Delhi High Court
Asia Pacific Breweries Ltd. vs Superior Industries Limited on 30 November, 2005
Author: O.P. Dwivedi
Bench: O.P. Dwivedi
JUDGMENT O.P. Dwivedi, J.
1. By this order, I propose to dispose of IA No. 4680/2002 under Order 39 Rules 1 & 2 CPC filed by the plaintiff.
2. Briefly stated the facts leading to this application are that on 13.5.2002 plaintiff Asia Pacific Breweries Limited incorporated in Singapore filed this suit against Superior Industries Limited, incorporated under the Indian Companies Act, 1956, seeking a decree for permanent injunction restraining the defendant from infringing plaintiffs trade mark TIGER beer and from passing off defendant's goods as those of plaintiff. According to the plaintiff, trade mark TIGER and a device of TIGER is owned and used by the plaintiff since 1932 for its product beer, besides other trademarks. The plaintiff and its group of companies operate 14 breweries in 8 countries. The first breweries was established in 1932. Since then it is using trade mark TIGER with the device of the TIGER. In para 5 of the plaint, the plaintiff has given details regarding registration of the trade marks TIGER in India in the plaintiffs name. The details are as under:-
____________________________________________________________________________ Trade Mark Regn./Appln. No. Class Goods Status and date ____________________________________________________________________________ TIGER BRAND 155897 dated 32 Beer, ale, stout Renewed till (LABEL) 14.10.1952 and porter. 14.10.2002 ____________________________________________________________________________ TIGER BRAND 159645 dated 32 beer, ale, stout Renewed till LABEL 4.7.1953 and porter. 14.7.2002 ____________________________________________________________________________ TIGER DEVICE 159646 dated 32 beer, ale, stout Renewed till (LABEL) 14.7.1953 and porter 14.7.2002 ____________________________________________________________________________ TIGER BEER 511154 dated 32 Beer and stout. Renewed till LABEL 1.6.1989 1.6.2003 ____________________________________________________________________________
3. A certified extract from the Register of Trade Marks in respect of Registration No. 511154 dated 1,6.89 has also been placed on record. It is pleaded that the said trade mark TIGER and various forms of labels are also registered in 58 other countries, which include countries from Europe, Africa, America and Asia. However, the plaintiff has not placed on record any registration certificate in respect of their trademark in any foreign country. It is further pleaded that the plaintiffs TIGER beer product is brewed in a highly automated, state of the art brewery located in Tuas, Singapore. More than 160 quality control checks are carried out to maintain its high quality standards. The plaintiff uses computer integrated manufacturing concepts in its process control system, which ensures that it consistently upholds the high quality that is demanded and expected of the TIGER beer product. The said system is a standard feature in all the countries where the TIGER beer product is brewed to maintain its consistent quality. The consistent and high quality of the TIGER beer product has resulted in its worldwide acceptance and for that reason it enjoys a place among the world's best beer and the distinction of "gold medal beer .. Plaintiff has further asserted that over the years the plaintiff s beer under the brand name TIGER popularly known as TIGER BEER has received a large number of acclaims from the world's leading newspapers and journals. It has been rated as "the best among 18 brands" by Asian Wall Street Journal. The London Sunday Times praised TIGER beer product out of 250 brands for its "Balance, Clean Taste and Aroma". The New York Times attributed the success of the TIGER beer product to its "Careful Brewing Process". The plaintiffs said product was voted as "positively the best beer in the world" in a blind taste-test involving several hundred brands by the Washington Magazine. The said worldwide acclaim is matched by the host of awards, the plaintiffs TIGER beer product has won since 1939 including 30 international gold medals in Paris, Geneva, Rome, Lisbon and Madrid. The Plaintiffs TIGER beer product has also earned top honours at the 1998 Brewing Industries International Award, which is considered as the "Oscar of Beers" and held biennially in London, for its consistent quality. The beer products are judged in a series of blind taste-tests by a panel of 36 top brewers from 16 countries, with a combined brewing experience of about 950 years. The plaintiff truly believes that the TIGER beer brand is the most valuable and acclaimed brand. The plaintiff enjoys tremendous goodwill and reputation in the said beer product in the world including India."
4. It is alleged that the plaintiffs TIGER beer is sold in all the major markets of India. In para 10 of the plaint the plaintiff has given details of net turn over and sale proceeds for the years 1996 to 2000 as under:-
______________________________________________________________________ Year Amount in Million Singaporean Dollar ______________________________________________________________________ 1996 1346 ______________________________________________________________________ 1997 1427.1 ______________________________________________________________________ 1998 1401.2 ______________________________________________________________________ 1999 1326.1 ______________________________________________________________________ 2000 1176.5 ______________________________________________________________________
5. Government of India had imposed restrictions on the sale of beer by the overseas companies in India yet the plaintiff has sold its TIGER beer extensively in India through permitted channels. The details of sale made by the plaintiff from 1990-91 to 2000-2001 are as under:-
______________________________________________________________________ Product Name Year Sale in hecto-liters ______________________________________________________________________ 1990-91 218 ______________________________________________________________________ 1991-92 129 ______________________________________________________________________ 1992-93 0 ______________________________________________________________________ TIGER BEER 1993-94 33 ______________________________________________________________________ 1994-95 24 ______________________________________________________________________ 1995-96 24 ______________________________________________________________________ 1996-97 1108.17 ______________________________________________________________________ 1997-98 3177.01 ______________________________________________________________________ 1998-99 1838.55 ______________________________________________________________________ 1999-00 2113.29 ______________________________________________________________________ 2000-01 4801.82 ______________________________________________________________________
6. It is pleaded that these sales of TIGER beer in India have been made to the importers based in Mumbai, Delhi, Kandla, Calcutta, Goa, Chennai, Vishakapatanam, Mangalore and Cochin. The plaintiff has also made sales to the Indian Airlines and ITDC and many Embassies and hotels based in India and now plaintiff intends to develop its market in India through other channels as the Government has lifted the ban on selling beer in India by overseas companies.
7. In June 2001 plaintiff came to know about the sale of beer of India marketed by the defendant under the trade mark TIGER HILL with a device of TIGER on it. Some communication between the parties was exchanged and negotiations were also held for agreeable settlement but the negotiations ultimately failed. It is alleged that sale of beer by the defendant under the trade mark TIGER HILL amounts to infringement of plaintiffs trade mark which is duly registered. Besides it also amounts to passing off their goods as those of the plaintiff as an unwary purchaser of average intelligence is likely to get confused and mistake the defendant's product as originating from the plaintiff and hence the suit. Defendant has contested the suit. In his written statement the defendant has denied averments regarding trans-border reputation of the plaintiffs trade mark or sale of any goods in India under the said trade mark. According to the defendant, plaintiff has not entered into Indian market openly. Even if they have made some supplies to dealers or select customers in a clandestine manner it does not prove popularity of their brand amongst the ordinary consumers of beer in the country. Averments regarding registration of trade mark in the India and abroad are also denied. Other allegations regarding quality and popularity have been generally denied. Defendant's have pleaded that they are using the trade mark TIGER HILL from the year Indian troops forced the Pakistani army to retreat from the Tiger Hill post in Kargil and thereafter the defendant has improved their sale figures continuously during the year 1999-2000, 2000-2001 and 2001-2002. Besides, it is the contention of the defendant that trade mark and device of the parties are materially different and there is neither any phonetic or visual similarity nor there is any likelihood of any deception or confusion arising in the mind of the consumer. The plaintiffs product is sold in canes whereas defendant's product is sold in the bottles. Plaintiffs product is priced at about 6 times higher than the defendant's beer bottle which is available at the sale counters in the State of Haryana and some neighbouring States. It is the further contention of the defendant that TIGER is a common language word and it cannot be monopolised by the plaintiff in the absence of convincing evidence about it having attained a secondary significance that it denotes the product of the plaintiff only.
8. Along with suit the plaintiff has also filed an application being IA No. 4680/2002 seeking interim injunction against the defendant. This application has been contested by the defendant on similar grounds.
9. It may be pointed out here that when the case was taken up for the first time on 15th May 2002, this Court ordered summons in the suit and notice on the application but did not grant any ex parte injunction.
10. I have heard learned Counsel for the parties and perused the record, 11. In support of his contention that even trans-border reputation without actual sale of product in India has to be protected, learned Counsel for the plaintiff relied on N.R. Dongre v. Whirlpool Corp. 1996 PTC (16) 583, wherein learned Single Judge of this Court R.C. Lahoti, J. (as his Lordship then was), on being satisfied that plaintiff has made out a case of trans-border reputation, allowed application filed under Order 39 Rules 1 and 2 CPC which order was confirmed by the Division Bench as well as by Supreme Court. While dismissing the appeal, Supreme Court had taken note of the fact that the findings of the learned Single Judge and the DB regarding the trans-border reputation of Whirlpool Corporation and their sale world over are borne out from the voluminous material on record. Learned counsel for the plaintiff also cited the decision in the case of Indian Shaving Products Limited and Anr. v. Gift Pack and Anr. 1998 PTC (18) 698 wherein the dispute was regarding the use of trade mark 'Ultra' on battery/pencil cell etc. At the end of para 28 of the Judgment, Mohd. Shamim, J. has specifically observed:- 'the plaintiff has produced quite a good number of documents in order to prima facie show and prove that the trade mark 'Ultra' has been registered in different countries on the dates mentioned above:' There was evidence regarding extensive advertisement of the plaintiffs trade mark in Indian magazines. Therefore, the court found that a case of trade mark having trans-border reputation is made out. Similarly in the case of Hodgson & Simpson v. Kynoch LD Vol. XV No. 19 Reports of Patent, Design page 465 the Judgment was delivered after full fledged trial during which voluminuious evidence was produced. Plaintiff cannot draw any support from these cases because the plaintiff has not placed on record any of its foreign registrations of the trade mark TIGER beer nor any document regarding the sale thereof in foreign countries. In the present case all that the plaintiff has produced is a couple of invoices/bills of lading appearing at page 52-86 of the list of documents dated 13.5.2002 which show the sale of plaintiff s product TIGER beer in canes to a few selected dealers in India. These handful of invoices to my mind are not sufficient to make out a case of trans-border reputation. Plaintiff has not filed a single document bill/invoice etc. to prove sale of their beer in any foreign country. The crucial point to be noted in this case at this stage is that there is nothing on record either to show world wide registrations of the plaintiffs trade mark in different countries or their voluminous sale in or outside to India or extensive advertisements in India/foreign magazines. Prima facie, therefore, a case for grant of injunction on the basis of trans-border reputation is not made out.
12. Further contention of learned Counsel for the plaintiff is that if there is a possibility of an unwary customer of average intelligence and imperfect memory being misled to believe that defendant's product originated from the plaintiff or there is dishonest intention on the part of the defendant in adopting trade mark of the plaintiff, a prima facie case for grant of injunction is made out in a passing off action. Reference in this connection may be had to F. Hoffimanna- La roche and Co. Limited v. Geoffrey Manners and Co. Private Limited . Hodgson & Simpson v. Kynoch LD Vol. XV No. 19 Reports of Patent, Design 465; Satyam Infoway Limited v. Sifynet Solutions (P) Limited ; Glaxo operations UK Limited Middlesex (England) and Ors. v. Samrat Pharmaceuticals, Kanpur AIR 1984 Delhi 25 : 1984 (4) PTC 66 (Del); Surjit Singh v. Alembic Glass Industries Limited, .
13. There is no dispute with the proposition of law laid down in these decisions. In this case the plaintiff has not placed on record even the labels under which they are selling TIGER beer. In para 5 of the plaint, the plaintiff has given details of some of their labels containing their registered trade mark and has also filed the certificate issued by the Registrar of the trade mark in respect of one such registered trade mark vide No. 511154 which appears at page 48 of part-Ill of the file. This only proves registration of one particular label in respect of TIGER Leger beer. Registration certificate in respect of other labels have not been placed on record. Moreover, mere registration by itself is not sufficient to prove actual user of the registered trade mark . The plaintiff must have produced the labels which are used on their canes in which TIGER beer is being sold but not a single label has been produced on record. Unless two competing labels are made available for comparison, it will not be possible to return a finding even prima facie that a case of infringement or passing off is made out. For the same reason no injunction can be granted on the basis of passing off action. In the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories , the Supreme Court in para 28 has observed as under:-
...While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of "the exclusive right 'to the use of the trade mark in relation to those goods" (Vide Section 21 of the Act), the use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiffs and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
14. As already noticed the plaintiff has not placed on record its trade mark labels to facilitate a comparison with the defendant's trade mark nor there is any substantial evidence of sale to show prima facie that the plaintiffs trade mark TIGER has assumed a secondary significance to the extent that an average consumer of beer in India is likely to mistake defendant's TIGER HILL beer to be a product of the plaintiff. Some sporadic sales made to few dealers in India from time to time do not establish the popularity of the trade marks amongst the beer consumers. Further, the last invoice filed by the plaintiff dated 12.4.2001 page 85 of Part-Ill of the paper book, showing sale of TIGER beer to some dealers in Gujarat. The suit itself was filed on 13.5.2002 which means that there was no sale of the plaintiffs TIGER beer in India for more than a year preceding the date of filing of the suit. Besides, the plaintiffs beer cane is priced at strikingly higher rate as compared to the defendant's beer in bottle which are ordinarily available at retail counters. Connoisseurs of such costly brands are generally literate, affluent and quite discreet in the matter of choice of their drink. It is, therefore, most unlikely that the customers accustomed to plaintiffs brand of beer will mistake defendant's cheap brand as originating from plaintiff. Further the plaintiffs canes are supplied only to luxury hotels, airlines and selected dealers. They are not available to an ordinary customer at the counters like that of the defendant. The trade channels thus being different, there appears to be hardly any possibility of an average consumer mistaking TIGER HILL beer produced by the defendant to be a product of the plaintiff. A visual comparison of plaintiffs registered trade mark under, registration No. 51.1154, appearing at page 48 of Part-Ill of the paper book with that of the defendant's trade mark does not indicate deceptive similarity except the use of word 'TIGER' which as already noticed, cannot be said to have assumed any secondary significance that it denotes the product of the plaintiff only. In the plaintiffs product a small figure of TIGER which is hardly decipherable is shown in a receding background on the top whereas in the defendant's trade mark TIGER head with gnawing teeth is shown prominently in the middle. The colour combination of the plaintiffs trademarks cannot be ascertained because the labels actually used on the canes have not been placed on the record. Therefore, it is not possible to say that defendant's colour combination is similar to that of the plaintiff. Besides, on the defendant's labels the names of the manufacturer i.e. Superior Industries Limited is prominently printed. Thus, there is sufficient added material on the defendant's trade mark to distinguish the product of the defendant from that of the plaintiff. Therefore, in view of the law laid down in the case of Kaviraj Pandit Durga Dutt (supra) defendant can escape liability in an action for passing off. In the case of White Horse Distillers Limited v. The Upper Doab Sugar Mills Limited and Anr. PTC (Suppl) (2) 328 (Delhi), the facts were that the plaintiff had got registered its trademark 'White Horse' per se and 'White Horse' with the device of a horse in white on black background for whisky. Defendant started manufacturing whisky under the mark 'Flying Horse' with the device of a flying horse. The plaintiff filed a suit for injunction based on infringement of trademark and passing off. While dealing with the application filed by the plaintiff under Order 39 Rules 1 and 2 CPC, this Court noticed that the conflicting trademarks are not identical and there are substantial points of dissimilarity. In para 2 this Court observed as under:-
The device of the plaintiff consists of the picture of a white horse on a black background. As against that the device of the defendants consists of a horse with quite large and conspicuous wings and the horse is shown in a flying posture as against a standing horse in the device of the plaintiff. There is also a conspicuous difference in the labels of the parties as regards their colour scheme, the manner in which the marks i.e 'While Horse' of the plaintiff and 'Flying Horse' of the defendants are given therein, as also of the pictures of the horses in the two labels. The other thing to note is that in the label of the plaintiff the words 'Fine Old Scotch Whisky' are given in very bold letters. In the label of the defendants the words 'PRODUCE OF INDIA' are given although not in very bold letters. In the labels of the two parties the names of the respective manufacturers are also given in detail. Further a bottle of While Horse Scotch Whisky is sold in India to a retailer for over Rs. 300 whereas on the label of the defendants itself the price is given as Rs. 42 per bottle. There is also admittedly a restriction on the import, as also on the sale of Scotch Whisky. Keeping in view the fact that Scotch Whisky costs over Rs. 300 per bottle, it will be the affluent and elite class of persons in INDIA who only are likely to purchase Scotch Whisky. Keeping all these facts in view it may be an uphill task on the part of the plaintiff to succeed in its passing off action against the defendants. Further the Supreme Court in the case Huston & Hornsby Ltd. v. The Zamindara Engineering Company held as below:-
In an action for infringement when the defendant's trademark is identical with the plaintiffs mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions.
15. Ultimately the application under Order 39 Rules 1 and 2 CPC was rejected by this Court (H.C. Goel, J.)
16. In the present case, the plaintiff has neither produced any evidence regarding foreign registrations or sales of their TIGER beer in foreign countries, nor they have produced any substantial evidence to show prima facie that the extent of sale of their product in India is so enormous that the word TIGER has assumed secondary significance that it denotes their product only. Even labels under which they are selling TIGER beer and canes have not been produced. So practically there is no material showing prima facie that the two competing labels are deceptively similar. It may be that at the trial plaintiff is able to adduce sufficient evidence to make out a case of trans border reputation, infringement of trade mark or passing off, but at this stage when the Court has to take only a prima facie view of the material on record, I think, plaintiff has failed to make out a prima facie case in their favor.
17. In the result, application is rejected. The defendant is directed to maintain true and correct accounts of the sales of their product under the trademark TIGER HILL so that in the event of plaintiff succeeding in the suit, the losses, if any, caused to the plaintiff may be ascertained with some degree of certainty.
CS (OS) No. 946/2002List on 14th December 2005 before Roster Bench.