Case Note & Summary
The plaintiff, Sabmiller India Limited, filed a suit seeking a permanent injunction against the defendant, Jagpin Breweries Ltd., for infringing its registered trademarks 'HAYWARDS 5000' and 'FIVE THOUSAND' (registered under Nos. 436744 and 1521743 in Class 32 for beer) and for passing off. The plaintiff claimed continuous and extensive use of the mark since 1983 and produced evidence of prior court orders protecting its mark. The defendant's mark 'COX 5001' was alleged to be deceptively similar. The court had granted ad interim relief on 13th January 2012. On hearing the notice of motion, the court found that the plaintiff had made out a prima facie case, the balance of convenience was in its favor, and irreparable injury would be caused if the injunction was not granted. The court confirmed the ad interim order and directed the defendant to maintain accounts of sales under the impugned mark. The motion was made absolute in terms of prayer (a) and (b) of the notice of motion.
Headnote
A) Trademark Law - Infringement - Deceptive Similarity - Trade Marks Act, 1999, Sections 28, 29 - Plaintiff's registered trademark 'HAYWARDS 5000' and Defendant's mark 'COX 5001' for beer - Court found prima facie case of deceptive similarity due to prominent use of numeral '5000' vs '5001' and phonetic/visual resemblance - Held that interim injunction is necessary to protect plaintiff's exclusive rights pending trial (Paras 1-4).
Issue of Consideration
Whether the plaintiff is entitled to a temporary injunction restraining the defendant from using the mark 'COX 5001' or any deceptively similar mark in relation to beer, pending disposal of the suit.
Final Decision
Notice of Motion made absolute in terms of prayer clauses (a) and (b). Defendant directed to maintain accounts of sales under impugned mark. Ad interim order confirmed.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- interim injunction
- balance of convenience
- prima facie case
Case Details
2014 LawText (BOM) (02) 118
Notice of Motion No. 92 of 2012 in Suit No. 56 of 2012
Mr. Himanshu Kane along with Mr. Hiren Kamod, instructed by M/s. W.S. Kane & Co. for the Plaintiff. Mr. Anand Kumar i/b Mr. Anand Kumar and Daulat Jehangir for the Defendant.
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Nature of Litigation
Civil suit for trademark infringement and passing off with interim injunction application.
Remedy Sought
Plaintiff sought temporary injunction restraining defendant from using mark 'COX 5001' or any deceptively similar mark in relation to beer.
Filing Reason
Defendant's use of mark 'COX 5001' allegedly infringed plaintiff's registered trademarks 'HAYWARDS 5000' and 'FIVE THOUSAND'.
Previous Decisions
Ad interim relief granted on 13th January 2012 in terms of prayer clause (a).
Issues
Whether the plaintiff has a prima facie case for trademark infringement and passing off.
Whether the balance of convenience lies in favor of granting interim injunction.
Whether irreparable injury would be caused to the plaintiff if injunction is not granted.
Submissions/Arguments
Plaintiff argued continuous and extensive use of 'HAYWARDS 5000' since 1983 and prior protection orders.
Defendant's mark 'COX 5001' is deceptively similar due to prominent numeral '5001' resembling '5000'.
Ratio Decidendi
The court found that the plaintiff had made out a prima facie case of trademark infringement and passing off, the balance of convenience was in favor of the plaintiff, and irreparable injury would be caused if the injunction was not granted.
Judgment Excerpts
The Plaintiff has stated that it is the proprietor of the trade marks 'HAYWARDS 5000' and 'FIVE THOUSAND' registered under Nos. 436744 and 1521743 both in Class 32 in respect of beer.
By an order dated 13th January 2012 this Court has granted ad interim relief to the Plaintiff in terms of prayer clause (a) of the Notice of Motion.
Procedural History
Plaintiff filed Suit No. 56 of 2012 and Notice of Motion No. 92 of 2012. Ad interim injunction granted on 13th January 2012. After hearing, the court confirmed the ad interim order and made the motion absolute on 6th February 2014.
Acts & Sections
- Trade Marks Act, 1999: 28, 29
