Pepsico, Inc. & Anr. v. Jagpin Breweries Limited & Anr.

15. Even otherwise, it was urged by the learned Senior Counsel that Defendants’ colour scheme, logo, style of writing and the entire get up of the bottles, in which they sell their product, are different and clearly distiguishable from the Plaintiffs’ soft drinks. To make their product more distinguishable and highlight the association with the Defendants, they have been writing with the word and being in Hindi, it is easily understood by a common man of average intelligence that the products come from the Defendants’ stable. Even the rival products are different from each other. Country liquor is sold by Defendants in a packaging of 180 ml, as per the Regulation of the Excise Department and cannot be varied whereas Plaintiffs’ soft drinks come in different packaging. Moreover, Plaintiffs’ products are carbonated and create fizz which is not so in the case of Defendants’ product. The design of the bottle of the Defendants is totally different in shape, height, style, design, etc. and can be distinguished by a naked eye. The bottle bears excise approved label and aluminium cap and the bottle is thick and short in size and there can be no chance of confusion amongst the purchasers.

16. It was further contended that PepsiCo came to India in 1990 and at that time, no one knew Pepsi in India. At the time when the Defendants’ predecessors adopted, Plaintiffs had no reputation and goodwill in the mark. Even the contention of the Plaintiffs that their mark is a well known mark as per the Trademark Rules, 2017, is an incorrect statement of fact and therefore, the claim of the Plaintiffs premised on reputation of the high threshold required under Section 29(4) of the Act is wholly misplaced.

17. The interim injunction order, it was strenuously argued, is prejudicing the Defendants in more than one way. Defendants sell their liquor to the Government vends pursuant to the bids invited by the Government for award of tenders for different Districts. Out of 52 Districts in Madhya Pradesh, Defendants were awarded 7 Districts, when their bids were accepted for the financial year 2022-2023. As per the tender terms and conditions i.e. Clauses 14.[1] and 14.2, Defendants are bound to supply liquor under the mark Rajshree Mirinda Masala, throughout the year on demand and failure to do so, will lead to imposition of penalties as also blacklisting of the Defendants for a long period. Clause 14.[1] mandates that successful tenderer will have to ensure supply of country liquor at his own risk and cost. If the supply of liquor to the retailers is interrupted, then the successful tenderer will be considered as a defaulter and in case of more than one successive default, it would be treated as continuous failure of supply. In the event of such continuous failure, the supply area of the tenderer is liable to be attached and a penalty of Rs.50,000/- per day may be imposed by the Excise Commissioner. It is further provided in Clause 14.[2] that if re-tendering arises due to fault of the successful tenderer, fresh tenders may be invited at the risk and cost of the defaulter and the difference in price will be borne by the defaulter bidder.

18. Grant of injunction to the Plaintiffs was also opposed by the Defendants on the ground of delay and acquiescence. It was argued that Defendants have been using the impugned mark for the last 15 years in India and it cannot be believed that Plaintiffs had not come across the mark in so many years. Defendants even applied for registration of their mark in 2017 in Class 33, before the Trade Marks Registry albeit the same was abandoned inadvertently, however, it cannot be the case of the Plaintiffs that they 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. Therefore, the only conslusion that can be drawn is that Plaintiffs were in complete know-how of the use of the mark by the Defendants for their liquor products and yet approached the Court after an inordinate delay of approximately 15 years. The fact that the Plaintiffs sat by for years together, permitting the Defendants to expand their business constitutes estoppel against them from claiming infringement under the Doctrine of Acquiescence.

19. In rejoinder, learned senior counsel for the Plaintiffs, submitted that Defendants’ stand that they are bound to supply liquor under the mark/name Rajshree Mirinda Masala, in terms of the tender documents, is devoid of merit. Notice Inviting Tender dated 15.03.2022 is brand neutral and the only mandatory requirement is supply of plain and masala country liquor under labels, duly registered with the Excise Department. Letter dated 30.03.2022, whereby tender was awarded to the Defendants shows that the tender is brand neutral and there is no obligation to supply only Mirinda Masala. Defendants have deliberately suppressed that they have a label registration for Masala country liquor i.e. ‘Desi Madira Masala Prince Orange’, which they can use to fulfill the tender requirements. This fact was initially admitted by the Defendants, however, later there was a shift of stand to state that some liquor warehouses were demanding only Mirinda Madira Masala and thus the injunction be vacated and Defendants be permitted to to sell under the mark.

20. Defendants are disentitled to vacation of the injunction order even otherwise on account of their conduct. Local Commissioner’s Report dated 31.05.2022 reflects that he was obstructed from executing the commission and even the local police acted in connivance with the Defendants. As a result, despite the injunction order, Defendants continued to sell their product under the impugned mark. After the Court passed the injunction order and the same was notified to the Defendants, it was their bounden duty to write to the Government authorities requesting them to withdraw the existing stock from the market, instead Defendants kept the authorities in the dark by concealing the interim order, which is evident from the fact that Defendants were granted a supply license on 19.05.2022 by local authorities. Defendants’ stand that the letter was in response to the Excise Officer’s letter dated 19.05.2022 and is an inter-department communication, is inconsequential as it was incumbent on the Defendants to inform the District Excise Officer of the interim order passed by this Court.

21. The contention of the Defendants that failure to supply products under the mark will lead to penalties and blacklisting is false as the tender is brand neutral and Defendant No.1 is in a position to supply the same product, namely, Desi Madira Masala under their other registered label/brand ‘Desi Madira Masala Prince Orange’.

22. There is no delay on the part of the Plaintiffs in approaching the Court, as alleged by the Defendants. Plaintiffs became aware of Defendants’ product only in December, 2021 when it learnt of the application for registration of the mark ‘CONTINENTAL MIRINDA BEER’ in Class 32 and soon thereafter, the suit was filed on 28.04.2022. Defendants have themselves stated that their products are available in few Districts of Madhya Pradesh and they cannot advertise. Therefore, it was not easy for the Plaintiffs to have known of their activities under the impugned mark. In any case, it is a settled law that in case of infringement, mere delay by itself will not defeat the statutory right of a registered proprietor. Reliance was placed on Midas Hygiene Industries (P) Ltd. and Another v. Sudhir Bhatia and Others, (2004) 3 SCC 90, Victoria Foods Private Limited v. Rajdhani Masala Company and Another, 2021 SCC OnLine Del 4224 and Crayons Advertising Ltd. v. Crayon Advertising, 2014 SCC Online Del 218.

23. Defendants have failed to make out case of acquiescence against the Plaintiffs which onus lies on them to show that there was some positive action on part of the Plaintiffs in letting the other party invade their rights and spend money on it. Therefore, acquiesence requires a positive act and not mere silence or inaction. Reliance was placed on M/s. Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448 and Jolen Inc. v. Doctor & Company, 2002 SCC OnLine Del 518.

24. Defendants have strenuously pleaded that they are honest and concurrent users of the trademark. This defence cannot come to their rescue as it is a settled law that honest and concurrent user is not available as a defence to a claim of infringement, as held in KEI Industries Limited v. Raman Kwatra and Another, 2022 SCC OnLine Del 1459. Without prejudice, even otherwise, adoption of the impugned mark is completely dishonest. No plausible reason has been put forth by the Defendants for adopting the mark, save and except, stating that Mirinda in latin means ‘admirable’ which signifies quality of their liquor. Even this stand was contradicted by the Defendants in one of the hearings by stating that reason for adoption was that Cox Distillery was established by an Englishman, who came up with the term ‘Mirinda’ for whisky, however, pleadings show that Mr. Cox had founded the distillery in 1914 and hence could not have coined the mark in 2007.

25. Stand of the Defendants that they have been using the mark from 2007 is false to their knowledge and contrary to the record. Their trademark application bearing No.3471413 for device mark was abandoned. The application made on 01.02.2017 was on ‘proposed to be used’ basis. In the earlier application No.3465713, user was claimed from 06.07.2015 for the word mark ‘CONTINENTAL MIRINDA BEER’. 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. [Ref.: FDC Limited v. Nilrise Pharmaceuticals Pvt. Ltd. and Another, 2022 SCC OnLine Del 3058]. It is well established that mere registration with the excise authority will not entitle the Defendants to dilute the well known/ reputed and registered mark of the Plaintiffs. [Ref.: M/s. Radico Khaitan Limited v. M/s. Brima Sagar Maharashtra Distilleries Ltd., 2014 SCC OnLine Del 2036 and Cox Distillery and Another v. McDowell & Company Ltd., 1999 SCC OnLine MP 10].

26. It is clear that Defendants have adopted the mark, which is a transliteration of the Plaintiffs’ registered mark MIRINDA dishonestly and with a view to encash on their formidable reputation. Plaintiffs have both device and word mark registrations for MIRINDA in Class 32 going back to 04.06.1997 and 06.10.2004, respectively. Mark MIRINDA was first adopted by Plaintiff No.1 in Spain in 1959 and today there are registrations worldwide in 190 countries. The Gurugram District Court in PepsiCo, Inc. and Anr. v. M/s Mist Group and Anr. (CS No. 88/2018), has held the mark to be a wellknown mark.

27. Material on record would show that Plaintiffs are prior users as compared to the Defendants, even if their claim to use is accepted from the year 2007 and this is evident from various articles published in 1999, 2002 to 2005 as well as the agreement for bottling in 1998, invoices in the year 1999 as well as invoices for soft drinks for the year 2005-06. In a judgment passed by the Allahabad High Court in 2001, it is recognized that Plaintiffs were selling products under Mirinda marks in 1998.

28. The sales turnover, expenditures incurred on promotion and advertisement, etc. clearly show that Mirinda marks are a household name and have huge reputation and goodwill throughout the country and are entitled to protection under Section 29(4) of the Act, as Defendants are using a deceptively similar mark. It is settled that at the stage of interim injunction, Plaintiff has to only make out a prima facie case of ‘reputation’ under Section 29(4) of the Act. [Ref.: V. Guard Industries Ltd. v. Crompton Greaves Consumer Electricals Ltd., 2022 SCC OnLine Del 1593]. Defendants have miserably failed in satisfying the test of claiming protection as a ‘prior user’ under Section 34 of the Act. [Ref.: Pfizer Products Inc. v. Rajesh Chopra & Ors., 2007 SCC OnLine Del 868 and Devans Modern Breweries Ltd. v. Radico Khaitan Ltd., FAO(OS) (Comm) 74/2019].

29. The argument of the Defendants that there is no likelihood of confusion amongst the consumers by their use of the similar mark, is without any basis. The argument is based on difference in products, class of consumers, trade channels, packaging, design and size of bottles and sale through exclusive Government liquor vends, etc. In putting forth these defences, Defendants are overlooking the fundamental point that Plaintiffs are not required to show confusion or deception while making out a prima facie case of infringement under Section 29(4) of the Act. Once the two competing marks are identical or similar and Petitioner has a repute of the level required under the said provision, no further questions are to be asked. The argument that pricing in class of customers being different, confusion is impossible, is in teeth of the judgments of the Supreme Court in Ruston & Hornsby Ltd. v. The Zamindara Engineering Co., (1969) 2 SCC 727 and Rennaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others, (2022) 5 SCC 1. Time and again, Defendants have sought to plead that country liquor is sold only through Government vends and therefore, no confusion can arise. This argument cannot be accepted for the simple reason that firstly, no confusion is required to be proved under Section 29(4) and, secondly, Government liquor vends are merely a medium of sale and not the end consumers, who are generally poor and illiterate people, considering the price of the product of the Defendants. Having themselves applied for the mark ‘CONTINENTAL MIRINDA BEER’ in Class 32, in which Plaintiff No.1’s marks are already registered, Defendants cannot argue against confusion. Dissimilarity of products is not a ground available to the Defendants as a defence to infringement under Section 29(4) of the Act.

30. I have heard the learned Senior Counsels for the parties and examined the aforesaid contentions.

31. The first and foremost contention that this Court is required to examine is the aspect of delay and/or acquiescence, a ground strenuously pressed on behalf of the Defendants. Plaintiffs have pleaded and argued that in December, 2021, they learnt that Defendant No.2 had applied for registration of the mark ‘CONTINENTAL MIRINDA BEER’ in Class 32, whereafter they investigated the matter and investigations revealed that Defendant No.2 is the Director of Defendant No.1 and was using Hindi transliteration of the mark MIRINDA, in relation to country made liquor. Soon thereafter, the suit was filed in April, 2022 and thus, there is no delay. 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. Prima facie, there is substance in this submission. 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. As soon as the investigations revealed sales under the impugned mark, action was initiated by the Plaintiffs and suit was filed, without delay. In any event, 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. In Midas Hygiene (supra), Appellants had filed a suit for passing off and infringement of copyright along with an application for interim injunction. Learned Single Judge of this Court granted injunction, which was vacated by the Division Bench, on ground of delay and laches in filing the suit. Allowing the appeal, the Supreme Court held that in cases of infringement, either of trademark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in these cases, particularly, where adoption of the mark is dishonest. In this context, I may also refer to the judgment of the Supreme Court in M/s. Hindustan Pencils Private Limited v. M/s. India Stationary Products Co. & Another, 1989 SCC OnLine Del 34 and of this Court in Victoria Foods (supra). Relevant para of the judgment in M/s. Hindustan Pencils (supra) is as follows:-

32. Law on acquiescence is also no longer res integra. The onus was clearly on the Defendants to show that there was some positive act on part of the Plaintiffs, which led to an impression that Plaintiffs were letting the Defendants sell under the impugned mark and had turned a blind eye so as to be disentitled to trample over the business of the Defendants. 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 Supreme Court in M/s Power Control Appliances (supra) held as follows:- “26. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White [(1860) 28 Beav 303: 54 ER 382] Sr. John Romilly said: “It is important to distinguish mere negligence and acquiescence.” Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) & Co. v. Boehm [(1884) 26 Ch D 406]. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill [(1847) 2 De GM&G 614: 22 LJ KCH 404].

27. The law of acquiescence is stated by Cotton, L.J. in Proctor v. Bannis [(1887) 36 Ch D 740] as under: “It is necessary that the person who alleges this lying by should have been acting in ignorance of the title of the other man, and that the other man should have known that ignorance and not mentioned his own title.” In the same case Bowen, L.J. said: “In order to make out such acquiescence it is necessary to establish that the plaintiff stood by and knowingly allowed the defendants to proceed and to expend money in ignorance of the fact that he had rights and means to assert such rights.”

28. In Devidoss and Co. [AIR 1941 Mad 31: (1940) 2 MLJ 793: ILR 1941 Mad 300] at pages 33 and 34 the law is stated thus: “To support a plea of acquiescence in a trade mark case it must be shown that the plaintiff has stood by for a substantial period and thus encouraged the defendant to expend money in building up a business associated with the mark. In Rowland v. Michell [(1896) 13 RPC 464] Romer J. observed: ‘If the plaintiff really does stand by and allow a man to carry on business in the manner complained of to acquire a reputation and to expend money he cannot then after a long lapse of time, turn round and say that the business ought to be stopped.’” In the same case, but on appeal Lord Russel, C.J. said [Rowland v. Michell, (1897) 14 RPC 37, 43] at p. 43: “Is the plaintiff disentitled to relief under that head by injunction because of acquiescence? Of course it is involved in the consideration of that that the plaintiff has a right against the defendant and that the defendant has done him a wrong and the question is whether the plaintiff has so acted as to disentitle him from asserting his right and from seeking redress from the wrong which has been done to him. Cases may occasionally lay down principles and so forth which are a guide to the court, but each case depends upon its own circumstances.” xxxx xxxx xxxx xxxx

29. This is the legal position. Again in Halsbury's Laws of England, Fourth Edn., Vol. 24 at paragraph 943 it is stated thus:

33. Coming now to Plaintiffs’ claim of infringement. Plaintiffs have primarily predicated their case on provisions of Section 29(4) of the Act, which is extracted hereunder for ready reference:- “Section 29. Infringement of registered trade marks. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”

34. The scope and ambit of Section 29(4) has been discussed and decided in several judgments and needs no reiteration. From a plain reading of the provisions of Section 29(4), it is luminously clear that the legislative intent in enacting sub-section (4) of Section 29 is to carve out an exception to Section 29(1) and (2) of the Act. The ingredients of Section 29(4) are: (a) the two rival marks are identical or similar; (b) Plaintiff’s mark must have a reputation in India;

(c) Defendant’s mark must take unfair advantage or be detrimental to the distinctive character or repute of Plaintiff’s mark; and (d) use of Defendant’s mark should be in such a manner that it is ‘without due cause’. Section 29(4) has been analysed in great depth by this Court in ITC Limited v. Philip Morris Products SA and Ors., 2010 SCC OnLine Del 27 and I may usefully allude to a few observations in this regard. The Court has held that Section 29(1) and (2) of the Act relate to infringement where there is resemblance or deceptive similarity between a registered mark and another, in relation to same or similar goods and in such a case, if requisite degree of resemblance is established, infringement is made out and where the marks and the goods are identical, infringement is presumed under Section 29(3). However, a slightly different standard has been set by the Legislature in a case of infringement, where the goods or products are dissimilar, and there is trademark dilution. The Court relied on the concept of dilution as follows:-

33. The old law in India, i.e the Trade and Merchandise Marks Act, 1958, did not provision for trademark dilution, as in the case of Section 29(4). The principle of dilution therefore, was developed by our courts, having regard to internationally recognized standards about the need to protect generally well known trademarks, whose exploitation, without any good cause in relation to diverse and dissimilar products or services could injure and “dilute” its appeal. Thus, in Daimler Benzaktiegesellschaft v. Eagle Flask Industries Ltd., ILR (1995) 2 Del 817 this court held that:

35. The Court further observed that the entire structure of Section 29(4) is different from the earlier provisions in Section 29 and this is because the ‘likelihood of confusion’ test, which is the essential basis of trademark law, is not incorporated in relation to infringement of the kind Section 29(4) envisions. The emphasis on similar goods is the recurring theme in each of the sub-clauses (a), (b) and (c) of Section 29(2) and identity/similarity requirement along with similarity of goods are twin conditions. However, Section 29(4) posits identity or similarity of the mark but in relation to dissimilar goods. Importantly, the Court also held that the object of the dilution form of infringement under Section 29(4) in effect, is a wider trademark protection without the concomitant likelihood of confusion requirement as the Legislature has not referred to the need for proving confusion under sub-section (4). Thus, what the Plaintiff is required to establish are cumulative conditions of similarity or identity of marks, repute in India, use of mark without cause and intent to take unfair advantage or the use of the impugned mark being detrimental to the distinctive character/repute of the registered mark. Reference was made to the judgment in Baywatch Production Co. v. Home Video Channel, [1997] F.S.R. 22 (Ch.), where the Court had delineated the ‘questions’ that a Court is required to pose and answer under Section 29(4), while adjudicating a claim for infringement and relevant passage from the judgment in DaimlerChrysler AG v. Alavi, [2001] RPC 42 is as follows:-

36. Insofar as the test of similarity is concerned, the Court relied on the judgment in Sabel BV v. Puma AG, [1998] RPC 199, where it was held as under:-

37. The Court also relied on the judgment of the European Court in Intel Corp Inc v. CPM United Kingdom Ltd., 2009 ETMR 13, as follows:-

38. Finally, on an analysis of all the requisite parameters, the Court observed as under:-

49. As commented earlier, the analogy of tests evolved in infringement actions where similar goods or services are in question appears to be inapposite, after the enactment of Section 29(4). The plaintiff has to fulfill a more stringent test (than the deceptive similarity standard) of proving identity or similarity, where trademark dilution is complained. Applying the reasoning of the decisions cited previously, it is held that a “global” look, rather than a focus only on the common elements of the mark, is to be taken, while considering if the impugned or junior mark infringes, by dilution, an existing registered mark…..”

39. In this context, I may also refer to a judgment of a Division Bench of this Court in Ford Motor Company & Anr. v. C.R Borman & Anr., 2008 SCC OnLine Del 1211, relevant paras of which are as follows:-

40. Relevant would it be to rely on the judgment of the High Court of Madras in Ashok Leyland Limited v. Blue Hill Logistics Pvt. Ltd. & Another, 2010 SCC OnLine Mad 6126, where the Court held that the protection extended by Section 29(4) of the Act, even to dissimilar goods and services is based on the doctrine of dilution, which is a type of violation of a trademark in which Defendant’s use, while not causing a likelihood of confusion, blurs distinctiveness or tarnishes the image of Plaintiff’s mark. I may profitably extract relevant passages from the judgment hereunder:- “33. The protection extended by Section 29(4) even to dissimilar goods and services, is actually based upon ‘the doctrine of dilution’. Dilution is a type of violation of a trade mark, in which the Defendant's use, while not causing a likelihood of confusion, blurs distinctiveness or tarnishes the image of the Plaintiff's mark. In Daimler Benz Aktigesellschaft v. Hybo Hindustan, AIR 1994 Del. 239, it was held that the rights conferred upon owner of the registered mark cannot be diluted by other persons adopting the same mark, and trying to escape through the gateway that they have adopted the mark for dissimilar products and services. The same principles were followed in Honda Motors Co. Ltd. v. Charanjit Singh, 2003 (26) PTC 1 (Del.). In Ford Motor Company of Canada Limited v. Ford Service Centre, 2009 (39) PTC 149, the Plaintiff's registered trade mark was in relation to motor vehicles. The Defendant used the same mark for its fuel filling station. A defence taken by the Defendant in that case, similar to the one taken in this case, was rejected by the Delhi High Court. In Tata Sons Limited v. A.K. Choudhry, 2009 (40) PTC 54, the Delhi High Court prohibited the Defendants from using the trade mark ‘Tata’ in relation to cutlery by invoking Section 29(4).

34. There cannot be any dispute in this case about the fulfillment of the conditions contained in clauses (a) and (b) of sub-section (4) of Section 29. The Plaintiff's registered trade mark is “LUXURA'. The mark adopted by the First Defendant is the word “LUXURIA” along with the device of a reclining chair. Therefore, certainly, the mark adopted by the First Defendant is similar to the registered trade mark of the Plaintiff. Hence, Clause (a) of sub-section (4) of Section 29 stands satisfied.

40. Once it is clear that the focus of Section 29(4)(c) is on the reputation of the mark and not on the reputation of its maker, we may have to see how to assess and determine the reputation of a mark. The reputation of a trademark has to be assessed on the basis of several factors, such as the publicity that preceded and succeeded the launch of the product carrying the mark, the volume of turnover and the impact that the mark has created in the minds of the public, enabling them to associate the mark with the product. The reputation of the mark need not always be reflected by the volume of turnover alone. While dealing with the concept of “goodwill”, which is only an expression that belongs to the same genre as the expression “reputation,” a learned Judge of the Delhi High Court, extracted in his decision in Thermofriz Insulations v. Vijay Udyog, 1981 PTC 128, a passage from an unreported judgment of the Supreme Court which reads as under:

9. It will thus be seen that the goodwill of a business depends upon a variety of circumstances or a combination of them. The location, the service, the standing of the business, the honesty of those who run it, and the lack of competition and many other factors go individually or together to make up the goodwill, though locality always plays a considerable part. Shift the locality, and the goodwill may be lost. At the same time, locality is not everything. The power to attract customers depends on one or more of the other factors as well. In the case of a theatre or restaurant, what is catered, how the service is run and what the competition is, contribute also to the goodwill.”

41. From a reading of the aforesaid judgment, it is clear that goodwill and reputation may not necessarily be directly proportionate to the turnover or the net profits earned in business, albeit turnover is one of the crucial factors that may indicate the existence of reputation. The other thing that needs to be noted are the observations of this Court in para 37 of the judgment in Bloomberg Finance LP v. Prafull Saklecha & Ors., 2013 SCC OnLine Del 4159, which is as under:-

42. The Madras High Court in Ashok Leyland (supra) has observed that Section 29(4)(c) has been carefully enacted not to incorporate the expression ‘well known trademark’ and used the expression ‘reputation’. In other words, the provision does not expect the registered trademark of the Plaintiff to be a declared well-known trademark within the meaning of Section 2(1)(zg) of the Act and reputation in India is the essential parameter that is required to be met albeit it needs no gainsaying that if the trademark of the Plaintiff is a declared well-known mark, it would be entitled to a higher form of protection.

43. The case of the parties in the present case will require to be tested from the prism of the principles set forth in the judgments referred to above, in the context of provisions of Section 29(4) of the Act. The registered marks of the Plaintiffs are MIRINDA and its variants and the registrations are valid and subsisting. Impugned marks of Defendants are and, which are transliterations of Plaintiffs’ mark MIRINDA. By definition, transliteration is conversion of a text from one script or alphabet to another, as opposed to translation from one language to another. Shorter Oxford Dictionary 5th Edition defines ‘transliteration’ as a noun to mean rendering of letters or characters of one alphabet in those of another. It is well-settled that use of an infringing mark whether as a translation or transliteration amounts to infringement. [Ref.: Indian Express (supra) and Bhatia Plastics (supra)]. A bare comparison of the rival marks shows that they are phonetically identical and conceptually similar to each other and therefore the first ingredient of Section 29(4) stands satisfied.

44. Insofar as the reputation of the mark MIRINDA in India is concerned, the same is vouchsafed by the pleadings in the plaint as well as the documents on record. Plaintiff has pleaded and placed on record documents evidencing both device and word mark registrations for MIRINDA in India in Class 32. The earliest device mark registration dates back to 04.06.1997. Indisputably, MIRINDA was first adopted by Plaintiff No.1 in Spain in 1959 in relation to fruit flavoured non-carbonated beverages and in India in 1996, from which year it has been extensively and continuously used. Articles published in print/online media, highlighting the brand value of the trademark have been filed and to refer a few illustratively: article published in Rediff in 1999; in India Today with celebrities as brand ambassadors in 1999; in Financial Express in 2002; in Economic Times in 2005. Chartered Accountant certificates have been filed pointing to the annual turnover from sale of products under the trademark MIRINDA which reflects that between the years 2013 to 2020, the annual turnover is over Rs. 2500 crores. Invoices in support have also been placed on record. Plaintiffs are also recipient of several awards such as ‘Most Trusted Brands of Brand Equity’ in the years 2012, 2013, 2014, 2015 and 2016. The promotional and advertising expenditure, as pleaded, are to the tune of over Rs. 157 crores for a period of nearly 7 years and it is also shown that several celebrities have endorsed Plaintiffs’ products under the marks MIRINDA, as brand ambassadors.

45. Facts of this case come close to the case in Bayerische Motoren Werke Ag v. Om Balajee Automobile (India) Private Limited, 2020 SCC OnLine Del 484, where the Plaintiff had sought restraint against the Defendant from manufacturing, exporting or otherwise dealing with goods including but not limited to e-rickshaws bearing the Defendants DMW marks or any other mark identical or deceptively similar to Plaintiff’s BMW marks. Amongst other grounds, it was contended by the Plaintiff that this was a clear case of dilution of Plaintiff’s well known mark BMW, under Section 29(4) of the Act and once the said provision was attracted, the element of having to show the likelihood of confusion is absent. Referring to National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd., AIR 1953 SC 357, Court held as follows:-

46. 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. Pertinently, the above assertions touching upon the width, span and strength of the mark MIRINDA in the plaint have only been evasively and vaguely denied by the Defendants in the written statement. Stand of the Defendants that they have been using the mark from 2007 is prima facie incorrect since the trademark application bearing No.3471413 for device mark was abandoned. The application filed on 01.02.2017 was on ‘proposed to be used’ basis. In the earlier application No.3465713, user was claimed from 06.07.2015 for the word mark ‘CONTINENTAL MIRINDA BEER’. 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. [Ref.: FDC Limited (supra)].

47. 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.

48. Learned Senior Counsel for the Defendants had relied on the judgment in Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel and Others, (2006) 8 SCC 726, to support the plea that there is an inordinate delay of approximately 15 years as the mark MIRINDA has been extensively used by the Defendants since 2007. In the said judgment, the Supreme Court has held that delay in an infringement of trademark may by itself not be a ground for refusing to issue injunction but may cause the Court in a given case to refuse an interlocutory injunction, where the Defendant has built up a trade in which he has notoriously used the mark, relying on Kerr in his Treatise on the Law and Practice of Injunction, 6th Edn., PP. 360-361 and also observed that specific knowledge on the part of the Plaintiff and prejudice suffered by the Defendant would also be a relevant factor. However, the said judgment, in my view, does not aid the Defendants. Plaintiffs have explained and pleaded that they learnt only in December, 2021 that Defendant No. 2 had applied for ‘CONTINENTAL MIRINDA BEER’ in Class 32, upon which they investigated the matter. The investigations revealed that Defendant No.2 is the Director of Defendant No.1 which is using the Hindi transliteration of the mark MIRINDA in relation to country made liquor and soon thereafter, the present suit was filed in April, 2022. At this stage, therefore, this Court is unable to come to a prima facie conclusion against the Plaintiff that there is delay in approaching the Court and in any event, assuming there is some delay, that is not enough by itself to deter this Court from granting injunction, more so when the adoption is dishonest. For the same reason, the judgment in Khoday Distillers Limited v. Scotch Whisky Association and Others, (2008) 10 SCC 723, relied upon by the Defendants is also distinguishable on facts. Additionally, Plaintiffs have also explained that Defendants were selling their products locally in a few Districts of Madhya Pradesh and since the product could not be advertised, being prohibited by law, there was no way Plaintiffs could have known about usage of the impugned mark earlier.

49. Reliance was placed by the Defendants on the judgment in Lowenbrau AG & Anr. v. Jagpin Breweries Ltd. & Anr., 2009 SCC OnLine Del 45, to set up a case of honest and concurrent user. In the said judgment, this Court held that concurrent and honest use is a valid defence against action for infringement under the Trade and Merchandise Marks Act, 1958 and even Sections 9(1), 30(1), 30(2) and 35 of the Act recognizes honest and concurrent use, and on the conditions mentioned therein being satisfied, valid defence can be raised against infringement. This judgment also does not inure to the advantage of the Defendants since this Court has rendered a prima facie finding that the adoption of the impugned mark is dishonest and the attempt to adopt and use the trademark of the Plaintiffs, which has a repute of the threshold required under Section 29(4) of the Act, is only to gain advantage and mileage from the said mark. Furthermore, this defence is contradicted by the Defendants by their own argument that the reason for adoption was that Cox Distillery was established by an Englishman and when he came up with the term ‘Mirinda’ for whisky, the same was adopted by the Defendants. It is obvious that if this was the reason for adoption, mark could not have been coined by the said entity in 2007.

50. Defendants have also relied on the judgment in Radico Khaitan Limited v. Carlsberg India Private Limited, 2011 SCC OnLine Del 3925, more particularly, para 30 thereof, wherein this Court observed that it is always not necessary to infer that trade practice is honest solely because the manner of use of expression is in descriptive sense and not in a prominent fashion. The converse may be true also in some cases and there are certain industries wherein special emphasis has to be given to the said expression upon the product or an ingredient of the product, so as to catch the customers or attract the consumers, rather than using it as a small word on the label. It was further held that the decisive test for examining the honest practice is not prominence or non-prominence of the expression, which though may be relevant but much will depend upon the manner of use of the expression as warranted in the said industry, which will set out the limit for what can be honest or dishonest. The judgment is wholly inapplicable to the present case since the word ‘MIRINDA’ is prima facie far from descriptive and moreover, Defendants cannot be allowed to raise this argument, having themselves applied for claiming exclusive right over the word which is MIRINDA’s transliteration in Hindi. It needs no emphasis that Plaintiffs’ mark MIRINIDA has acquired huge goodwill and reputation and going by the strength of the mark, Defendants’ use of a mark which is a transliteration with phonetic identity, cannot be counterbalanced by the defence of honest and concurrent user. [Ref. Sagar Ratna Restaurants Private Limited v. DS Foods and Others, 2021 SCC OnLine Del 2539, Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani and Another, 2022 SCC OnLine Del 2996 and Raman Kwatra and Another v. KEI Industries Limited, 2023 SCC OnLine Del 38].

51. Defendants placed heavy reliance on the judgments of the Supreme Court in Nandhini Deluxe v. Karnataka Cooperative Milk Products Federation Ltd., (2018) 9 SCC 183 and Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., Hyderabad and Another, (1997) 4 SCC 201. In Nandhini Deluxe (supra), the trademark ‘NANDINI’ was being used by the Respondent since 1985 in respect of milk and milk products as against the Appellant who adopted the mark ‘NANDHINI’ for restaurants in 1989 and the case is distinguishable on facts looking at the length of user and strength of mark MIRINDA. The same issue came up before this Court in Bayerische Motoren Werke Ag (supra) and the Defendant cited the case of Nandhini Deluxe (supra). The Court distinguished the judgment on the ground that where products are different, prior owner’s chance of success is a function of various variables, such as strength of his mark; degree of similarity etc. and in the present case the reputation of MIRINDA marks is an added and crucial factor, which distinguishes it from the facts of the cases in Nandhini Deluxe (supra) and Vishnudas Trading (supra).

52. This Court also finds merit in the stand of the Plaintiffs that the Defendants are not bound to supply liquor under the mark ‘Rajshree Mirinda Masala’ under the tender awarded to them by the Excise Department for the Financial Year 2022-23. The Notice Inviting Tender dated 15.03.2022 shows that the tender is brand neutral and the only mandatory requirement is supply of plain and masala country liquor under the labels duly registered with the Excise Department and this is fortified by the Letter of Award dated 30.03.2022. Besides, there is also prima facie merit in the contention that Defendants have a label registration for masala country liquor as ‘Desi Madira Masala Prince Orange’ which can be used to satisfy the demand under the tender. Therefore, the principal grievance and ground raised by the Defendants in the application seeking vacation of ex parte injunction is totally flawed.

53. Lot of stress was laid by the learned Senior Counsel for the Defendants to bring home the point that there is no likelihood of confusion only because the Defendants mark is a transliteration of the mark of the Plaintiffs, since the products in question and the class of customers as well as packaging, price and trade channels are different, with special emphasis on the fact that the country made liquor of the Defendants is sold only through Government liquor vends. In my view, this argument only deserves to be rejected, being devoid of merit. Plain reading of Section 29(4) of the Act coupled with the judgments of this Court where its ambit and scope has been considered at length, in my view, the said defences would not aid the Defendants. As repeatedly held and affirmed in the judgments referred to above, once the Plaintiff is able to show prima facie reputation of the threshold required under Section 29(4) of the Act, the likelihood of confusion or deception is obliterated and this becomes pronounced when the impugned mark is a transliteration of the Plaintiff’s mark. Insofar as dissimilarity of goods, trade channels etc. is concerned, once the Plaintiff comes under the umbrella of the provisions of Section 29(4), protection would transcend across goods and the Court would injunct a Defendant, who uses an identical/deceptively similar mark, with an intent to take undue advantage of Plaintiff’s well known and reputed mark, resulting in its dilution and blurring.

54. For all the aforesaid reasons, the ex parte ad interim order dated 06.05.2022 is made absolute till the decision of the suit and Defendants, by themselves, their agents, representatives, servants, men, distributors and all those acting in concert with them or on their behalf or claiming under or through them or otherwise howsoever, are hereby restrained from using the trademark ‘MIRINDA’, transliteration thereof in Hindi and/or in any other language and/or any deceptive variation thereof in relation to their product i.e. country-made liquor and/or in relation to any other business activity in a manner that it infringes Plaintiff No.1’s statutory and common law rights in its registered and wellknown mark and/or variants thereof including (MIRINDA Marks).

55. Accordingly, I.A No. 6862/2022 filed by the Plaintiffs under Order XXXIX Rules 1 & 2 CPC is allowed and I.A. No. 8623/2022 by the Defendants under Order XXXIX Rule 4 CPC is dismissed. Both applications stand disposed of.

56. It is important to pen down the usual caveat that the views and observations expressed by the Court in this judgment are only prima facie and tentative and shall have no bearing on the final adjudication of the suit.