Prima facie infringement can lead to the grant of an injunction, and honest trade practices may not protect a defendant from trademark infringement.

I.A. No.11362/2014 (under Order XXXIX Rules 1 & 2 of the CPC)

1 Present suit is a suit for permanent injunction, infringement of trademark, passing off, rendition of accounts. Plaintiff No. 1 is a company incorporated under the laws of the United Kingdom. Plaintiff No. 2 is a company incorporated under the Indian Companies Act. The plaintiffs are engaged in the business of brewing and selling beer internationally and in India. Its beer is sold under the various trademarks i.e. ICEBERG, ICEBERG GOLD, ICEBERG’S 9000, ICEBERG’S GOLD, COBRA, KING COBRA, MCC.

2. The trademark ‘COBRA’ was adopted internationally by the predecessor of plaintiff No. 1 i.e. Cobra Beer Partnership Limited. It has been continuously and extensively used internationally since then in respect of beer. Plaintiff No. 1 has also adopted another variety of ‘COBRA’ beer i.e. ‘KING COBRA’ in the year 2006. The beer under the trademark ‘COBRA’ and ‘KING COBRA’ have acquired tremendous goodwill and reputation. These trademarks ‘COBRA’ and ‘KING COBRA’ have been used in India by the plaintiffs since the year 2004-2006 respectively. The sale figures from the year 2006-2014 have been detailed in the plaint. The mark ‘COBRA’ has been registered as T.M. Application No. 1115295 with the Registrar of Companies w.e.f. 28.06.2002. The registration number of ‘KING COBRA’ is 1283214 and has been registered w.e.f. 21.12.2004.

3. On this count, learned counsel for the defendants had pointed out that both these registrations have expired as 10 years have elapsed since then and this expiry was prior to the date of filing of the suit. Suit on this ground is not maintainable.

4. In rejoinder, learned counsel for the plaintiffs has placed on record the fresh validation of the registrations of both ‘COBRA’ and ‘KING COBRA’ evidencing that trademark application No. 1115295 for ‘COBRA’ was renewed on 28.06.2012 and is now valid up to 28.06.2022. The trademark application No. 1283214 for ‘KING COBRA’ has been renewed on 11.05.2014 and is now valid up to 11.05.2024.

5. Plaintiff No. 2 is the licensee of plaintiff No. 1 and is authorized to use the trademarks. Contention is that the defendants dishonestly and malafidely is using the bottles of the plaintiffs having the trademarks ‘COBRA’, ‘KING COBRA’, ICEBERG, ICEBERG GOLD and both the logo of the plaintiffs’ embossing on its bottles which distinguishes its bottles but these bottles are being used by the defendant to sell his own product to which amounts to an infringement of the registered marks of the plaintiffs. The plaintiff aggrieved by the acts of the defendant and has prayed also for the relief of passing off. However, in the application under decision, the plaintiff has confined himself only to the act of infringement purported to have been committed by the defendant qua his registered trademarks ‘COBRA’ and ‘KING COBRA’. He has prayed for ad-interim relief.

6. Learned counsel for the plaintiffs has also placed reliance upon 2013 (54) PTC 291 (Bom.) SAB Miller India Limited Vs. Som Distilleries and Breweries Ltd. to support his submission that where the plaintiff had a registered trademark for a particular brand of beer and the defendant as in the present case was using the bottles having the embossing of the plaintiff’s trademark, the case of honest use sought to be set up by the defendant under Section 30 (1) of the said Act, as claimed by him, was rejected. He has also placed reliance upon 2014 (60) PTC 246 (Bom) Brihan Karan Sugar Syndicate Private Limited Vs. South Konkan Distilleries to support the same submission.

7. Written statement and reply to the pending application filed by the defendant have been perused. The defendant has also filed a counter claim. The primary contention of the defendant is that a case of infringement is not made out as the defendant is adequately protected under Section 30 (1) (a) (b) and Section 30 (2) (d) of the said Act. There is no infringement within the meaning of Section 29 of the said