Pepsico, Inc. vs Pure Water Beverages

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2011 Supreme(Del) 441

IN THE HIGH COURT OF DELHI
Manmohan Singh, J.
Appellants: Pepsico, Inc. and Ors.
Vs.
Respondent: Pure Water Beverages and Ors.
I.A. No. 15434/2009 in CS(OS) 2250 of 2009
Decided On: 03.06.2011

Advocates:
Counsels:
For Appellant/Petitioner/Plaintiff: Pratibha M. Singh and Bitika Sharma, Advs.
For Respondents/Defendant: Vinay Navare, Keshav Ranjan and Manu Beri, Advs.

Headnote:
AQUAFINA - Trade Mark Infringement - Trade Marks Act, 1999 - Section 134, Order 39 Rules 1 and 2, Order 26 Rule 9, Order 39 Rule 7, Section 151 - 32, 774285, 1129381 - The court discussed the infringement of the trade mark AQUAFINA by the Defendants and the protection provided under the Trade Marks Act, 1999. It highlighted the prior use and registration of the trade mark by the Plaintiffs, the deceptive similarity between the marks, and the slavish copy of packaging by the Defendants. The court also emphasized the significance of prior user rights and the limitations of registration in proving the use of a trade mark.
Fact of the Case:

The Plaintiffs filed a suit for permanent injunction against the violation and infringement of their rights in the trade mark AQUAFINA. The Defendants were found to be using a deceptively similar mark and packaging, leading to the grant of an interim injunction by the court.
Finding of the Court:

The court found that the Defendants were using a mark and packaging that were deceptively similar to the Plaintiffs' trade mark AQUAFINA, and the Plaintiffs had established prior use and registration of the mark. The court confirmed the ex parte ad interim injunction granted in favor of the Plaintiffs.
Issues: The issues involved the infringement of the trade mark AQUAFINA, deceptive similarity between the marks and packaging, territorial jurisdiction, and the validity of the Defendants' claim of prior use.
Ratio Decidendi: The court emphasized the significance of prior user rights and the limitations of registration in proving the use of a trade mark. It also highlighted the protection provided under the Trade Marks Act, 1999 and the establishment of prior use and registration of the mark by the Plaintiffs.
Final Decision: The court confirmed the ex parte ad interim injunction granted in favor of the Plaintiffs, finding no case made out by the Defendants for vacation of the interim order.

JUDGMENT

Manmohan Singh, J.

1. The Plaintiffs have filed the present suit for permanent injunction restraining the violation and infringement of rights in the trade marks/logo/label "AQUAFINA", damages/rendition of accounts.

2. Along with the Suit, the Plaintiffs filed two interim applications i.e. I.A. No. 15434/2009 (under Order 39 Rules 1 and 2, Code of Civil Procedure) and I.A. No. 15435/2009 (under Order 26 Rule 9 read with Order 39 Rule 7 and Section 151, Code of Civil Procedure).

3. The suit and the interim applications were listed for the first time before the Court on 30.11.2009 when the Court passed the interim order restraining the Defendants, their principal officers, agents, servants, assigns, etc. from manufacturing packaged drinking water under the trade mark/label AQUAFINE or any other mark or label which is deceptively or confusingly similar to the Plaintiffs' Trade Mark AQUAFINA.

4. Further in I.A. No. 15435/2009, the Court appointed Mr. Vipin Nair as a Local Commissioner and directed him to visit the premises of the Defendants to comply with the following directions:

1. If, on visiting the site, the local commissioner discovers any infringing products of the Defendants under the mark/label AQUAFINE or any other mark, which is identical or deceptively and confusingly similar to the Plaintiffs, mark AQUAFINA, he shall seize the same and make out an inventory.

2. Any moulds, dyes, packaging, labels, price list pamphlets, brochures, posters and bill books, etc. which carry the mark/label AQUAFINE, which is identical or deceptively and confusingly similar to the Plaintiffs' mark AQUAFINA, shall also be seized and taken into custody and an inventory for the same shall also be made.

5. The Local Commissioner visited the site of the Defendants and has inter alia made the following inventory:

PARTICULARS

QUANTITY

Bottle Jar

20 litres capacity

(a) Empty Jars

(b) Filled up Jars (with 'AQUAFINE' Mark)

Corrugated Cardboard Box (Empty Cartons) (with 'AQUAFINE' mark)

395

Carton with filled 500 ml. bottles (1x24) with 'AQUAFINE' mark

Boxes full of 'AQUAFINE' Labels (5000 labels in 1 box) (3 x 5,000-15,000)

CASE of THE PLAINTIFFS

6. (i) The Plaintiffs are the world renowned manufacturers and sellers of beverages under the trade marks PEPSI, MIRINDA, 7UP, MOUNTAIN DEW, etc. One of the leading businesses of the Plaintiffs is the manufacture and sale of packaged drinking water under the trade mark AQUAFINA.

(ii) The mark AQUAFINA is a unique word coined and adopted by the Plaintiffs and has been exclusively used by the Plaintiffs since 1994. The word AQUAFINA having No. obvious meaning is an invented word and is entitled to the highest degree of protection. This mark is completely distinctive of the Plaintiffs and their products. The AQUAFINA product was launched in India as early as 1999.

(iii) The Plaintiffs have applied to register the AQUAFINA trade mark, label and logo design in numerous countries. In India, the mark AQUAFINA, in the unique writing style and the font and label, is a registered trade mark of Plaintiffs. Details of the registration are as under?

REGN. No.

DATE

CLASS

MARK

774285

29.4.1997

AQUAFINA

1129381

28.8.2002

AQUAFINA Label Design (In Colour)

(iv) The AQUAFINA logo/label is registered in the United States Copyright Office under Registration No. VA-1-099-341. This registration is fully applicable, enforceable and protectable in India by virtue of India being a signatory to the Berne Convention and being a WTO country. A copy of the US copyright registration certificate is filed in the present proceedings and relied upon herein.

(v) Worldwide, AQUAFINA is the eighth largest beverage brand in the PepsiCo portfolio and has estimated Worldwide retail sales of 2.5 billion dollars (U.S.). Total Gross Revenue from sales of bottled AQUAFINA manufactured by the Plaintiffs for the cases sold to retail outlets are as follows?

YEAR

RAW MM CASES

VALUE (In Crores)

2002

4.7 MM

55.5

2003

7.2 MM

81.1

2004

7.6 MM

85.4