Case Note & Summary
The Respondent, SABMiller India Ltd., held a registered trade mark 'SABMiller India / SABMILLER INDIA' in classes 21 and 32 under the Trade Marks Act, 1999, applied for on 19 February 2009. The Respondent also had a registered design for its beer bottles under the Designs Act, 2000, registered on 15 January 2010. In January 2012, the Respondent discovered that the Appellant, Som Distilleries and Breweries Ltd., was using bottles of the same design embossed with the trade mark 'SABMiller India'. The Respondent initially filed a suit for design infringement and passing off in the District Court at Raisen, Madhya Pradesh, which was dismissed on 3 July 2012, and the appeal was dismissed by the Madhya Pradesh High Court on 11 January 2013. Subsequently, the Respondent filed a suit for infringement of its registered trade mark in the Bombay High Court, along with a notice of motion for interim injunction. The Learned Single Judge granted the injunction restraining the Appellant from using the mark. The Appellant appealed. The Division Bench upheld the injunction, holding that the registration of the trade mark gave the Respondent a statutory right to exclusive use, and the Appellant's use of the identical mark on identical goods constituted infringement under Section 29 of the Trade Marks Act. The Court found a prima facie case, balance of convenience in favour of the Respondent, and irreparable injury. The Court also noted that the earlier proceedings in Madhya Pradesh were for design infringement and passing off, not for trade mark infringement, and thus did not bar the present suit.
Headnote
A) Trade Marks - Registered Trade Mark - Infringement - Interlocutory Injunction - Section 28, 29 Trade Marks Act, 1999 - The Respondent held a registered trade mark 'SABMiller India / SABMILLER INDIA' in classes 21 and 32. The Appellant used bottles embossed with the same mark. The Court held that the registration of the mark gave the Respondent a statutory right to exclusive use, and the use by the Appellant constituted infringement. The Court found a prima facie case, balance of convenience in favour of the Respondent, and irreparable injury if injunction was not granted. (Paras 1-8)
B) Trade Marks - Passing Off - Design Infringement - Prior Proceedings - The Respondent had earlier filed a suit for design infringement and passing off in Madhya Pradesh, which was dismissed. The Court held that the dismissal of the earlier suit did not bar the present suit for infringement of the registered trade mark, as the causes of action were different. (Paras 2-3)
C) Trade Marks - Infringement - Use of Identical Mark - Section 29 Trade Marks Act, 1999 - The Appellant's use of the identical mark 'SABMiller India' on bottles of beer, which was identical to the Respondent's registered mark, amounted to infringement under Section 29(1) and (2) of the Act. The Court noted that the mark was embossed on the bottle, and the Appellant's product was also beer, falling within the same class of goods. (Paras 4-6)
Issue of Consideration
Whether the Learned Single Judge was justified in granting an interim injunction restraining the Appellant from using bottles embossed with the trade mark SABMiller India or any deceptively similar mark, pending the suit for infringement of the Respondent's registered trade mark.
Final Decision
The Appeal was dismissed. The order of the Learned Single Judge granting the interim injunction was upheld.
Law Points
- Registered trade mark infringement
- interlocutory injunction
- prima facie case
- balance of convenience
- irreparable injury
- Trade Marks Act 1999 Section 28
- Section 29
Case Details
2013 LawText (BOM) (07) 76
Appeal No.320 of 2013 in Notice of Motion No.2642 of 2012 in Suit No.2584 of 2012
Dr. D.Y. Chandrachud, S.C. Gupte
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
Som Distilleries and Breweries Ltd.
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Nature of Litigation
Appeal against an order of a Learned Single Judge granting an interim injunction restraining the Appellant from infringing the Respondent's registered trade mark.
Remedy Sought
The Respondent sought an interim injunction restraining the Appellant from using bottles embossed with the trade mark SABMiller India or any deceptively similar mark.
Filing Reason
The Respondent alleged that the Appellant was using bottles embossed with the Respondent's registered trade mark SABMiller India, constituting infringement.
Previous Decisions
The Respondent's earlier suit for design infringement and passing off in Madhya Pradesh was dismissed by the Trial Court on 3 July 2012, and the appeal was dismissed by the Madhya Pradesh High Court on 11 January 2013.
Issues
Whether the Learned Single Judge was justified in granting an interim injunction restraining the Appellant from using bottles embossed with the trade mark SABMiller India or any deceptively similar mark, pending the suit for infringement of the Respondent's registered trade mark.
Submissions/Arguments
The Appellant argued that the earlier proceedings in Madhya Pradesh for design infringement and passing off were dismissed, and the present suit is barred.
The Respondent argued that the present suit is for infringement of a registered trade mark, which is a different cause of action, and the registration gives a statutory right to exclusive use.
Ratio Decidendi
The registration of a trade mark under the Trade Marks Act, 1999 gives the registered proprietor a statutory right to exclusive use of the mark. Use of an identical mark on identical goods by another constitutes infringement under Section 29 of the Act. In an application for interim injunction, if the plaintiff has a registered trade mark and the defendant uses an identical mark on identical goods, a prima facie case of infringement is made out, and the balance of convenience is in favour of the plaintiff, who would suffer irreparable injury if the injunction is not granted.
Judgment Excerpts
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)...
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.
The design of the bottle was registered on 15 January 2010 under the Designs Act 2000.
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.
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.
Procedural History
The Respondent filed a suit for design infringement and passing off in the District Court at Raisen, Madhya Pradesh, which was dismissed on 3 July 2012. The appeal to the Madhya Pradesh High Court was dismissed on 11 January 2013. Thereafter, the Respondent filed Suit No.2584 of 2012 in the Bombay High Court for infringement of its registered trade mark, along with Notice of Motion No.2642 of 2012 for interim injunction. The Learned Single Judge granted the injunction on an unspecified date. The Appellant filed Appeal No.320 of 2013 against that order. The Division Bench heard the appeal and delivered judgment on 25 July 2013, dismissing the appeal and upholding the injunction.
Acts & Sections
- Trade Marks Act, 1999: 28, 29
- Designs Act, 2000:
