10 May 2023 9:37 AM GMT
The Delhi High Court has restrained a country-made liquor manufacturer from using the Mirinda mark, including its Hindi transliteration, while passing an interim injunction in favour of PepsiCo in a suit filed by the latter seeking permanent injunction against the infringement.Justice Jyoti Singh rendered a prima facie finding that the adoption of the mark by Jagpin Breweries was...
The Delhi High Court has restrained a country-made liquor manufacturer from using the Mirinda mark, including its Hindi transliteration, while passing an interim injunction in favour of PepsiCo in a suit filed by the latter seeking permanent injunction against the infringement.
Justice Jyoti Singh rendered a prima facie finding that the adoption of the mark by Jagpin Breweries was dishonest.
While holding that Mirinda has a repute of the threshold required under Section 29(4) of the Trade Marks Act, 1999, the court said that the liquor manufacturer attempted to adopt and use PepsiCo’s trademark, only to gain advantage and mileage from the said mark.
Rejecting the plea of honest and concurrent use, the court said that Mirinda has acquired huge goodwill and reputation and going by the strength of the mark, Jagpin Breweries’s use of a mark which is a transliteration with phonetic identity, cannot be counterbalanced by the defence of honest and concurrent use.
It was the case of PepsiCo that Jagpin Breweries is currently using the Hindi transliteration of the mark Mirinda in relation to its country-made liquor. PepsiCo pleaded that the Mirinda marks are registered marks in India, and that the products under Mirinda marks have been available in the country since 1996.
PepsiCo claimed that the use of the impugned marks is resulting in confusion amongst the purchasers that the products of the defendant-company emanate from PepsiCo, or have an association with PepsiCo, and the same amounts to infringement under Section 29 of the Act. PepsiCo further argued that the same was causing damage to the goodwill of the MIRINDA marks, amounting to passing off and violation of its common law rights.
On the contrary, Jagpin Breweries claimed that in the year 2007, Cox India Limited adopted the impugned marks for its range of products; Cox India Limited merged with Jagpin Breweries in 2014.
Thus, it argued that since 2007, it has been extensively using the impugned mark in relation to liquor. The grant of injunction was thus opposed by Jagpin Breweries on the ground of delay and acquiescence. It argued that since it has been using the impugned mark for the last 15 years in India, it cannot be believed that PepsiCo had not come across the mark in so many years.
It further submitted that its director had applied for registration of the impugned mark in Class 33. Even though the said application was abandoned, it cannot be the case of PepsiCo that it had no knowledge of the same, as the moment anyone approaches the Trade Marks Registry to register a mark, the proposed mark can be easily searched by the public, it argued.
Rejecting the contentions raised by Jagpin Breweries, the court remarked that there was no acquiescence.
“Since Plaintiffs had no knowledge of the infringing activities of the Defendants prior to December, 2021, there was no occasion to sit by and allow Defendants to grow, as alleged and thus, there is no acquiescence,” said the court.
It added: “It is the stated case of the Defendants that they sell only in 07 Districts of the State of Madhya Pradesh and cannot and do not advertise and thus at this stage, there is no reason for the Court to disbelieve that Plaintiffs had no knowledge of the sales under the impugned mark, in the absence of any material to the contrary placed on record by the Defendants.”
The court ruled that the onus was clearly on the defendant-company to show that there was some positive act on part of PepsiCo, which led to an impression that the latter had turned a blind eye and was letting the defendant-company sell under the impugned mark. “This onus the Defendants have failed to discharge even on a prima facie threshold and to the contrary, Plaintiffs have agitated their claims as soon as they gained knowledge in December, 2021,” the bench said.
The court reckoned that by definition, transliteration is conversion of a text from one script or alphabet to another, as opposed to translation from one language to another, and that it is well-settled that use of an infringing mark- whether as a translation or transliteration- amounts to infringement.
The bench concluded that the rival marks were phonetically, identical, and conceptually similar to each other and therefore the first ingredient of Section 29(4) stood satisfied.
The court added: “Prima facie, there is disingenuous use of the Plaintiffs’ mark MIRINDA by the Defendants, with the intent to encash on the goodwill and reputation associated with their brand and to benefit out of the same, which would be detrimental to the distinctive character of the Plaintiffs’ marks and dilute the same.”
The bench further remarked that the stand of Jagpin Breweries that they have been using the mark from 2007 was prima facie incorrect since the trademark application for the impugned device mark was abandoned.
The court further said, “Insofar as the label registration is concerned, the submission that it is from the year 2007, cannot be countenanced as Defendants have failed to place on record any sales figures/invoices/CA certificates for the said period. Therefore, at this interim stage, pending trial, the claim of use of the impugned mark from 2007 cannot be accepted.”
The court said PepsiCo has made out a case of infringement against the defendant-company.
“In my prima facie view, case of the Plaintiffs herein falls within the scope and ambit of Section 29(4) of the Act, given the strength and repute of MIRINDA marks, degree of similarity with the impugned mark and the chance of the Plaintiffs bridging the gap between soft drinks and country made liquor. Plaintiffs have made out a case of infringement against the Defendants. Balance of convenience also lies in favour of the Plaintiffs and irreparable harm and injury shall be caused to the Plaintiffs if the interim injunction is not confirmed,” the bench said.
Dismissing the argument of Jagpin Breweries, the court further concluded that it was unable to come to a prima facie conclusion against PepsiCo, that there was delay in approaching the court. The court added that in any event, even assuming that there was some delay, that was not enough by itself to deter the court from granting injunction, more so when the adoption is dishonest.
The bench further remarked that it is a settled law that in matters relating to infringement of trademarks or copyright, injunction must normally follow and delay should not be an impediment. While dealing with the plea that the defendant-company were honest and concurrent users of the impugned mark, which can be raised as a valid defence against infringement, the bench said that the defence was not available since the court had come to a prima facie finding that the adoption of the impugned mark was dishonest.
The court thus confirmed the ex-parte ad interim order passed by it, restraining the defendant- company from using the trademark ‘MIRINDA’, its transliteration in Hindi and/or in any other language, and/or any deceptive variation of the same.
Case Title: PepsiCo Inc. & Anr. vs Jagpin Breweries Limited & Anr.
Citation: 2023 LiveLaw (Del) 388
Counsel for the Plaintiffs: Mr. Dayan Krishnan, Senior Advocate with Mr. Dheeraj Nair, Mr. Manish K. Jha, Ms. Shruti Dass and Ms. Ridhima Sharma, Advocates.
Counsel for the Defendants: Through: Ms. Kiran Suri, Senior Advocate with Ms. Aishwarya Kumar and Ms. Prem Lata, Advocates.
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