The Court ruled that the Plaintiff's registered marks were infringed by the Defendant's use of a similar mark, establishing likelihood of confusion and passing off under trade mark law.

JUDGMENT :

ARIF S. DOCTOR, J.

1. The Plaintiff has filed the present suit seeking inter alia (i) permanent order of injunction restraining Defendant Nos. 1 and 2 (“the Defendants”) from infringing the Plaintiff’s registered trade mark No.436744 i.e. “HAYWARDS 5000”, as well as trade mark No.1521743 “FIVE THOUSAND” both registered in Class 32 by using the mark “COX 5000” (“impugned trade mark”) or any other trade mark deceptively similar to the Plaintiff’s registered trade mark and (ii) from passing off the Defendants’ goods as and for the Plaintiff’s goods. The Plaintiff has also sought damages of Rupees Five Lakhs.

2. The First Defendant is a company incorporated under the Companies Act, 1956, and carries on the business of manufacturing, marketing and selling beer. The Second Defendant is in the management and control of the First Defendant company.

3. The Third defendant, i.e., Shaw Wallace & Co. Limited was the Plaintiff’s predecessor in title and was later deleted as a party to the Suit by an Order dated 13th March, 2013. The pleadings stood accordingly amended.

Brief Background

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

5. The trade mark “HAYWARDS 5000” was originally adopted in 1983 by the Plaintiff’s predecessor in title, Shaw Wallace & Co. Ltd. (“Shaw Wallace”) who had 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 then the Plaintiff, including through licensees, have been continuously and extensively manufacturing and selling beer under the label mark “HAYWARDS 5000”.

6. In 2003, pursuant to an order passed by the Delhi High Court in Shaw Wallace and Co. Ltd. and Anr. vs Superior Industries Ltd. 2003 (27) PTC 63, the Plaintiff’s label mark “HAYWARDS 5000” was declared as a well-known trade mark and has since been included in the list of well-known marks as maintained by the Registrar of Trade Marks.

7. 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.

8. Sometime in January 2005, the Plaintiff’s predecessor came to learn that the First Defendant was brewing, bottling and marketing beer (“the impugned beer”) under the trade mark “COX 5000”, of which “5000” formed an essential and leading feature. Aggrieved by the same, the Plaintiff’s predecessor, through its Attorneys, addressed a Cease-and-Desist Notice dated 18th January, 2005, calling upon the First Defendant to inter alia cease and desist the use of the impugned trade mark in respect of the impugned goods. The First Defendant responded to the Plaintiff’s predecessor’s aforesaid Notice vide their Advocate’s reply letter dated 1st February, 2005, denying the contents of the aforesaid Notice and refusing to comply with the requisitions contained t