Case Note & Summary
The plaintiff, Skol Breweries Limited, filed a suit for infringement and passing off against the defendants, Fortune Alcobrew Pvt. Limited and Hindustan Breweries & Bottling Limited, for using the mark '50000' in respect of beer. The plaintiff is the registered proprietor of the trademark 'Haywards 5000', which has been in use since 1983. The plaintiff acquired the trademark from defendant No.3, Shaw Wallace & Co. Ltd. The plaintiff contended that the numeral '5000' is a dominant and essential feature of its mark and that the defendants' mark '50000' is deceptively similar, both phonetically and structurally. The defendants argued that '5000' is descriptive of the strength of the beer and that their mark '50000' is distinct. The court held that the marks are deceptively similar and that the plaintiff's mark has acquired distinctiveness through long and extensive use. The court granted an injunction restraining the defendants from using the mark '50000' or any other deceptively similar mark. The court also rejected the defendants' argument that registration of their mark protects them from an infringement action.
Headnote
A) Trademark Law - Infringement - Deceptive Similarity - Section 29(2)(b) of the Trade Marks Act, 1999 - The plaintiff's registered trademark 'Haywards 5000' and the defendants' mark '50000' are phonetically and structurally similar, leading to likelihood of confusion among consumers. The numeral '5000' is an essential feature of the plaintiff's mark. (Paras 1-10) B) Trademark Law - Passing Off - Goodwill and Reputation - The plaintiff has established substantial goodwill and reputation in the mark 'Haywards 5000' through continuous use since 1983. The defendants' adoption of '50000' is likely to deceive or cause confusion, amounting to passing off. (Paras 11-15) C) Trademark Law - Registration - Effect of Registration - Registration of a trademark does not confer a right to use a mark that infringes another's prior registered mark. The defendants' registration of '50000' does not protect them from an action for infringement. (Paras 16-20)
Issue of Consideration
Whether the use of the mark '50000' by the defendants constitutes infringement of the plaintiff's registered trademark 'Haywards 5000' and amounts to passing off.
Final Decision
The court allowed the notice of motion and granted an injunction restraining the defendants from using the mark '50000' or any other mark deceptively similar to the plaintiff's trademark 'Haywards 5000'.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- phonetic similarity
- essential feature of trademark
- likelihood of confusion
- registration not a defense for infringement
