1. This is an actionfor infringement and passing off. The plaintiff is the registered proprietor of a label mark comprising of the words "HAYWARDS 5000 SUPERSTRONG BEER" within a label of which "HAYWARDS 5000" forms a dominant and essential feature. The plaintiff also claims to be the proprietor of the word mark "HAYWARDS 5000".

2. In the year 1983 the 2nd defendant, Shaw Wallace and Company Limited adopted the trademark

"Haywards 5000" of which the numeral 5000 forms a dominant and essential feature for and in respect of strong beer with a view to distinguish its goods from those of others. The numeral 5000 is a fancy numeral in the context of the trademark and does not have any reference to the character, quality or the strength of the beer. The plaintiff has referred to and relied upon various labels containing the trademark used by the 2nd defendant and/or its licensee. Between the years 1983 and 2000 the 2nd defendant got manufactured from its contract bottlers strong beer of particular taste and quality and sold it under the trademark "HAYWARDS 5000" on a continuous and extensive basis. Between the years 2001 and 2005 Shaw Wallace Breweries Limited under license from the 2nd defendant got manufactured from its contract bottlers and sold the same beer under the same mark also on a continuous and extensive basis.

3. The2nd defendant got registered in its name with effect from 19th April 1995 the said label mark/word mark under class 32 with the following conditions and limitations: –

"REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE ALL DESCRIPTIVE MATTERS APPEARING ON THE LABEL."

4. During the year 1993 – 94 9,20,000 cases of beer were sold under the said mark. The sales increased over the years. In the year 2003 – 2004 1,000 cases of beer were sold under the said mark. During the corresponding years the annual publicity and sales promotional expenses also increased from Rs.2 crores to Rs.11.60 crores. The same establishes the enormous goodwill and reputation developed by the plaintiffs predecessors in the said mark.

5. By a deed of Assignment dated 27th May 2005 the 2nd defendant and Shaw Wallace Distilleries Ltd. assigned to the plaintiff all their right, title and interest in the said trademarks for the consideration and on the terms and conditions contained therein. It was necessary for Shaw Wallace Distilleries Ltd to join in the assignment for reasons which are not material to the judgment as defendant No. 1 has not contested the proprietorship of either the plaintiff or its predecessors in respect of the said marks.

6. Mr. Bookwala, the learned senior counsel appearing on the half of defendant No. 1 submitted that in view of the limitations and conditions placed by the Registrar in respect of the registration of the said mark the plaintiff cannot claim a monopoly/exclusive right to use the numeral 5000 with respect to products falling under class 32.

7. The submission is answered in the plaintiffs favour in view of the judgment of a learned single Judge of this court in the case of Shaw Wallace and Company Limited and another versus Mohan Rocky Spring Water Breweries Ltd. (2006) 3 All Maharashtra Reports 439. In that case it was contended on behalf of the plaintiff that it had an exclusive right to use the trademark "HAYWARDS 5000" an essential feature whereof included the numeral 5000 and that the defendant had committed the acts of infringement and passing off by using that trademark "PRESTIGE 5000" and "FOUR SQUARE 5000". In that case also the defendant contended that the plaintiff was not entitled to claim an exclusive right to use the numeral 5000 as it was descriptive and common to the trade and due to the disclaimer stipulated in the registration certificate. The learned Judge held as under: –

“12. It is submitted that there is no disclaimer. The registration certificate and the entry relating thereto clearly does not mention any disclaimer regarding the numeral “