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2023 Supreme(Del) 1537
IN THE HIGH COURT OF DELHI AT NEW DELHI
Jyoti Singh, J.
Pepsico, Inc. & Anr. – Appellants
Versus
Jagpin Breweries Limited & Anr. – Respondents
CS(COMM) 288 of 2022 & I.A. 11118 of 2022, 11122 of 2022, 12282 of 2022
Decided On : 01-05-2023
Subject
Intellectual Property - Trademark Infingement
Headnote
(B) Likelihood of confusion is not required for the Plaintiff to prove infringement under Section 29(4); the focus is on the dilution of the reputation of a well-known mark. (Paras 46, 49).
(C) Delay and acquiescence were contested but not established by Defendants, making the injunction valid. (Paras 17, 48).
Facts of the case:
Plaintiffs sought an injunction to prevent Defendants from using the 'MIRINDA' trademark for their liquor, claiming it infringed their registered and well-known marks. The Plaintiffs have significant goodwill in the 'MIRINDA' brand, established since 1959 globally and 1996 in India.
Findings of Court:
The court found the Plaintiffs had established prima facie reputation and goodwill from previous user and extensive advertising, affirming their rights over the trademark.
Issues: The court examined whether the Defendants' use of the 'MIRINDA' mark constituted infringement, and whether delay or acquiescence would bar the Plaintiffs from obtaining the injunction.
Ratio Decidendi: The court cited established law that use of a deceptively similar mark can infringe upon the statutory rights of the mark owner, particularly if it dilutes the mark's reputation under Section 29(4).
Result: The interim injunction is made absolute, preventing Defendants from using the 'MIRINDA' mark.
Mr. Dayan Krishnan, Senior Advocate with Mr. Dheeraj Nair, Mr. Manish K. Jha, Ms. Shruti Dass and Ms. Ridhima Sharma, Advocates, for the Plaintiff.
Ms. Kiran Suri, Senior Advocate with Ms. Aishwarya Kumar and Ms. Prem Lata, Advocates, for the Defendant.
JUDGMENT
Jyoti Singh, J.
I.A. 6862/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiffs) and 8623/2022 (under Order 39 Rule 4 CPC, by Defendants)
1. This judgment shall dispose of I.A. 6862/2022 filed by the Plaintiffs in which ex-parte ad interim injunction was granted by the Court on 06.05.2022 as well as I.A. 8623/2022 filed by the Defendants seeking vacation of the injunction.
2. Present suit has been filed by the Plaintiffs seeking decree of permanent injunction restraining the Defendants, by themselves, their agents, representatives, servants, men, distributors and all those acting in concert with them or on their behalf or claiming under or through them or otherwise howsoever, from using the trademark `MIRINDA', transliteration thereof in Hindi [IMG] and/or any other language and/or any deceptive variation thereof in relation to their product i.e. country-made liquor and/or in relation to any other business activity in a manner that it infringes Plaintiff No.1's statutory and common law rights in its registered and well- known mark [IMG] and/or variants thereof including [IMG] (MIRINDA Marks), as well as passing off their goods as that of the Plaintiffs.
3. It is stated in the plaint that MIRINDA marks are registered trademarks of Plaintiff No.1 in India and subsist on the Register of Trademarks. Plaintiff No.1 is a corporation, duly incorporated under laws of State of North Carolina, USA and is engaged in the business of manufacturing and distributing, on its own and through affiliates and subsidiaries, non-alcoholic beverages, packaged and aerated water and snack foods. It is one of the world's premier consumer products companies and one of the largest and best-known manufacturers and distributors of soft drink beverages and snack food products in the world. Its products include refreshment beverages, packaged drinking water, sports drinks, fruit juices and salted snacks and foods, sold almost in every country in the world, under its several famous and reputed marks such as MIRINDA, PEPSI, 7UP, MOUNTAIN DEW, AQUAFINA, LAY'S, RUFFLES, CHEETOS, DORITOS, etc. Plaintiff No.2 is a company incorporated under the Indian Companies Act, 1956 and is a wholly owned subsidiary of Plaintiff No.1, engaged in sale of different beverages, packaged drinking water and snacks under its own marks as well as various registered marks of Plaintiff No.1.
4. It is stated that MIRINDA mark was first adopted internationally in 1959 in Spain and the mark has been used by Plaintiff No.1 and/or its predecessors-in-title for over 60 years in relation to fruit flavoured non-carbonated beverage. In India, products under MIRINDA marks have been available since 1996 and Plaintiff No.1 holds several registrations, the earliest dating back to 1997. MIRINDA marks have been registered or `applied' for registrations as trademarks by Plaintiff No.1 or its subsidiaries in about 190 countries in the world including USA, Australia, Canada, Egypt, Germany, etc.
5. Plaintiffs have also obtained MIRINDA formative domain name registrations in `.com', `.co.in' and `.in'. Domain name
6. In India, the total net revenue earned from the sale of products under the MIRINDA marks from 2013 to December, 2021 is in excess of Rs.2500 crores, while internationally for the period 2011 to 2020 in terms of volume, the sale of products has been more than 7.5 billion. The immense goodwill and reputation of the MIRINDA marks is indicated from the fact that various celebrities have endorsed the products and advertising and promotional expenses from 2013 to December, 2021 have been in excess of Rs.157 crores in India alone, while globally they have exceeded millions of dollars. Products bearing the MIRINDA marks are extensively advertised and promoted by the Plaintiffs on dedicated accounts/pages/handles on different social media platforms such as Facebook, YouTube, Twitter and Instagram. Brand eq
