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2013 Supreme(Kar) 226
High Court of Karnataka
ARAVIND KUMAR, J.
United Breweries Ltd.
Versus
Khodays Breweries Limited
Regular First Appeal No. 66 of 2008
Decided on: 01-04-2013
For the Appellant:Gururaj & Associates, Advocates.
For the Respondent:K.N. Srinivasan, Advocate.
Headnote:TRADE & MERCHANDISE MARKS ACT, 1958 - Sections 15 & 23 & Trade & Merchandise Marks Rules, 1959, Rule 65(1): [Aravind Kumar, J] Entries in Trade Marks Register - Certificate issued under Section 23 (2) of the Act read with Rule 65(1) and not copy of the entry as issued under Section 115 - said certificate not containing entry with regard to trade mark used by plaintiff - Plaintiff did not prove contents of said certificate - Same did not have any evidentiary value and could not be relied upon - Moreso, did not summoned original register from office of Trade Marks Registry to prove the contents of said certificate - Held, Plaintiff has utterly failed to prove that it has obtained registration of trade mark as claimed by him and thus, it was not entitled for reliefs sought for in plaint.
TRADE & MERCHANDISE MARKS ACT, 1958 -Section 105: [Aravind Kumar, J] Suit against infringement of trade mark - Maintainability - Earlier suit against same defendant for perpetual injunctiono, infringement and passing off in respect of another trade mark ’Herculus Black Label’ - Tempoprary injunction granted with clarification that order of injunction will not prevent respondents from manufacturing or selling goods in brand name of Trade Mark which was questioned in present suit - Thus plaintiff was aware about usage of trade mark in question by defendant - However, present suit was filed after lapse of three years - Held, Plaintiff had forfeited its right to claim any relief on account of delay and also acquiescence and therefore, plaintiff is not entitled for grant of discretionary relief.
TRADE & MERCHANDISE MARKS ACT, 1958 - Section 106: [Aravind Kumar, J] Suit against infringement of trade mark - Product sold by both plaintiff and defendant was Beer - Plaintiff was selling its product under trade name "Kalyani Black Label" and defendant selling its product under name of "Hercules Black Label" - Words "Black Label" common to both plaintiff and defendant which were generic in nature and used across the world by various manufacturers of liquor - Neither party as such could claim any exclusive right to use the said words - Plaintiff was aware of the fact that defendant was using the said trade mark from the year 1982 - Confusion of public regarding two Trade Marks not proved - Words ’Kalyani’ and ’Hercules’ were written in different manner and totally in different style - Held, Plaintiff cannot seek action for passing off by the defendant for sale of its product by use of words "Hercules Black Label". Dismissal of suit for injunction is proper.
CODE OF CIVIL PROCEDURE, 1908 - Order 14, Rule 1: [Aravind Kumar, J] Non-framing of issues - Parties to lis raised their respective plea and also tendered their evidence based upon which court had examined said plea and court had recorded its finding - Held, Parties would be estopped from contending that non-framing of issue has resulted in prejudice and that consequentially decision has been vitiated.
1. This is a plaintiff's appeal questioning the correctness and legality of the judgment and decree passed by XXV Addl. City Civil Judge, at Bangalore City - CCH No.23 in O.S.No.747/1993 dated 01.06.2007, whereunder the plaintiff's suit for permanent and mandatory injunction against the defendant came to be dismissed.
2. Parties are referred to as per their rank in the trial Court namely, appellant is referred to as 'plaintiff' and respondent is referred to as 'defendant'.
BRIEF BACKGROUND:
3. Plaintiff filed a suit seeking the relief of perpetual and mandatory injunction against the defendant alleging that it has caused infringement of its registered trade mark, label "Kalyani Black Label" and passing off the beer manufactured by it to the customers under the trade mark "Hercules Black Label". Plaintiff has contended that it has got the trade mark registered under the Trade and Merchandise Marks Act, 1958 and the words used by the defendant insofar as the beer manufactured by it and selling the same by creating confusion in the minds of the plaintiff's customers since the mark of the defendant is deceptively similar to that of trade mark of the plaintiff and as such the cause of action for the suit in question has arisen.
4. Defendant filed detailed written statement and denied the averments made in the plaint. Defendant contended that plaintiff is not having registration of the trade mark "Black Label" and the alleged registration is with a disclaimer. Defendant also contended that its trade mark "Hercules Black Label" is neither identical with nor deceptively similar to the plaintiff's registered trade mark "Kalyani Black Label" and comparison of the two would indicate that they are dissimilar and no consumer will be confused or deceived to take one for the other if they are placed side by side or apart. It is also contended that there is no phonetic similarity between the plaintiff and defendant's trade mark. It has also contended that through its attorney plaintiff had got issued a notice in the year 1989 to the defendant alleging that use of words "Black Label" as part of the mark "Khoday's Black Label" conflicted with its registered trade mark "Kalyani Black Label" and while replying to the said letter on 16.06.1990 defendant had specifically contended that defendant has been using the words "Black Label" along with the word "Hercules" as trade mark of the beer manufactured by it ever since 1982 and as such the plaintiff was aware of the use of trade mark by defendant in the year 1990 itself and by suppressing this fact the plaintiff has filed the suit in question and also by suppressing the fact of having filed a suit i.e., O.S.706/1990 before the High Court of Calcutta. On these grounds amongst others raised in the written statement defendant sought for dismissal of the suit.
5. On the basis of the pleadings of the parties, trial court formulated the following issues for its adjudication:
1. Whether plaintiff proves that label of Beer bearing mark "Kalyani Black Label" is deceptively similar to that of defendant's brand "Hercules Black Label"?
2. Whether defendant is guilty of passing off?
3. Whether defendant is liable to account for loss suffered by plaintiff?
4. Whether plaintiff is entitled for mandatory injunction directing the defendant to produce all infringing label and goods in its custody and possession?
5. Whether plaintiff is entitled for any relief?
6. What Order? What decree?
6. In order to substantiate its contentions raised, plaintiff got examined four witnesses as PW-1 to PW-4 and in all produced 26 documents and got them marked as Exhibits P-1 to P-26. Defendant examined six witnesses to support its stand taken in the written statement as DW-1 to DW-6. In all defendant produced 18 documents and got them marked as Exhibits D-1 to D-18. It is noticed from the records that evidence of DW-2 to DW-6 has been deleted vide order dated 26.10.2006 in view of memo filed on the said date.
7. Trial court o
