Delhi High Court
The Coca Cola Company & Anr vs Narsing Rao & Ors on 6 March, 2014
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 6th March, 2014.
+ CS (OS) 1493/2014
THE COCA COLA COMPANY & ANR .......Plaintiffs
Through: Ms. Ekta Sarin
Versus
NARSING RAO & ORS .....Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff has instituted this suit ( on 29 th July, 2013) claiming
permanent injunction restraining the defendant from manufacturing or
authorising the manufacture, selling or offering for sale, marketing,
advertising, promoting, displaying or in any other manner whatsoever using
the offending trademarks KELBY and/or KELBY Club Soda (label) and/or
KELBY bottled water (label) and/or the offending bottle shape and/or any
other mark which is deceptively or confusingly similar to the registered
trademarks KINLEY Club Soda (label), KINLEY (label), KINLEY (word)
and DANUBE Bottle shape of the Plaintiff No. 1, as a trademark or part of a
trademark, trade name or part of a trade name or in any other manner
whatsoever so as to infringe the Plaintiff No. 1's registered trademarks, and
for ancillary reliefs of delivery, damages etc.
CS(OS) 1493/2014 Page 1 of 13
2. The case of the plaintiff in the plaint is:
(I) that the Plaintiff No. 1 is one of the largest soft drinks
companies in the world with operations in more than 200 countries. It
is the owner and registered proprietor of several well- known
trademarks inter alia KINLEY, COCA COLA, COKE, DIET COKE,
MINUTE MAID, SPRITE, FANTA, LIMCA, MAAZA,
POWERADE, SUNFILL, THUMS UP, GOLD SPOT, CRUSH and
RIM ZIM to name a few of them;
(II) that the Plaintiff No. 2 Hindustan Coca Cola Beverage Pvt. Ltd.
is an authorized bottler of Plaintiff No. 1, and is authorized to
prepare, package, sell and distribute specified beverages under certain
trademarks of Plaintiff no. 1 in Authorized Containers under the
terms and conditions stipulated in Bottler's Agreement;
(III) that though the Plaintiff No. 1 is headquartered in Atlanta,
Georgia, United States of America, it has local operations in over 200
countries of the world. Due to its immense reach, the various
trademarks of the Plaintiff No. 1have acquired immense reputation
and goodwill in various countries of the world, including India;
CS(OS) 1493/2014 Page 2 of 13
(IV) that one of the most popular brands of the Plaintiff is KINLEY.
The KINLEY brand is used by the Plaintiff's for two types of drinks,
(a) high quality bottled water and (b) carbonated water with a wide
array of variants: tonic, bitter lemon, club soda and fruit flavoured;
(V) that the distinctive DANUBE BOTTLE shape is used for
KINLEY bottled water. The Plaintiff No. 1 first adopted the
distinctive DANUBE BOTTLE shape in the year 2006 in Turkey for
use in relation to bottled drinking water sold under its well- known
trademark KINLEY. In India, the Plaintiff's commenced used of the
DANUBE BOTTLE in the year 2008;
(VI) that the Plaintiffs have since the launch of the DANUBE
BOTTLE used the same continuously and extensively, and as a result
the DANUBE BOTTLE shape, has acquired immense reputation and
goodwill and the consumers associate the said distinctive DANUBE
BOTTLE shape with the Plaintiffs and the Plaintiffs brand KINLEY;
(VII) that the Plaintiffs also use the brand name KINLEY in relation
to carbonated water and the same is marketed and sold in India as
KINLEY CLUB SODA since 1998;
CS(OS) 1493/2014 Page 3 of 13
(VIII) that sometime in and around March, 2012, the plaintiffs came
across the Defendant Nos. 1 and 2 Mr. Venkatesh's product namely
carbonated water under the offending mark KELBY Club Soda; the
defendant No.3 Mohd. Naseer trading as M/s Seema Aqua Minerals
was found to be processing the water which was filled by defendants
No.1 & 2 trading as M/s Hind marketing and M/s Sridevi Marketing
and defendant No.4 Mr. B. Surendar Reddy sole proprietor of M/s Sri
Balaji Pet Polymers was supplying the infringing bottles;
(IX) that the Defendant Nos. 1 to 3 apart from using the mark
KELBY which is confusingly and deceptively similar to the
Plaintiff's well known trademark, KINLEY, have also copied the
distinctive elements of the Plaintiff's KINLEY label;
(X) that the defendants like the plaintiffs have adopted a blue label,
with a stylized depiction of a water source, on which it represents the
mark KELBY in white block letters with a silver outline. The said
defendants have also copied the exact shape, silver colour and
placement of ribbon device as used by the plaintiffs below the mark
KINLEY;
CS(OS) 1493/2014 Page 4 of 13
(XI) that a device in which "a product of The Coca-Cola Company"
is written in the same colour combination of dark blue with white
lettering has also been copied by the defendants by replacing the
wording with "Packaged Drinking Water";
(XII) that the bottle in which the offending product KELBY bottled
water is offered for sale is virtually identical to the Plaintiff's well
known DANUBE BOTTLE shape which is used in relation to their
brand KINLEY including the distinctive undulating lines along the
upper and lower part of the bottle.
3. Summons of the suit and notice of the application for interim relief
were issued and vide ex-parte ad-interim order dated 30th July, 2013, the
defendants were restrained from using the same get up as then being used by
them in respect of their mark KELBY.
4. Despite service, none appeared for the Defendants No. 1 to 4,
accordingly on 15th February, 2014, the Defendants No. 1 to 4 were
proceeded against ex-parte and the interim order granted on 30th July, 2013
was made absolute till the disposal of the suit.
5. On the same day i.e. 15th January, 2014 the counsels appearing on
behalf of the plaintiff and defendant no. 5 Pramukh Packaging Pvt. Ltd.,
CS(OS) 1493/2014 Page 5 of 13
who were also stated to be supplying the infringing bottles to the defendants
No.1&2, stated that they are in the process of settling their dispute and were
granted time to file a joint application. On the next date i.e. 28 th February,
2014 defendant no. 5 handed over a copy of the undertaking which was
taken on record stating that it would not manufacture, market, advertise or
sell a bottle shape similar to the plaintiff's Danube Bottle shape.
Accordingly, in view of the said undertaking and with the consent of the
plaintiffs the defendant no. 5 was deleted from the array of the defendants.
6. The plaintiffs, despite having been granted sufficient time and
opportunity, have failed to get their affidavits for leading ex-parte evidence
on record. However, it is not deemed expedient to further await the same
and allow this matter to languish, for the reason that I have in judgment
dated 30th January, 2013 in CS (OS) No. 559/2010 titled Indian
Performing Rights Society Vs. Gauhati Town Club held that where the
defendant is ex parte and the material before the court is sufficient to allow
the claim of the plaintiff, the time of the court should not be wasted in
directing ex parte evidence to be recorded and which mostly is nothing but a
repetition of the contents of the plaint.
CS(OS) 1493/2014 Page 6 of 13
7. I have thus, apart from examining the averments made by the
plaintiffs in the plaint, as culled out above, also combed through the
documents filed by the plaintiffs to support their case, in order to ascertain
whether the plaintiffs are entitled to a decree forthwith.
8. The plaintiffs, in support of their claim have relied on the following
documents:
(i) Representations of Plaintiff's KINLEY Club Soda (label),
KINLEY (label), KINLEY Club Soda Bottle and KINLEY Bottle;
(ii) Representations of Defendants impugned label for KELBY
Club Soda, label for KELBY packaged drinking water, KELBY Club
Soda Bottle and KELBY Packaged Drinking Water Bottle Shape;
(iii) Copy of the Trademark Registration Certificate No. 1682367
dated 30th April, 2008 with respect to KINLEY CLUB SODA label;
(iv) Copy of the Trademark Registration Certificate No. 1682368
dated 30th April, 2008 with respect to KINLEY label;
(v) Copy of the Trademark Registration Certificate No. 2097362
dated 09th February, 2011 with respect to Logo with Device;
CS(OS) 1493/2014 Page 7 of 13
(vi) Copy of the Trademark Registration Certificate No. dated
810322 dated 15th July, 1998 with respect to Device of KINLEY
"CLUB SODA" (label);
(vii) Copy of the Trademark Registration Certificate No. 742535
dated 1st October, 1996 with respect to KINLEY CLUB SODA label.
9. The examination of the all the aforesaid unrebutted material leads to
the inescapable conclusion that the defendants mark KELBY is confusingly
and deceptively similar to KINLEY and the style of writing KELBY being
virtually identical to the style of writing KINLEY; that the KELBY Club
Soda (label) being virtually identical to the KINLEY Club Soda (label); and
that the KELBY Club Soda being offered for sale in a bottle, the shape of
which is virtually identical to the bottle used by the Plaintiff No. 1's for its
product KINLEY Club Soda.
10. The Supreme Court as far back as in Parle Products (P) Ltd. Vs. J.P.
& Co., Mysore (1972) 1 SCC 618 held that while comparing, only the broad
and essential features are to be considered and it would be enough if the
impugned mark/label bears such an overall similarity to the registered mark
as would be likely to mislead a person usually dealing with one to accept the
other if offered to him. The Supreme Court clarified that merely because the
CS(OS) 1493/2014 Page 8 of 13
marks/labels upon being placed side by side are found to be different is no
ground to hold the same to be not similar or dissimilar as an ordinary
purchaser is not gifted with the powers of observation of a Sherlock
Holmes. The law so laid down remains good after forty years also and was
reiterated in Ramdev Food Products (P) Ltd. Vs. Arvindbhai Rambhai
Patel (2006) 8 SCC 726.
11. The Supreme Court in Cadila Health Care Ltd. Vs. Cadila
Pharmaceuticals Ltd. (2001) 5 SCC 73 supra has held that while applying
the test of dissimilarity of the marks or the customer knowing about the
distinguishing characteristics of the plaintiff's goods, the ground reality in
India, of there being no single common language, a large percentage of
population being illiterate and a small fraction of people knowing English
cannot be lost sight of. It was further held that while examining such cases
in India, what has to be kept in mind is that the purchaser of such goods in
India who may have absolutely no knowledge of English language or of the
language in which the trademark is written and to whom different words
with slight difference in spellings may sound phonetically the same has to
be kept in mine. The test, the Supreme Court held which has to be applied
is, whether the misrepresentation made by the defendant is of such a nature
CS(OS) 1493/2014 Page 9 of 13
as is likely to cause an ordinary consumer to confuse one product for
another due to similarity of marks and other surrounding factors. The
Supreme Court in Cadila Health Care Ltd. supra cited with approval the
earlier judgment in Corn Products Refining Co. Vs. Shangrila Food
Products Ltd. AIR 1960 SC 142 laying down that English cases proceeding
on the English way of pronouncing an English word by English men, which
is not always the same, may not be of much assistance in our country in
deciding questions of phonetic similarity. It was emphasized that English to
the mass of Indian people is a foreign language.
12. The Division Bench of this Court in United Biotech Pvt. Ltd. Vs.
Orchid Chemicals & Pharmaceuticals Ltd. 2012 (50) PTC 433 (Del.) held
that the test to be applied is of deceptive similarity and it is to be seen
whether the two marks are structurally and phonetically similar and would
cause deception in the mind of the consumer and upheld the removal of the
trademark "FORZID" for the reason of the same being deceptively similar
to the earlier registered trademark "ORZID", both in relation to
pharmaceutical products.
13. I would also like to refer to the judgment dated 2nd May, 2011 of the
Bombay High Court in Suit No. 3046/2010 titled Gorbatschow Wodka KG
CS(OS) 1493/2014 Page 10 of 13
Vs. John Distilleries Limited wherein a similar question arose for
consideration. The plaintiff in that case claimed that the shape of its bottles
of Vodka was distinctive and formed an intrinsic part of its goodwill and
reputation. The bottle which the defendant had adopted was alleged to be
deceptively similar to that of the plaintiff. The plaintiff, on account of
similarity in the shape of the bottles, claimed a dilution of the distinctive
shape under which Vodka bottles of the plaintiff are marketed and sold, a
dilution of the goodwill and reputation of the plaintiff in relation to the
distinctive shape of the bottle, passing off at common law, unfair
competition and a mushrooming effect in that unless the defendant were to
be stopped other potential infringers may be emboldened to encroach upon
the rights of the plaintiff. The defendant in that case had obtained
registration of its shape under the Designs Act, 2000. The contention of the
plaintiff was that registration under Designs Act was no defence to an action
for passing off since there was no procedure in the Act for advertising and
for receipt of oppositions. Granting injunction to the plaintiff, the Court,
inter alia, observed as under:-
"13. The action before the Court is a quia timet action which
seeks to injunct the defendant from launching its product in
India. The basis and foundation of the action is that the
defendant has adopted a bottle for the sales of its product which
CS(OS) 1493/2014 Page 11 of 13
in its shape bears a striking resemblance to the bottle of the
plaintiff. Under the Trade Marks Act, 1999, the shape of goods
is now statutorily recognized as being constituent element of a
trade mark. Section 2(zb) of the Trade Marks Act, 1999 defines
the expression "trade mark" to mean "a mark capable of being
represented graphically and which is capable of distinguishing
the goods or services of one person from those of others" and to
include the "shape of goods, their packaging and combination
of colours". Parliament has, therefore, statutorily recognized
that the shape in which goods are marketed, their packaging
and combination of colours for part of what is described as the
trade dress. A manufacturer who markets a product may assert
the distinctive nature of the goods sold in terms of the unique
shape through which the goods are offered for sale.
16. ......The shape of the bottle which the plaintiff has adopted
has no functional relationship with the nature of the product or
the quality required of the container in which Vodka has to be
sold. The shape, to use the language of a leading authority on
the subject, is capricious. It is capricious in the sense that it is
novel and originated in the ingenuity and imagination of the
plaintiff.
17. Prima facie, a comparison of the shape of the bottle which
has been adopted by the defendant with the bottle of the
plaintiff would show a striking similarity. As a matter of fact,
counsel appearing on behalf of the defendant did, during the
course of the submission, concede that there are similarities."
The aforesaid dicta of the Bombay High Court has been approved and
followed by this Court in Zippo Manufacturing Company Vs. Anil
Moolchandani 185 (2011) DLT 51 and M/s Micolube India Limited Vs.
Rakesh Kumar Trading 198 (2013) DLT 120.
CS(OS) 1493/2014 Page 12 of 13
14. On the basis of the averments made in the plaint and documents filed
therewith and of which there is no rebuttal by the defendants as well as the
case laws cited above, I am satisfied that the plaintiff has become entitled to
the relief sought of injunction.
15. A decree is accordingly passed, in favour of the plaintiff and against
the defendants in terms of prayer paragraphs (A) and (B) of the plaint.
Plaintiff is also awarded costs of the suit. Counsel's fee assessed at
Rs.20,000/-.
16. Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
MARCH 06, 2014. sk CS(OS) 1493/2014 Page 13 of 13