Delhi High Court
Red Bull Ag vs C. Eswari & Ors. on 6 December, 2018
Equivalent citations: AIRONLINE 2018 DEL 2870
Author: Jayant Nath
Bench: Jayant Nath
$~OS-5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 06.12.2018
+ CS(COMM) 1062/2018
RED BULL AG ..... Plaintiff
Through Mr.Sanjeev Sindhwani, Sr. Adv. with
Mr.Naqeeb Nawab, Mr.Hinanshu
Deora and Mr. Shashwat Rakshit,
Advs.
versus
C. ESWARI & ORS. ..... Defendants
Through None.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J. (ORAL)
1. The present suit is filed by the plaintiff for declaration, permanent injunction restraining infringement of Trade Marks and passing off, delivery up and damages, etc. It is prayed in the plaint that a decree of permanent injunction be passed restraining the defendants, their franchisees, etc. from using the impugned Double Bull Device forming part of the impugned mark or any other mark, device, etc. which is deceptively or confusingly similar to the plaintiff's registered and prior trade marks Double Bull Device and Single Bull CS(COMM) 1062/2018 Page 1 of 9 Device or in any manner whatsover without the permisison of the plaintiff. A decree of declaration is also sought declaring that the plaintiff's trademarks Double Bull Device and Single Bull Device or are well known trade marks in the Republic of India. Other connected reliefs are also sought.
2. Despite service, none has appeared for the defendants. Written statement has also not been filed. The defendants are proceeded ex parte.
3. On 22.11.2018, learned counsel for the plaintiff took time to file his affidavit by way of evidence. It has been pleaded that a copy of the affidavit by way of evidence has been filed and the original which is coming from abroad would be filed within two days from today.
4. As per the plaint, first adoption of the Bull Marks by the plaintiff for the plaintiff's energy drink was started in 1987 in Austria. The plaintiff has obtained trademark registration in India for the Bull Marks including Double Bull Device and the Single Bull Device on 28.11.1997. It is also pleaded that the plaintiff owns the Double Bull Device in 201 jurisdictions and the Single Bull Device or in 114 jurisdictions. In 2000, the plaintiff brought Red Bull Energy Drink in India through its distribution and marketing partner. In March 2017, the plaintiff was made aware that the defendants filed an application in Class 24 for the impugned mark CS(COMM) 1062/2018 Page 2 of 9 which was advertised in Trade Marks Journal. The plaintiff has filed opposition to the same. Subsequent market enquiries revealed that the defendants have started manufacturing and selling men clothing including shirts and cotton dhotis. It has also been pleaded that the plaintiff's mark, BULL, the Double Bull Device and the Single Bull Device or are considered well known marks globally under Article 6 of the Paris Convention Treaty as well as under the provisions of Section 2(1)(zg) of the Trade Marks Act, 1999. The plaintiff has also prayed for a decree of declaration declaring that the plaintiff's trademarks the Double Bull Device and the Single Bull Device or are well known trade marks in India.
5. The plaintiff has filed the affidavit by way of evidence of Mrs.Jennifer Austin Powers, the authorised representative of the plaintiff Company. As per the evidence filed by the plaintiff, it has been pleaded that the Double Bull Device and the Single Bull Device or was created and adopted way back in 1987 and the Double Bull Device is registered in 201 jurisdictions and the Single Bull Device or is registered in 114 jurisdiction. Copies of the registration have been attached to the affidavit. It has also CS(COMM) 1062/2018 Page 3 of 9 been pointed out that the Red Bill Energy Drink is being distributed in 173 countries including in India. Sales figures of the said Drink worldwide and in Asia & India have been given separately. It has been pleaded that in 2005 in India 30,18,072 cans were sold whereas in 2017 6,15,34,015 cans were sold. It is pleaded that the plaintiff has a total share of 97.3% of the energy drink market in India. The Indian media expenses are said to be €3,623,000. Worldwide, it is pleaded, sales volume has grown from 113 million serving units to 6.2 billion worldwide in 2017. In India the business of the plaintiff has also been expanding in sporting and cultural events, merchandising and memorabilia, clothing, shoes, Formula 1 Red Bull Racing, motorsports in general, football, record labels, TV channel, magazines, etc. The plaintiff is participating in promotional events and international events.
6. The details of the registration of the trademarks of the plaintiff with the Double Bull Device and the Single Bull Device in India are stated as follows:-
Trademark Reg. No. Date of Class(es) Exhibit No. Appl. /Reg.
103519 08/08/2001 25 PW-1/12 1 316013 14/01/2016 25 PW-1/13 1 324028 21/04/2016 25 PW-1/14 1 RED BULL 135118 15/04/2005 25 PW-1/15 9 BULL 214409 13/05/2011 32 PW-1/16 7 CS(COMM) 1062/2018 Page 4 of 9 RED BULL 780143 28/11/1997 32 PW-1/17 780142 28/11/1997 32 PW-1/18 137507 29/07/2005 32 PW-1/19 3 137580 05/08/2005 30, 33, 34 PW-1/20 1 IRDI- 23/12/2015 6,9,10,14,1 PW-1/22, 342286 6,18,20,21, Pg- 81-83 of 6 24,26 Addi. LOD IRDI- 26/01/2015 25,28,32,4 PW-1/22, 327037 1,43 Pg- 70-72 of 8 Addi. LOD IRDI- 20/02/2015 1, 2, 3, 4, PW-1/22, 327191 5, 6, 7, 8, Pg- 73-80 of 0 9, 10, 11, Addi. LOD 12, 13,14,15,1 6,17,18,19, 20, 21, 22, 23,24,26,2 7,29,30, 31,33,34,3 5,36,37,38, 39,40,42,4 4,45 265709 13/01/2004 1, 2, 3, 4, PW-1/22, 0 5, 6, 7, 8, Pg- 58-69 of 9, 10, Addi. LOD 11,12, 13,14,15, 16, 17, 19, 20, 21, 22, 23, 26, 27, 28, 29,31, 36, 37, 38, CS(COMM) 1062/2018 Page 5 of 9 39, 40, 42, 44, 45 242639 09/11/2012 41 PW-1/22, 4 Pg- 54-57 of Addi. LOD 231085 04/04/2012 32 PW-1/22, 5 Pg- 50-53 of Addi. LOD 202852 24/09/2010 43,44,45 PW-1/22, 5 Pg- 45-49 of Addi. LOD 192503 19/02/2010 32 PW-1/22, 2 Pg- 36-39 of Addi. LOD 670543 26/06/1995 32 PW-1/22, Pg- 33-35of Addi. LOD 123947 24/09/2003 41,42 PW-1/22, 7 Pg- 40-44 of Addi. LOD
16. It is pleaded that the plaintiff has been constantly ranked amongst most valuable brand corporations worldwide, such as-
Forbes - 61st rank in 2018 [PW-1/30, Vol- V, Pg- 837-838]; Eurobrand - 49th rank in 2013 [PW-1/31, Vol-V, Pg- 841-843 &Pg- 885-890];
BrandZ Top 100 - 83rd rank in 2013 [PW-1/32, Vol-V, Pg-844 & PW-1/33, Vol-V, Pg- 875-881];
Social Brands Top 100 - 14th rank in 2012 [PW-1/34, Vol.-V, Pg- 845-873]."
7. Learned senior counsel appearing for the plaintiff has relied upon the judgment of this court in the case of Tata Sons Ltd. vs. Manoj Dodia & Ors., 2011 (4) RAJ 181 (Del.) to contend that the plaintiff fulfils all the CS(COMM) 1062/2018 Page 6 of 9 known criteria for the said device for being declared as a well known brand. Section 2(zg) of the Trade Marks Act reads as follows:-
"well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
8. Section 11 (6) of the Trade Marks Act reads as follows:
"The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including--
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.
9. This court in Tata Sons Ltd. vs. Manoj Dodia & Ors. (supra) held as follows:-
CS(COMM) 1062/2018 Page 7 of 9"12. The owner of a well known trademark may (i) seek cancellation or (ii) prevent registration of a trademark which is same or similar to the well known mark irrespective of whether the impugned mark is in relation to identical or similar goods or services or in relation to other categories of goods or services. He may also prevent others from incorporating the well known trademark as a part of their corporate name/business name. Even if a well known trademark is not registered in India, its owner may avail these rights in respect of the trademark registered/used or sought to be registered/used in India, provided that the well known mark is otherwise known to or recognized by the relevant section of public in India.
The existence of actual confusion or a risk of confusion is, however, necessary for the protection of a well known trademark, as a result of infringement.
13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one country is not necessarily determinative of its CS(COMM) 1062/2018 Page 8 of 9 being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction."
10. The affidavit by way of evidence of Mrs.Jennifer Austin Powers clearly shows that the trade mark of the plaintiff the Double Bull Device and the Single Bull Device or have a large coverage in India and abroad. The plaintiff controls almost 97% of the sales of energy drinks within India. The said marks are used extensively for products and services and have a wide geographical trading area within India. The volume of business is substantially large. The trade mark is recognised and well known to the public.
11. In my opinion, in these circumstances, the plaintiff is entitled to a decree of declaration declaring that the plaintiff's trade marks the Double Bull Device and the Single Bull Device or are well known trade marks in India.
12. Accordingly, a decree is passed in favour of the plaintiff and against the defendants in terms of para 88 (a), (b) and (f) of the plaint.
13. The plaitniff shall also be entitled to actual costs. The plaintiff will file certificate of cost within one week.
14. The suit stands disposed of.
JAYANT NATH, J.
DECEMBER 06, 2018/rb CS(COMM) 1062/2018 Page 9 of 9