Case Note & Summary
The case arose from a trade mark infringement action instituted by SABMiller India Limited (formerly SKOL Breweries Ltd.) against Som Distilleries & Breweries Ltd. before the Bombay High Court. The plaintiff had obtained registration of the series trade mark 'SABMiller India – SABMILLER INDIA' under No. 1787321 in Classes 21 and 32 with effect from 19 February 2009. The mark was embossed on beer bottles introduced in the Indian market after January 2010. In early 2012, the plaintiff discovered that the defendant was manufacturing and selling beer in bottles that were also embossed with the identical trade mark. Earlier, the plaintiff had filed Suit No. 5A of 2012 before the District Court, Raisen, Madhya Pradesh, for design infringement and passing off, obtaining an ex-parte ad-interim injunction on 3 February 2012. That injunction was later dismissed by the IIIrd Additional District Judge on 3 July 2012, but the Madhya Pradesh High Court in Misc. Appeal No. 1946 of 2012 stayed the dismissal on 9 August 2012. Ultimately, the Madhya Pradesh High Court dismissed the appeal on 11 January 2013. Meanwhile, after the trade mark was formally registered on 5 December 2012, the plaintiff filed the present suit for trade mark infringement in Bombay High Court, and on 18 December 2012 secured an ad-interim injunction restraining the defendant from using bottles bearing the mark. The Notice of Motion was taken up for final hearing on 8 February 2013. The plaintiff contended that the defendant's use of bottles embossed with the identical registered trade mark on identical goods (beer) amounted to infringement under Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, 1999, which mandates a presumption of likelihood of confusion. The plaintiff argued that the addition of the defendant's own label did not negate infringement, relying on Ruston & Hornsby Ltd. v. Zamindara Engg. Co. and Kaviraj Pandit Durga Dutt Ahsarma v. Navaratna Pharmaceutical Laboratories. The defendant submitted that the use was inadvertent because recycled bottles were common in the trade; it also claimed that its own label and name prevented any confusion. It raised defences under Sections 30(1) and 30(2) of the Act and argued that the suit was barred by res judicata due to the earlier passing-off proceedings. The defendant further alleged suppression of material facts, pointing to the plaintiff's own use of recycled bottles embossed with the 'Kingfisher' mark. The court examined the rival submissions and held that once identity of the marks and goods was established, infringement was made out and the statutory presumption of confusion applied. The court rejected the defence based on Section 30, finding that the use of an identical mark without authorisation was not protected merely because the defendant affixed its own label. The plea of res judicata was also rejected as the earlier suit was for design infringement and passing off, which constituted a distinct cause of action. The allegation of suppression was held to be irrelevant. The court observed that balance of convenience and cost arguments could not override the statutory monopoly of a registered trade mark owner. (The provided text of the oral judgment ends before the final operative order; however, the reasoning and findings were clearly in favour of the plaintiff, and it may be inferred that the court made the ad-interim injunction absolute or otherwise granted the motion.)
Headnote
A) Intellectual Property – Trade Marks – Infringement – Sections 29(2)(c) and 29(3) of the Trade Marks Act, 1999 – The defendant's use of bottles embossed with a mark identical to the plaintiff's registered trade mark on identical goods (beer) constituted infringement; under Section 29(3) the court shall presume likelihood of confusion. The addition of the defendant's own label or other words did not provide a defence to the action for infringement – (Paras 14, 17) B) Intellectual Property – Trade Marks – Defences – Sections 30(1) and 30(2) of the Trade Marks Act, 1999 – The defendant claimed that the use of recycled bottles was inadvertent and that its own label prevented confusion; the court rejected this defence, holding that the unauthorised use of an identical registered mark is not protected merely because the user adds its own labelling or label – (Paras 15, 16, 17) C) Civil Procedure – Res Judicata – Section 11 of the Code of Civil Procedure, 1908 – The earlier suit filed by the plaintiff in Madhya Pradesh was for design infringement and passing off, not for trade mark infringement; the causes of action being distinct, the principle of res judicata did not bar the subsequent trade mark infringement suit before the Bombay High Court – (Para 17) D) Civil Procedure – Suppression of Material Facts – Code of Civil Procedure, 1908 – The defendant alleged that the plaintiff had suppressed the fact that it too used recycled bottles bearing other brands; the court found that the allegation was irrelevant and did not constitute a ground to deny relief in an infringement action, as a plaintiff is not obliged to plead anticipated defences – (Paras 16, 18)
Issue of Consideration
Whether the use of the plaintiff's registered trade mark by the defendant on recycled beer bottles amounts to infringement under the Trade Marks Act, 1999, and whether the defendant can rely on defences under Section 30 of the Act
Law Points
- Identity of marks and goods raises presumption of confusion under Section 29(3) of the Trade Marks Act
- 1999
- addition of own label does not cure infringement
- res judicata inapplicable between passing off and trade mark suits
- suppression of irrelevant facts not a bar to relief
