Cobra Beer Partnership Ltd & Anr vs Superior Industries Ltd
2015 Latest Caselaw 2802 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                   Judgment reserved on : 26.03.2015
                                   Judgment delivered on : 08.04.2015.

+     CS(OS) 1802/2014
      COBRA BEER PARTNERSHIP LTD & ANR
                                                            ..... Plaintiffs
                          Through        Mr. Hemant Singh, Ms.Mamta
                                         Jha, Mr. Manish K. Mishra, Mr.
                                         K.K. Nangia and Mr. Waseem
                                         Shuaib Ahmed, Advs.
                          versus

      SUPERIOR INDUSTRIES LTD
                                                             ..... Defendant
                          Through        Mr. Amarjit Singh and Ms.
                                         Sadhir Sarol, Advs.

CORAM:
HON'BLE MS. JUSTICE INDERMEET KAUR

INDERMEET KAUR, J.

I.A. No.11362/2014 (under Order XXXIX Rules 1 & 2 of the CPC)

1 Present suit is a suit for permanent injunction, infringement of

trademark, passing off, rendition of accounts. Plaintiff No. 1 is a

company incorporated under the laws of the United Kingdom. Plaintiff

No. 2 is a company incorporated under the Indian Companies Act. The

plaintiffs are engaged in the business of brewing and selling beer

internationally and in India. Its beer is sold under the various trademarks

i.e. ICEBERG, ICEBERG GOLD, ICEBERG‟S 9000, ICEBERG‟S

GOLD,COBRA, KING COBRA, MCC.

2 The trademark „COBRA‟ was adopted internationally by the

predecessor of plaintiff No. 1 i.e. Cobra Beer Partnership Limited. It has

been continuously and extensively used internationally since then in

respect of beer. Plaintiff No. 1 has also adopted another variety of

„COBRA‟ beer i.e. „KING COBRA‟ in the year 2006. The beer under

the trademark „COBRA‟ and „KING COBRA‟ have acquired

tremendous goodwill and reputation. These trademarks „COBRA‟ and

„KING COBRA‟ have been used in India by the plaintiffs since the year

2004-2006 respectively. The sale figures from the year 2006-2014 have

been detailed in the plaint. The mark „COBRA‟ has been registered as

T.M. Application No. 1115295 with the Registrar of Companies w.e.f.

28.06.2002. The registration number of „KING COBRA‟ is 1283214

and has been registered w.e.f. 21.12.2004.

3 On this count, learned counsel for the defendants had pointed out

that both these registrations have expired as 10 years have elapsed since

then and this expiry was prior to the date of filing of the suit. Suit on this

ground is not maintainable.

4 In rejoinder, learned counsel for the plaintiffs has placed on

record the fresh validation of the registrations of both „COBRA‟ and

„KING COBRA‟ evidencing that trademark application No. 1115295 for

„COBRA‟ was renewed on 28.06.2012 and is now valid up to

28.06.2022. The trademark application No. 1283214 for „KING

COBRA‟ has been renewed on 11.05.2014 and is now valid up to

11.05.2024.

5 Plaintiff No. 2 is the licensee of plaintiff No. 1 and is authorized

to use the trademarks. Contention is that the defendants dishonestly and

malafidely is using the bottles of the plaintiffs having the trademarks

„COBRA‟, „KING COBRA‟, ICEBERG, ICEBERG GOLD and both

the logo of the plaintiffs‟ embossing on its bottles which distinguishes

its bottles but these bottles are being used by the defendant to sell his

own product to which amounts to an infringement of the registered

marks of the plaintiffs. The plaintiff aggrieved by the acts of the

defendant and has prayed also for the relief of passing off. However, in

the application under decision, the plaintiff has confined himself only to

the act of infringement purported to have been committed by the

defendant qua his registered trademarks „COBRA‟ and „KING

COBRA‟. He has prayed for ad-interim relief.

6 Learned counsel for the plaintiffs has also placed reliance upon

2013 (54) PTC 291 (Bom.) SABMiller India Limited Vs. Som

Distilleries and Breweries Ltd. to support his submission that where the

plaintiff had a registered trademark for a particular brand of beer and the

defendant as in the present case was using the bottles having the

embossing of the plaintiff‟s trademark, the case of honest use sought to

be set up by the defendant under Section 30 (1) of the said Act, as

claimed by him, was rejected. He has also placed reliance upon 2014

(60) PTC 246 (Bom) Brihan Karan Sugar Syndicate Private Limited Vs.

South Konkan Distilleries to support the same submission.

7 Written statement and reply to the pending application filed by

the defendant have been perused. The defendant has also filed a counter

claim. The primary contention of the defendant is that a case of

infringement is not made out as the defendant is adequately protected

under Section 30 (1) (a) (b) and Section 30 (2) (d) of the said Act. There

is no infringement within the meaning of Section 29 of the said Act. It

is an honest trade practice; defendant is neither using the trademarks

„COBRA‟ and nor „KING COBRA‟ „in the course of trade‟. The beer of

the defendant is being manufactured and sold by him under its own

registered trademark „SUPERIOR 50000‟ and approved distinctive

labels which are prominently displayed on the products to indicate a

connection in the course of trade between the said goods and its origin.

No case of infringement is made out.

8 The second defence of the defendant is that the plaintiff has no

valid registration in his favour. Reliance has been placed upon 2015 (61)

PTC 1 (Bom) (FB) Lupin Litd. and Anr. Vs. Johnson and Johnson &

Anr., a judgment of the Bombay High Court to substantiate his

submission that the validity of the trademark can be challenged by the

defendant. His challenge on the validity of the registration of the

trademark of the plaintiff is on two counts. His first submission is that

the registration of „COBRA‟ and „KING COBRA‟ expired prior to the

date of filing of suit. This submission has been dealt with in the earlier

part of the judgment where this Court had noted that in rejoinder, the

plaintiff has produced documents showing renewal of both the

registered marks „COBRA‟ and „KING COBRA‟, both of which have

been renewed up to 2022 and 2024. His second submission on the

validity of the registration relates to the deed of assignment which has

been entered into between the earlier owner of the trademark „COBRA‟

and who had assigned it in favour of plaintiff No. 1. Submission is that

this deed of assignment dated 29.05.2009 besides being under stamped

is liable to be impounded, even otherwise shows that it has been entered

into between three entities i.e. Cobra Beer Limited (in administration),

Cobra Beer Partnership Limited and Zelf Hussain. The assignment deed

has however not been signed by all the parties. This assignment deed

even otherwise does not pertain to the trademark application No.

1283214 of „KING COBRA‟. The confirmatory assignment deed dated

22.12.2009 which has been relied upon by the plaintiff has assigned the

right qua the second trademark application i.e. trademark application

No. 1115295 which is in respect of „COBRA‟ but as the title itself

suggests this document dated 22.12.2009 is only a confirmatory

assignment and thus cannot be looked into.

9 The next defence propounded by the learned counsel for the

defendant is his reliance upon documents which have been placed on

record by him (pages 324-325 of Part III of the defendant‟s documents)

to support his submission that the plaintiff himself is also using beer

bottles of other companies namely Kingfisher which also has

embossings on these bottles. This is to substantiate his submission that it

is the common trade practice that most of the breweries purchase empty

beer bottles in bulk from „kabadies‟ and after following the due

procedure of cleaning and sterilization, the beer of their own

manufacture under their own respective trademarks/labels is filled and

sold. The defendant is also putting an adhesive shoulder label on the

bottles which carry any embossing on its body. He is following an

honest trade practice. This practice has been followed by the plaintiff

himself. The plaintiff is not entitled to the discretionary relief of

injunction.

10 Learned counsel for the defendant has placed reliance upon a

judgment of the High Court of Justice-Chancery Division (1969) RP.C

No. 18 page 564, the judgment of House of Lords Reports of Patent,

Design and Trade Mark cases (Vol.LI) No. 4 page 110 Irving's Veast-

Vite Ld. Vs. F.S. Horsenail (trading as the Herbal Dispensary) as also

another judgment of Woolley and Son Vs. Morrison decided by the

Court of Session in Scotland (Inner House-Second Division) to support

his argument that where there is no intent to defraud and there is an

honest and accidental user by the defendant of the embossing on the

bottles of the plaintiff with no intention to pass of his own goods as that

of the plaintiff, the injunction may not be granted in favour of such a

party.

11 In rebuttal, learned counsel for the plaintiffs submits that the

defendant has no locus standi to challenge the deed of assignment

entered into inter-se the plaintiffs. For this proposition, he has placed

reliance upon a judgment of High Court of Patna 1998 (3) BLJR 2014

Umesh Chandra Tripathy Vs. Smt.Shanta Grover and Others. Learned

counsel for the plaintiffs has also placed reliance upon 2009 (39) PTC

347 (Del.) Sun Pharmaceuticals Industries Limited Vs. Cipla Limited to

support an argument that where the registration of an assignment deed is

pending before the Competent Authority, a case of infringement would

lie. This latter proposition of law has not been challenged by the learned

counsel for the defendant. It rests here.

12 To buttress the argument of the learned counsel for the defendant,

learned counsel for the plaintiffs submits that even assuming that the

defendant covers the embossing on the bottle with a label, it would

make little difference as it cannot take away the fact that the embossed

bottle of the plaintiff carrying his mark is being used by the defendant

and obliteration by itself would not entitle the defendant to a protection.

To support this argument, learned counsel for the plaintiffs has placed

reliance upon High Court (Chancery Division) Kabushiki Kaisha Sony

Entertainment Vs.Nuplayer Ltd. (2005) EWHC 1522 (Ch) (2006) ESR.

13 Arguments have been heard. Record has been perused.

14 The grant of an injunction is a discretionary relief which the Court

may or may not grant depending on the factual matrix of each case.

Needless to state that a prima-facie case has to be made out by the

plaintiff before he can be accorded such a relief. Balance of convenience

must also be in his favour. He must also show that irreparable loss and

injury will be suffered by him in case this relief is not granted to him.

All these factors must be shown co-jointly and even if one is missing,

the plaintiff would not be entitled to the relief as claimed for by him.

15 Record shows that plaintiff No. 1 is a company incorporated

under the laws of the United Kingdom. Plaintiff No. 2 is his subsidiary.

It has its registered office in Delhi. By virtue of a deed of assignment

dated 22.05.2009, plaintiff No. 1 was assigned the rights in trademark

application No. 1115295. This related to the mark „COBRA‟. By a

subsequent document i.e. a Confirmatory Assignment deed dated

22.12.2009, plaintiff No. 1 was assigned the right in trademark

application No. 1283214 which related to the mark „KING COBRA‟.

Admittedly both these marks i.e. „COBRA‟ and „KING COBRA‟ were

registered in favour of the plaintiffs which registrations were valied up

to 28.06.2012 and 10.05.2014 respectively. The renewal certificates

placed on record by the learned counsel for the plaintiffs show that the

mark „COBRA‟ has been renewed on the trademark application No.

1115295 w.e.f. 28.06.2012 up to 28.06.2022. The trademark application

No. 1283214 has been renewed w.e.f. 11.05.2014 up to 11.05.2024. The

submission of the learned counsel for the defendant that the so called

deed of assignment by virtue of which plaintiff No. 1 has been assigned

these rights have neither been adequately stamped and nor have they

have signed by all the parties to the said document (besides the fact that

the same have been disputed in the replication and rejoinder filed by the

plaintiffs) is a matter can not be gone into at this stage. Noting the

submission of the learned counsel for the plaintiffs and his reliance upon

the judgment of Umesh Chandra Tripathy (supra) where the Court had

held that a deed of gift between the two parties i.e. the doner and the

donee can be challenged only by the parties therein and a third party

would have no right to challenge the said document; even otherwise that

this would be a matter of trial and may not be required to be gone into,

at this stage.

16 The validity of the registration of the plaintiffs in the trademarks

„COBRA and „KING COBRA‟ has been prima-facie established.

17 The second submission of the learned counsel for the defendant

based on his reliance upon the provisions of Section 30 (1) (a) (b) of the

said Act has to be answered.

18 Relevant would it be to produce the aforenoted provision. It reads

herein as under:-

"30. Limits on effect of registered trade mark.--

(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."

19 Submission of the learned counsel for the defendant being

reiterated that it is only an honest user in the course of trade which has

been carried out by the defendant; he has not made any attempt to pass

of the goods of the plaintiff as that of his own, his mere use of the

bottles which has an embossing of the plaintiffs‟ mark would not by

itself hold out to be a case where the defendant is deliberately proposing

to sell the goods of the plaintiff as that of his own.

20 In the course of hearing, efforts were made by the Court for

proposal of settlement and the submission of the learned counsel for the

defendant was that even where the bottles having the embossing of the

trademark of the plaintiffs were being used by the defendant, they were

covered by neck labels which made the mark invisible.

21 This argument has been countered by the learned counsel for the

plaintiffs. His submission is that Section 30 (1) (a) & (b) does not

protect the defendant as this provision only applies to those cases where

a person uses the registered trademark of another for the purpose of

identifying the goods of the proprietor of those goods which in this case

would be the plaintiffs but this is not the strategy adopted by the

defendant.

22 The judgment of Som Distilleries and Breweries Ltd (supra) is

based on similar facts. Both the parties were engaged in the trade of

beer. One party was manufacturing and selling beer under the mark of

„HAYWARD 5000‟ whereas the other was selling its product under the

mark „BLACK FORT‟. The Single Judge of the Bombay High Court

had held that although the defendant was selling beer having the logo of

the plaintiff yet since the plaintiff was also committing such an act and

he was also selling beer in beer bottles of logos having embossings of

others including „KINGFISHER‟, the Single Judge refused the

injunction in favour of the plaintiff. The defence of honest user set up by

the defendant had been accepted. This was set aside by the Division

Bench. The Division Bench had noted that the plaintiffs admittedly have

a registered mark; thus it was not open to the defendant to trade on the

reputation of the plaintiffs and use the mark of the plaintiffs on its

infringing bottles. The second judgment of the Bombay High Court in

Brihan Karan Sugar (supra) is also on similar facts. The submission of

the defendant in that case that even though admittedly he was using beer

bottles having the logo/embossing of the plaintiff‟s registered

trademark, his submission that it was an honest user and the consumers

identifying the product by label and not by embossing was an argument

which was rejected.

23 Section 29 speaks of the infringement of trademark. It states that a

registered trademark is infringed by a person using by way of permitted

use, used 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 trademark is registered and in such manner as to

render the use of the mark likely to use the trademark. Clause (c) of

Section 29 (2) provides that a registered trademark is infringed by a

person using by way of permitted use, uses in the course of trade, a mark

which because of its identity with the registered trademark and the

identity of the goods or services covered by such registered trademark is

likely to cause confusion on the part of public or which is likely to have

an association with the registered trademark. In Sub-Section 3 of

Section 29 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. This is no doubt a rebuttal presumption but the onus is upon the

defendant to rebut it.

24 To rebut this presumption, the defendants have relied upon the

provisions of Section 30 (1) (a) and (1) (b). This Section limits the

defence of the defendant. A case of honest practice in commercial

matters and his submission that he is not taking unfair advantage or not

doing an act which is detrimental to the distinctive character or repute of

the trademark of the plaintiff which is admittedly registered in his name,

has not been answered.

25 Admittedly the defendant is using bottles having the embossing of

the plaintiffs i.e. „COBRA‟ and „KING COBRA‟ to fill his own beers.

Even if the bottles have a neck label, the submission of the learned

counsel for the plaintiffs is that this label can be easily removed as

bottles are either kept in refrigerators or in cold water and the adhesives

come off. That apart whether the mark is visible or is invisible would

also make little difference; as would still amount to an offending use of

the mark. The defendant has admitted that he is using the offending

bottles having the trademark of the plaintiffs. Had it been the honest

user which was not detrimental to the interest of the plaintiffs, the

suggestion of the Court that the defendant should remove all such

offending bottles at the time when he screens them for filling his beer

was a suggestion which should have been acceptable to him but this was

not so.

26 The judgment of Kabushiki Kaisha Sony Entertainment (supra)

while dealing with such an argument where the defendant had

obliterated the registered mark of the plaintiff on his goods and his

defence being that this act was an honest amounting to no infringement

had been rejected.

27 In this case, the High Court (Chancery Division) Scotland had

made the following observations:-

"The strongly suggests that Nuplayes was prepared to say anything to avoid an injunction, however untrue. But I do not consider that the offer to obliterate the marks makes any difference, even if it were genuine. Even if the batteries and the headphone would be replaced with generics, and the carry strap would not be sold, the product would still be sold under the marks. Nuplayer has indicated that it will inform consumers that it has obliterated the marks, and why it had done so: this will be an offfending use of the marks. It is true that S15 (1) of the 1994 Act provides that, where infringement has taken place, the court may order the infringer to cause the offending sign to be "erased, removed or obliterated" from any infringing goods, but that is merely one of the possible remedies and cannot possibly found an argument that products which would otherwise be infringing cease to be so when the marks are erased or obliterated.

Consequently, I am satisfied that Nuplayer has no arguable defence, and that Sony is entitled to an injunction in substantially the terms asked. "

28 A prima-facie case has been made by the plaintiff in his favour.

He has been able to show that his registered marks „COBRA‟ and

„KING COBRA‟ are being infringed by the defendant. Irreparable loss

and injury would be suffered by the plaintiff in case the ad-interim

injunction is not granted as the regular sale of beer by the defendant in

the bottles having embossing of the plaintiffs‟ registered trademark

would dilute the reputation of the plaintiff and the goodwill which he

has built over the years and it would be tarnished. Balance of

convenience is also in his favour.

29 The judgments relied upon by the learned counsel for the

defendant in Autodrome and Irving's Yeast Vite are both distinct. In

Autodrome, the plaintiff‟s registered trademark was "AUTODROME".

The defendant was using "AUTODROME" as depicted in the

photograph only to indicate his place of business. The Court had noted

that the word "AUTODROME" was not being used by the defendant as

trademark i.e. as a mark to identify the origin or otherwise in relation to

their cars but merely as a name for a place of business. In these

circumstances, the injunction as prayed for has not been granted. In the

second case, the registered trademark of the plaintiff was „Yeast Vite‟.

The Court had noted that the use of word „Yeast-Vite‟ by the defendant

was not being used as a trademark i.e. to indicate the origin of the goods

of the defendant by virtue of its manufacture or offering for sale but was

merely to indicate that his „Yeast Tablets‟ are a substitute for „Yeast-

Vite‟. Both these judgments are distinguishable and would not apply to

the facts of the instant case.

30 In the judgment of Woolley and Sons, the defence of the

defendant was that it was only an accidental user; he admitted that he

was selling the beer bearing the name of the plaintiff‟s mark but the sale

being accidental, he would take all reasonable precautions against the

reoccurrence of the same. Nothing these facts, injunction had not been

granted.

31 As noted supra, a proposal had been put to the defendant that

while screening the bottles before filling them with beer, the bottles

bearing the embossing of the registered trademark of the plaintiffs

„COBRA‟ and „KING COBRA‟ could be removed but this proposal was

not acceptable to the learned counsel for the defendant.

32 In these circumstances, the plaintiffs having made out a case for

injunction, the prayer made in the application is granted. The defendant,

its directors, assigns in business, distributors, licensees, agents,

successors in interest, dealers and stockists are restrained from

manufacturing, selling, offering for sale, advertising, directly or

indirectly dealing in beer or any other alcoholic or non-alcoholic

beverages using the bottles bearing the trademarks „COBRA‟ and

„KING COBRA‟ or any other trademark/logo as may be deceptively

similar/identical to the plaintiffs‟ registered trademarks.

33 Application disposed of.

I.A. No.14549/2014 (under Order XXXIX Rules 1 & 2 of the CPC) in CC No. 45/2014 34 List for hearing on 23.7.2015.

INDERMEET KAUR, J

APRIL 08, 2015/A