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Delhi High Court

Heineken Asia Pacific Pte Ltd vs Surjeet Lal And Ors on 5 November, 2014

Author: Manmohan Singh

Bench: Manmohan Singh

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                        Order delivered on: 5th November, 2014

+                     CS(OS) 3318/2014

       HEINEKEN ASIA PACIFIC PTE LTD            ..... Plaintiff
                    Through Mr.Amit Sibal, Sr. Adv. with
                              Mr.Peeyoosh Kalra, Mr. C.A.
                              Brijesh, Mr.J.V. Abhey and Ms.
                              Ritu Jain, Advs.

                        versus

       SURJEET LAL AND ORS                         ..... Defendants
                    Through         None

       CORAM:
       HON'BLE MR.JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J. (Oral)

I.A. No.21436/2014 This is an application filed by the plaintiff under Section 151 CPC seeking exemption from filing the originals of the documents.

For the reasons stated in the application, the same is allowed, subject to originals being produced at the time of admission/denial of the documents.

The application is disposed of.

This is an application filed by the plaintiff seeking exemption from filing the certified copies, clear copies, translations of documents and the left side margin.

For the reasons stated in the application, the same is allowed, subject to just exceptions.

The application is disposed of.

Let the plaint be registered as a suit.

Issue summons to the defendants through all modes of service including e-mail in addition, returnable on 22nd December, 2014.

I.A. No.21435/2014 (u/o XXXIX R.1 & 2 CPC)

1. Issue notice to the defendants, returnable on 22nd December, 2014.

2. The plaintiff has filed this suit for permanent injunction against trade mark infringement, passing off, unfair competition, rendition of accounts, damages and delivery up against the defendants in respect of the mark TIGER CHAKRA and device of TIGER used by the defendants in relation to identical business as that of the plaintiff.

3. The plaintiff, company organized under the laws of Singapore, was founded in the year 1931 as Malayan Breweries Limited, to engage in the business of brewing and selling a variety of liquor products including but not limited to beer. Malayan Breweries Limited was renamed Asia Pacific Breweries Limited in the year 1989 to reflect its growing regionalization. On 30th September, 2013, Asia Pacific Breweries Limited was acquired by Heineken N.V., Netherland as a result of which it became, directly and indirectly, a 100% subsidiary of Heineken CS(OS) No.3318/2014 Page 2 of 17 N.V. Pursuant to the said acquisition the name of the company was changed to Heineken Asia Pacific Pte. Ltd, the plaintiff herein.

4. Defendant No. 5 is a company incorporated on 26th March, 1993 under the Indian Companies Act, 1956 and is engaged in brewing, fermentation, bottling, canning and blending of beer, and Indian Made Foreign Liquor. Defendant No. 1 is the Managing Director of the defendant No. 5 and defendant Nos. 2-4 are the Directors of the defendant No. 5.

The defendant No. 9 is a company incorporated under the Indian Companies Act, 1956 on 16th May, 2013 and is engaged in the business of selling beer. Defendant Nos. 6 and 7 are the Directors of the defendant No. 9. Defendant No. 8 has registered the impugned domain names on behalf of the defendant No. 9. Defendant No. 5 manufactures and bottles beer on behalf of the defendant No. 9.

5. It has been stated by the plaintiff that it owns and uses several leading brands, one amongst which is the well-known and highly recognized trade mark TIGER, which was first introduced to the world in the year 1932. The said trade mark, from the time of its launch, has grown rapidly to become the market leader of the beer industry. The plaintiff has adopted and/or used, inter alia, the labels , , , , and in respect of its beer under the mark TIGER.

6. Plaintiff has expended enormous amounts of time, effort and resources in obtaining registrations of its trade mark TIGER worldwide.

7. In India, the plaintiff has obtained several registrations and/or applied for registration of the trade mark TIGER and/or TIGER formative marks and/or the device of TIGER in several classes including Class 32. The details of the said registrations/applications are mentioned below:

Registration Trade Mark Date of Class Status Number filing /es Registered 155897 October 14, 32 and renewed 1952 till October 14, 2019 Registered 159645 July 14, 32 and renewed 1953 till July 14, 2019 Registered 159646 July 14, 32 and renewed 1953 till July 14, 2019 511154 June 01, 32 Registered 1989 and renewed till June 01, 2020 CS(OS) No.3318/2014 Page 4 of 17 Registration Trade Mark Date of Class Status Number filing /es 1738569 Tiger First Press September 32 Registered 29, 2008 and renewed till September 29, 2018 1410754 January 2, 18 Registered 2006 and renewed till January 2, 2016 1410756 January 2, 25 Registered 2006 and renewed till January 2, 2016 1410760 TIGER January 2, 18 Registered 2006 and renewed till January 2, 2016 1410764 TIGER January 2, 34 Registered 2006 and renewed till January 2, 2016 1653919 February 14, 9 and Registered 2008 41 and renewed till February 14, 2018 1653920 TIGER February 14, 9 and Registered TRANSLATE 2008 41 and renewed till February 14, 2018 CS(OS) No.3318/2014 Page 5 of 17 Registration Trade Mark Date of Class Status Number filing /es 1674764 April 10, 41 Registered 2008 and renewed till April 10, 2018 808976 July 06, 32 Pending 1998 808977 July 06, 32 Pending 1998 1410755 January 2, 21 Pending 2006 1410757 January 2, 32 Pending 2006 1410763 TIGER January 2, 32 Pending 2006 1410765 January 2, 32 Pending 2006 CS(OS) No.3318/2014 Page 6 of 17 Registration Trade Mark Date of Class Status Number filing /es 1737773 September 32 Pending 26, 2008 2066660 TIGER December 32 Pending SUPREME 10, 2010 2068011 December 32 Pending 14, 2010

8. It is the case of the plaintiff that the aforesaid registrations confer upon the plaintiff an exclusive right to use the said marks and to restrain any third party from using and/or seeking registration of either an identical mark or a deceptively similar mark in relation to goods of its interest.

9. As seen above, the oldest registration for the TIGER brand in India in favour of the plaintiff dates back to the year 1952. Plaintiff has filed requests with the Trade Marks Registry to bring on record the change of name of the registered proprietor from Asia Pacific Breweries Limited to Heineken Asia Pacific Pte. Ltd. in respect of all of the above trade marks.

10. The plaintiff has extensively advertised and promoted its trade mark TIGER through the internet in several parts of the world.

The plaintiff also maintains the websites www.heinekenasiapacific.com and www.tigerbeer.com. Plaintiff and/or its affiliates maintain several other websites under the domain names http://www.tigerbeer.com.sg, http://www.tigerbeer.co.th, http://www.tigerbeer.com.au, http://www.tigerbeer.co.nz, http://www.tigerbeer.co.uk, http://www.tigertranslate.com and http://www.tigerstreetfootball.com. It is alleged that the plaintiff's website has contributed immensely to the popularity and well- known character of its trade mark TIGER both globally and in India. The plaintiff's You Tube channel, Tiger Beer, holds several videos. The videos have 778 subscribers and collectively the videos have received 2,794,102 views. Additionally, information pertaining to the plaintiff and its services under the trade mark TIGER is also readily available and frequently accessed through search engines such as 'www.google.com', 'www.yahoo.com', 'www.msn.com' etc. Plaintiff also has a presence on Facebook which allows it to have a global reach to existing and new consumers of the TIGER branded beer and an ability to highlight the various activities related to the said brand.

11. The net worldwide turnover and the sales proceeds for the years 1996 to 2012 of the plaintiff in millions of Singapore dollars is as follows:

Amount in Million Year Singaporean Dollar 1996 1346.0 1997 1427.1 CS(OS) No.3318/2014 Page 8 of 17 1998 1401.2 1999 1326.1 2000 1170.5 2001 1011.3 2002 1095.7 2003 1278.9 2004 1370.7 2005 1436.4 2006 1526.3 2007 1783.6 2008 1997.9 2009 1999.05 2010 2511.1 2011 2974.2 2012 3350.3

12. It is alleged by the plaintiff that it has spent enormous funds in advertising and promoting its 'TIGER' brand in India through various forms of media and brand promotional activities at Hotels/Bars/Retails. One such event was the Delhi Fashion Week, Autumn Winter 2009 showcase wherein the plaintiff was the Official Partner for the event.

13. The case set up by the plaintiff against the defendant is that on or about April 2014, the plaintiff became aware of the defendant No. 9 when its Counsel in the UK came across advertisement of a Community Trade Mark (CTM) application for registration of the mark TIGERCHAKRA under No. 12731899, inter alia, in respect of beer in Class 32. Aggrieved by the defendant No. 9's attempt to usurp rights in its well-known trade mark TIGER, the plaintiff vide its notice dated 11th April, 2014 to the defendant No. 9's counsel in the UK. Acknowledging the plaintiff's prior statutory and proprietary CS(OS) No.3318/2014 Page 9 of 17 rights in the trade mark TIGER, the defendant No. 6 furnished an undertaking dated 19th May, 2014 on behalf of the defendant No. 9 and undertook to, inter alia, never use the mark TIGERCHAKRA or any mark consisting of or containing the element TIGER in relation to "beers" in the European Union; and never use or register the word "TIGER" (animal) or the device of a TIGER (animal) in relation to "beers" in the European Union. Defendant No. 9 also acknowledged the plaintiff's earlier rights in the trade mark TIGER throughout the European Union.

14. It is alleged that in the month of July, 2014, the plaintiff came across the defendant No. 9's Indian applications for registration of four trademarks comprising its well-known trade mark TIGER. Details of the said applications along with their status as per the online records of the Trade Marks Registry are mentioned below:

Trade Applicati Date of Goods/Class Status Mark on No. Filing 2537409 May 24, Beer falling in Objected 2013 Class 32 (to by the Trade Marks Registry) 2592068 September Beer falling in Formalities 05, 2013 Class 32 Check Pass 2537411 May 24, Beer Objected 2013 (Alcoholic) (to by the Trade Marks Registry) CS(OS) No.3318/2014 Page 10 of 17 2592069 September Alcoholic Formalities 05, 2013 Beverages; Check Beer Pass (Alcoholic)

15. The aforesaid marks have been applied for on a 'proposed to be used' basis and are yet to be advertised in the Trade Marks Journal for Opposition purposes.

16. It is submitted by the plaintiff that the deadline for filing an Opposition to the defendant No. 9's CTM application No. 12731899 was 7th July, 2014 and that despite having furnished the undertaking mentioned above, the defendant No. 9 did not take any steps. Plaintiff through its counsel in UK addressed another letter dated July 4, 2014 to the defendant No. 9's counsel in the UK drawing his attention to the undertaking already furnished. The plaintiff's counsel resent a revised undertaking to the defendant No. 9's counsel with a request that the defendant No. 9 abide by the undertaking dated 19th May, 2014 given by it previously and that it take further steps to withdraw the applications for registration of and filed by it in India. Plaintiff has filed a Notice of Opposition before the UK Intellectual Property Office against the defendant No. 9's CTM application No. CS(OS) No.3318/2014 Page 11 of 17 12731899. The defendant No. 9's Counsel in the UK has on September 17, 2014, written to the Office for Harmonization in the Internal Market requesting for immediate cancellation of the mark TIGERCHAKRA under No. CTM 12731899.

17. On 15th July, 2014, the plaintiff became aware of another application filed by the defendant No. 6, i.e. director of the defendant No. 9, for registration of the trade mark TIGER CHAKRA in USA under No. 86209905 in Classes 32 and 33 when the same was published for opposition purposes. The plaintiff has filed a Notice of Opposition before the Trademark Trial and Appeal Board in the United States against the said application on 14th August, 2014. The said proceeding is pending.

18. Defendant No. 9 in its website is claiming to brew and bottle beer under the impugned marks/labels in India, the plaintiff conducted market investigation, which revealed that TIGER CHAKRA beer was being brewed and bottled by the defendant No. 5 on behalf of the defendant No. 9. The labels affixed to the TIGER CHAKRA beer unambiguously mention the fact that the said beer is 'manufactured & bottled by Som Distilleries & Breweries Ltd.', i.e. the defendant No. 5. It appears that the defendants are likely to launch the infringing material in this country also.

19. It appears from the websites www.tigerchakra.com and www.chakrabeer.com that the said domain names have been registered by defendant No. 8 on behalf of the defendant No. 9. The websites not only give information as to the establishment of the defendant No. 9 by the defendant No. 6 in India and evidenced CS(OS) No.3318/2014 Page 12 of 17 use of the marks TIGER CHAKRA/ and . The website also mentioned that beer under the impugned mark TIGER CHAKRA is an exotic indian beer and is brewed and bottled only in India. The mark TIGER was also being used as part of the email address on the said website. The plaintiff also came across a facebook page pertaining to the defendant No. 9's 'Tiger Chakra' beer. Though the defendant No. 8 has not secured a registration for the trade mark CHAKRA/TIGER/ , it is using the symbol ® in respect of the same on its website 'www.chakrabeer.com'. Thus, the defendant No. 9 is falsely representing the mark to be a registered trade mark.

20. Defendant No. 9 had knowledge and awareness of the goodwill of the plaintiff's marks. The impugned marks were adopted deliberately with intention to trade upon the same and derive unjust enrichment therefrom as confusion is inevitable in the marketplace.

21. It is evident from the material placed on record and as per settled law that the marks TIGER CHAKRA/INDIAN TIGER are deceptively similar to the plaintiff's trade mark TIGER and contain the same as their dominant feature. Further, the labels of the defendant No. 9 in respect of the impugned mark not only have the plaintiff's famous mark TIGER but also contain the TIGER head device. No reasons for adoption of the plaintiff's mark TIGER and/or device of TIGER deceptively similar to the plaintiff's trade mark/s of a device of TIGER can be given by the defendants.

22. In Cadila Pharmaceuticals Limited Vs. Sami Khatib, 2011 (4) ALLMR 152, it was observed as under:

"51. It is admitted that the Appellant applies the impugned mark to the goods in India which are thereafter exported. The impugned mark has thus been applied to the Appellant's goods within the meaning of Section 56. Had the mark been applied in relation to goods to be sold within India, it would undoubtedly have constituted use of the trade mark in India. By virtue of Section 56, the application in India of the trade mark, although to goods to be exported from India, is deemed to constitute use of the trade mark in relation to the said goods "for any purpose for which such use is material under the Trade Marks Act, 1999, or any other law". The plain language of Section 56, therefore, constitutes the application in India of trade marks even to goods to be exported from India as use of the trade mark in relation to those goods for any purpose for which such use is material under the Act or any other law.

The use of a trade mark is relevant for more than one reason. It is relevant to a party seeking to establish goodwill and reputation in a mark in an action for passing off. It is also relevant, even if it is not necessary, to establish the act of infringement or passing off.

52. There is little doubt that the use of a trade mark within Section 56 can be relied upon to maintain an action for infringement.

Section 28 of the Act gives to the registered proprietor of the trade mark, the exclusive right to "use" the trade mark in relation to the goods or service in respect of which the trade mark is registered and to obtain relief in respect of infringement thereof in the manner provided by the Act.

Section 29 enumerates various circumstances that would constitute infringement of registered trade marks by the use thereof by a person who is not entitled to use the same. For instance, Section 29 of the Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of a permitted use, "uses" in the course of trade, a mark which is identical with or deceptively similar to the registered trade mark. Section 29(2) provides that a registered trade mark is infringed by a person who not being a registered proprietor or a person using by way of a permitted use, uses in the course of trade, a mark which because of the factors enumerated therein is likely to cause confusion on the part of the public or which is likely to have an association with the registered trade mark. Section 29(6)(c) expressly provides that for the purpose of Section 29, a person uses a registered mark if he, inter- alia, imports or exports goods under the mark.

53. Thus Section 56 would clearly apply to an action for infringement if the trade mark is applied in India to goods to CS(OS) No.3318/2014 Page 15 of 17 be exported from India as the same is deemed to constitute use of a trade mark in relation to those goods for any purpose for which such use is material under the Act."

23. Considering the above and documents placed on record and having heard the learned counsel for the plaintiff, it appears to the Court that the plaintiff has been able to make out a strong prima facie case for grant of ex-parte order. The balance of convenience also lies in favour of the plaintiff and against the defendants. In case the interim orders are not passed, the plaintiff would suffer irreparable loss and injury.

24. In light of the above, the defendants, their promoters, directors, assigns, sister concern, affiliates, relatives, successors- in-interest, licensees, franchisees, partners, representatives, servants, distributors, employees, agents etc. or anyone associated with them are restrained from using the mark/label TIGER CHAKRA/INDIAN TIGER and/or device of TIGER and/or any mark identical with or similar to the plaintiff's trade mark TIGER and/or device of TIGER singularly or in conjunction with any other word or monogram/logo as a trade mark, service mark, house mark, trade name, trading style, website, domain name, e-mail address, other webpages or otherwise in any manner whatsoever in respect of their business, inter alia, of manufacturing, brewing, contract brewing, sale etc. of beer and alcoholic beverages so as to infringe the plaintiff's said registered trademarks and/or pass off or enable others to pass off their business and/or goods/services as that of the plaintiff or in some manner connected with the plaintiff.

25. The compliance of Order XXXIX Rule 3 CPC be made within two weeks from today.

26. Copy of the order be given Dasti under the signatures of the Court Master.

(MANMOHAN SINGH) JUDGE NOVEMBER 05, 2014 CS(OS) No.3318/2014 Page 17 of 17