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1988 Supreme(Cal) 123
IN THE HIGH COURT AT CALCUTTA
Pratibha Bonnerjea, J.
Express Bottlers Services Private Ltd. - Petitioner
Versus
Pepsico Inc & Ors. - Respondents
Matter No. 1661 of 1985
Decided on : March 24, 1988
Mr. R.C. Deb, B.K. Bachawat and R. P. Mitra .....for the Petitioner
Mr. Sankardas Banerjee, Ashoke Kumar Sen, Subrata Roy Chowdhury, Goutam Chakraborty and Rajat Ghosh ... ...for the Respondent No.1
Mr. Somnath Chatterjee, H.K. Mitter, Sibdas Banerjee and Shvam Sarkar ......for the Respondent No. 3
The Court held that the jurisdiction objection is valid and the mark 'Pepsico' should be treated as excluded from the scope of the present application.
Headnote:
Petitioner sought removal of the marks "Pepsi Cola", "Pepsi" and "Pepsico" from the Register and rectification of the Register under section 46 of the Trade & Merchandise Marks Act, 1958. Respondent No. 1 was the registered proprietor of the marks. Respondent No. 3 was one of the franchise holders of the petitioner. Petitioner claimed to be a manufacturer of ingredients and salts etc. for manufacture of non-alchoholic beverages and aerated water under the mark "Pepsi". Respondent No. 1 took the point that this Court has no jurisdiction to adjudicate in respect of the trade mark 'Pepsico' as it was registered at Delhi. Court held that the jurisdiction objection is valid and the mark 'Pepsico' should be treated as excluded from the scope of the present application.
Fact of the Case:
Petitioner claimed to be a manufacturer of ingredients and salts etc. for manufacture of non-alchoholic beverages and aerated water under the mark "Pepsi". Respondent No. 3 was one of the franchise holders of the petitioner. Respondent No. 1 took the point that this Court has no jurisdiction to adjudicate in respect of the trade mark 'Pepsico' as it was registered at Delhi.
Finding of the Court:
The Court held that the jurisdiction objection is valid and the mark 'Pepsico' should be treated as excluded from the scope of the present application.
Issues: 1. Whether this Court has jurisdiction to adjudicate in respect of the trade mark 'Pepsico'? 2. Whether the Respondent No. 1 has made bona fide use of its mark in course of trade? 3. Whether the Respondent No. 1 could not make bona fide use of its mark in the open market in India due to the special circumstances? 4. Whether the Respondent No. 1 intentionally abandoned its mark?
Ratio Decidendi: 1. The Court held that the jurisdiction objection is valid and the mark 'Pepsico' should be treated as excluded from the scope of the present application. 2. The Court held that the Respondent No. 1, throughout the statutory period and longer, has made bona fide use of its mark in course of trade in the limited and/or restricted market available to it in India by selling its products to the privileged persons mentioned above and has required both goodwill and reputation and its mark has not lost its distinctiveness. 3. The Court held that the Respondent No. 1 could not make bona fide use of its mark in the open market in India due to the special circumstances arising out of imposition of severe trade restrictions and the trade policy of the Government of India making it commercially impracticable and impossible for the Respondent No. 1 to carryon business in India. 4. The Court held that the Respondent No. 1 did not intentionally abandon its mark as otherwise it would not have endeavoured to come back to the Indian market as soon as the international trade policy of the Government of India was relaxed a little in 1984/85 and its said attempt clearly establish that there was no intention to abandon the mark within the span of time fixed by the statute.
Final Decision: The application fails. All interim orders are vacated. The petitioner will pay the cost of this application to the Respondent No. 1. The Respondent No. 1 will not assign its marks for four weeks without giving two weeks prior notice to the parties prayer for stay is refused.
This is an application by the petitioner under section 46 of the Trade & Merchandise Marks Act, 1958 for removal of the marks "Pepsi Cola" "Pepsi" and "Pepsico" from the Register and for rectification of the Register. The Respondent No. 1 is the registered proprietor of the said marks the particulars whereof are set out below:-
Trade Mark Date Place of Registration
a) Pepsi Cola 11.6.1943 Calcutta Trade Mark
Registered Registry Office
No.81553
b) Pepsi 8.5.57 Do
Registration
No. 173280
Pepsi 8.3.67 New Delhi Trade
Registration Mark Registry
No. 240740
The petitioner claims to be a manufacturer of ingredients and salts etc. for manufacture of non-alcboholic beverages, aerated water under the mark "Pepsi". The petitioner also claims to be selling beverages under the-said mark and labels and the Respondent No.3, Pepsi Soda Water Co. is one of the franchise holders of the petitioner and as such the Pepsi Soda also manufactures salts, beverages under the mark "Pepsi". The case of the petitioner is that the Respondent No.1, Pepsico Inc, a company, incorporated under the appropriate laws of Dalaware, in the United States of America, the registered proprietor of the aforesaid trade marks, did not nuke bona fide use of the trade marks in relation to goods within the meaning of section 46(1)(b) of the Act and as such the trade marks are liable to be removed from the Register for non-user.
2. The defence taken is two-fold. First, there was bona fide use within the statutory period as required under section 46(1)(b) of the Act and, secondly, non-user, if any, was due to the special circumstances prevailing throughout the period and without any intention to abandon or not to use the trade marks in relation to the goods under section 46(3) of the Act.
3. The respective case of the petitioner and the Respondent No.1 and the law relating there to will be dealt within details later on.
(1) Jurisdiction
Out of the three trade marks, one was registered at Delhi. The Respondent No. 1 has taken the point that this Court has no jurisdiction to adjudicate in respect of the trade mark 'Pepsico' which was registered at Delhi. On this point, the Counsel for the Respondent No.1 cited in (1) Sri Chamundeswari Weaving and Trading Co. Pvt. Ltd. v. The Mysore Spinning and Manufacturing Co. Ltd., AIR 1962 Madras 214 a decision of the Division Bench holding at page 216, paragraph 4 :-
"On this principle, an application for rectification can be filed only in the High Court within whose jurisdiction the Trade Marks Registry is situate or in that High Court within whose jurisdiction the owner of the mark resides or carries on business,"
4. The petitioner is not disputing this legal proposition. Hence the mark 'Pepsico' should be treated as excluded from the scope of the present application.
(2) The scope and requirements of section 46 of the Act of 1958
Section 46 of the Trade & Merchandise Marks Act, 1958 provides that a person aggrieved can make an application to a High Court or to a Registrar for taking off the register a registered trade mark, on the following grounds. The relevant provisions of section 46 are set out below :-
Sec. 46(1)(a)
"That the trade mark was registered without any bonafide intention on the part of the applicant for registration that it should be used in relation to those goods by him---------------and that there has, in fact, been no bonafide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application; or
(b) that upto a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bonafide use there of in relation to those goods by any proprietor thereof for the time being.
Sec. 46(3)
"An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purpose of sub-se
