Case Note & Summary
The Plaintiffs, Shaw Wallace and Company Ltd. and another, filed a suit for trademark infringement and passing off against Mohan Rocky Spring Water Breweries Ltd. The Plaintiffs claimed to be the registered proprietor of the label mark bearing No.436744, which includes the numeral '5000' as an essential feature. They alleged that the Defendant's use of the trade marks 'PRESTIGE 5000' and 'FOUR SQUARE 5000' for beer infringed their registered mark and amounted to passing off. The Plaintiffs had adopted the mark 'HAYWARDS 5000' in 1983 for strong beer, and the numeral '5000' was claimed to be a fancy numeral without reference to quality. The Defendant contended that '5000' is descriptive of the strength of beer and that their marks were distinct in overall appearance, get-up, and trade name. The Court analyzed the marks and found that the numeral '5000' is commonly used in the beer industry to denote strength and is not an essential feature of the Plaintiffs' mark. The competing marks were not deceptively similar, as the labels, trade names, and overall impressions were different. The Court held that the Plaintiffs failed to establish a prima facie case for infringement or passing off, and the balance of convenience did not favor granting an interim injunction. Consequently, the Notice of Motion was dismissed.
Headnote
A) Trade Marks Act, 1999 - Infringement - Section 28, 29 - Essential Feature - Numeral '5000' - The Plaintiffs claimed exclusive rights over the numeral '5000' as an essential feature of their registered label mark 'HAYWARDS 5000'. The Court held that the numeral '5000' is descriptive of the strength of beer and not an essential feature capable of exclusive appropriation. The Defendant's marks 'PRESTIGE 5000' and 'FOUR SQUARE 5000' were found not deceptively similar to the Plaintiffs' mark, as the overall label, get-up, and trade name were different. The Court dismissed the Notice of Motion, refusing interim injunction. (Paras 1-10) B) Trade Marks Act, 1999 - Passing Off - Deceptive Similarity - The Plaintiffs alleged passing off by the Defendant using the numeral '5000'. The Court held that the Plaintiffs failed to establish a prima facie case of deceptive similarity or likelihood of confusion, as the competing marks were visually and phonetically distinct. The numeral '5000' being descriptive, no monopoly could be claimed. (Paras 11-15) C) Trade Marks Act, 1999 - Interim Injunction - Prima Facie Case - Balance of Convenience - The Court found that the Plaintiffs did not make out a strong prima facie case for infringement or passing off. The balance of convenience was in favor of the Defendant, as the Plaintiffs had not used the numeral '5000' exclusively and the Defendant had been using its marks for a considerable period. The Notice of Motion was dismissed. (Paras 16-20)
Issue of Consideration
Whether the use of the numeral '5000' by the Defendant in its trade marks 'PRESTIGE 5000' and 'FOUR SQUARE 5000' amounts to infringement of the Plaintiffs' registered trade mark 'HAYWARDS 5000' and passing off, and whether the Plaintiffs are entitled to an interim injunction.
Final Decision
The Notice of Motion is dismissed. The Plaintiffs are not entitled to any interim relief. No order as to costs.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- essential feature
- numeral mark
- descriptive mark
- Section 28 Trade Marks Act 1999
- Section 29 Trade Marks Act 1999
- Section 2(1)(zb) Trade Marks Act 1999
