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3. Lowenbrau A.G., plaintiff no.1 and Lowenbrau Buttenheim, defendant no.2 are entities incorporated under the laws of Germany. Both of them manufacture beer, which is sold in Germany and other countries. The beer manufactured by the plaintiff No.1 is sold under the mark/name "LOWENBRAU" with or without other word/mark, while the beer manufactured by the defendant no.2 is sold under the mark "LOWENBRAU BUTTENHEIM" along with other words/marks in Germany and other countries.

4. Both the plaintiff no.1 and the defendant no.2 claim substantial turnovers and sales in Germany and other third countries. There is also no dispute that the plaintiff no.1 and defendant no.2 are not presently involved in any litigation on the right to use the mark/word "LOWENBRAU" in any country except in India. Both parties agree that there was litigation in Germany in respect of right to use the mark/word "LOWENBRAU" which was decided more than 100 years back in 1903 in favour of the defendant no.2. It was held that the mark/word "LOWENBRAU" cannot be monopolised as there were a number of breweries in Germany who had been using the said word/mark for a long time and therefore the mark/word "LOWENBRAU" cannot be used to differentiate beer of one brewery from another.

21. It is the case of the defendants that registration in 1972 was in respect of label "Lowenbrau Munchen" and the said contention appears to be correct. On 18th Oct.,1994 the word/mark "LOWENBRAU" was registered without any disclaimer in favour of the plaintiff No.1 with their particulars mentioned in the certificate as "Lowenbrau AG (a company duly organised under the laws of Germany) Nymphenburger Strasse 4D-80335 Munchen Germany, manufacturer and merchant". At the same time, the 1960 registration with disclaimer on "LOWENBRAU" and device of lion still continues and has been repeated extended.

27. Both parties are German Companies. Both of them have been using the mark/word "LOWENBRAU" all over the world and are distinguished by other mark/word on their label/mark and not by use of the mark/word "LOWENBRAU" or device of lion. In the present case, two international brands, both of Germany origin and marketing and selling beer across the world, want to expand and market beer in India. In these circumstances the position as it exists abroad and usage abroad cannot be ignored. The mark/word "LOWENBRAU" has been extensively used in Germany for beer and even the plaintiffs do not deny that it has become descriptive and generic word in the said country and other places where German beer is sold and consumed. The mark/word "LOWENBRAU" is a part of public juris in Germany and in most countries with German beer and is not distinctive of a particular manufacturer. In view of this factual background, including the litigation in Germany, I do not think in the present case, the question of prior use can be judged or decided on the basis of user in India alone. Indian market is opening up and foreign or multinational brands have moved and/or are likely to move. Similarly, Indian brands are likely to move out and expand into markets abroad. National and manmade borders and boundaries are gradually getting diluted and the entire world is now seen as a common market. It may not be, therefore, proper to ignore ground realities and position in the home country and abroad in the present case specially when there is ample evidence and material to show that the mark/word "LOWENBRAU" is public juris and a generic word standing for "German beer" and is not distinctive for any source. Trans-border reputation has been accepted and recognised in India even when the products are not being marketed and sold in India. It is clarified that in a given case prior user in India may be relevant for applying Section 34 of the Act, depending upon parties involved, nature and type of the mark, its adoption and extent and nature of use abroad etc. Each case therefore may have to be decided on its own merits and factual background. In the present case however while applying Section 34 of the Act, the position as prevailing in the parent country and abroad should not be ignored and the prior user has reference to user in India and abroad. Plaintiffs cannot claim different treatment and rights in India viz. the entire world where both parties are using the mark/word "LOWENBRAU". It will be unjust and unfair.