Delhi High Court
Pepsico, Inc. & Ors. vs M/S Pure Water Beverages & Ors. on 3 June, 2009
Author: Manmohan Singh
Bench: Manmohan Singh
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 03.06.2011
I.A. No. 15434/2009 IN CS(OS) 2250/2009
PEPSICO, INC. & ORS. ..... Plaintiffs
Through : Ms Pratibha M. Singh with Ms Bitika
Sharma, Adv.
versus
M/S PURE WATER BEVERAGES & ORS. ..... Defendants
Through : Mr Vinay Navare with Mr Keshav Ranjan
& Mr Manu Beri,
CORAM:-
HON'BLE MR JUSTICE MANMOHAN SINGH
1. Whether Reporters of local papers may be allowed to
see the judgment ? Yes
2. To be referred to the Reporter or not ? Yes
3. Whether the judgment should be reported in Digest ? Yes
MANMOHAN SINGH, J
1. The plaintiffs have filed the present suit for permanent injunction
restraining the violation and infringement of rights in the trade
marks/logo/label „AQUAFINA‟, damages/rendition of accounts.
2. Along with the Suit, the plaintiffs filed two interim applications
i.e. I.A. No. 15434/2009 (under Order 39 Rule 1 and 2 CPC) and I.A. No.
15435/2009 (under order 26 Rule 9 read with Order 39 Rule 7 and Section
151 CPC).
3. The suit and the interim applications were listed for the first time
before the court on 30.11.2009 when the court passed the interim order
restraining the defendants, their principal officers, agents, servants, assigns
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.1 of 21
etc. from manufacturing packaged drinking water under the trademark/label
AQUAFINE or any other mark or label which is deceptively or confusingly
similar to the plaintiffs‟ trademark AQUAFINA.
4. Further in I.A. No. 15435/2009, the court appointed Mr. Vipin
Nair as a Local Commissioner and directed him to visit the premises of the
defendants to comply with the following directions:
"1. If, on visiting the site, the local commissioner discovers
any infringing products of the defendants under the
mark/label AQUAFINE or any other mark, which is identical
or deceptively and confusingly similar to the plaintiffs‟ mark
AQUAFINA, he shall seize the same and make out an
inventory.
2. Any moulds, dyes, packaging, labels, price list pamphlets,
brochures, posters and bill books etc. which carry the
mark/label AQUAFINE, which is identical or deceptively and
confusingly similar to the plaintiffs‟ mark AQUAFINA, shall
also be seized and taken into custody and an inventory for the
same shall also be made."
5. The Local Commissioner visited the site of the defendants and has
inter alia made the following inventory:
PARTICULARS QUANTITY
Bottle Jar
20 litres capacity
(a) Empty Jars 30
(b) Filled up Jars
(with „AQUAFINE‟ Mark) 2
Corrugated Cardboard Box 395
(Empty Cartons)
(with „AQUAFINE‟ mark)
Carton with filled 500 ml. bottles 1
(1x24) with „AQUAFINE‟ mark
Boxes full of „AQUAFINE‟ 3
Labels (5000 labels in 1 box)
(3 x 5,000-15,000)
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.2 of 21
6. CASE OF THE PLAINTIFFS
(i) The plaintiffs are the world renowned manufacturers and sellers of
beverages under the trade marks PEPSI, MIRINDA, 7UP, MOUNTAIN
DEW, etc. One of the leading businesses of the Plaintiffs is the manufacture
and sale of packaged drinking water under the trade mark AQUAFINA.
(ii) The mark AQUAFINA is a unique word coined and adopted by
the Plaintiffs and has been exclusively used by the Plaintiffs since 1994. The
word AQUAFINA having no obvious meaning is an invented word and is
entitled to the highest degree of protection. This mark is completely
distinctive of the Plaintiffs and their products. The AQUAFINA product was
launched in India as early as 1999.
(iii) The Plaintiffs have applied to register the AQUAFINA trade
mark, label and logo design in numerous countries.
In India, the mark AQUAFINA, in the unique writing style and the
font and label, is a registered trade mark of Plaintiffs. Details of the
registration are as under:
REGN. NO. DATE CLASS MARK
774285 29.04.1997 32 AQUAFINA
1129381 28.08.2002 32 AQUAFINA
Label Design (In
Colour)
(iv) The AQUAFINA logo/label is registered in the United States
Copyright Office under Registration No. VA-1-099-341. This registration is
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fully applicable, enforceable and protectable in India by virtue of India being
a signatory to the Berne Convention and being a WTO country. A copy of
the US copyright registration certificate is filed in the present proceedings and
relied upon herein.
(v) Worldwide, AQUAFINA is the eighth largest beverage brand in
the PepsiCo portfolio and has estimated Worldwide retail sales of 2.5 billion
dollars (U.S.). Total Gross Revenue from sales of bottled AQUAFINA
manufactured by the Plaintiffs for the cases sold to retail outlets are as
follows:
YEAR RAW MM CASES VALUE (In Crores)
2002 4.7 MM 55.5
2003 7.2 MM 81.1
2004 7.6 MM 85.4
2005 10.6 MM 123.3
2006 12.3 MM 153.3
(vi) The trade mark AQUAFINA as well as the label AQUAFINA of
the Plaintiffs have been regularly protected against any act of infringement
and third party use as apparent from following orders:-
S. No Suit No. and Impugned Favorable Current
Title Mark/label Order Status of the
Suit
1. Suit No. AQUAFINA Ex-parte Settled and
33/02 - interim decreed
PepsiCo Inc. injunction
Vs. Vijay dated
Kumar 07.01.2002
2. Suit No. AQUANINE Ex-parte Settled and
748/2006 - interim
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.4 of 21
PepsiCo injunction decreed
India Limited dated
Vs. M/s. Siri 04.05.2006
Springs &
Anr.
3. Suit No. 941 AQUAFINE Ex-parte Settled and
/ 2007 - interim decreed
PepsiCo Inc. injunction
Vs. Rajendra dated
Gilda & Anr. 22.05.2007
4. Suit No. AQUA‟SAFINE Ex-parte Settled and
940/2007 - interim decreed
PepsiCo Inc. injunction
Vs. Annamar dated
Aqua 22.05.2007
Products
5. Suit No. AQUASAGAR Ex-parte Settled and
2078/2007 - interim decreed
PepsiCo Inc. injunction
Vs. M/s. granted
Sagar Food
& Beverages
& Ors.
(vii) The defendants are engaged in the sale of packaged drinking water
under the trade mark AQUAFINE. The defendants are using the trade mark
AQUAFINE on their bottles which is deceptively similar to the plaintiff‟s
trade mark AQUAFINA. The defendants are also using the same getup and
colour combination on their label containing blue and white colour and they
are using such trade mark in 1 ltr. / 20 ltr. bottles with the mala fide intention
to infringe the plaintiff‟s trade mark in order to make undue gains as the said
use is illegal and unlawful and it is the dishonest attempt on the part of the
defendants to misuse the reputation of the plaintiffs‟ trade mark AQUAFINA.
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.5 of 21
(viii) The defendants have applied for registration of the trade mark
AQUAFINE before the Registrar of Trade Marks bearing application No.
1202695 in Class 32. The Defendants have made the application in the same
class wherein the Plaintiffs‟ mark is registered i.e. Class 32 and that too for
identical goods and the same was advertised in the Trade Marks Journal
wherein the defendants claim themselves to be the user since 1992 which is
incorrect and false and they have got the registration only which proves that
the user claim of the defendants was absolutely false in the trade mark office.
(ix) Since the plaintiffs‟ are carrying business within the jurisdiction of
this court, therefore, the plaintiff has invoked the territorial jurisdiction under
Section 134 of the Trade Marks Act, 1999.
7. Packaging used by the parties is reproduced hereunder for
comparision :
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.6 of 21
8. CASE OF THE DEFENANTS
(a) The defendants are carrying on their business within the state of
Goa and in a few adjoining districts of Karnataka hence the present suit has
been filed without the jurisdiction.
(b) The defendants have been using the mark AQUAFINE since the
year 1992. Earlier the said mark AQUAFINE was being used by Aquafine
Industries which was later on taken over by the defendants. The mark was
duly registered in February, 2008 and at that time no opposition was filed by
the plaintiffs. The plaintiffs have filed the present suit suppressing the
aforementioned facts.
(c) There is no similarity in the mark AQUAFINE either visually or
phonetically with the trader mark of the plaintiffs.
(d) The defendant‟s label AQUAFINE is not similar to the label of the
plaintiffs.
(e) At no point of time, the plaintiffs have objected to the said mark
being used by the defendants.
9. As far as the first objection about the territorial jurisdiction raised
by the defendants is concerned, the plaintiffs have invoked the jurisdiction of
the court by making the statement that the plaintiffs‟ mark/label AQUAFINA
is a registered trade mark. The plaintiffs substantially conduct their business
both directly and through their bottlers in Delhi. Therefore, under Section
134 of the Trade Marks Act, 1999 this court has the territorial jurisdiction. It
is alleged by the plaintiffs that the defendants have applied for the registration
of the trade mark which was published in the Trade Marks Journal and the
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same is available in Delhi and there is a threat from the defendants of launch
of their products in Delhi, therefore, this court has the jurisdiction to try and
entertain the present suit.
10. The Trade Marks Act, 1999 is a special Act and Section 134 of
this Act provides an additional forum to initiate the action for infringement of
trade mark in addition to the provision of Section 20 of the Code of Civil
Procedure in order to invoke the territorial jurisdiction. Section 134 (2)
mandates that in an action for infringement of trade mark, if at the time of the
institution of the suit or other proceeding, the person instituting the suit or
proceeding, or, where there are more than one such persons any of them,
actually and voluntarily resides or carries on business or personally works for
gain.
11. In the present case, the specific statement has been made by the
plaintiffs that the plaintiffs have their offices in Delhi and secondly the
plaintiffs actively conduct their business both directly and through their
bottlers in Delhi. The defendants on the other hand have not specifically
denied the statement of the plaintiffs made in para 31 of the plaint. Therefore,
in view of the averments made in the plaint, I am of the confirmed opinioin
that the court at this stage can assume jurisdiction and can proceed with the
matter. However, the said question has to be re-examined at the time of
framing of issues and after trial. The objection is, therefore, rejected as the
question of jurisdiction is a mixed question of law and facts.
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.8 of 21
USER CLAIMED BY THE DEFENDANTS
12. The defendants have not placed any material on record to establish
the continuous user by the defendants and their predecessor. No document
has been brought on record by the defendants in respect of M/s. Aquafine
Industries disclosing the details of incorporation/inception. The details of its
members/partners/promoters are also not available on record. No sale
figures/assessment order/order forms have been placed by the defendants in
order to establish that M/s. Aquafine Industries was carrying on the business
or using the trade mark AQUAFINE in relation to the packaged drinking
water. It is also not clear as to when the entity was formed or whether it has
been doing any business or not. M/s. Aquafine Industries is also not a party
in the present suit. No details have been disclosed by the defendants by way
of affidavit/documents or pleading. There is also no document to show the
assignment of the trade mark AQUAFINE by M/s. Aquafine Industries in the
name of the defendant No.1 firm as alleged by the defendants. The
defendants have also not filed even a single document of their own firm as
alleged showing the user of the mark since 1992 nor they have placed any
public advertisement of the defendants which could have attributed
knowledge on the part of the plaintiff to file the present suit at an earlier point
of time. The defendants have filed very few documents which no doubt give
indication that few certificates have been issued by the Senior Scientific
Assistant of the Directorate of Health Services, Environmental and Pollution
Control Wing, Panaji, Goa for the year 1992, 1994 to 1999 in the name of
M/s. Aquafine Industries. The defendants have also filed the certificate of
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analysis issued by the ITALAB dated 31.08.2001 as well as the copy of the
letter dated 23.10.2001 in the name M/s. Aquafine Industries. Copy of the
statement of one of the partners of the defendants recorded before the Chief
Metropolitan Magistrate under Section 200 Cr.P.C., notice dated 18.01.2001
issued by the Assistant Commissioner of Commercial Taxes and few invoices
for the year 2000 to 2001 have also been filed. There is no continuity at all
about the user of the trademark AQUAFINE even after filing of cogent and
clear documents.
13. After having gone through the said documents, it is crystal clear
that the statement of defendants that they have been using the mark in
question regularly since 1992 is wrong. In fact there is hardly any document
available on record to show any continuity of the user and in the absence
thereof the court at this stage cannot accept the submissions of the
defendants about the user claim. In order to prove the concurrent user, heavy
burden lies on the party who is claiming the user. It is a settled law that the
evidence must be clear, cogent and specific. In the present case the evidence
adduced by the defendants about the duration, are discrepant versions as to
when the defendants commenced using the trade mark in question.
14. Therefore, the benefit of user cannot be granted to the defendants.
The contention of the defendants can be re-examined only after the trial in
the matter.
12. As regards the second contention of the defendants that the trade
mark AQUAFINA and AQUAFINE are visually and phonetically different.
The said contention of the defendant is totally false and frivolous. If we
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.10 of 21
compare the labels as well as the two trade marks AQUAFINA and
AQUAFINE, it is on the face of it clear that both the trade marks are almost
identical.
16. The following are the cases in the trade marks where the marks
have been compared as a whole and the courts have come to the conclusion
that rival marks are almost identically/deceptively similar:
(a) Amritdhara Pharmacy vs. Satyadeo Gupta, AIR 1963 SC 449
wherein trade marks „Amritdhara‟ and „Lakshmandhara‟ were held to
be deceptively similar.
(b) Corn Products Refining Co. vs. Shangrila Food Products
Ltd., AIR 1960 SC 142 wherein trade marks „Glucovita' and „Gluvita‟
were held to be deceptively similar.
(c) K.R. Chinna Krishna Chettiar vs. Shri Ambal and Co., Madras
and Anr., AIR 1970 SC 146 wherein the trade marks Sri Ambal and
Sri Andal were held to be deceptively similar.
(d) Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co., AIR
1970 SC 1649 wherein the trade marks Ruston and Rustam were held
to be deceptively similar.
In view of the settled law, there is no force in the submission of
the learned counsel for the defendants that the two trade marks are different
and the same is rejected.
17. The third contention of the defendants that the packaging used by
the defendants is not similar is also without any merit as the question raised
by the defendants have been decided by the various courts at many
occasions. Some of the cases are referred as under :
(a) In M/s.Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd
vs. M/s.India Trading House, AIR 1977 Delhi Page 41, the plaintiff
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.11 of 21
claimed the relief on the basis of get up, layout and arrangement of violet and
grey and colour combination of the plaintiff‟s container. It was alleged that
the defendant has very recently adopted identical container in respect of white
paints as mentioned in Para 3 and 4 of the judgment. In Para 9 of the said
judgment, it is observed as under:-
"Having noticed the principles which have to be
borne in mind, the application thereof is not
difficult in the present case. It is true that there is a
phonetic difference between the numerals "1001"
and "9001" but taking into account the entire get up
the combination of colours, it will be noted that the
essential features of plaintiff‟s containers have been
absolutely copied. The entire scheme of the
containers is also the same. There is a common
large circle with the same colour scheme and with
the same background. There is the same
description of Superior White on top and Zinc paint
on the bottom in the circle. Again, the White circle
with grey lettering is identically super-imposed on
violet background. The only difference is that
instead of white parallelogram shapes on top and
base borders there are white triangles and on the
white parallelograms instead of numeral "1001" in
grey lettering, the numeral on the defendant‟s
container is "9001" but the overall effect is just the
same. The commodity is such that it is likely to be
purchased by customers from a ll strata of society
including the petty "kapkhandars‟ and contractors."
(b) In the case of Vicco Laboratories vs. Hindustan Rimmer, Delhi.,
AIR 1979 Delhi 114 the case of the plaintiff before court as per Para 9 was
that the plaintiffs have been marketing the cream in a collapsible tube of 3
different sizes which has the distinctive get up etc. The collapsible tube has
red background with floral design in yellow colour under the trade mark
„Vicco Turmeric Vanishing Cream‟ in the carton as well as tube in yellow
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.12 of 21
strip in the bottom. The case against the defendant was that they have been
marketing the vanishing cream in the carton and tube which are a colourable
imitation of the plaintiff‟s carton and tube under the trade mark „Cosmo‟.
This court granted the injunction against the defendant and held at para 13 as
under:-
"The plaintiffs claim passing off by the defendants
of their product as and for the product of the
plaintiff‟s on the basis of copy of the distinctive get
up and colour scheme of the collapsible tubes and
the cartons by them. The defendants are not
entitled to represent their goods as being the goods
of the plaintiffs. The two marks "Vicco" and
"Cosmo" used by the plaintiffs and defendants
respectively are no doubt different and the mark
"Cosmo" by itself is not likely to deceive but the
entire get up and the colour scheme of the tube and
the carton adopted by the plaintiffs and the
defendants are identical in every detail and are
likely to confuse and deceive the customer easily.
The get up and the colour scheme of the plaintiff'‟
adopted in every detail by the defendants for their
tube and carton cannot be said to have been
adopted by the defendants unintentionally."
(c) In the case of Sodastream vs Thorn cascade Co Ltd. 1982 RPC
459, the plaintiffs were marketing the gas cylinders of grey colour under their
trade mark „Sodastream‟ and the defendants having also been marketing their
black colour cylinders under their own trade mark „Thorn Cascade‟, the
proposals of the defendants to refill the grey colour gas cylinders of the
plaintiff, even with their own trade mark amounts to passing off as the grey
colour cylinder is distinctive of the plaintiffs in respect of which the
reputation accrued in favour of the plaintiffs. Interlocutory injunction
granted.
I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.13 of 21
(d) In the case of Tavener Rutledge Ld. Vs. Specters Ld., 1959 RPC
Page 83 at Page 88, it was observed as under:-
"It seems to me that one has to take into
consideration people who have what is called
imperfect recollection, as was pointed out in the
case of Saville Perfumery Ld. Vs.June Perfect Ld.
(1941) 58 RPC 147 at 174.5 and one has to allow
for cases where the person who has not got the two
tins side by side perhaps does not remember the
plaintiff‟s name accurately, or does not know that
there are two different traders in the same line of
business, or many others for that matter, and takes
a casual glance at the tin and imagines that it is the
kind of frauit drops that he wants, not entirely
casually, but looking at it in the ordinary way that
such a customer would go into a shop and see a pile
of tins or something of that sort. Afterwards of
course raise objection, but it seems to me that it is a
case of confusion if customers are induced to buy
by a recollection of the general get up of the
plaintiffs‟ tin so that they purchase a tin of the
defendants‟ sweets by mistake and I am bound to
say that I have come to the conclusion that such
confusion is not only possible but is likely."
(e) In another case reported in 1972 RPC Page 1 Hoffmann-La
Roche & Co.A.G. vs. D.D.S.A.Pharmaceuticals Limited, the plaintiffs
manufactured and marketed chlordiazepoxide in distinctive black and green
capsules bearing the word "Roche" on each capsule, the defendants also
marked and advertised the drug chlordiazepoxide in black and green 10mg
capsules which were identical to those of the plaintiffs except that they bore
the letters "DDSA" instead of the plaintiffs‟ name. The plaintiffs were
granted interlocutory injunction to restrain the defendants from passing off
capsules of the patented drug as the goods of the plaintiffs. It was held that
marketing of the capsules by the defendants in almost identical form to those
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of the plaintiffs was calculated to cause damage to the plaintiffs. It was
further held that there was a likelihood of confusion as both the capsules
contained the same drug. The public were not concerned with the identity of
the manufacturing of the capsules as long as the capsules contained the same
substance and had the same effect.
18. The Local Commissioner appointed in the matter has filed his
report dated 10.12.2009 which shows that the label / packaging used by the
defendants are almost identical to that of the plaintiffs. The defendants on
the other hand have not been able to assign any reason as to how they
designed the packaging and from where they got it. The conduct of the
defendants rather shows that design of packaging prepared by the defendants
has been copied by placing the packaging of the plaintiffs. Therefore, the
plaintiffs have prime facie shown that the packaging used by the defendants
is slavish copy of the plaintiffs‟ packaging.
19. The next contention of the defendants is that the trade mark is
registered. Mere registration is not enough to prove the use of the trade
mark. It is the admitted position that the application for registration of the
trade mark AQUAFINE was filed by the defendants after the registration of
the trade mark was already granted in favour of the plaintiffs. The
registration relied upon by the defendants gives no advantage to the
defendants because the present case is also a suit for passing off and as per
documents placed by the plaintiffs. It has been established that the plaintiff
is the prior user of the trade mark AQUAFINA which has been protected by
the courts from time to time. It is a coined trade mark of the plaintiffs. It has
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goodwill and reputation not only in India but in other parts of the world as
well. It has also been well advertised in modern media. As per record, the
plaintiffs have been able to establish the prior user of the trade mark, hence,
the registration granted in favour of the defendants does not help the case of
the defendants in view of the settled law on point decided in the case of N.R.
Dongre and Ors. Vs. Whirlpool Corporation and Anr., AIR 1995 Delhi
300. The following are the paras wherein the similar point has been
discussed :
"(30) We now proceed to consider the question as
to whether the respondents can maintain an action
for passing off against' the appellants who are the registered proprietors of the trade mark "WHIRLPOOL" in India. Learned counsel for the appellants submitted that the appellants have an exclusive right to use the trade mark "WHIRLPOOL" under section 28(1) of the Act as they arc the registered proprietors of the same.In order to appreciate the submission of the learned counsel, it will be necessary to set out section 28(1) of the Act. This section reads as under:-
"28(1)Subject to the other provisions of this Act, the registration of a trade mark in Part A or Part B of the register shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(31) According to section 28(1) of the Act, registration of a trade mark gives to the registered proprietor thereof exclusive right to use the same in. relation to the goods in respect of which it has I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.16 of 21 been registered. But from the opening words of section 28(1) namely, "subject to other provisions"
it is clear that the right conferred on a trader is not an indefeasible right as the same is expressly made subject to other provisions of the Act. This is further, made clear by section 27(2) of the Act, which' provides that " nothing in this Act shall he deemed to affect the right of action against any person for passing off the goods as goods of another person or the remedies in respect thereof." Thus it is manifest that Section 28 of the Act and all other provisions come within the '" 'over riding sway of section 27(2) of the Act. Similarly section 33 of the Act also saves vested rights of a prior user. It lays down that nothing in the Act shall entitle a registered proprietor of a trade mark to interfere with the use of the trade mark by a prior user of the same. Thus the right created by section 28(1) of the Act in favor of a registered proprietor of a trade mark is not an absolute right and is subservient to other provisions of the Act namely sections 27(2), 33 etc. Neither section 28 nor any other provision of the Act bars an action for passing off by. an anterior user of a trade mark against a registered user of the same.- In other words registration of a trade mark does not provide a defense to the proceedings for passing off as under
section 27(2) of the Act a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Again this right is not affected by section 31 of the Act, under which the only presumption that follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrepeatable one & can be displaced. Besides section 31 is not immune to the over-riding effect of section 27(2). Placing reliance on section 28(3) of the Act the I warned counsel for the appellant contended that when two registered proprietors of identical or near similar trade marks cannot be deemed to have acquired exclusive right to the use I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.17 of 21 of any of those trade marks against each other, how can an unregistered user of the trade mark maintain an action for passing off against a registered user of the same mark and seek an injunction restraining him from using it. This argument of the learned counsel seems to stem from a misconception about the real purpose and intent of section 28(3). Actually section 28(3) protects registered proprietor of a trade mark from an infringement action by another registered proprietor of an identical or near similar trade mark. In this regard it will also bo necessary to extract Section 28(3) and section 3()(1)(d) which carries of the intent of section 28(3). These sections read as under:-
"28(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons medley by registration of the trade, marks but each of those persons has otherwise the same rights as against other persons (not. being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. 30(l)(d) Notwithstanding anything contained in this 'Act, the following acts do not constitute an infringement or the 'right to the use of a registered trademark- .........the use of a registered trade mark, being, one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act." ' (32) A reading of section 28(3) with section 30(l)(d) shows that the proprietor of a registered I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.18 of 21 trade mark cannot file an infringement action against a proprietor of an identical or a similar trade mark. While sections 28(3) and 30(l)(d) on the one hand deal with the rights of registered proprietors of identical trade marks and bar action of infringement against each other, section 27(2) or the other hand deals with the passing off action. The rights of action under section 27(2) are not affected by section 28(3) and section 30(l)(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact docs not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark.
The right of goodwill & reputation in a trade mark was recognised at common law even before it was subject of statutory law. Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof.This right has not been affected by the Act and is preserved and recognised by sections 27(2) and 33.
(33) The law of 'passing off as it has developed, permits an .action against a registered proprietor of a trade mark for its mendacious use for inducing and misleading the consumers into thinking that his goods are the goods.of or are connected with the goods of a prior user of the trade mark. It seems to us that in so far as this Court is 'concerned, this position cannot be disputed in view of thc judgment of the Division Bench in Century Traders vs. Roshan Lal Duggar & Co. 1978, Delhi 250 where, while construing sections 27(2) and 106 of the Act, it was held as follows:-
"FROM a reading of the above sections it is clear that registration of mark in the trade mark registry would be irrelevant in an action for passing off. Thus, the law is pretty well I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.19 of 21 settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of lime than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of lime to user by the appellant is irrelevant in an action for passing off and the mere' presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks. In our opinion, these clear rules of law were not kept in view by the learned single Judge and led him to, commit an error."
(34) Again in Consolidated Foods Corporation vs. Brandon & Co., similar view finds expression. In this regard it was held as follows:-
"....,...To summarise, therefore, a trader acquires a right of property in-a distinctive mark merel' by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting such a mark, "it is, to use familiar language, entirely a question of who gets there first." (Gaw Kan Lye v. Saw Kyone Saing, Air 1939 Rang 343 (FB).. Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does however, facilitate a remedy which may he enforced and obtained thorough out the Stale and it established the I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.20 of 21 record of facts a fleeting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration."
The abovesaid decision referred has been upheld by the Supreme Court which held that the suit for passing off on the basis of prior user against the registered proprietor is maintainable.
20. Thus, it is a clear case of res ipsa loquitar (where the things speak for themselves). In case one examines the two marks of the parties and the packing material used by the defendants, the conclusion is very simple that the same is stolen property and stolen property can not become rightful property in any manner.
21. In view of the abovesaid facts, no case is made out by the defendants for vacation of the interim order. The ex-parte ad-interim injunction granted on 30.11.2009 is confirmed.
22. The present application is accordingly disposed of.
23. List the matter before Joint Registrar on 22.9.2011 for admission/denial of the documents.
MANMOHAN SINGH, J JUNE 03, 2011 dp I.A. No. 15434/2009 in CS(OS) No. 2250/2009 Page No.21 of 21