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2019 Supreme(Del) 1163
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN, J.
Radico Khaitan Ltd. – Appellant
Versus
Devans Modern Breweries Ltd. – Respondent
Civil Suit (Comm.) No. 724 of 2018
Decided On : 07-03-2019
Advocate Appeared:
Sudhir Chandra, Ishani Chandra, Sagar Chandra, Ankit Rastogi, Srijan Uppal, S.K. Bansal, Ajay Amitabh Suman, Kapil Kumar Giri.
The protection of a registered trade mark is not dependent on its use, and the defense provided in a suit for infringement under Section 34 of the Trade Marks Act, 1999 requires the defendant's use to be prior to the plaintiff's use and registration.
Headnote:
TRADE MARK - INFRINGEMENT - [Trade Marks Act, 1999, Section 34, Section 47(1)(b)] - The court analyzed the rights of registered proprietors of a trade mark, the remedies available for non-use of a registered trade mark, and the defense provided in a suit for infringement under Section 34 of the Trade Marks Act, 1999. The court concluded that the defendant's use of the impugned mark did not satisfy the conditions precedent in Section 34, and the heading of a section does not constitute an independent defense. The court also highlighted the broad interpretation of 'use of a mark' and the protection of a registered trade mark not being dependent on its use. The defendant's failure to conduct a search in the Trade Marks Registry before adopting the mark was also noted. The court found a prima facie case of infringement in favor of the plaintiff and granted an injunction restraining the defendant from dealing with any alcoholic beverages under the trademark ELECTRA.
Fact of the Case:
The plaintiff, a liquor company, filed a suit for permanent injunction restraining infringement of trade mark, passing off, delivery up, rendition of accounts, and damages. The defendant, a liquor company, claimed to be the prior user of the mark 'GODFATHER ELECTRA' and sought vacation and modification of the injunction.
Finding of the Court:
The court found a prima facie case of infringement in favor of the plaintiff and granted an injunction restraining the defendant from dealing with any alcoholic beverages under the trademark ELECTRA. The court also noted the defendant's failure to conduct a search in the Trade Marks Registry before adopting the mark.
Issues: The issues involved the rights of registered proprietors of a trade mark, the defense provided in a suit for infringement under Section 34 of the Trade Marks Act, 1999, and the protection of a registered trade mark not being dependent on its use.
Ratio Decidendi: The court's decision was based on the analysis of the Trade Marks Act, 1999, the interpretation of 'use of a mark,' the defendant's failure to conduct a search in the Trade Marks Registry, and the protection of a registered trade mark not being dependent on its use.
Final Decision: The court granted an injunction restraining the defendant from dealing with any alcoholic beverages under the trademark ELECTRA.
MANMOHAN, J.
I.As. 3483/2018, 4354/2018
1. The present suit has been filed for permanent injunction restraining infringement of trade mark, passing off, delivery up, rendition of accounts, damages etc. The prayer clause in I.A. 3483/2018 is reproduced herein-below:-
"26. In these circumstances it is respectfully prayed before that this Hon'ble Court may be pleased to pass an ex parte ad interim injunction restraining the Defendants, their partners, proprietors, Companies, Sister Concerns, directors, executives, as the case may be, its officers, servants and agents or anyone acting for and on their behalf from manufacturing, exporting, marketing, offering for sale, selling, advertising or in any manner dealing with any Alcoholic Beverages including but not limited to Beer and Ready to Drink Beverages under the trademark ELECTRA or from adopting any other mark or label which is identical or deceptively similar to the Plaintiff's registered trade mark ELECTRA thus amounting to infringement of trade mark, and/or do any other thing which may lead to passing off of the goods and/or services of the Defendants as that of the Plaintiff and/or do any other thing which may lead to dilution of the Plaintiff's marks and unfair competition."
2. This Court passed an ex-parte ad interim injunction order dated 13th March, 2018. The relevant portion of the said order is reproduced herein-below:-
"Consequently, till further orders, the defendants, their partners, proprietors, companies, sister concerns, directors, executives, as the case may be, its officers, servants and agents or anyone acting for and on their behalf are restrained in Delhi from manufacturing, exporting, marketing, offering for sale, selling, advertising or in any manner dealing with any alcoholic beverages including Beer under the trademark ELECTRA or from adopting any other mark or label which is identical or deceptively similar to the plaintiff's registered trademark ELECTRA, in any manner whatsoever."
3. A Division Bench of this Court, on an appeal being filed, being FAO (OS)(COMM) 20/2018, with consent of parties, vide order dated 11th April, 2018 permitted the defendant to sell some of its stock lying in Delhi and directed a monthly affidavit giving details of sales made in Delhi to be filed in the Court.
4. I.A. 4354/2018 and 4355/2018 have been filed for vacation and modification of stay by the defendant. With consent of parties, I.A. 4354/2018 and I.A. 4355/2018 as well as the injunction application being I.A. 3483/2018 filed by the plaintiff were taken up for hearing and order was reserved on 11th February, 2019.
FACTS
5. The plaintiff is one of India's largest liquor companies, having four millionaire brands -8 PM Whisky, Contessa Rum, Old Admiral and Magic Moments Vodka, selling more than a million cases per-annum.
6. It is stated that on 23rd December, 2004, the plaintiff applied for registration of the word mark ELECTRA under Class 33 claiming user since 01st December, 2004. It is stated that on 28th March, 2007, the plaintiff's word mark ELECTRA was registered. It is contended that the plaintiff is the registered owner of various marks/labels having ELECTRA as their prominent feature in Class 33 of the Trade Marks Act, 1999 since 23rd December, 2004.
7. It is further stated that the plaintiff adopted the mark ELECTRA for Vodka in September, 2004. It is the case of the plaintiff that as a result of the test launch and customer perception, it was realised that the word ELECTRA was peppy and appealed more to the younger generation than the consumers of Vodka - which were relatively older people. It is stated that consequently, the plaintiff launched Vodka under another of its marks i.e. "MAGIC MOMENTS" in 2005.
8. It is stated that in 2014 the plaintiff decided to use the mark ELECTRA for Ready to Drink alcoholic beverages in Ready To Drink bottles, and in June 2015, officially launched its Ready to Drink product under the aforesaid mark combined with its flagship br
