the submissions of the
respondent No. 1 on this point.... The respondent No. 1 did
not lose its mark by not proceeding against insignificant
infringers....
In fact, in Dr. Reddy Laboratories v. Reddy
Paharmaceuticals reported in 2004 (29) PTC 435 a Single
Judge of this Court has held as under:
...the owners of trade marks or copy rights are not expected
to run after every infringer and thereby remain involved in
litigation at the cost of their business time. If the impugned
infringement is too trivial or insignificant and is not
capable of harming their business interests, they may
overlook and ignore petty violations till they assume
alarming proportions. If a road side Dhaba puts up a
board of "Taj Hotel", the owners of Taj Group are not
expected to swing into action and raise objections
forthwith. They can wait till the time the user of their name
starts harming their business interest and starts misleading
and confusing their customers."
Rolex Sa v. Alex Jewellery Pvt. Ltd. and Ors.
2009 (41) PTC 284 (Del) - Para 22
"22. The next aspect to be considered is the effect/impact, if
any, of a large number of other persons using the word
ROLEX as claimed by the defendant. At this stage, this plea
will be examined believing the same to be true. In my view,
the same would be immaterial. Firstly, nothing has been
shown that any of the said users has any significant
presence. Secondly, it is now well settled in Honda (supra)
in turn relying upon Indian Shaving Products Ltd. v. Gift
Pack that merely because the plaintiff who is otherwise
found entitled to the interim injunction is shown to have
not taken any step against other infringers is no ground to
deny relief to the plaintiff. It cannot also be said that the
plaintiff's trademark has lost its distinctiveness for the said
reason. The reply affidavit of the plaintiff lists the orders of
the Trade Mark Registry from 1964 to 2000, where
plaintiff's mark has been protected inter alia for reason of
having great reputation. It also shows that the plaintiff has
been enforcing its rights. Though the list filed by defendant
No. 1 in this regard is long but a perusal thereof shows a
number of applicants to have abandoned or withdrawn
their applications. This is a vast country. Mere long list of
applicants/registrants of mark, without any extensive use of
the mark, cannot dent the distinctive character or repute of
the mark."
Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. and
Ors. 1989 (9) PTC 14 - Para 50
"50.To establish the plea of common use, the use by other
persons should be shown to be substantial. In the present
case, there is no evidence regarding the extent of the trade
carried on by the alleged infringers or their respective
position in the trade. If the proprietor of the mark is
expected to pursue each and every insignificant infringer to
save his mark, the business will come to a standstill.
Because there may be occasion when the malicious
persons, just to harass the proprietor may use his mark by
way of pinpricks. In answer to this allegation, the
respondent No. 1 in Joyce's supplementary affidavit dated
1.12.86 stated that there was no whisper of this case of
public use of the mark in the petition itself. This case has
been set up for the first time in the affidavit-in-reply.
Moreover, 'Pepsi' and 'Pepsicola' were registered as
carbonated beverages, syrups and concentrates under
Class 32 of the Fourth Schedule to the Trade and
Merchandise Marks Act 1958. It is alleged by the petitioner
that the mark 'pepsi' is being used by others in respect of
ice, ice-cream or ice candies which come under class 30 of
the said Fourth Schedule and the sealing machine
manufactured in the name of Pepsi comes under Class 7 of
the 4th Schedule relating to machine and machine tools.
The alleged banners, stickers, danglers, etc. disclosed by
the petitioner for establishing common use of the marks of
the respondent No. 1 are not the type of goods
for which the marks of the respondent No. 1 were
registered. The use of the mark Pepsi on goods falling
within Class 7 or 30 are wholly irrelevant for the purpose
of this case. Moreover, the plea of common use must fail
because for establishing that, it must be proved that the
businesses carried on by the infringers are of similar
nature and are extensive and substantial. The mere use of
the name is irrelevant because a registered proprietor is
not expected to go on filing suits or proceedings against
infringers who are of no consequence."
Indian Shaving Products Ltd & Anr v. Gift Pack &
Anr 1998 PTC (18) - Para 52 & 53
"52. It was next argued by the learned counsel for the
defendant that the said trade mark Ultra is being used by
several other persons/companies besides the defendants
such as Toshiba, National and Sony. Thus the same has
become publici Juris and the plaintiffs can not claim any
exclusive right therein.
53. Admittedly, the said parties are not before this Court.
Neither the said parties are claiming any relief against the
plaintiffs nor the plaintiffs are claiming any relief against
them. Hence the said defense, that other persons are also
using the said trade mark, is not available to the
defendants. The Court is called upon to decide disputes in
between the parties which are before it. The Court cannot
be expected to adjudicate upon a dispute which is not
before it."
Novartis AG v. Crest Pharma Pvt. Ltd. and Anr.
2009 (41) PTC 57 - Para 32, 33
"32. The next contention of the defendant is that there are
number of other companies who are using the similar trade
mark as that of the plaintiff, those are CEFF, SIMCEF,
CEF, BECEF, SYCEF, CEACEF, SYCEF, SICEF and C-
CEF. The contention of the defendant has no force as the
defendants have failed to produce any evidence of the
actual user of the said marks referred by the defendants. In
order to take the said defence, the party has to give cogent
evidence before this Court as to since when these trade
marks are being used and what is the goodwill and
reputation of the said trade marks. The defendant in the
present case has not produced the samples of the third
parties in order to show as to whether the said marks are
being used and goods are available in the market or not.
The similar defence raised in various cases has been dealt
by the courts from time to time in the cases of Century
Traders (supra), Corn Products refining Co. v. Shangrila
Food Products Ltd.AIR 1960 SUPREME COURT 142 and
Pankaj Goel v. Dabur India Ltd. 2008(38) PTC 49 (Del).
Relevant part of the decision of Corn product(supra) is
reproduced hereinbelow:
17. The series of marks containing the common element or
elements therefore only assist the applicant when those
marks are in extensive use in the market. The onus of
proving such user is of course on the applicant, who wants
to rely on those marks. Now in the present case the
applicant, the respondent before us, led no evidence as to
the user of marks with the common element. What had
happened was that Deputy Registrar looked into his
register and found there a large number of marks which
had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of
course the presence of a mark in the register does not
prove its user all. It is possible that the mark may have
been registered but not used. It is not permissible to draw
any inference as to their user from the presence of the
marks on the register.
33. A mere filing of the search report from the trademarks
office does not prove as to whether the marks mentioned in
search report was actually been used or not. It is
imperative on the part of the party who relies upon the
marks of third party to produce cogent and clear evidence
of user in order to prove the defence of common marks to
the trademark on the basis of the third party user. Hence,
in the absence of valid and cogent evidence, the submission
of the defendant cannot be accepted."
57. It is argued by the plaintiff that the plea of the Defendant is
nothing but a bald averment without any merits. The Defendant in the
instant case has failed to discharge the onus of leading evidence in
support of this argument as mandated by various judicial pronouncements
cited herein above. It is stated that the Defendant in support of this
argument has also sought to rely upon certain website printouts, but all
these printouts date subsequent to the institution of the suit, otherwise
why the defendant itself would apply the Mark 8 for registration in
respect of Beers, thus defence set up by the Defendant is meritless which
has been only to justify its illegal acts. The third party usages referred by
the defendant would show BACARDI RON 8 ANOS and BLACK
DOG AGED 8 YEARS refers only to the age of the product otherwise
no invoice has been placed on record to show that these products are
readily available for sale in India bearing the Mark 8.
58. In the present case, the principles for measuring the deceptive
resemblance are overlapping, be it of infringement or of passing off, as
the marks are not identical to each other but merely numeral 8 is same in
the rival marks of both parties i.e. 8PM versus PALONE 8. Thus, it
would not be unwise to rely upon third party user in the present case.
59. It is true as stated by the plaintiff that the third party user may
or may not be a relevant consideration in the infringement case but I feel
that it may be considered in the case of passing off to the extent when the
defendant is able to produce cogent evidence about the user of third party
which is prior to the user of the plaintiff's mark.
60. It is one thing to say that there are some third parties using the
mark of the plaintiff in question which may be a defence in equity
relevant in equitable remedies, however it is another thing to say that
there is a honest practice in industrial matters or commercial matters
which is a statutorily recognized defence or an exception to an
infringement. If there is a prima facie material on record to demonstrate
the numeral as requirement of the trade or trade practice, it may not be
appropriate to discard the same when the law allows such practice to be
considered by the Courts.
61. I have gone through the decisions referred to by the plaintiff
on the aspect and I agree with the submission of the plaintiff that a mere
filing of search report received from the trade marks office and
occasionally user by third parties in tainted manner, the defendant cannot
derive any benefit out of it. But circumstances of such nature depend
upon case to case basis.
62. It is well said that each case of trade mark depends upon its
own circumstances. The decisions referred by the plaintiff in support of
its submissions are not applicable to the facts and circumstances of the
present case, as in all the cases referred by the plaintiff, the trade marks
of the parties were distinctive and in some of the cases, the brands were
well-known brand names. This Court, therefore, cannot compare those
cases as per the facts of the present case in hand.
63. Thus, in the present case, the contention that the Court is
precluded from seeing the third parties use is also not correct as two sets
of goods/products of the parties are not same. All the decisions referred
to by the plaintiff are those cases wherein the goods of the parties are
same. In the present case, the defendant has not only to show extensive
third party user of numeral 8 in relation to whisky, the goods used by the
plaintiff but also to show the prima facie evidence that some of the third
parties are prior in time than the plaintiff. The defendant has also to
produce some original samples of third parties user before the Court
during the course of hearing. Thus, the third parties user in the present
case has become relevant factor to decide the interim application.
64. Admittedly, the marks used by the parties are not identical.
The plaintiff's grievance is confined to the use of the numeral 8 by the
defendant in respect of the beers which according to them has escalated
its sales. I have already arrived at the prima facie opinion that the
numeral 8 has a role to play in the liquor business which is being used by
many third parties who are denoting the strength. In these circumstances,
the contention of the plaintiff that there is sudden rise in the sales of the
defendants beers due to the usage of the numeral 8 is due to the
popularity of the mark 8 PM of the plaintiff prima facie cannot be
accepted. I am doubtful whether such rise in the sales is on account of the
alleged popularity of the mark 8 PM of the plaintiff or due to the
exhibition of the strength of the beer which contains 8 % of the alcoholic
content and consequently, there is an increase in the consumption of the
same. At this prima facie stage, it can be safely said that it is for the
plaintiff to prove during the course of the trial the correctness of the said
allegations in the plaint that actually the rise in the sales of the defendant
is directly connected with the popularity of the mark 8PM or singularly 8
and the argument cannot be accepted by mere saying of the plaintiff
unless supported by the documents.
65. It is also note worthy to state that the mark 8PM is not
registered in respect of the beers by the plaintiff. The plaintiff is pressing
for injunction by putting reliance of 8PM in respect of whisky in Class 32
as well as on the basis of registration in class 33 in relation to mineral
water etc., which compels this court to go into the question of examining
the similarity of goods.
66. The plaintiff has admitted during the hearing of the application
that the defendant is engaged only in manufacturing of ―Beer‖ and the
Plaintiff has no presence in the beer market, but according to the plaintiff,
the nature, uses and the users of the respective products of the parties are
identical. The respective goods of the parties received reach the market
through the same trade-channels. The products of the parties are being
purchased by consumers from all sectors of the society, including the
uneducated, illiterate and unwary customers. The would bound to be
deceived by the adoption/use of the impugned mark/numeral 8 by the
Defendant. The plaintiff has referred to few cases in support of its
submission. The following is the case which is heavily relied upon by
the plaintiff :
United Breweries Limited and Anr. v. Balbir and Son
(Agencies) and Anr. - 2005 (30) PTC 315 - Para ...
"2. Respondent, M/s Balbir and Sons (Agencies), filed
application No. 412036 for registration of trade mark
'BALBI BLACK LABEL' in respect of liquors including
brandy, whisky and gin and the same was advertised before
acceptance in the Trade Marks Journal No. 974 dated
1.1.90 at page 1251. Appellant, M/s Kalyani Breweries
Ltd., filed a notice of its intention to oppose the registration
on 29.3.90 on the grounds that it is the registered
proprietors of the trade mark 'KALYANI BLACK LABEL'
under No. 308 in class 32 in respect of beer, but which in
the course of trade is sold under the trade mark 'BLACK
LABEL' and it is asked by, the customers as BLACK
LABEL BEER. Thus, the word 'BLACK LABEL' has
acquired a great reputation in the market for the appellant.
Beer, though being in class 32 of the Fourth Schedule, and
wine etc., being in class 33 of the Fourth Schedule, are sold
from the same counters and asked for by the same class of
customers. Thus, both the products by the established use
of the trade are bound to be regarded as goods of the same
class. The mark 'BALBI BLACK LABEL' applied for is
confusingly and deceptively similar to the appellant's well
known trade mark 'BLACK LABEL'. Thus, the registration
of the trade mark applied for is contrary to provisions of
Sections 11, 12 and 13(1) of the Trade and Merchandise
Marks Act, 1958 (hereinafter referred to as the Act)."
3. Deputy Registrar of Trade Marks took up the matter for
hearing on 5.5.93. His conclusions are based upon the
examination of the matter under Sections 11(a), 12(1) and
18(1) of the Act. In matter of his examination under Section
12(1) of the Act, he concluded:-
(i) The prefixes in the mark 'KALYANI BLACK LABEL' and
'BALBI BLACK LABEL' being 'KALYANI' and 'BALBI'
respectively, are distinct and dissimilar and the suffix
'BLACK LABEL' is identical and/or deceptively similar to
each other and the prefixes being essential feature of the
mark have greater significance and weight than all suffixes.
Thus, the condition relating to the mark being identical
with or deceptively similar to the similar mark registered in
the name of a different proprietor is not satisfied;
(ii) Appellant's goods are in respect of beer and the
respondent's goods are in respect of liquor, including
brandy. Hence rival goods are of the same description
falling in different classes and thus, goods being similar,
the condition relating to goods being of the same
description under Section 12(1) of the Act is met. Thus, the
impugned mark meets the requirements of Section 12(1)
having not been disqualified on both the grounds in
relation to deceptive similarity of the marks and the
similarity of the goods.
13......(emphasis supplied). We hold that the impugned
mark is likely to deceive or cause confusion in terms of
Section 11(a) of the Act and is also disentitled under
Section 12(1) of the Act since it pertains to the same
description of goods and is deceptively similar to the mark
of the appellant. Accordingly, for these reasons the
impugned Order of the Deputy Registrar dated 30.9.93 is
set aside and the appeal is allowed with no Order as to
costs."
67. It is also submitted by the plaintiff that the different classes of
criteria has no concern in an action for passing off if the confusion and
deception is apparent on the face of it. The plaintiff has referred the
case of Australian Wine Importers‟ Trademark - IN THE HIGH
COURT OF JUSTICE - CHANCERY DIVISION (COURT OF
APPEAL) - Page 316 at placitum 15-25, page 318 at placitum
35-45.
"We find that they are goods which are generally sold by
the same persons, and for the purposes of trade may, in
some respects, be considered as the same description of
goods; for they are both alcoholic, and although there may
be differences in them, they may fairly be considered as
coming within the same description of goods, through they
are not the same goods. Therefore, although it does not
depend on the class - because both these descriptions of
goods are included in the same class -yet, in my opinion, it
may depend on the description, and if it was determined on
that alone, I should hold that they do come within that term
-"the same description of goods."
Now, for the purpose of deciding whether two sets of goods
are the same description, when they are not the same
goods, we must not, as it appears to me, lay too much stress
on the classification of the framers of the rules. If you
come to look at that classification, you will find goods of
the same description, in one sense, in different classes; and
you will find goods of different descriptions in the same
class. For example, if you turn to classes 26 and 29, you
will find flax, hemp, and jute, all of which are fibrous, and
more or less of the same description for trade purposes,
and you find them in different classes. Supposing, for
example, that a man who deals in hempen goods and in flax
goods had a trade mark for flax and hempen goods, it
would be a strong thing to register somebody else in the
same class in respect of jute goods."
68. The goods more specifically beers and whisky are not
identical and again they are either same description of the goods or allied
or cognates or different. The judicial opinion in this respect is
also not consistent as to whether the said goods are actually the goods of
the same description. It is noteworthy that the alcoholic drinks like
whisky wines, spirits are falling in class 32 and beers, water and other
aerated drinks are falling in class 33.
69. Although I am aware that the classification is not material for
measuring the likelihood of confusion and deception. But the same
cannot be completely overlooked in the present circumstances. The
―alcoholic drinks‖ may be a very wide classification wherein there may
be goods including whisky, Rums, spirits, wines, Jins of different price
ranges. The same may also include the drinks which are not purely
alcoholic ones but are dilutions like beers which contain the alcolohic
content. If one may apply the test of identity of composition, identity of
consumers, price ranges, consuming public as tests, the said goods seem
to be goods of different description as composition wise the beers and
whisky are not the same, price wise, there is a great price variation as
beer may be cheaper and whisky may be expensive, consuming public
wise people are discerning as to whether they want beer or whisky.
70. In Khoday Distilleries Limited (Now known as Khoday
India Limited) vs. Scotch Whisky Association and Others, reported in
(2008) 10 Supreme Court Cases 723. The relevant paras of the said
judgment run as under:-
"65. In Scotch Whisky Assn. v. Marton De Witt, the
Federal Court of Australia was concerned with the question
as whether the mark ―Glenn Oaks‖ was deceptively similar
to trade marks that, before the priority date of the
application, had acquired a reputation in Australia for
Scotch whisky and Scotch whisky-based liquors as
envisaged under Section 60 of the Trade Marks Act, 1995.
In that proceeding also Ian Barclay had affirmed an affidavit
in favour of Respondent 1 Association. As regards the
market(s) and consumer knowledge, it was held:
―33. There are two classes of consumers in the
Scotch whisky and bourbon markets: the involved
consumer and the uninvolved consumer. The
knowledge of these consumers may be obtained in
several ways--including labels, customer,
salespeople, word of mouth and past experiences.‖
Noticing the details involving the manufacture of Scotch
whisky that it is ordinarily made from barley; it originates in
Scotland; if there are two forms of whisky: blended and
malt; it has various brands and its alcoholic content is at
least 40% by volume. It has further been noticed:
―35. All the applicant's expert witnesses would fall
within this class of consumer. Given the market is
quite small, product distinction between Scotch
whisky and other products is more readily
discerned by consumers in this class. They would
also be aware that Scotch whisky is sold in bottles
and in pre-mixed drinks (Scotch whisky
products).‖
It was also held:
―38. The purchase of bourbon and Scotch whisky
products is not one of impulse. The habits of
alcohol purchasers differ from those of purchasers
of soft drinks or sports drinks, who are usually
teenagers and children. Are, (sic) pricing and
product quality are all factors that make for
more discerning consumers of Scotch whisky and
bourbon.
39. The uninvolved purchaser buying a present for
someone else will usually ask a salesperson, who
will assist in product distinction between bourbon
products and Scotch whisky products. The
salesperson in a liquor store is a means by which
consumers become knowledgeable about different
products. By contrast, consumers would not
typically ask a salesperson what a bottle of coke or
a new soft drink tastes like. They would purchase
the product and try it themselves. Consumers
would also read product labels, see that ‗Scotch
whisky' is written on the container, and infer that
Scotch whisky is made in Scotland.‖
66. The tests which have been laid down therein are as
under (Marton De Witt case):
―38. The purchase of bourbon and Scotch whisky
products is not one of impulse. The habits of
alcohol purchasers differ from those of purchasers
of soft drinks or sports drinks, who are usually
teenagers and children. Are, (sic) pricing and
product quality are all factors that make for more
discerning consumers of Scotch whisky and
bourbon.
39. The uninvolved purchaser buying a present for
someone else will usually ask a salesperson, who
will assist in product distinction between bourbon
products and Scotch whisky products. The
salesperson in a liquor store is a means by which
consumers become knowledgeable about different
products. By contrast, consumers would not
typically ask a salesperson what a bottle of coke or
a new soft drink tastes like. They would purchase
the product and try it themselves.
Consumers would also read product labels, see
that ‗Scotch whisky' is written on the container,
and infer that Scotch whisky is made in Scotland.‖
The Court held that both involved and uninvolved
purchasers of bourbon and Scotch whisky products could
not be confused save and except those who are
exceptionally stupid or careless.‖
In the sharp contra distinction, if one applies the trade channel
test and overall ground reality situation existing in India, there may seem
to be a commonality in the trade channel wherein these drinks are served
or sold in the shops in India. In these circumstances, it becomes a
question which has to be seen in more depth in trial as to whether the
goods like beer and whisky are the goods of same description.
However, applying the principles of passing off at this prima
facie stage as in my opinion, single numeral mark ‗8' is prima facie non
distinctive and more so when there is a nexus being found out in the trade
of alcohols with respect to numeral 8. The authorities on the subject also
make the reference of numeral 8 as requirement of the trade in alcohol
business to denote the strength of the beer. The plaintiff is also not the
registered proprietor of the numeral 8 and rather is registered of 8PM.
Thus, unless the plaintiff is exclusively registered for 8 per se, it cannot
be said to enjoy the proprietory rights over the part of the mark as per
section 17 of the Act. Prima facie, it appears that the numeral 8 cannot be
exclusively enjoyed by the plaintiff.
The cases referred by the plaintiff have no bearing, as in all
the cases, the trade marks in question were not single letter mark and the
defendants in those cases have appropriated the entire mark of the
plaintiff or used deceptively similar mark in totality unlike a mere single
letter.
71. It is also argued by the plaintiff that the malafide intention of
the defendant is further corroborated by the fact that the defendant is also
using a slogan ―8 KA DUM‖ similar to that of the plaintiff's well-known
campaign ―AATH KE THAATH‖. The defendant is also using the
expression ―ROYALS‖ deliberately as ROYALE is part of the of the
plaintiff's ―8 P.M‖ family of marks. In support thereof, he referred the
following cases:
(a) Laxmikant Patel v. Chetanbhai shah (2002) 3
SCC 65 - Para 10
"The law does not permit any one to carry on his business
in such a way as would persuade the customers or clients in
believing that his goods or services belonging to someone
else are his or are associated therewith. It does not matter
whether the latter person does so fraudulently or otherwise.
The reasons are two. Firstly, honesty and fair play are, and
ought to be, the basic policies in the world of business.
Secondly, when a person adopts or intends to adopt a name
in connection with his business or services which already
belongs to someone else it results in confusion and has
propensity of diverting the customers and clients of
someone else to himself and thereby resulting in injury."
In this case, the Apex Court further observed that:
"Where there is probability of confusion in business, an
injunction will be granted even though the defendants
adopted the name innocently."
(b) Midas Hygiene v. Sudhir Bhatia and Ors. 2004
(28) PTC 121 (SC) - Para 5
"The grant of injunction also becomes necessary if it prima
facie appears that the adoption of the Mark was itself
dishonest."
72. In order to establish his case on passing off, Mr. Kaul has
argued that the Defendant launched its brand PALONE/OKACIM
PALONE in India in the year 2007. However, the said product turned out
to be an unsuccessful one and not get with the Indian market. Therefore,
the Defendant in Jan- Feb, 2011 launched PALONE 8 which is alleged to
be a super strong beer in India. Numeral 8 being used in a prominent
manner and rather alleged success of the said product i.e. sales turnover
of around 26 crores from Jan, 2011 - April, 2011 shows the commercial
potential of the numeral 8 and the malafide intention on the part of the
defendant, thus the plaintiff has been able to make out a strong case of
passing off.
The decisions relied upon by the plaintiff on the point of
passing off are distinguishable on the reason that in those cases, the
courts had come to conclusion that the trade marks in question were
distinctive and even the defendants had taken the whole trade marks of
the plaintiffs. Even in the case of B.K. Engineering (supra), the
defendant was using the letter marks ‗B.K. 81', the entire mark of the
plaintiff B.K. was appropriated by the defendant by just adding numerals
81 and they were using the mark in relation to same goods, i.e. cycle
bells. Similar is the position of the case referred by the plaintiff, of
Laxmikant Patel. In the case of Midas Hygiene (supra), the defendant
was using the same trade mark Laxmanrekha with the similar packaging
as that of the plaintiff. Therefore, the Court had made the observation
that the grant of injunction becomes necessary. All the prevailing
circumstances in the present case are missing.
73. Let me also examine the argument that the sales of the
defendants have increased by user of the numeral 8. At this stage where I
have already arrived at the finding that the numeral 8 is usually used to
denote strength or lager in the beer. Further, there are number of the
traders using the numeral 8 on their product. It cannot be said with such
certainty as to whether the sales of the defendants have risen due to the
infringement of the rights of the plaintiff when the plaintiffs are not even
in beers and not even registered in beer or whether the said the rise of the
sales is due to reason that the beer which is sold of large strength and the
same is made clear to the customer by showing the same on the product.
Thus, the said argument does not persuade me much to believe that there
is a case of passing off made out merely due to rise in the sales of the
defendant which may be incidental and is not directly related to the
infringement of the rights of the plaintiff.
74. At this stage, it is for me to discuss the decision rendered by
the Division Bench of this court in the case of Rhizome Distilleries P.
Ltd. & Ors. vs. Pernod Richard S.A. France & Ors. 2010 (42) PTC 806
wherein the court was concerned with the similar dispute relating to
Alcohol industry wherein the marks used were IMPERIAL BLUE and
RHIZOME IMPERIAL GOLD and the court was concerned with the
part of the mark IMPERIAL which was full fledged word found in the
dictionary as against the prima facie weaker mark 8 and the Hon'ble
Division Bench observed thus:
―24. It is our analysis that no exclusive or proprietary rights
can be claimed by either of the parties before us in respect
of the word IMPERIAL which is not only in common
parlance to be found in every dictionary, but also is
laudatory in nature as it alludes to royalty or grandeur. With
respect, we are not convinced that IMPERIAL refers only to
royalty, empowering only such persons to take litigative
umbrage. Illusions of royalty and grandeur are one of the
sentiments resulting from imbibing spirits, and, therefore,
IMPERIAL may justifiably be seen as descriptive.‖
―It may still be pleaded by the Plaintiffs that the Defendants
are guilty of passing off because of the adoption of the word
IMPERIAL. To this we may clarify that neither party has
any exclusive right for the use of the word IMPERIAL. The
two labels, that is IMPERIAL BLUE and RHIZOME
Imperial Gold are totally dissimilar and if a flat amber bottle
is used by the Defendants/Appellants, no deception is likely
to arise. It is also relevant to mention that the word
IMPERIAL is used by several other manufacturers of
alcohol such as IMPERIAL TRIBUTE, IMPERIAL
FAMOUS, TETLEY‟S IMPERIAL, IMPERIAL‟S
HERO FIVE WHSKY, CAREW‟S IMPERIAL
WHINE WHISKY, OLDIMPERIAL, SUMMERHILL
IMPERIAL, XO IMPERIAL, DONFULANO
IMPERIAL, RON BARCELO IMPERIAL ETC. All
these parties will have to co-exist. In view of the
widespread use of the word IMPERIAL, especially in
the alcohol business, it is not possible to accept the
contention of Mr. Chandra that the word IMPERIAL
has attained a secondary meaning which would justify
exclusivity. Moreover, secondary meaning would evolve
over a number of years; in the present case, the
Plaintiffs started marketing its product in 1997 and that
is too short a period to make such an extreme claim. In
this regard, it is also relevant that both the parties have
received registration under the TM Act for their
competing brands.‖
75. The present case obviously is similar to the case referred
above and covers within the observations of the Pernod Ricard (supra),
as there are number of traders who are using the numeral-8 in respect of
the alcohol drinks and there are number of parties who have not and are
securing the registration of numeral-8. Therefore, it is not possible at this
stage to restrain the defendant from using the numeral 8 due in view of
the facts and circumstances explained earlier. I am of the considered
view that the defendant is not liable to be restrained from using the mark
numeral-8 completely as prayed by the plaintiff in the injunction
application, as the plaintiff has failed to make out any prima facie case in
its favour. The balance of convenience also does not lie in favour of the
plaintiff. The irreparable loss will be caused to the defendant if they will
be directed to not to use the numeral 8 when the plaintiff is not
even carrying on business in beers. Thus, the present case do not warrant
the grant of interim injunction.
76. However, I find some substance in the submission of the
plaintiff about its grievance that the defendant is using the mark-8 in
similar writing style and also in the golden colour which may be avoided.
Thus, in order to avoid any confusion, I direct the defendant to use the
mark PALONE and numeral-8 together in the same line. The numeral-8
is allowed to be used by the defendant in different writing style in
different colour other than in golden colour. This, I am directing this
even to avoid any bleak chances of misrepresentation. The mark
‗PALONE 8' would be used by the defendant in the same size of
lettering and fonts. The defendant is, however, granted time upto
31.12.2011 to make such changes and amendment in the packaging and
advertisement material as well as in slogan ―8 KA DUM‖ if used by the
defendant at present. The defendant shall also maintain true statement of
account for the aforementioned products and file the same in this case
every quarterly with an advance copy to the plaintiff. The defendant is
allowed to use the same as the manner mentioned above.
77. Consequently I.A. No.8122/2011 is disposed of with the
above said directions. No order as to costs.
78. The findings given in this order are tentative and shall have no
bearing when the matter will be considered at the final stage after
recording the evidence.
IA No.9007/2011
In view of order passed in IA No.8122/2011, this application
is also disposed of.
CS(OS) No.1216/2011
Parties are allowed to file original/certified copies of
documents within six weeks.
List the matter before the Joint Registrar for admission/denial
of the documents on 21.11.2011.
MANMOHAN SINGH, J.
SEPTEMBER 16, 2011
sa/dp/jk/ka
