JUDGMENT

1. This hearing has been done through hybrid mode.

2. The present suit, filed under the provisions of the Trade Marks Act, 1999 and the Designs Act, 2000, was originally filed before the ld. ADJ, District Judge (Commercial Court), West Delhi. However, since the Defendant filed an application under Section 22(4) of the Designs Act, 2000, seeking cancellation of the Plaintiff’s registered design, the suit was transferred to this Court vide order dated 22nd February, 2022.

3. The Plaintiff - Devans Modern Breweries Limited filed the present suit under Section 134 of the Trade Marks Act, 1999 read with Section 22 of the Designs Act, 2000, against the Defendant - Jagpin Breweries Limited, seeking an injunction to restrain the use of the Plaintiff’s ‘DEVANS’ glass bottles for the Defendant’s beer, which is sold under the mark ‘COX 1000 STRONG PREMIUM BEER’.

4. In the present suit, both the parties are beer manufacturers. The Plaintiff was established in 1961 and has been engaged, inter alia, in the business of manufacturing and marketing bottled and canned beers.

5. The Plaintiff’s products are sold under the mark ‘GODFATHER’, ‘BULLDOZER’, ‘INFERNO’, ‘KOTSBERG’ and various other marks. The glass bottles, sold by the Plaintiff, bear the embossing of the mark/name ‘DEVANS’ on the bottle. The Plaintiff has a trade mark registration for the word mark ‘DEVANS GRANDEUR’ bearing no. 3555503 dated 23rd May, 2017 in class 33.

6. The Plaintiff also has a design registration bearing no. 233798 dated 10th January, 2011 in class 09-01 in relation to glass bottles. As per the Plaintiff, the novelty in the said design resides in the shape and configuration of the bottle.

7. The grievance in this case is that ‘COX 1000 STRONG PREMIUM BEER’ products, belonging to the Defendant, were found bottled in ‘DEVANS’ glass bottles, which may have been obtained through re- circulation in the market. This was revealed to the Plaintiff in May, 2018, prompting them to write a letter dated 12th May, 2018 to the Defendant.

8. However, since there was no response from the Defendant, the present suit was filed. Vide order dated 14th January, 2019, the Plaintiff had made a proposal to the Defendant to the following effect:

“Sh. Ghosh states that he has already received the advance copy of the written statement. Written statement, reply to the injunction application, copies of list of documents, statement of admission & denial as well as application under Amended Order XI of CPC seeking exemption from filing original/better copies filed today. Same is taken on record. Entire such set has been supplied today.

Sh. Ghosh states that in the event, defendant comes across further empty stock of unused bottles bearing the design and engraving of plaintiff and takes appropriate steps to ensure that same are not used by the defendant, there is every possibility that plaintiff may feel satisfied and may not pursue the present suit. Defendant would get back on the next date with respect to the aforesaid proposal.”

9. Thereafter, vide order dated 22nd July, 2019, ld. ADJ-02, West Delhi restrained the Defendant from using the Plaintiff’s empty bottles for packaging beer. Following this, on 27th February, 2021, the ADJ-02, West Delhi allowed the Plaintiff’s application to amend the plaint under Order VI Rule 17 CPC, on the ground that the said amendment would not change the nature of the suit. On 27th September, 2021, the ld. ADJ-02, West Delhi allowed the amended plaint to be taken on record, subject to the payment of costs. Additionally, the Defendant filed an application under Order VII Rules 10 & 11 CPC, which was dismissed as withdrawn vide order dated

24th February, 2022.

10. Thereafter, for various reasons, the matter has continued to be contested, including challenges to the validity of the Plaintiff’s design registration under Section 22(4) of the Designs Act, 2000.

11. A perusal of the written statement reveals that the Defendant’s position is that the impugned bottles are p