Case Note & Summary
The Plaintiff, Anheuser Busch Inbev India Ltd., filed a suit for permanent injunction restraining the Defendants, Jagpin Brewerise Limited & Ors., from infringing its registered trademarks 'HAYWARDS 5000' (No. 436744) and 'FIVE THOUSAND' (No. 1521743) both registered in Class 32 for beer, and from passing off their goods under the mark 'COX 5000'. The Plaintiff also sought damages of Rs. 5 lakhs. The First Defendant is a company manufacturing and selling beer. The court examined the issue of deceptive similarity between the marks. It noted that the numeral '5000' is common to the trade and not distinctive per se, but the Plaintiff's marks had acquired distinctiveness and reputation. The Defendants argued that their mark 'COX 5000' was honestly adopted and used concurrently. The court found that the Defendants' adoption was not honest and that there was likelihood of confusion among consumers. The court granted a permanent injunction restraining the Defendants from using the mark 'COX 5000' or any deceptively similar mark, and awarded costs of Rs. 2 lakhs. The court held that the Plaintiff's prior registration and reputation entitled it to protection, and the balance of convenience was in favor of the Plaintiff.
Headnote
A) Trade Marks Act, 1999 - Section 29 - Infringement - Registered Trademark - 'HAYWARDS 5000' and 'FIVE THOUSAND' - Use of 'COX 5000' - The court held that the dominant feature '5000' is common to the trade, but the overall marks are phonetically and structurally dissimilar; however, the Plaintiff's prior registration and reputation in 'HAYWARDS 5000' and 'FIVE THOUSAND' entitled it to protection against deceptive similarity. (Paras 1-10) B) Trade Marks Act, 1999 - Section 135 - Passing Off - 'COX 5000' - The court found that the Defendants' mark 'COX 5000' was not deceptively similar to the Plaintiff's marks, but the Plaintiff had established goodwill and reputation in the beer market, and the Defendants' adoption was not honest, leading to an injunction. (Paras 11-20) C) Trade Marks Act, 1999 - Section 30 - Honest Concurrent Use - Delay and Acquiescence - The court rejected the defense of honest concurrent use and delay, holding that the Plaintiff had not acquiesced and the Defendants' use was not honest. (Paras 21-25)
Issue of Consideration
Whether the use of the mark 'COX 5000' by the Defendants infringes the Plaintiff's registered trademarks 'HAYWARDS 5000' and 'FIVE THOUSAND' and amounts to passing off.
Final Decision
The court granted a permanent injunction restraining the Defendants from using the mark 'COX 5000' or any other mark deceptively similar to the Plaintiff's registered trademarks 'HAYWARDS 5000' and 'FIVE THOUSAND'. The court also awarded costs of Rs. 2 lakhs to the Plaintiff.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- likelihood of confusion
- phonetic similarity
- structural similarity
- prior registration
- honest concurrent use
- delay and acquiescence
- balance of convenience
