Delhi High Court - Orders
The Coca-Cola Company vs Gpr Manufacturing Industry Pvt. Ltd on 8 July, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~9
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 460/2022
THE COCA-COLA COMPANY ..... Plaintiff
Through: Ms. Anuradha Salhotra, Mr. Naval
Kastia and Mr. Akshay Bhardwaj, Advocates.
versus
GPR MANUFACTURING INDUSTRY PVT. LTD..... Defendant
Through: None.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 08.07.2022 I.A. 10346/2022, 10347/2022 and 10348/2022 (Exemptions)
1. Subject to the Plaintiff filing originals, clearer copies, documents with proper margins and translated copies, which it may seek to place reliance on, within four weeks from today, exemption is granted.
2. Applications are allowed and disposed of.
I.A. 10349/2022 (Exemption from advance service)
3. Since there is an urgency in the matter and the same is being heard today, Plaintiff is exempted from serving advance notice on the Defendant.
4. For the reasons stated in the application, the same is allowed and disposed of.
I.A. 10345/2022 (Section 12A(1) of the Commercial Courts Act, 2015 seeking exemption from pre-institution mediation)
5. For the reasons stated in the application, the requirement of pre- institution mediation is dispensed with.
6. Application is allowed and disposed of.
Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 1 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17I.A. 10344/2022 (seeking leave to file additional documents)
7. Present application has been preferred on behalf of the Plaintiff seeking leave to file additional documents under Order 11 Rule 1(4) CPC.
8. Plaintiff is permitted to file additional documents at a later stage, however, strictly in accordance with the provisions of the Commercial Courts Act, 2015.
9. Application is allowed and disposed of.
CS(COMM) 460/2022
10. Let plaint be registered as a suit.
11. Upon filing of process fee, issue summons to the Defendant, through all permissible modes, returnable on 13.10.2022 before the learned Joint Registrar.
12. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the receipt of summons. Along with the written statement, Defendant shall also file an affidavit of admission/denial of the documents filed by the Plaintiff.
13. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendant, shall be filed by the Plaintiff.
14. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines. I.A. 10342/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiff)
15. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of an ex-parte ad-interim injunction.
Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 2 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:1716. Issue notice to the Defendant through all prescribed modes, returnable on 09.11.2022.
17. It is averred that Plaintiff is a Corporation organized and existing under the laws of the state of Delaware, U.S.A. Plaintiff is the world's largest beverage Company serving more than 1.9 billion servings per day in more than 200 countries around the world, including India. It is a beverage Company that deals with sparkling and still alcoholic and non-alcoholic beverages such as soft drinks, fruit juices, packaged drinking water and energy drinks.
18. It is further averred that the Plaintiff was founded in 1886 and over the years, new beverages joined Plaintiff's line-up, such as FANTA, SPRITE, MINUTE MAID, POWERADE, BONAQUA and DASANI. Today, the Plaintiff's family of brands in India include COCA-COLA, COCA-COLA ZERO SUGAR, DIET COKE, SPRITE, FANTA, THUMS UP, LIMCA, MAAZA, MINUTE MAID, KINLEY, SMARTWATER, DASANI, RIM ZIM among others. Plaintiff is the owner and proprietor of several well- known trademarks, including but not limited to the above brands.
19. It is also averred that Plaintiff has been providing the global community with the world's largest selling soft drink concentrates for over 100 years. Plaintiff has also been the longest continuous Corporate partner of the Olympic Games. Further, Plaintiff has about 225 worldwide bottling partners working together as Plaintiff's system to deliver daily refreshments and drive Plaintiff's global success.
20. It is stated that Plaintiff adopted the trademark KINLEY in or around the year 1969. Plaintiff commenced using the trademark KINLEY in respect of its packaged drinking water in or around the year 2001 in India and has Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 3 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17 been using the same continuously ever since, while the KINLEY SODA carbonated water was launched in the year 2002.
21. It is further stated that the trademark KINLEY has been extensively used in several parts of the world and is a well-known trademark in numerous countries. Plaintiff, in order to secure statutory protection over the KINLEY Marks, has obtained registrations in various jurisdictions around the globe.
22. It is also averred that Plaintiff Company regularly features in the media and is also a recipient of several awards and accolades over the years. Such awards and accolades further add to the Plaintiff's popularity and goodwill.
23. It is further averred that Plaintiff first adopted the distinctive DANUBE BOTTLE shape in the year 2006 in Turkey for use in relation to its bottled drinking water sold under trademark KINLEY. In India, Plaintiff commenced use of the DANUBE BOTTLE shape in the year 2008, while the TWO DROP design label was conceived and adopted in the year 2012. Subsequently, with the intention of securing statutory protection in and to the DANUBE BOTTLE shape and TWO DROP design label, Plaintiff has applied for and secured trademark registrations for the same in several jurisdictions of the world, including India. Details of some of the registrations for the KINLEY Trade Dress in India are mentioned in the plaint. These trademark registrations have been renewed from time to time and are valid and subsisting.
24. It is further averred that Plaintiff is the owner of the copyright in the TWO DROP design label under which the Plaintiff sells its products bearing the well-known brand KINLEY, all of which, together with its distinctive Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 4 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17 elements, constitute an original artistic work under Section 2(c) of the Copyright Act 1956, the copyright of which vests in the Plaintiff.
25. It is averred that Plaintiff owns and operates the websites https://www.coca-cola.com/ and https://www.coca-colacompany.com/, as well as several country-specific websites, including for India, i.e., www.coca-colaindia.com, which provides relevant information about the Plaintiff's company, its operations, products, research and development, investors, etc., in India.
26. It is further averred that the success and goodwill that trademark KINLEY has enjoyed over the years can be gauged from the global and Indian sales figures respectively for the last few years by the Plaintiff in respect of its KINLEY branded products, which since the year 2008 is sold in the DANUBE BOTTLE shape and bears the TWO DROP design label since the year 2012. It is stated that Plaintiff's sales volume has grown from 44.5 million serving units in 2002 to over 261 million worldwide in 2021. The serving unit sales in the year 2021 are India is 245 million units.
27. It is further averred that since the adoption of the KINLEY trade dress, Plaintiff has undertaken extensive marketing efforts, which have resulted in the KINLEY trade dress acquiring immense reputation and goodwill. Sales promotion expenses incurred by Plaintiff in India for the brand KINLEY for the year 2020 are USD 10,00,000.
28. It is averred that Defendant is a Company duly incorporated under provisions of the Companies Act, 2013. On or around March 2022, Plaintiff came across Defendant's products under the brand NICE VALLEY. Plaintiff upon conducting preliminary online inquiries found that Defendant is engaged in the business of manufacturing and sale of packaged drinking Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 5 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17 water. Plaintiff also found that Defendant is advertising and soliciting its products featuring the impugned trade dress on its website and through various third-party websites, which are accessible all over India. Screenshots of the impugned trade dress, along with the accessible links, are reproduced hereinbelow:
Defendant's website: www.nicevalley.in IndiaMart:http://www.indiamart.com/proddetail/nice-valley-packed- drinking-water-1-litre-22525660012.html Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 6 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17
29. It is also averred that upon conducting a search in the Trade Marks Registry's database, it was revealed that Defendant has a trademark registration for the word mark NICE VALLEY, bearing number 3379208 in class 32 for the Services, namely, packaged drinking water, aerated water, soft drink, syrup, juice, beer; mineral and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
30. It is contended by learned counsel for the Plaintiff that Defendant is using a trade dress comprising of a bottle shape and label for its product, namely packaged drinking water sold under the brand NICE VALLEY, which is identical to the Plaintiff's well-known and distinctive DANUBE BOTTLE shape and TWO DROP design label. Defendant has also copied the stylization and font colour of the brand NICE VALLEY as well as the overall colour scheme used on the label of the Plaintiff's product sold under the trade mark KINLEY, written in the colour combination of dark blue lettering with a light blue dot represented over the letter 'i' against a Blue and White colour scheme.
31. It is argued that by using the impugned Trade Dress and bottle shape as well as other elements of the Plaintiff's KINLEY Marks, Defendant is trying to derive illegal benefits and financial gain. There is no justification for the Defendant to adopt/use a virtually identical trade dress, bottle shape and elements as that of the Plaintiff's KINLEY Marks.
32. It is further submitted that Plaintiff is the registered proprietor of the KINLEY Marks for identical goods in Class 32 in India. The use and adoption of the KINLEY Trade Dress and/or essential features thereof as part of the Defendant's trade dress, especially in respect of identical goods, is dishonest and a clear attempt to ride upon the immense reputation and Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 7 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17 goodwill, painstakingly earned by the Plaintiff. Therefore, the said use being in violation of Sections 29(1), 29(2), 29(3), 29(6) and 29(7) of the Trade Marks Act, 1999, constitutes infringement of the Plaintiff's registered trademarks.
33. For a ready reference, a comparative of the Plaintiff and Defendant's trade dress, labels and bottle shape as brought out in the plaint is as follows:
Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 8 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:1734. Having heard learned counsel for the Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of ex parte ad-interim injunction. Balance of convenience lies in favour of Plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.
35. Accordingly, Defendant, its agents and/or any other person associated with it are restrained from marketing or selling their products identical or deceptively similar to those of the Plaintiff's, including bottled water under the DANUBE BOTTLE shape and/or TWO DROP design label of the Plaintiff, till the next date of hearing.
Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 9 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:1736. Defendant is directed to delete any and all references to the impugned trade dress from the impugned links as aforementioned and/or any other listing on third-party websites/platforms bearing the impugned trade dress and/or impugned bottle shape and/or impugned bottle label.
37. Plaintiff shall comply with the provisions of Order 39 Rule 3 CPC within a period of one week from the execution of the local commission. I.A. 10343/2022 (For appointment of Local Commissioner)
38. Present application has been preferred by Plaintiff under Order 26 Rule 9 and Order 39 Rule 7 read with Section 151 CPC, seeking appointment of a Local Commissioner.
39. Upon hearing, the application is allowed.
40. Accordingly, Mr. Bhawani Singh, Advocate (Mobile No. 8233686869) is appointed as Local Commissioner, who shall visit the premises of Defendant at the following address:-
GPR MANUFACTURING INDUSTRY PVT. LTD. Plot No. 777, Chinki, Kichha - 263148, Distt. U.S. Nagar, Uttarakhand.
41. Local Commissioner shall visit the aforesaid premises and search and take into custody the infringing products and other incriminating materials including cartons, packaging material, advertisement material, labels, logos, stationery, bills/invoices, stickers, publicity material, signboards etc. bearing the impugned trade dress and/or any other deceptively similar name/mark and prepare an inventory of the same.
42. Local Commissioner along with the Representative of the Plaintiff and/or its counsel shall be permitted to enter the premises of the Defendant.
43. Local Commissioner shall seize the infringing products and hand over the same to Defendant on superdari, upon Defendant furnishing an Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 10 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17 undertaking that it shall produce the goods, so seized, before the Court, as and when further directions are issued in this regard.
44. Local Commissioner shall make copies and sign books of accounts including vouchers, ledgers, purchase and sale records etc., as found in the premises of Defendant.
45. Local Commissioner shall be permitted to take photographs/videos of the execution of the Commission. He shall also be entitled to seek police assistance or protection of the Local Police Station, if so required, for the purpose of execution of the order of this Court. The SHO of the concerned Police Station is directed to provide necessary assistance to the Local Commissioner, if sought for.
46. In case the premises as aforementioned are found locked, the Local Commissioner is at liberty to break open the locks.
47. Plaintiff shall serve a copy of this order upon the Defendant along with paper book of the suit at the time of execution of the proceedings.
48. Fee of the Local Commissioner is fixed at Rs.1,50,000/- in addition to travel, boarding and lodging expenses as well as other miscellaneous out-of- pocket expenses for the execution of the Commission at the address mentioned above. Fees of the Local Commissioner shall be paid in advance by the Plaintiff.
49. Report of the Local Commissioner shall be filed within two weeks of the execution of the Commission.
50. Plaintiff shall inform the Registry about the execution of the proceedings by the Local Commissioner and only thereafter, Registry shall issue summons of the suit to the Defendant.
Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 11 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:1751. This order shall not be uploaded on the website of this Court till execution of the Commission by the Local Commissioner.
52. Application is accordingly disposed of.
53. Copy of this order be given to learned counsel for the Plaintiff dasti under the signatures of the Court Master.
JYOTI SINGH, J JULY 08, 2022/rk Signature Not Verified Digitally Signed CS(COMM) 460/2022 Page 12 of 12 By:KAMAL KUMAR Signing Date:26.08.2022 15:29:17