Registered trademark owners are entitled to prevent unauthorized use that is likely to confuse consumers, establishing a right to seek injunction and damages for infringement and passing off.

JUDGMENT :

ARIF S. DOCTOR, J.

1. The Plaintiff has filed the present Suit seeking, inter alia (i) a permanent order of injunction restraining the Defendant from infringing the Plaintiff’s registered trade mark No. 436744, i.e. “HAYWARDS 5000” as well as trade mark No. 1521743, “FIVE THOUSAND”, both in Class 32, by using the mark “COX 5001”(“impugned trade mark”) or any other trade mark deceptively similar to the Plaintiff’s registered trade mark and (ii) from passing off the Defendant’s goods as and of the Plaintiff’s goods. The Plaintiff has also sought damages of Rupees Twenty Lakhs.

Brief Background

2. The Plaintiff is the registered proprietor of two trade marks in Class 32 for beer, (i) the label mark “HAYWARDS 5000” bearing Registration No. 436744 (“label mark”) and (ii) the word mark “FIVE THOUSAND” bearing Registration No. 1521743 (“word mark”). These marks are collectively referred to as “the said trade marks.”

3. The trade mark “HAYWARDS 5000” was originally adopted in 1983 by the Plaintiff’s predecessor in title, Shaw Wallace & Co. Ltd. (“Shaw Wallace”), who then, in the year 1985, applied for and secured registration of the label mark under registration No. 436744. It is the Plaintiff’s case that since the year 1983, Shaw Wallace and thereafter the Plaintiff have, including through licensees, been continuously and extensively manufacturing and selling beer under the label mark “HAYWARDS 5000”.

4. In 2003, the Delhi High Court, in the case of Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd. 2003 (27) PTC 63, declared “HAYWARDS 5000” to be a well- known trade mark, following which it was included in the list of well-known marks maintained by the Registrar of Trade Marks.

5. By a Deed of Assignment dated 27th May 2005, Shaw Wallace assigned and transferred the registered label mark “HAYWARDS 5000”, together with the goodwill associated therewith, to the SKOL Breweries Ltd., as the Plaintiff was formerly known. On 27th May 2005, SKOL Breweries Limited filed Form TM-23 to enter its name in the Register of Trade Marks as the proprietor of the said label mark. This application was duly accepted.

6. In January 2005, the Plaintiff’s predecessor discovered that the Defendant was inter alia marketing and selling beer under the trade mark “COX 5000”, in which the numeral “5000” formed a prominent and essential feature. A cease-and-desist notice dated 18th January 2005 was issued by the Advocates of the Plaintiff’s predecessor. However, the Defendant refused to comply with the same, and it was thus that the Plaintiff filed Suit No.19 of 2006 against the Defendant and one of its directors, Mr. Jagdishchandra Aggrawal, in which the Defendant was, by an order dated 21st September, 2006, restrained from using the numeral “5000”. Said Order was challenged by the Defendant before Division Bench of this Court, however, the same was dismissed.

7. The Plaintiff then, in the year 2007, applied for registration of the word mark “FIVE THOUSAND”, which was subsequently granted in 2010 under Registration No. 1521743 in Class 32.

8. The Defendant, thereafter sometime in 2007, also filed an Application for Rectification [ORA/170/2007/TM/KOL] of the Plaintiff’s registered label mark No. 436744 in Class 32 before the Intellectual Property Appellate Board (“IPAB”).

9. On 14th September 2011, the IPAB, by a detailed order, rejected the Defendant’s Application for Rectification of the Plaintiff’s label mark.

10. It is the case of the Plaintiff that in or around 2011, the Plaintiff learnt that the Defendant had begun selling beer under the trade mark “COX 5001” wherein the numeral “5001” wa