Case Note & Summary
The plaintiff, Skol Breweries Limited, filed a suit for trademark infringement and passing off against the defendants, Som Distilleries & Breweries Limited and Shaw Wallace & Company Limited. The plaintiff is the registered proprietor of the label mark 'HAYWARDS 5000 SUPERSTRONG BEER' and the word mark 'HAYWARDS 5000', used for strong beer since 1983. The numeral '5000' is a dominant and essential feature of the mark and is not descriptive of the beer's character or quality. The second defendant, Shaw Wallace, had adopted the trademark 'Haywards 5000' in 1983 and got it registered in 1995 with a condition that registration gives no right to the exclusive use of all descriptive matters on the label. The plaintiff alleged that the first defendant, Som Distilleries, was using a similar label with the numeral '5000' for its beer, causing infringement and passing off. The court considered the issue of whether the defendant's use of '5000' infringes the plaintiff's mark. The plaintiff argued that '5000' is an essential feature and its use by the defendant creates confusion. The defendant contended that '5000' is descriptive of strength and that the registration condition limits exclusivity. The court analyzed that the numeral '5000' is a fancy numeral and not descriptive, and the condition does not apply to essential features. The court found a prima facie case of infringement and passing off, and the balance of convenience favored the plaintiff. An interim injunction was granted restraining the defendants from using the mark '5000' or any deceptively similar mark.
Headnote
A) Trademark Law - Infringement - Essential Feature - The plaintiff's registered trademark 'HAYWARDS 5000' includes the numeral '5000' as a dominant and essential feature. The defendant's use of the numeral '5000' in a similar label for beer constitutes infringement, as the numeral is not descriptive of the character or quality of the beer. (Paras 1-3) B) Trademark Law - Passing Off - Deceptive Similarity - The defendant's label is deceptively similar to the plaintiff's label, likely to cause confusion among consumers. The plaintiff has established a prima facie case of passing off. (Paras 1-4) C) Trademark Law - Registration - Conditions and Limitations - The registration of the plaintiff's mark includes a condition that registration gives no right to the exclusive use of all descriptive matters on the label. However, the numeral '5000' is not descriptive and is an essential feature, so the condition does not bar the infringement claim. (Para 3) D) Interim Relief - Balance of Convenience - The balance of convenience is in favor of the plaintiff, as the defendant's continued use would cause irreparable loss to the plaintiff's goodwill and reputation. An interim injunction is granted. (Paras 4-5)
Issue of Consideration
Whether the defendant's use of the numeral '5000' in its beer label infringes the plaintiff's registered trademark 'HAYWARDS 5000' and constitutes passing off.
Final Decision
Interim injunction granted restraining the defendants from using the mark '5000' or any deceptively similar mark in relation to beer.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- essential feature
- numeral as trademark
- registration conditions
- descriptive matter
- interim injunction
- balance of convenience
- irreparable loss
