Bombay High Court
Som Distilleries And Breweries Ltd vs Sabmiller India Ltd on 25 July, 2013
Author: D.Y.Chandrachud
Bench: D.Y.Chandrachud, S.C.Gupte
PNP 1/8 APP320-25.7
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
APPEAL NO.320 OF 2013
IN
NOTICE OF MOTION NO.2642 OF 2012
IN
SUIT NO.2584 OF 2012
Som Distilleries and Breweries Ltd. ..Appellant.
versus
SABMiller India Ltd. ..Respondent.
.....
Mr. Swanand Ganoo i/b Mr. Rajesh Ravindran for the Appellant.
Dr. Virendra Tulzapurkar, Senior Advocate with Mr. H.W. Kane and Mr. Hiren
Kamod i/b W.S. Kane & Co. for the Respondent.
ig .....
CORAM : DR.D.Y.CHANDRACHUD, AND
S.C.GUPTE, JJ.
25 July 2013.
ORAL JUDGMENT (PER. DR.D.Y.CHANDRACHUD, J.) :
The Appeal arises from an order of a Learned Single Judge by which an interlocutory Motion in a suit for infringement was made absolute in terms of prayer clause (a) which reads as follows :
"(a) that pending the hearing and final disposal of the suit, that the Defendant by itself, its directors, servants, agents, stockists, distributors and dealers, be restrained by an order and permanent injunction of this Hon'ble Court from infringing the Plaintiff's registered trade mark SABMiller India / SABMILLER INDIA bearing No. 1787321 in classes 21 and 32 by using bottles embossed with the trade mark SABMILLER INDIA or by the use of the trade mark SABMiller India / SABMILLER INDIA or any other trade mark deceptively similar to the Plaintiff's registered trade mark SABMiller India / SABMILLER INDIA upon or in relation to beer or any other goods for which the Plaintiff's said trade mark No.1787321 has been registered or in any other manner whatsoever."
2. The Respondent applied for registration of the trade marks SABMiller India and SABMILLER INDIA in Class 21 and Class 32 of the Trade Marks Act 1999 on 19 February 2009. On 19 June 2009, the Respondent, having conceived of a design to be applied to its bottles of beer, applied for registration under the Designs Act 2000. The design of the bottle was registered on 15 January 2010 under the Designs Act 2000. On and after January 2010 the ::: Downloaded on - 27/08/2013 21:10:53 ::: PNP 2/8 APP320-25.7 Respondent introduced bottles with a specific design, embossed with the trade mark SABMiller India. Some time in the second week of January 2012 the Respondent learnt that the Appellant was using bottles of the same design embossed with the trade mark SABMiller India. Initially, the Respondent instituted a suit for infringement of design under the Designs Act 2000 and for passing off in the Court of the District Judge at Raisen in the State of Madhya Pradesh. It would be necessary to note that when the suit was instituted before the Civil Court in Madhya Pradesh, the Respondent had not obtained registration of its mark and the action was therefore one for passing off and not for infringement of the mark. The interim application filed by the Respondent was dismissed by the Learned Trial Judge on 3 July 2012. The appeal under Order 43 Rule 1(r) was dismissed by a Learned Single Judge of the Madhya Pradesh High Court on 11 January 2013. The Learned Single Judge of the Madhya Pradesh High Court held that whereas the Respondent was manufacturing and selling beer under the mark of 'Haywards 5000', the Appellant was manufacturing and selling its product under the mark 'Black Fort' and having regard to the fact that the labels of the Appellant had a distinctive design, colour and get up, there was no likelihood of an intending buyer being deceived. The Learned Single Judge also noted that during the course of the submissions it had not been disputed on behalf of the Respondent herein that the Respondent had sold its own product (beer under the mark Haywards 5000) in a bottle bearing the logo of Kingfisher. It appears that during the course of the submissions an empty bottle containing the embossed mark of Kingfisher was placed before the Learned Judge bearing the label of the Respondent. In the circumstances, the Learned Single Judge held that no case was made out for the exercise of his discretion.
3. On 5 December 2012 the application for registration of the marks SABMiller India and SABMILLER INDIA filed by the Respondent was allowed. The registration of the marks of the Respondent dates back to the date of the application which is 19 February 2009. In December 2012 a suit was instituted on the Original Side of this Court for infringement and an ex parte ad interim order was passed on 18 December 2012. The Motion was allowed by the impugned order of the Learned Single Judge dated 8 February 2013.
::: Downloaded on - 27/08/2013 21:10:53 :::PNP 3/8 APP320-25.7
4. The Learned Single Judge, in our view, was correct in observing that the action before this Court being an action for infringement of the registered mark of the Respondent, the cause of action in the suit in this Court is distinct from the cause of action set up in the suit before the District Court at Raisen in Madhya Pradesh. As a matter of fact, when the suit in the Trial Court of Madhya Pradesh was instituted, it is an admitted fact that the mark of the Respondent had still not been registered. The fact that the application for registration was pending, was disclosed in the plaint before the Trial Court.
5. Section 29(1) of the Trade Marks Act 1999 provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
Clause (c) of sub-section (2) of Section 29 provides that a registered trade mark is infringed by a person, who not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public or which is likely to have an association with the registered trade mark. Under sub-section (3) of Section 29 in a case falling under clause (c) of sub-section (2) a presumption is raised that it is likely to cause confusion on the part of the public. Undoubtedly that presumption is capable of being rebutted.
6. Now before we consider the facts of this case, it would be at the outset necessary to advert to the test which was formulated by the Supreme Court in the judgment in Ruston and Hornby Ltd. v. Zamindara Engineering Co. 1 to guide the adjudication of a case involving a claim of infringement. The Supreme Court held as follows :
"It very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark in the get-up of the defendant's goods may be so different from the get-up of the plaintiff's goods and the prices also may be so 1 AIR 1970 SC 1649.::: Downloaded on - 27/08/2013 21:10:53 :::
PNP 4/8 APP320-25.7 different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark."
7. Consequently, in an action for infringement an injunction would issue once it is proved that the Defendant is improperly using the mark of the Plaintiff.
8. The facts as disclosed before the Court make it clear that -
(i) Both the Appellant and the Respondent are engaged in the sale of the same product viz. beer;
(ii) The bottles in which the Appellant sells its product have the same height and characteristic as the bottles in which the Respondent sells beer;
(iii) The Respondent is the registered proprietor of the marks SABMiller India and SABMILLER INDIA ; and
(iv) The infringing bottles of the Appellant used the same mark as the registered mark of the Respondent.
Undoubtedly, the label under which the Respondent markets its beer is Haywards 5000. However, it is not in dispute as noted above that the Respondent is the registered proprietor of the marks SABMiller India and SABMILLER INDIA and on the infringing bottles which gave rise to the institution of the suit for infringement, the Appellant was found to be using the very same mark as the registered mark of the Respondent. Now it is in this background that it will be necessary to evaluate the contentions of the Appellant.
9. On behalf of the Appellant it has been submitted that :
(i) The Respondent had admitted that in the past, it had sold beer in bottles on which the mark Kingfisher had been embossed though according to the Respondent this had happened inadvertently. According to the Appellant the Respondent is an infringer itself and is therefore disentitled to the grant of equitable relief; and
(ii) The presumption that arises under clause (c) of sub-section (2) of Section 29 is a rebuttable presumption. Before the Learned Single Judge of the Madhya Pradesh High Court, a statement was made on behalf of the Respondent to the effect that the Respondent had marketed its product in ::: Downloaded on - 27/08/2013 21:10:53 ::: PNP 5/8 APP320-25.7 the bottle of Kingfisher. In such a situation, the presumption which arises under sub-section (3) of Section 29 would stand displaced.
10. Now while considering the first submission, it will be necessary to note that the case of the Respondent before the Learned Single Judge was that there was a practice amongst beer manufacturers / bottlers to use recycled generic bottles. However, prior to 19 June 2009 the Respondent conceived a novel design to be applied to the bottles to be used for selling beer. On 19 June 2009 the Respondent applied for registration of the design and which came to be registered on 15 January 2010 under the Designs Act 2000. The Respondent has embossed its bottles with the trade mark SABMILLER INDIA. The Respondent contended that most of the brewers including the UB Group (which uses the mark Kingfisher) as well as the Respondent purchase bottles either from Hindustan National Glass and Industries Limited or AGI Glaspac for several years. Prior to the introduction of the new bottle with a distinctive design in 2010, the Respondent was using a generic bottle of which the height and size was the same as the bottles used by most of the brewers. Hence, according to the Respondent it was conceivable that the suppliers while sending the generic bottles to the Respondent may have sent a few bottles embossed with the mark Kingfisher. However, upon the introduction of a bottle with a distinctive height, size and design in 2010, it was not possible for the Respondent to accidentally use a generic bottle or a Kingfisher bottle in place of the bottles used by the Respondent for the sale of beer.
11. The case of the Appellant was that used bottles of beer are collected by the cabadis from the market and are sold back to the brewers for the purposes of recycling. In the process of recycling the previous labels are removed and the labels of the respective companies are affixed. The Appellant stated that though every possible care and precaution is taken to ensure that only the bottles bearing the labels and brand name of the Appellant are taken out in the recycling process, the possibility of a minuscule minority of the bottles of the Respondent or of any other company having similar shape and size of the bottle sneaking into the process of recycling on account of human error could not be ruled out.
12. Now on the basis of these pleadings it is impossible to accept the ::: Downloaded on - 27/08/2013 21:10:53 ::: PNP 6/8 APP320-25.7 contention of the Appellant that the Respondent is an infringer and is not entitled to equitable relief. The principle of law is that where the Plaintiff's mark constitutes an imitation of the mark of another, the fact that the Plaintiff is an infringer would weigh against the grant of equitable relief. In the present case, there is no dispute about the fact that it is the Plaintiff - Respondent which is the registered proprietor of the marks SABMiller India and SABMILLER INDIA in classes 21 and 32. The case of the Respondent is that prior to 2010 when it introduced its own distinctive bottles, it had utilized generic bottles like many other brewers across the country and it was possible that when the suppliers resold the bottles back to the Respondent for recycling, a few bottles containing the embossed mark of Kingfisher may have been purchased. This does not establish insofar as the mark SABMiller India is concerned that the Respondent is an infringer. The Respondent is the registered proprietor of the mark and it is not open to the Appellant to trade on the reputation associated, by the use of the mark on the infringing bottles.
13. The Appellant sought to set up a case of an honest use within the meaning and ambit of Section 30(1). Sub-section (1) of Section 30 provides that nothing in Section 29 shall be construed as preventing the use of a registered mark by any person for the purposes of identifying the goods or services as those of the proprietor, provided the use is in accordance with honest practices in industrial or commercial matters and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. The defence of the existence of an honest practice is clearly contrary to the case of the Appellant itself that though it was taking every possible precaution, it was conceivable that some bottles using the mark of the Respondent may have sneaked into the production process. That apart, a case of honest practice in industrial or commercial matters has to be pleaded and prima facie established. The Appellant has clearly failed to do so.
14. There is no merit in the second submission as well. Section 29(1) provides that a registered trade mark would be infringed by a person who though not being a registered proprietor or a permitted user uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods and services in respect of which the trade mark is registered and in ::: Downloaded on - 27/08/2013 21:10:53 ::: PNP 7/8 APP320-25.7 such manner as to render the use of the mark likely to be taken as being used as a trade mark. In order to attract Section 29(1) several ingredients must be established. Firstly, there must be in existence a registered trade mark.
Secondly, there has to be a use by a person who is not a registered proprietor or a person using by way of a permitted use. Thirdly, the use must be in the course of trade. Fourthly, the use must be of a mark which is identical with or deceptively similar to the trade mark. Fifthly, the use must be in relation to goods and services in respect of which the trade mark is registered. Finally, the use must be in such a manner as to render the use of the mark likely to be taken as being used as a trade mark. All these ingredients which have been set out in sub-section (1) of Section 29 have been fulfilled. The respondent is the registered proprietor of the marks in question. The Appellant is not a registered proprietor or a person entitled to permissive use. The Appellant has used on the bottles of beer the very mark of the Respondent in respect of which the mark of the Respondent is registered. This use is in such a manner as would render the use of the mark likely to be taken as being used as a trade mark.
15. At this stage, we must also take note of the fact that during the course of the hearing, the learned Single Judge had referred to the defence of the Appellant that there was a possibility of an inadvertent use by the Appellant of the mark of the Respondent. The Appellant was furnished with an opportunity to inform the Court whether it was willing to make a statement that the Appellant would be careful in future and would not use bottles bearing the registered mark of Respondent. The Learned Single Judge has recorded that counsel appearing on behalf of the Appellant refused to make such a statement and was not even willing to seek instructions from the Appellant before refusing to make such a statement before the Court. On the other hand, the case of the Appellant was that it was not guilty of an infringement of the mark of the Respondent. Moreover, we may also record that during the course of the hearing of the Appeal, we had also furnished an opportunity to the Appellant to make a bonafide statement in terms as suggested in the order of the Learned Single Judge. No such statement as would meet the legitimate concerns of the Respondent as a registered proprietor is forthcoming.
16. In the circumstances, the Respondent had made out a strong prima facie ::: Downloaded on - 27/08/2013 21:10:53 ::: PNP 8/8 APP320-25.7 case before the Learned Single Judge for the grant of an injunction. Once an infringement of a registered mark is shown, nothing further would really arise. The Learned Single Judge has also observed that the balance of convenience would be clearly in favour of the grant of an injunction to protect the registered proprietor. Unless such an injunction were to be granted, the protection which has been granted in the law to a registered proprietor of a mark would be rendered nugatory leading to irreparable injury.
For these reasons, we do not find any merit in the Appeal. The Appeal shall accordingly stand dismissed.
ig (Dr. D.Y.Chandrachud, J.)
(S.C. Gupte, J.)
::: Downloaded on - 27/08/2013 21:10:53 :::