Case Note & Summary
The Plaintiff, Anheuser Busch Inbev India Ltd., filed a commercial suit seeking a permanent injunction restraining the Defendant, Jagpin Brewerise Limited, from infringing its registered trademarks 'HAYWARDS 5000' (Registration No. 436744) and 'FIVE THOUSAND' (Registration No. 1521743), both in Class 32 for beer. The Plaintiff also sought to prevent passing off and claimed damages of Rupees Twenty Lakhs. The Plaintiff alleged that the Defendant's use of the mark 'COX 5001' for beer was deceptively similar to its marks, particularly the numeral '5000', which is the dominant feature. The Defendant argued honest concurrent use and delay in filing the suit. The court analyzed the marks and found that 'COX 5001' is structurally and phonetically similar to 'HAYWARDS 5000' and 'FIVE THOUSAND', leading to a likelihood of confusion. The court rejected the defense of honest concurrent use as the Defendant failed to prove bona fide adoption. The court also held that delay alone does not constitute acquiescence. The court granted a permanent injunction restraining the Defendant from using 'COX 5001' or any deceptively similar mark, and awarded costs of Rupees Five Lakhs to the Plaintiff.
Headnote
A) Trade Marks Act, 1999 - Section 29 - Infringement - Deceptive Similarity - The court considered whether the mark 'COX 5001' is deceptively similar to the registered marks 'HAYWARDS 5000' and 'FIVE THOUSAND'. The court held that the dominant feature of the Plaintiff's marks is the numeral '5000', and the Defendant's use of '5001' is structurally and phonetically similar, leading to a likelihood of confusion. The court found that the Defendant's mark infringes the Plaintiff's registered trademarks. (Paras 1-10) B) Trade Marks Act, 1999 - Section 135 - Passing Off - The court examined whether the Defendant's use of 'COX 5001' amounts to passing off its goods as those of the Plaintiff. The court held that the Plaintiff has established a reputation and goodwill in the marks 'HAYWARDS 5000' and 'FIVE THOUSAND', and the Defendant's adoption of a similar mark is likely to deceive or cause confusion among consumers, thereby constituting passing off. (Paras 11-15) C) Trade Marks Act, 1999 - Section 30 - Honest Concurrent Use - The Defendant argued honest concurrent use, but the court rejected this defense as the Defendant failed to prove that its use of 'COX 5001' was honest or that it had acquired any distinctiveness. The court noted that the Defendant's adoption of the mark was not bona fide and was intended to ride on the Plaintiff's goodwill. (Paras 16-20) D) Trade Marks Act, 1999 - Section 29 - Delay and Acquiescence - The court considered the defense of delay and acquiescence. The court held that mere delay in filing the suit does not amount to acquiescence, and the Plaintiff's rights are not extinguished by delay. The court found that the Plaintiff had not abandoned its rights and that the balance of convenience favored granting an injunction. (Paras 21-25)
Issue of Consideration
Whether the Defendant's use of the mark 'COX 5001' 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 Defendant from using the mark 'COX 5001' or any other mark deceptively similar to the Plaintiff's registered trademarks. The court also awarded costs of Rupees Five Lakhs to the Plaintiff.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- phonetic similarity
- structural similarity
- likelihood of confusion
- honest concurrent use
- delay and acquiescence
- balance of convenience
- irreparable loss
