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2013 Supreme(Bom) 339
High Court of Judicature at Bombay
S.J. KATHAWALLA, J.
SABMiller India Limited (Formerly SKOL Breweries Ltd.)
Versus
Som Distilleries & Breweries Ltd.
Notice Of Motion No. 2642 of 2012 In Suit No. 2584 of 2012
Decided on: 08-02-2013
For the Plaintiff:Dr. Virendra V. Tulzapurkar, along with Himanshu Kane with Hiren Kamod instructed by M/s. W.S. Kane & Co., Advocates.
For the Defendant:Kishore Shrivastava, Senior Advocate, with Aditya Thakkar, instructed by Rajesh Ravindran, Advocates.
The main legal point established in the judgment is that the use of a registered trademark, identical to the Plaintiff's mark and on identical goods, is likely to cause confusion and constitutes infringement under the Trade Marks Act, 1999.
Headnote:
Infringement - Trademark - Trade Marks Act, 1999 - Section 29, Section 30 - Summary of Acts and Sections: Section 29(2)(c), Section 29(3), Section 30(1), Section 30(2)
Fact of the Case:
The Plaintiff sought an injunction against the Defendant for infringing its registered trademark 'SABMiller India - SABMILLER INDIA' by using identical bottles for selling beer. The Defendant admitted to inadvertently using the Plaintiff's bottles but refused to commit to ceasing such use.
Finding of the Court:
The Court found the Defendant guilty of infringing the Plaintiff's trademark and confirmed the ad-interim order restraining the Defendant from using the Plaintiff's trademarked bottles until the final disposal of the suit.
Issues: Infringement of registered trademark, suppression of facts, applicability of Sections 29 and 30 of the Trade Marks Act, balance of convenience
Ratio Decidendi: The Court held that the Defendant's use of the Plaintiff's trademark on beer bottles constituted infringement under Section 29(2)(c) and Section 29(3) of the Trade Marks Act. The Court also rejected the Defendant's defense based on Section 30(1) and Section 30(2) of the Act. Additionally, the Court found the balance of convenience in favor of the Plaintiff due to the Defendant's dishonest conduct.
Final Decision: The ad-interim order restraining the Defendant from using the Plaintiff's trademarked bottles was confirmed until the final disposal of the suit.
1. In the above Notice of Motion, an urgent ad-interim ex-parte order was passed on December 18, 2012 in terms of prayer clause (a) of the Notice of Motion which reads thus:
"(a) that pending the hearing and final disposal of the suit, the Defendant by itself, its directors, servants, agents, stockists, distributors and dealers, be restrained by an order and permanent injunction of this Hon’ble Court from infringing the Plaintiff’s registered trade mark SABMiller India / SABMILLER INDIA bearing No. 1787321 in classes 21 and 32 by using bottles embossed with the trade mark SABMILLER INDIA or by the use of the trade mark SABMiller India / SABMILLER INDIA or any other trade mark deceptively similar to the Plaintiff’s registered trade mark SABMiller India / SABMILLER INDIA upon or in relation to beer or any other goods for which the Plaintiff’s said trade mark No.1787321 has been registered or in any other manner whatsoever;"
2. The Learned Senior Advocate appearing for the Defendant has at the outset clarified, that though the Defendant has in its Affidavit-in-Reply stated that it does not admit that this Court has jurisdiction to try and dispose of the present suit, the Defendant is giving up its said contention and will proceed with the hearing of the Notice of Motion as well as the suit on the basis that this Court has jurisdiction to try and entertain the present suit.
3. Briefly set out, the relevant facts are as under:
4. On 19th February 2009, the Plaintiff applied for registration of its series trade mark "SABMiller India – SABMILLER INDIA" under the Trade Marks Act, 1999 ("the Act") under Application No. 1787321 in Class-21 in respect of glass bottles and in Class-32 in respect of beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks, fruit juices, syrups and other preparations for making beverages.
5. On 19th June 2009, the Plaintiff conceived a design to be applied to its bottles to be used for selling beer and applied for registration of the said design under the Designs Act, 2000, in Class 09-01 which design was registered on 15th January 2010 under No. 223479. In the meantime, on 22nd June 2009 the Plaintiff changed its name from SABMiller India Limited to SKOL Breweries Ltd.
6. The Plaintiff sometime after January 2010, introduced in the Indian Market its beer bottles on which the design registered under No. 223479 was applied and which was embossed with its said trade mark SABMILLER INDIA.
7. In the second week of January 2012, the Plaintiff came to learn that the Defendant is manufacturing, distributing and selling its beer bottles, which not only had the identical design as that of the registered design on the Plaintiff's bottles but which were also embossed with the Plaintiff's said trade mark SABMILLER INDIA. The Plaintiff therefore on 3rd February 2012 instituted a suit being Suit No. 5A of 2012 against the Defendant before the District Court of Raisen, Madhya Pradesh, inter alia, for permanent injunction restraining the Defendant from infringing the Plaintiff's registered Design No. 223479 and passing off its products as those of the Plaintiff's products, by use of the said trade mark SABMILLER / SABMILLER INDIA and for other consequential reliefs. The District Court, Raisen by its order dated 3rd February 2012 restrained the Defendant from removing from its factory, its bottles to which the Plaintiff's design No. 223479 was applied and which were bearing the Plaintiff's trade mark SABMILLER INDIA, till the next date of hearing. The said ad-interim order dated 3rd February 2012 was extended from time to time. On 3rd April 2012, the Defendant filed its written statement wherein it raised a defence of invalidity of registration of the Plaintiff's said design under Section 19 of the Designs Act, 2000. The said Suit No. 5A of 2012 was transferred to the IIIrd Additional District Judge, who by his order dated 3rd July 2012 dismissed the Plaintiff's application for interim reliefs.
