CS(OS) NO.1810/2007 Page No.1
REPORTABLE
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ I.A. Nos. 11355/2007 & 13772/2007 in CS(OS) No. 1810 of 2007
% Date of Decision : January 14th , 2009.
LOWENBRAU AG & ANR. .... Plaintiffs.
Through Mr. Sudhir Agarwal,
Sr.Advocate with Mr. Hemant Singh,
Ms. Mamta Jha, Mr. Aparajit
Bhattacharya, Ms. Megha Sen & Mr.
Manish K. Mishra, Advocates.
VERSUS
JAGPIN BREWERIES LTD. & ANR. .... Defendants.
Through Mr. Shailen Bhatia & Ms.
Ekta Nayar Saini, Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJIV KHANNA
1.
Whether Reporters of local papers may be
allowed to see the judgment?
2. To be referred to the Reporter or not ? YES
3. Whether the judgment should be reported
in the Digest ? YES
SANJIV KHANNA, J:
1. This Order will dispose of the application for interim
injunction, I.A. No. 11355/2007 and the application for vacation of
the ex parte interim injunction order, IA No.13772/2007.
CS(OS) NO.1810/2007 Page No.2
2. Lowenbrau AG and InBev India International Pvt. Ltd.
(hereinafter collectively referred to as the plaintiffs, for short) have
filed the present suit for permanent injunction, rendition of
accounts, mandatory injunction in form of delivery up against
Jagpin Breweries Ltd and Lowenbrau Buttenheim (hereinafter
collectively referred to as the defendants, for short). The plaintiffs
claim exclusive right to use the mark/word “LOWENBRAU”, device
of lion and seek a restraint order against the defendants from
using the mark “LOWENBRAU”, device of lion or any other trade
mark or device mark identical or deceptively similar. By an ex
parte injunction order dated 3rd October, 2007 the defendants have
been restrained from manufacturing, selling and advertising under
the mark/word “LOWENBRAU”, device of lion or any other trade
mark/device mark identical or deceptively similar to the said mark
or device.
3. Lowenbrau A.G., plaintiff no.1 and Lowenbrau Buttenheim,
defendant no.2 are entities incorporated under the laws of
Germany. Both of them manufacture beer, which is sold in
Germany and other countries. The beer manufactured by the
plaintiff No.1 is sold under the mark/name “LOWENBRAU” with or
without other word/mark, while the beer manufactured by the
defendant no.2 is sold under the mark “LOWENBRAU
BUTTENHEIM” along with other words/marks in Germany and
other countries.
4. Both the plaintiff no.1 and the defendant no.2 claim
substantial turnovers and sales in Germany and other third
CS(OS) NO.1810/2007 Page No.3
countries. There is also no dispute that the plaintiff no.1 and
defendant no.2 are not presently involved in any litigation on the
right to use the mark/word “LOWENBRAU” in any country except
in India. Both parties agree that there was litigation in Germany in
respect of right to use the mark/word “LOWENBRAU” which was
decided more than 100 years back in 1903 in favour of the
defendant no.2. It was held that the mark/word “LOWENBRAU”
cannot be monopolised as there were a number of breweries in
Germany who had been using the said word/mark for a long time
and therefore the mark/word “LOWENBRAU” cannot be used to
differentiate beer of one brewery from another.
5. Faced with the above factual background, the plaintiffs have
based their claim/cause on infringement of the registered
mark/word “LOWENBRAU” and their statutory rights under the
Trademarks Act, 1999 (hereinafter referred to as the Act, for
short). It may be however noticed that the cause title of the plaint
states that the suit of the plaintiffs is both for infringement and
passing off.
6. The plaintiff No.1’s mark/word “Lowenbrau Export – Bier”
was registered in 1960 with the disclaimer qua the mark/word
“LOWENBRAU” and device of lion. Subsequently, the plaintiff No.1
got the mark/label “Lowenbrau munchen” registered in India in
1972. In 1994, the plaintiffs got the mark/word “LOWENBRAU”
registered in India but this time without any disclaimer. Similarly in
CS(OS) NO.1810/2007 Page No.4
1969, the plaintiffs have got the mark black stylised lion registered
in India. In nutshell, the case of the plaintiffs is that the defendants
cannot use the mark/word “Lowenbrau Buttenheim” as the plaintiff
No.1 is the registered proprietor of the mark/word “LOWENBRAU”
without disclaimer and therefore in terms of the statute, i.e. the
Act, the defendants have no right to use the mark/word
“LOWENBRAU” in India. It was submitted that the use of the
mark/word “LOWENBRAU” by the defendants outside India is
irrelevant and the defendants cannot take advantage/benefit of
territorial use of the mark/word “LOWENBRAU” outside India to
defeat the statutory rights of the plaintiffs. The plea of prior user, it
was stated, is not available to the defendants as the mark was
used by the defendants for the first time in India in 1999 and on
that date the plaintiff No.1 was already the registered owner of the
mark “LOWENBRAU”.
7. At this stage, only interim applications for injunction/vacation
have to be disposed of on the basis of prima facie case, balance
of convenience and irreparable harm and loss. Factual disputes
are a matter of trial and de-registration/cancellation of registration
of the mark/word “LOWENBRAU” in favour of the plaintiff No.1 is a
matter to be decided by the Registrar and in appeal.
CS(OS) NO.1810/2007 Page No.5 7. The Act including the earlier enactment Trade &
Merchandise Marks Act, 1958 were enacted to provide for
registration and better protection of trade-marks and for prevention
of use of fraudulent marks. The Act was also passed to amend and
consolidate the law relating to trade mark. Historically, protection
of intellectual property rights in form of trade- mark, etc. is a
common law right. The object of the trade mark legislations is to
provide registration, to confer certain statutory rights to enable the
registered proprietor to sue for infringement rather than merely
passing off. The two rights, Common Law rights and statutory
rights are inter-connected and the test of deception remains the
same. The distinction between the two as explained by the
Supreme Court in Ruston Hornsby Ltd versus The Zamindara
Engineering Company, reported in (1970) 2 SCR 222 is that in
case of registration Courts are not required to examine whether
infringement is likely to deceive or cause confusion and actual
deception or actual damage need not be proved. The test is
whether the defendant’s mark is same or imitation of the registered
mark. In case of passing off Courts have to examine and decide
whether the defendant is selling goods so marked as to be
designed or calculated to lead purchasers to believe that the
goods are the plaintiff’s goods.
CS(OS) NO.1810/2007 Page No.6
8. Conscious of the Common Law rights, the statutory
legislations relating to trade-marks have protected unregistered
owners of marks from action or claims by registered owners. While
conferring statutory rights, the Act consciously did not affect right
of action against any person for passing off or remedies in respect
thereof. There is no penalty for those who do not register their
mark. Section 27(2) of the Act reads as under:-
” No action for infringement of unregistered trade
mark1) xxx
2) Nothing in this Act shall be deemed to affect
rights of action against any person for passing off
goods or services as the goods of another person or
as services provided by another person, or the
remedies in respect thereof.”9. It will be appropriate to refer to the observations of the
Supreme Court in The Registrar of Trade Marks versus
Ashok Chandra Rakhit, Ltd reported in AIR 1955 SC 558 :
“8. The third thing to note is that the avowed
purpose of the section is not to confer any
direct benefit on the rival traders or the general
public but to define the rights of the proprietor
under the registration. The registration of a
trade mark confers substantial advantages on
its proprietor as will appear from the sections
grouped together in Chapter IV under the
heading “Effect of Registration”. It is, however,
a notorious fact that there is a tendency on the
part of some proprietors to get the operation of
their trade marks expanded beyond their
legitimate bounds. An illustration of an attempt
of this kind is to be found in In re Smokeless
Powder Co.’s Trade Mark. Temptation has
even led some proprietors to make an
exaggerated claim to the exclusive use of parts
CS(OS) NO.1810/2007 Page No.7or matters contained in their trade marks in
spite of the fact that they had expressly
disclaimed the exclusive use of those parts or
matters. Reference may be made to Greers
Ltd. v. Pearman and Corder Ltd. commonly
called the “Banquet” case. The real purpose of
requiring a disclaimer is to define the rights of
the proprietor under the registration so as to
minimise, even if it cannot wholly eliminate, the
possibility of extravagant and unauthorised
claims being made on the score of registration
of the trade marks.”
11. Section 28 of the Act while referring to rights conferred on
registration begins with the words “registration of trade-marks
shall, if valid, ….. “. Rights under Section 28 flow when the
registration of the mark is valid. Registration is only prima facie
evidence of its validity (Refer, P.M. Diesels Pvt. Ltd. versus
Thukral Mechanical Works reported in AIR 1988 Del. 282).
12. Section 124 of the Act reads :
“124. Stay of proceedings where the
validity of registration of the trade mark is
questioned, etc.(1) Where in any suit for infringement of a
trade mark-
(a) the defendant pleads that registration of
the plaintiff’s trade mark is invalid ; or
(b) the defendant raises a defence under
clause (e) of sub-section (2) of section 30 and
the plaintiff pleads the invalidity of registration
of the defendant’s trade mark,the court trying the suit (hereinafter referred
to as the court), shall,-
(i) if any proceedings for rectification of
the register in relation to the plaintiff’s or
CS(OS) NO.1810/2007 Page No.8
defendant’s trade mark are pending before the
Registrar or the Appellate Board, stay the suit
pending the final disposal of such
proceedings;
(ii) if no such proceedings are pending
and the court is satisfied that the plea
regarding the invalidity of the registration of
the plaintiffs or defendant’s trademark is prima
facie tenable, raise an issue regarding the
same and adjourn the case for a period of
three months from the date of the framing of
the issue in order to enable the party
concerned to apply to the Appellate Board for
rectification of the register.
(2) If the party concerned proves to the
court that he has made any such application
as is referred to in clause (b) (ii) of sub-section
(1) within the time specified therein or within
such extended time as the court may for
sufficient cause allow, the trial of the suit shall
stand stayed until the final disposal of the
rectification proceedings.
(3) If no such application as aforesaid has
been made within the time so specified or
within such extended time as the court may
allow, the issue as to the validity of the
registration of the trade mark concerned shall
be deemed to have been abandoned and the
court shall proceed with the suit in regard to
the other issues in the case.
(4) The final order made in any rectification
proceedings referred to in subsection (1) or
sub-section (2) shall be binding upon the
parties and the court shall dispose of the suit
conformably to such order in so far as it
relates to the issue as to the validity of the
registration of the trade mark.
(5) The stay of suit for the infringement of a
trade mark under this section shall not
preclude the court from making any
CS(OS) NO.1810/2007 Page No.9
interlocutory order (including any order
granting an injunction, directing account to be
kept, appointing a receiver or attracting any
property), during the period of the stay of the
suit.”
13. A defendant can set up a defence challenging validity of
registration as provided in Section 124 of the Act but the civil
court trying the suit is mandated to stay the suit when in defence
plea of invalidity of registration is raised, to await outcome of the
rectification proceedings and if no proceeding is pending and the
court is satisfied that the plea of invalidity is prima facie tenable,
adjourn the case for a period of three months from the date of
framing of the issues to enable the defendant to approach the
authorities for rectification of the registration. Thereafter on filing
of an application for rectification trial in the suit is to be stayed till
disposal of the rectification proceeding (see, Section 124(2) of the
Act). Sub-section 4 of Section 124 states that the suit will be
disposed of on the basis of the order passed by the authorities
and the question of validity of registration will be binding on the
court. Sub-section (5) to Section 124, however, stipulates that the
civil court will be competent to pass an interlocutory order even
when procedure under sub-sections 1 to 4 is to be followed and
order of the Registrar/authorities is awaited and the suit is stayed.
CS(OS) NO.1810/2007 Page No.10
14. In view of Section 124(5) of the Act, this Court is competent
to adjudicate and decide the interlocutory application for
injunction. While deciding the interlocutory application in view of
language of Sections 28 and 124 of the Act, the Court is
competent to take prima facie view on the question of validity of
registration of the mark in favour of either side. Merely because
the mark is registered, injunction will not automatically follow,
when validity of registration is questioned in the written
statement/pleadings. While deciding whether injunction should be
granted or not, a tentative view is required to be taken on the
question of validity of registration and principles for grant of
injunction applied. However, final decision on validity of
registration is to be taken by the authorities and not by the civil
court. Registration is prima facie regarded as valid but mere
registration alone is not conclusive and is not binding on the civil
court when the application for injunction is considered and
decided. Onus however, will be on the party which questions
validity of registration to show that the registration is prima facie
and tentatively bad or invalid.
15. Section 31 of the Act reads:-
“Section 31. Registration to be prima facie
evidence of validity
(1)In all legal proceedings relating to a trade mark
registered under this Act (including applications
CS(OS) NO.1810/2007 Page No.11under 57), the original registration of the trade mark
and all subsequent assignments and transmissions
of the trade mark shall be prima facie evidence of
the validity thereof.
(2) In all legal proceedings, as aforesaid a
registered trade mark shall not be held to be invalid
on the ground that it was not a registrable trade
mark under Section 9 except upon evidence of
distinctiveness and that such evidence was not
submitted to the Registrar before registration, if it is
proved that the trade mark had been so used by the
registered proprietor or his predecessor in title as to
have become distinctive at the date of registration.”
16. The said section has to read harmoniously with Sections 28
and 124 of the Act. At the stage of interim application the court is
required to examine question of validity. Registration is prima
facie evidence of validity but not conclusive even at this stage.
Sub-section 2 to Section 31 of the Act, stipulates that registration
of the mark will not be held to be invalid on the ground that the
mark could not have been registered under Section 9 of the Act
except upon evidence of distinctiveness and there was failure to
submit such evidence before the Registrar, provided evidence is
filed in the legal proceedings to prove that the mark had acquired
distinctiveness on the date of registration. Legal proceedings will
include Suits filed by the registered owner of the mark against
third parties. Section 32 of the Act, states that if a mark
stands registered contrary to Section 9(1) of the Act and
registration is bad for lack of distinctiveness on the date of
CS(OS) NO.1810/2007 Page No.12
registration, the party can defend the challenge by showing that
they have acquired a distinctive character after registration but
before commencement of the legal proceedings. These sections
also show that question of distinctiveness can be examined at the
stage of grant of interim injunction by the courts.
17. Section 9(1) of the Act is reproduced below:-
” 9. Absolute grounds for refusal of registration
(1) The trade marks
(a) which are devoid of any distinctive
character, that is to say, not capable of
distinguishing the goods or services of one person
from those of another person;
(b) which consist exclusively of marks or
indications which may serve in trade to designate
the kind, quality, quantity, intended purpose, values,
geographical origin or the time of production of the
goods or rendering of the service or other
characteristics of the goods or service;
(c) which consist exclusively of marks or
indications which have become customary in the
current language or in the bona fide and established
practices of the trade,
shall not be registered:
Provided that a trade mark shall not be
refused registration if before the date of application
for registration it has acquired a distinctive character
as a result of the use made of it or is a well-known
trade mark.”
18. Thus whether there was violation and failure to meet
conditions of Section 9(1) of the Act, can be examined and a
CS(OS) NO.1810/2007 Page No.13
tentative opinion formed by the court for deciding the interim
application.
19. One of the grounds on which registration of a mark can be
challenged is fraud. Fraud with reference to registration of trade
mark has been interpreted by Bombay High Court in Indo
Pharma Pharmaceutical Works Pvt Ltd versus
Farbenfabriken Bayer Aktiengesel reported in 1976 Bom.L.R.
1972 to mean :-
“What is meant by fraud in the context of
S.32(a) has not been precisely defined. It
might be a fraud for a person to procure
registration of a trade mark of which he
knows he is not entitled to claim the
exclusive use for instance, if he knows that
it is in use by another trader if an applicant
is aware that there is another party, who
ought to be registered, the assertion may be
regarded as a deliberate attempt to deceive
the Registrar which would amount to fraud
such as to prevent registration in Part A
from becoming conclusive after seven
years.”
20. It is an admitted case of the plaintiffs that the registration
granted in 1960 was subject to disclaimer qua the mark/word
“LOWENBRAU” and the device of lion. There is hardly any
evidence or material placed on record by the plaintiffs to show
and establish that the plaintiffs had started extensive marketing of
their product (beer) in India and the mark/word “LOWENBRAU”
came to acquire distinctiveness and association with the plaintiff
CS(OS) NO.1810/2007 Page No.14
No.1 and disclaimer was withdrawn. Therefore withdrawal of
disclaimer/condition in 1994 (or 1972 as alleged in the plaint)
cannot prima facie be justified. The plaintiffs have not given their
sale figures in India for the period 1960 onwards. Intermittent and
minuscule sales in duty free shops, select hotels in the facts of
the present case are not sufficient to create and establish
distinctiveness.
21. It is the case of the defendants that registration in 1972 was
in respect of label “Lowenbrau Munchen” and the said contention
appears to be correct. On 18th Oct.,1994 the word/mark
“LOWENBRAU” was registered without any disclaimer in favour of
the plaintiff No.1 with their particulars mentioned in the certificate
as “Lowenbrau AG (a company duly organised under the laws of
Germany) Nymphenburger Strasse 4D-80335 Munchen
Germany, manufacturer and merchant”. At the same time, the
1960 registration with disclaimer on “LOWENBRAU” and device
of lion still continues and has been repeated extended.
22. The defendants to question validity of the registration and
violation of Section 9(1) of the Act, in addition to disclaimer
made/admitted by the plaintiff No.1 themselves, have evidence in
form of judgment of a competent court in Germany in which the
plaintiff no.1 was denied exclusive right to use the mark/word
CS(OS) NO.1810/2007 Page No.15
“LOWENBRAU”. The defendants have also placed on record
ample evidence to show that the mark/word “LOWENBRAU” is
extensively used by several brewers of beer in Germany. It is not
only the plaintiff no.1 and the defendant no.2 but there are several
others who are using the said mark for beer. The mark/word
“LOWENBRAU” does not distinguish or distinctive of the plaintiffs,
the defendants or any of the parties dealing with beer. Users of
the said mark/word or the source, is distinguished by addition of
other words or use of suffix or prefix with the word
“LOWENBRAU”. There is no evidence that selective availability of
the plaintiffs or the defendants products in duty free shops,
exclusive hotels etc. in India in the present case was sufficient to
create distinctiveness qua them in respect of the mark
“LOWENBRAU” in India. The trans-border factor and
distinctiveness has been examined alongwith the issue of prior
user.
23. Prior user and honest and concurrent user are good
defences to a suit based on action for infringement of the
registered mark.
24. Section 34 of the Act stipulates that a registered user or
proprietor cannot interfere with or restrain a third person from
using a mark identical or resembling the registered mark which he
CS(OS) NO.1810/2007 Page No.16
has continuously used from a date prior to the plaintiff’s first use
or from the date of registration, whichever is earlier. Who had first
used the mark/word “LOWENBRAU” in India is a disputed
question of fact. Extent, quantum and nature of sale to claim and
justify prior user rights is a mixed question of law and facts.
Plaintiffs have not stated their total turnover in India. Defendant
no.2-Company was incorporated in the year 1999. Subsequently
it entered into a joint venture agreement with defendant no.1 for
manufacture of beer under the mark/word “LOWENBRAU
BUTTENHEIM” in India. It is the case of the defendants that it has
been selling beer under the mark/word “LOWENBRAU
BUTTENHEIM” in India since 1999 and in 2003 the licence was
granted to defendant no.1 by the Excise Department also. It is
also the case of the defendants that beer under the mark/word
“LOWENBRAU BUTTENHEIM” was sold in India earlier also.
Sales of the defendants it appears are substantially higher than
the sales of the plaintiffs.
25. Learned counsel for the plaintiffs had submitted that prior
user in India alone is the determining factor and user outside India
is not relevant for Section 34 of the Act. This is disputed by the
defendants. This legal proposition cannot be answered in
absolute terms which will be universally applicable. Answer
CS(OS) NO.1810/2007 Page No.17
depends upon facts of each case, extent of use in time, quantity,
area of use, whether the mark has become common to trade, or
to a geographical source/origin etc.
26. As per the plaintiffs the mark/word “LOWENBRAU” in
German stands for lion’s drink or drink of a lion. The defendants
however claim that the said words in German also stands for
house of beer. In Germany it is commonly used for beer and
German beer is sold world over by the said name.
27. Both parties are German Companies. Both of them have
been using the mark/word “LOWENBRAU” all over the world and
are distinguished by other mark/word on their label/mark and not
by use of the mark/word “LOWENBRAU” or device of lion. In the
present case, two international brands, both of Germany origin
and marketing and selling beer across the world, want to expand
and market beer in India. In these circumstances the position as it
exists abroad and usage abroad cannot be ignored. The
mark/word “LOWENBRAU” has been extensively used in
Germany for beer and even the plaintiffs do not deny that it has
become descriptive and generic word in the said country and
other places where German beer is sold and consumed. The
mark/word “LOWENBRAU” is a part of public juris in Germany
and in most countries with German beer and is not distinctive of a
CS(OS) NO.1810/2007 Page No.18
particular manufacturer. In view of this factual background,
including the litigation in Germany, I do not think in the present
case, the question of prior use can be judged or decided on the
basis of user in India alone. Indian market is opening up and
foreign or multinational brands have moved and/or are likely to
move. Similarly, Indian brands are likely to move out and expand
into markets abroad. National and manmade borders and
boundaries are gradually getting diluted and the entire world is
now seen as a common market. It may not be, therefore, proper
to ignore ground realities and position in the home country and
abroad in the present case specially when there is ample
evidence and material to show that the mark/word
“LOWENBRAU” is public juris and a generic word standing for
“German beer” and is not distinctive for any source. Trans-border
reputation has been accepted and recognised in India even when
the products are not being marketed and sold in India. It is
clarified that in a given case prior user in India may be relevant for
applying Section 34 of the Act, depending upon parties involved,
nature and type of the mark, its adoption and extent and nature of
use abroad etc. Each case therefore may have to be decided on
its own merits and factual background. In the present case
however while applying Section 34 of the Act, the position as
prevailing in the parent country and abroad should not be ignored
CS(OS) NO.1810/2007 Page No.19
and the prior user has reference to user in India and abroad.
Plaintiffs cannot claim different treatment and rights in India viz.
the entire world where both parties are using the mark/word
“LOWENBRAU”. It will be unjust and unfair.
28. Aktiebolaged Jonkoping Vulcean versus S.V.
Palanichany Nadar and others, reported in AIR 1969 Cal. 43,
relied upon by the plaintiffs is distinguishable. In the said case the
appellant therein was a Swedish Company that was earlier
marketing safety matches under the registered mark “Three
Stars” but due to Government policy was prohibited from selling
safety matches in India. The Indian company had sought
cancellation of the registration of the mark on the ground of non-
user. In that context reference was made to English decisions to
decide the question whether non-use of the trade-mark was due
to special circumstances. The Court also examined the question
of abandonment with reference to non-user. It was observed that
while examining the question of cancellation of registration, use
and advertisement abroad, outside the territory of India is not of
assistance. It was further held that the trade mark law is a
municipal law which is not extra territorial in nature and is
confined to territorial limits of India. The question involved in the
said case related to cancellation of registration in India. In the
CS(OS) NO.1810/2007 Page No.20
present case however, the question relates to the common law
rights of the defendants and the extent to which these are
protected under the Act. If the proposition or the claim of the
plaintiffs is to be accepted then even a claim under common law
rights of passing off based on trans-border reputation cannot be
accepted. Trans-border reputation is accepted and is a legal right
which can be enforced in India. Section 34 of the Act accepts
common law rights of an unregistered user of identical or
resembling trade mark, provided he is a prior user. It may noticed
that the English Law on trans-border reputation when the foreign
manufacturer does not have business interest in the said country
is somewhat different. Goodwill is treated local and
advertisements in periodicals, media, internet and travel abroad
were not considered sufficient in many cases. Normally the
English Court’s insist on a minimal business interest in the said
country. (See, pages 456 to 462 in Kerly’s Law of Trade Marks
and Trade Names, Fourteenth Edition).
29. Concurrent and honest user was a valid defence against an
action for infringement under the Trade Mark and Merchandise
Marks Act,1958. Legal rights of a third party to use a mark without
causing infringement of a mark registered under the said 1958
CS(OS) NO.1810/2007 Page No.21
Act, is protected under Section 159(5) of the Act. Defendants will
be entitled to benefit and defend this action relying upon honest
and concurrent use. Even otherwise Sections 9(1), 30(1) and(2)
and 35 of the Act do recognise honest concurrent use and on the
conditions mentioned therein being satisfied, defend a suit for
infringement. Honest and concurrent user is always recognised as
a defence to action alleging infringement.
30. Section 30 (1) of the Act stipulates that a person cannot be
prevented from using a registered trademark provided the use is
in accordance with honest practices in industrial or commercial
matters and does not take unfair advantage of or is detrimental to
the distinctive character or repute of the trade mark. Similarly
Section 30(2) of the Act permits use of trade mark in relation to
goods or services indicating quality or geographical origin.
Section 35 of the Act also protects a person, who bonafidely uses
a mark, which describes character or quality of his goods or
services. It is the contention of the defendants that word
“LOWENBRAU” has become synonymous with beer of German
origin and source. The defendants have filed substantial evidence
and material in support of the said contention. The defendants
have prima facie established that the mark “LOWENBRAU” is being
bonafidely used by them and some others all over the world and
CS(OS) NO.1810/2007 Page No.22
is bona fide description of the character or quality of the goods i.e.
the beer, manufactured by a German company or German Beer.
Honest and concurrent user outside India by the defendants and
others is practically admitted by the plaintiffs. For the reasons
stated above, in the facts of the present case honest and
concurrent user outside India alongwith the plaintiffs, without any
objection for last 100 years, is a valid defence when both parties
want to expand into India. Reference in this regard can be made
to the decision of this Court in SPL Ltd. Versus Himalyan Drug
Company Limited reported in 1997 (67 DLT 803) in which it was
observed :
“Any symbol, word or get up commonly used
by traders in connection with their trade and in
respect of which no particular trader can claim
an exclusive right to use may be considered
common to that particular trade, or public,
juris. Further words, expressions, or devices
which are descriptive of particular goods are
open to use by all persons engaged in the
trade. Such matters which are generally of a
non distinctive character may or may not be in
actual use at any particular time. What is
important is that the trading public has a right
to use them in connection with their business.
21. Whether a matter is or is not common to
the trade is a question of fact. A feature which
is common to one trade may not be so to a
different trade. Similarly a mark may continue
to be trade mark in some countries and public
Jurisdiction in others. A mark which was
common to the trade at one time may in
CS(OS) NO.1810/2007 Page No.23
course of time become distinctive and vice
versa. A word or words used by a number of
firms as part of their designation may be
considered as words in common use (See:
Law of Trade Mark and Passing Off, P.
Narayanan, 4th Edn., para 14.2)”
31. The above facts also reveal that the balance of convenience
does not justify grant of interim injunction. The defendant no.1-
Company was incorporated in 1999 and the defendant no.2 has
been marketing their products since 2003-04. In the first year the
sales were more than 9000 cases, which increased to more than
68000 cases in 2004-05. In 2005-06 its sales came down to more
than 9000 cases again to go up nearly 34000 cases in 2006-07.
The plaintiffs filed the present Suit in October 2007, after the
defendants had already set up their factory and started marketing
their products. The plaintiffs are yet to start production in India
and their turnover in India is not disclosed. The defendants have
pleaded acquiesce and estoppel alongwith delay. Both the parties
are Germans and have been marketing their products world wide
using the mark/word “LOWENBRAU” without objection from the
other. The balance of convenience does not therefore support the
plaintiffs’ claim for grant of injunction. If both the parties can sell
beer all over the world with the common mark/word
“LOWENBRAU” but can be distinguished from each other, there
is no reason/cause why they cannot concurrently sell beer in India
CS(OS) NO.1810/2007 Page No.24
using the same mark/word “LOWENBRAU”. There are other
distinguishing features in their marks and labels to separate them.
There are no special grounds or reasons why a consumer of beer
in India will not be able to distinguish between the two beers and
will be deceived. Plea of passing off cannot be sustained.
32. In view of the above findings, the ex parte stay order is
vacated. I.A. No.11355/2007 is dismissed and I.A. No.13772/2007
is allowed. The defendants will be also entitled to cost which is
assessed at Rs.20,000/-. Observations and findings in this order
are tentative/prima facie and will not be binding on the Registrar
and appellate authorities under the Act and the suit will be
decided without being influenced by the present findings.
List before the regular Bench for further orders/directions on
28th January, 2009.
(SANJIV KHANNA)
JUDGE
JANUARY 14, 2009.
P