Point of Law: Once the mark is registered, at an interlocutory stage, the Court would be loath to deny the registered trademark the statutory protection against infringement which Section 28(1) of the Trademarks Act confers on it, on the ground that it is common to the trade.

JUDGMENT :

1. The plaintiff is a well-known manufacturer of alcoholic beverages. It manufactures and sells rum-based beverages, mixed with various fruit essences, under the name “BREEZER”.

2. The defendants also manufacture fruit-based beverages, which are, however, non-alcoholic. The defendants manufacture and clear its beverages under the mark “FREEZ Mix”.

3. The plaintiff alleges that the defendants’ product infringes the plaintiff’s registered trademarks. The present suit, at the instance of the plaintiff, therefore, seeks an injunction against the defendants’ product.

4. The suit is presently pending before this court, awaiting completion of pleadings. The defendants have neither filed any written statement in response to the plaint nor any reply to IA 12323/2021, preferred by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), despite lapse of the time granted therefore. Both sides were permitted to file written submissions. I may note, however, that the written submissions of the defendants, which runs into 41 pages, is actually a para-wise written statement in response to the plaint. Be that as it may, I have heard learned Counsel for the parties at length, and propose, by this judgment, to dispose of IA 12323/2021.

5. Mr. Jayant Mehta, learned Senior Counsel and Mr. Anirudh Bakhru, learned Counsel, have been heard on this application on behalf of the plaintiff. Mr. Pranay Sarkar, learned Counsel, argued on behalf of Defendants 1 and 2.

6. The plaintiff possesses registrations for the word mark “BREEZER” in Classes 32 and 33. The word mark and the shape mark, both are registered, in favour of the plaintiff, under Classes 32 and 33 of the Schedule to the Trademarks Rules, 2017. The shape of the bottle, in which the plaintiff manufactures and sells its product, has also been granted registration as a trademark.

7. Class 32 covers “beers and other non-alcoholic drinks and fruit juices, syrups and preparations for making beverages included in Class 32”, whereas Class 33 relates to “carbonated beverages containing distilled spirits included in class 33”. The following shape of the bottle in which the plaintiff sells its “BREEZER” product is also registered as a shape mark under Classes 32 and 33:

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8. The plaintiff claims user since 27th February, 2003. The defendants do not dispute this claim.

9. The label of the plaintiff, on its bottle, has undergone a change with the passage of time, thus:

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During the 2000s:

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2012-2014:

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After 2014:

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10. The defendants applied, before the Registrar of Trade Marks, Delhi, on 19th June, 2015, for registration of the following device mark in Classes 32 and 33:

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11. Registration was however, refused. It does not appear that this decision was challenged or carried further before any legal forum.

12. On 10th September, 2020, the plaintiff addressed a cease and desist notice to the defendants, alleging that the “FREEZ” mark, under which the defendants were clearing its beverages, was deceptively similar to the “BREEZER” registered mark of the plaintiff, and was creating confusion in the market. The defendants were, therefore, called upon to desist from using the allegedly infringing mark in future. The defendants vide its response dated 22nd September, 2020, denied the allegations.

13. The very next month, on 17th October, 2020, the defendants applied before the Registrar of Trademarks, Ahmedabad, for registration of the word mark “FREEZMIX”. The mark was registered, in favour of the defendants, on 22nd April, 2021, under Class 32, excluding alcoholic beverages.

14. The plaintiff alleges that the defendants, having thus obtained registration for the word mark “FREEZMIX”, are using the mark in a manner which clearly infringes the plaintiff’s registered “BREEZER” word mark as well as the registered shape mark of the bottle in which the plaintiff manufactures and sells its product. This has been depicted by the following comparative tabular statement, p