Case Note & Summary
The High Court of Karnataka at Bangalore heard an appeal filed by United Breweries Ltd (plaintiff) against the judgment and decree of the XXV Additional City Civil Judge, Bangalore, dismissing its suit O.S.No.747/1993. The suit was for permanent and mandatory injunction alleging trade mark infringement and passing off. Plaintiff claimed that its registered trade mark 'Kalyani Black Label' for beer was being infringed by the defendant, Khodays Breweries Limited Industries Ltd, which was using the mark 'Hercules Black Label'. The defendant contended that the words 'Black Label' were common to the trade, that its mark was not deceptively similar, and that it had been using the mark since 1982, long before the suit. The trial court framed issues on deceptive similarity, passing off, liability to account, entitlement to injunction, and relief. After trial, wherein plaintiff examined four witnesses and defendant examined six (later deleted), the trial court answered all issues in the negative and dismissed the suit. On appeal, the appellant argued that the trial court failed to consider phonetic similarity, the class of consumers (often in dimly lit bars, possibly intoxicated), and that the defendant had adopted the mark to exploit plaintiff's goodwill. It was also contended that delay and acquiescence are not absolute bars in passing-off actions. The respondent's arguments were not fully recorded in the available text. The judgment text provided ends after recording the appellant's submissions, and therefore the High Court's analysis, findings, and the final decision on the appeal are not available. Consequently, the outcome of the appeal remains unknown.
Issue of Consideration
Whether the trade mark 'Hercules Black Label' used by the defendant is deceptively similar to the plaintiff's registered trade mark 'Kalyani Black Label', and whether the defendant is guilty of passing off.
Law Points
- trade mark infringement
- passing off
- deceptive similarity
- Trade and Merchandise Marks Act 1958 Section 28
- phonetic similarity
- class of consumers
- intoxication
- goodwill
- prior use
- disclaimer
- permanent injunction
- mandatory injunction
- appeal under Section 96 CPC
Case Details
2013 LawText (KAR) (04) 4
Regular First Appeal No. 66/2008
Gururaj & Associates for appellant; K.N. Srinivasan for respondent
Khodays Breweries Limited Industries Ltd
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Nature of Litigation
Suit for perpetual and mandatory injunction alleging trade mark infringement and passing off.
Remedy Sought
Plaintiff sought permanent and mandatory injunction against defendant from using the trade mark 'Hercules Black Label' and for damages.
Filing Reason
Plaintiff claimed that defendant's mark 'Hercules Black Label' was deceptively similar to its registered trade mark 'Kalyani Black Label'.
Previous Decisions
Trial court (XXV Addl. City Civil Judge, Bangalore) dismissed the suit on 01.06.2007.
Issues
Whether plaintiff proves that label of Beer bearing mark 'Kalyani Black Label' is deceptively similar to that of defendant's brand 'Hercules Black Label'?
Whether defendant is guilty of passing off?
Whether defendant is liable to account for loss suffered by plaintiff?
Whether plaintiff is entitled for mandatory injunction directing the defendant to produce all infringing label and goods in its custody and possession?
Whether plaintiff is entitled for any relief?
Submissions/Arguments
Defendant's mark 'Hercules Black Label' is deceptively similar to registered 'Kalyani Black Label', creating confusion among consumers, especially in bars and wine stores where lighting is dim and consumers may be intoxicated.
Defendant initially used 'Khodays Black Label' and later switched to 'Hercules Black Label', indicating intent to pass off.
Delay in filing suit is not fatal in passing off actions.
The word 'Black Label' is common to the trade and plaintiff's registration is with a disclaimer.
Defendant has been using 'Black Label' with 'Hercules' since 1982, long before suit.
The marks are not identical or deceptively similar; no consumer is likely to be confused.
Judgment Excerpts
label 'Kalyani Black Label' is deceptively similar to that of defendant's brand 'Hercules Black Label'
defendant has been using the words 'Black Label' along with the word 'Hercules' as trade mark of the beer manufactured by it ever since 1982
rights provided to the registered proprietor of a trade mark under section 28 of the Act
Procedural History
Plaintiff filed O.S.No.747/1993 before XXV Addl. City Civil Court, Bangalore. Trial court dismissed the suit on 01.06.2007. Plaintiff filed Regular First Appeal No. 66/2008 before the High Court of Karnataka under Section 96 CPC.
Acts & Sections
- Trade and Merchandise Marks Act, 1958: Section 28
- Code of Civil Procedure, 1908: Section 96
