radico khaitan v. calsberg

8/3/2019 Radico Khaitan v. Calsberg

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MANU/DE/3581/2011

IN THE HIGH COURT OF DELHI

I.A. No. 8122/2011 in CS (OS) 1216/2011

Decided On: 16.09.2011

Appellants: Radico Khaitan LimitedVs.

Respondent: Carlsberg India Private Limited

Hon'ble Judges:

Manmohan Singh, J.

Counsels:For Appellant/Petitioner/Plaintiff: Neeraj Kishan Kaul, Sr. Adv., Vivek Dholakia,Deepak and Navpreet Kaur, Advs.

For Respondents/Defendant: Abhishek Manu Singhvi, Rajiv Nayar, SandeepSethi, Sr. Advs., Peeyoosh Kalra, Kamal Sharma, C.A. Brijesh, and V. Mohini,

Advs.

Subject: Company

Catch Words

Mentioned IN

Cases Referred:Shaw Wallace and Company v. Superior Industries Ltd. 2003 27 PTC 63; Jagan

Nath Prem Nah v. Bhartiya Dhoop Karyalaya AIR 1975 Del 149; Kaviraj PanditDurga Dutt Sharma v. Navaratna Pharmaceutical LaboratoriesMANU/SC/0197/1964 : AIR1965SC980 at 989-990; American Home Products v.Mac Laboratories MANU/SC/0204/1985 : AIR 1986 SC 137; National BellCompany v. Metal Goods Mfg. Company AIR 1971 SC 898; White HorseDistillers Limited v. The Upper Doab Sugar Mills Limited; Aktiebolaget Volvo v.Heritage (Leicester) Ltd cited as 2000 FSR 253; Cable and Wireless PLC andAnr. v. British Telecommunications PLC; Ruston and Hornsby Ltd. v. The

Zamindara Engineering Company, MANU/SC/0304/1969 : 1970 (2) SCR 222);

Allied Blenders and Distillers P. Ltd. v. Paul P. John and Ors.,MANU/DE/1381/2008 : 2008 (38) PTC 568 (Del); Vrajlal Manilal v. Adarsh BidiCompany, 1995 1 Arb. L.R 471 2; Kamal Trading v. Gillette UK Limited, 1988

PTC 1 (7' O Clock); Beer v. Beer; Bhagwan Dass Gupta v. Shri Shiv ShankarTirath Yatra Company Pvt. Ltd.: MANU/DE/0593/2001 : 93 (2001) DLT 406;Shri Pankaj Goel v. Dabur India Ltd. FAO (OS) 82 of 2008; Express BottlersServices Pvt. Ltd. v. Pepsi Inc. and Ors. 1989 (7) PTC 14; Reddy Laboratories v.Reddy Paharmaceuticals 2004 (29) PTC 435; Rolex Sa v. Alex Jewellery Pvt.Ltd. and Ors. MANU/DE/0796/2009 : 2009 (41) PTC 284 (Del); Indian Shaving

Products Ltd and Anr. v. Gift Pack and Anr. 1998 PTC (18); Novartis AG v. CrestPharma Pvt. Ltd. and Anr. 2009 (41) PTC 57; Corn Products refining Company

v. Shangrila Food Products Ltd. MANU/SC/0115/1959 : AIR 1960 SC 142;Pankaj Goel v. Dabur India Ltd. 2008 (38) PTC 49 (Del); 8PM v. Palone 8.;

United Breweries Limited and Anr. v. Balbir and Son (Agencies) and Anr. 2005(30) PTC 315; Khoday Distilleries Limited (Now known as Khoday India Limited)
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v. Scotch Whisky Association and Ors. MANU/SC/2361/2008 : (2008) 10 SCC723; Scotch Whisky Assn. v. Marton De Witt; Laxmikant Patel v. Chetanbhaishah MANU/SC/0763/2001 : (2002) 3 SCC 65; Midas Hygiene v. Sudhir Bhatiaand Ors. MANU/SC/0186/2004 : 2004 (28) PTC 121 (SC); Rhizome DistilleriesP. Ltd. and Ors. v. Pernod Richard S.A. France and Ors. 2010 (42) PTC 806

Citing Reference:

Discussed15

Distinguished

4

Mentioned2

Relied On1

Case Note:Trade Mark Non distinctive mark Whether the impugned numeral

mark 8 claimed by plaintiff to be infringed by defendant was non-distinctive character Held, By reading Section 30 of the Act and

testing numeral 8 on principles of honest trade practices, use ofnumeral in circumstances where there are such overwhelming uses byother parties as numeral has nexus in trade, can be safely said that useby other person including Defendant in respect of alcohol or beerscannot be said to be dishonest and would be protected by Section 30 ofthe Act There are authorities on subject stating that there are

numeral 8.5 or 8 which are requirement of trade denoting strength andclarifies that there is nexus ofnumeral 8 in respect of alcoholic drinks.

Trade Mark Registration Whether Plaintiff has registered numeral

8 as his trademark, to enjoy its exclusive rights Held, Numeral 8 wasa requirement of trade in alcohol business to denote strength of beer

Plaintiff was not registered proprietor of numeral 8 but has registeredas 8 PM Unless plaintiff has exclusively registered for 8 per seexclusive rights is not conferred on plaintiff. Trade Mark Infringement Whether registration relied by plaintiff establish primafacie case for infringement against Defendant Held, registration byplaintiff clearly do not cover beer, said registration are in Part B which

are weak ones, goods can be conclusively said to be similar goods Hence, infringement under section 29(1) (2) and (3) cannot be

established.

Trade Mark Passing off Whether plaintiff was able to establish acase of passing off against Defendant Held, cannot be concluded that

there was a case of passing off merely due to rise in sales of Defendantwhich may be incidental and not directly related to infringement of
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rights of plaintiff Numeral 8 in respect of alcoholic drinks is widelyused by number of parties who have not and are securing registrationof numeral 8.

Trade Mark Injunctive Relief Whether plaintiff had made a primafacie case to claim for permanent injunction restraining defendant from

using the trademark Held, Defendant not liable to be restrained fromusing the numeral 8 completely as plaintiff had failed to establish

prima facie case in his favor Balance of convenience not in favor ofplaintiff No requirement for grant of interim injunction.

Ratio Decidendi:Passing off can not be established merely due to rise in sales ofopposite party which may be incidental and not directly related toinfringement of rights of other party

JUDGMENT

Manmohan Singh, J.

1. By this order I shall dispose of the Plaintiff's interim application being I.A.No. 8122/2011 under Order XXXIX, Rules 1 and 2 read with Section 151 Code

of Civil Procedure. The Plaintiff has filed the present suit for permanentinjunction to restrain infringement, passing off, dilution and damages underSections 29, 56 and 135 of the Trade Marks Act, 1999.

2. CASE of THE PLAINTIFF

(a) The plaint states that the Plaintiff has been continuously and extensivelycarrying on an established and reputed business in respect of manufacture andsale of alcoholic beverages in India, as well as numerous countries across theworld directly by itself and through its affiliates, subsidiaries, licensees, etc. The

Plaintiff manufactures a host of products including juices of various kinds,drinking water, liquor, such as, Extra Neutral Alcohol (ENA), Industrial Alcohol(Rectified Spirit), Indian made Foreign Liquor (IMFL), Country Liquor and CaneJuice Spirit. Besides, the Plaintiff has a tie-up with 22 bottling units all over the

country for bottling of IMFL under their popular brands.

(b) It is stated that the Plaintiff commands a major presence in the beverageindustry and in connection with its business, it owns and uses many trademarkswhich have acquired an enviable reputation and goodwill. The well knownbrands of the Plaintiff include CONTESSA RUM, SPECIAL APPOINTMENT,MASTIH, MASTI GOLD, OFFICER'S CLUB, AFTER DARK, EAGLES DARE apartfrom the family of 8 PM marks.

(c) The Plaintiff adopted the mark 8 PM in the year 1997 in relation to whiskyand has been extensively using the same since 1999. As a matter of fact, thePlaintiff sold a record one million cases of the 8 PM whisky in the first yearalone of its launch, which was recorded in the Limca Book of Records.

(d) The Plaintiff is the Registered Proprietor of the 8 PM/8PM family of marksnot only in India but also in other jurisdictions. The mark 8 PM is registered in

India in class 32 and 33 and other classes details of which are given as under:

REGISTRATION IN INDIA

Trademark Number Class Status


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8 PM 783398 33

Registered and valid till 24.12.2017

8 PM 978842 32 Registered and valid till 24.12.2020

8 PM Bermuda XXX 1202398 33 Registered and valid till 29.05.2013

8 PM Royale (Label) 1332504 25 Registered and valid till 17.01.2015

8 PM Royale (Royale) 1332505 41 Registered and valid till 17.01.2015

8 PM Excellency Brandy 1333994 33 Registered and valid till 24.01.2015

8 PM Bermuda WhiteOriginal

1333995 33 Registered and valid till 24.01.2015

FOREIGN REGISTRATION

Country Trademark Registration No. Class Status

Morocco

8 PM Bermuda XXX Original Rum

89305 01.12.2003 33 Registered

Nepal>

8 PM Bermuda XXX Original Caribbean Rum 21483 12.04.2004 33 Registered

Morocco

8 PM Royale Smooth Indian whisky Blended WithScotch

91040 33 Registered

Nepal

8 PM Royale Smooth Indian Whisky Blended withScotch

21748 33 Registered

Morocco

8 PM Special rare Blend of Indian whisky & Scotch 92019 24.05.2004 33 Registered

ZANZIB

AR

8 PM Rare Whisky Blended With Scotch 80/99 09.03.1999 43 Registered

Nepal

8 PM Rare whisky Blended with Scotch 15368/07 08.06.200033 Registered

Canada

8 PM Bermuda

696618 17.09.2007 Registered

(e) The Plaintiff is also using the trademark 8 PM for its other products like 8 PMBermuda XXX Rum (2003), 8PM ROYALE (label) (2003), 8 PM EXCELLENCY


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Brandy (2005), 8 PM BERMUDA WHITE ORIGINAL CARIBBEAN RUM (2005).

(f) The Plaintiff enjoys substantial turnover from the sale of its 8 PM/8 PM rangeof products. The modified details of the same are mentioned in the affidavit ofMr. Satish Chandra Pandey dated 05.07.2011 the said figures are:

Financial Year Sales Turnover Rs. (in Million)

2006-2007 2565.9

2007-2008 2325.7

2008-2009 2136.4

2009-2010 2325

2010-2011 2452.1

3. CASE AGAINST THE DEFENDANT AS PER THE PLAINTIFF

(i) The Defendant is engaged in manufacturing and marketing of alcoholicbeverages more specifically beers. The Defendant has been using the brandPALONE/OKACIM PALONE in relation to its strong beers overseas. The brand

was launched by the Defendant in India in the year 2007 but it was not clickedin the Indian Market. Therefore, the Defendant in Feb, 2011 launched PALONE 8(alleged to be a super strong beer) in India, numeral 8 being used in aprominent fashion and in fact as a primary mark.

(ii) The impugned mark/numeral 8 is being used by the Defendant as a primary

mark despite PALONE/OKACIM PALONE, admittedly, being the Defendant's mainbrand. The Defendant has also applied for the registration of the PALONE 8

label on 07.02.2011 with the user claim of 23.01.2011. Also, the website of theparent company of the Defendant www.carlsberggroup.com lists PALONE 8 as

on of its main brands.

(iii) Being in the same trade and being well aware of the reputation of thePlaintiff's 8 PM/ 8 P.M family of marks, the conduct of the Defendant in

adopting and using the impugned mark/numeral 8 in respect of same goodsand that too in same font and colour with mala fide intention which is also

corroborated by the fact that the Defendant is also using a slogan '8 KA DUM'similar to that of the Plaintiff's well known campaign 'AATH KE THAATH'. The

Defendant is also using the expression 'ROYALS' deliberately as ROYALE is partof the of the Plaintiff's '8 P.M' family of marks.

4. In view of the abovementioned facts, it is alleged that the conduct of the

Defendant is in violation of Plaintiff's statutory and common law rights,therefore, the Defendant be restrained from using the Numeral 8 in relation to

their products.

5. DEFENDANT'S CASE

(a) The Defendant states that it is a company incorporated under theCompanies Act, 1956 having its registered office at Delhi. Defendant's parent

company, Carlsberg A/S, Denmark, including its subsidiaries and affiliates isone of the leading brewery groups in the world including beers and other

beverage brands which are sold in more than 150 countries.

(b) In India they have launched CARLSBERG, TUBORG, OKOCIM PALONE andvariants thereof. In the year 2006, Carlsberg Group decided to enter India and

incorporated South Asia Breweries Private Limited on May 3, 2006. Later on,the said company changed its name to Carlsberg India Pvt. Limited (Defendant


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herein) with effect from February 23, 2009.

(c) By the end of year 2009, Defendant has been using three brand names viz.CARLSBERG in 'Super Premium Mild'; TUBORG in 'Premium Mild'; and OKOCIMPALONE in 'Premium Strong Beer' (6.5% ABV - Alcohol by Volume).

(d) The brand OKOCIM PALONE is being used internationally since the year2005 and in India since the year 2007. OKOCIM PALONE label is registered as atrade mark in India since the year 2007. Considering that there is a highdemand for strong beer in the Indian market, the Carlsberg Group throughDefendant, in January 2011, launched a stronger variant of its well-establishedbrand OKOCIM PALONE under PALONE 8 label having Alcohol By Volume (ABV)of approximately 8%.

(e) It was for the first time that a beer comprising approximately 8% Alcohol ByVolume was launched in India. 'PALONE 8' traces its roots to the earlier brandsOKOCIM PALONE as well as BALTIKA 8, GRIMBERGEN GOLD 8 and DRAGON 8.Defendant filed an application for registration of the marks 'PALONE 8 label','PALONE 8 DUMDAR MELA', and '8 KA DUM' with the Trade Marks Registry.

Defendant applied for registration of PALONE 8 label under No.

2096009. The product under the PALONE 8 label also became a great success.

(f) The gross sales revenue of the same from January 2011 to April 2011 is inthe region of Rs. 262.2 million (26.2 crore).

6. The entire case of the Plaintiff in nut-shell is that the use of the numeral '8'by the Defendant in relation to one of its products which is beer under the mark

PALONE infringes and violates the statutory and common law rights of thePlaintiff in its well known and registered mark '8 PM, numeral 8 being its

essential, distinguishing and identifying feature.

7. Learned Senior counsel for the Plaintiff Mr. Neeraj Kishan Kaul has made hissubmissions which can be enumerated as under:

a) Firstly, learned Counsel for the Plaintiff argued that the present case is a

case involving the infringement of the trade mark wherein the trade mark 8 PMis registered with the Plaintiff is 8pm in class 33 in respect of whisky and class32 in respect of the juices of various kinds, drinking water and other alliedgoods.

b) Mr. Kaul submits that the Trademarks Act, 1999 provides for the registration

and protection of numerals as trademarks. The definition of the mark under

Section 2 (m) of the Trade Marks Act, 1999 expressly covers numerals. Courtshave consistently upheld rights in numeral marks and have also passed theorders to restrain from time to time in infringement cases holding the misusersof the numeral mark liable. Learned senior counsel has referred the followingdecisions in support of his first submission:

(i) Shaw Wallace and Company v. Superior Industries Ltd. 2003 27 PTC 63 -

Para 1, 5, 12, 14, 15-20, 27 (Marks Involved: Haywards 5000/Superior 5000)

(ii) Jagan Nath Prem Nah v. Bhartiya Dhoop Karyalaya AIR 1975 Del 149 - Para2, 8, 17-19 (Marks Involved: Kasturi 555/ Anand Durbar 555)

(iii) M/s Vrajlal Manilal v. Adarsh Bidi Company 1995 1 Arb. L.R 471-Para 2, 7,

10-12 (Marks Involved: 22/122)


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(iv) Kamal Trading v. Gillette UK Limited 1988 1 (7' O Clock)

c) It is submitted by Mr. Kaul that it is a classic case of infringement oftrademark wherein the Plaintiff is the Registered Proprietor of the 8 PM in Indiabut also in other countries of the world. The details of registration are given inPara 4 of the plaint. Section 28 of the Trade Mark Act, 1999 gives the

registered proprietor the exclusive right to use of the registered mark and theuse of an ?identical' or ?deceptively similar' mark by another without any

permission/authority amounts to infringement of the registered mark underSection 29 of the Act.

d) The registration of the Plaintiffs' trademarks is not challenged by theDefendant or any third party, thus it is a valid registration within the meaningof Section 32 of the Act and the court has to take the prima facie view of the

validity of the mark at this stage.

e) In support of his submission on the question of infringement, he has reliedupon the following decisions: The Defendants' usage of

the mark 8 as a trade mark without being a registered proprietor is a clearinvasion upon Plaintiff's rights.

i. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical LaboratoriesMANU/SC/0197/1964 : AIR1965SC980 - at 989-990 page wherein it was heldthat:

The action for infringement is a statutory remedy conferred on the registeredproprietor of a registered trade mark for the vindication of the exclusive right to

the use of the trade mark in relation to those goods

if the essential features of the trade mark of the Plaintiff have been adopted bythe Defendant, the fact that the get-up, packing and other writing or marks on

the goods or on the packets in which he offers his goods for sale show markeddifferences, or indicate clearly a trade origin different from that of the

registered proprietor of the make would be immaterial

ii. In the case of American Home Products v. Mac LaboratoriesMANU/SC/0204/1985 : AIR 1986 SC 137 in Para 36 it was held as under:

When a person gets his trade mark registered, he acquires valuable rights by

reason of such registration. Registration of his trade mark give him the exclusiveright to the use of the trade mark in connection with the goods in respect of

which it is registered and if there is any invasion of this right by any other personusing a mark which is the same or deceptively similar to his trade mark, he canprotect his trade mark by an action for infringement in which he can obtain

injunction....iii. In the case of National Bell Company v. Metal Goods Mfg. Company AIR1971 SC 898 at page 903 it was held as under:

On registration of a trade mark the registered proprietor gets under Section 28

the exclusive right to the use of such trade marks in relation to the goods inrespect of which the trade mark is registered and to obtain relief in respect of anyinfringement of such trade mark.f) Mr. Kaul has referred the two images of the products used by the parties inthe present case in order to show that the Defendant has taken the essentialand dominate feature of the main 8 without any valid justification.
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g) Learned Counsel for the Plaintiff argued that the mark 8PM of the Plaintiff isregistered in respect of whisky which is well known and famous mark and theuse of the mark by the Defendant is in respect of beers which are the goods of

the same description

within the meaning of Section 29 (1), (2) and (4) of the Trade Mark Act, 1999.

h) Thus, the infringement of the present trade mark 8PM of the Plaintiff is inrespect of the same or similar goods and therefore the said infringement is

bound to cause confusion and deception in the market as to the source of thegoods.

8. By relying the said observations of the Apex Court, learned Counsel hasexplained that there is No. doubt that the courts must respect the registrationand the valuable rights of the Plaintiff in the form of registration must be givendue credence in the form of interim injunction and third party use of the samemark becomes irrelevant and injunction must follow in the present case.

9. On the aspect of an action of passing off, Mr. Kaul submits that the

Defendant has deliberately and intentionally adopted and used the essentialfeature of the mark i.e. numeral 8 in order to take the advantage of thegoodwill and reputation gained by the Plaintiff in relation to its business as twosets of products i.e. whisky and beers are allied and cognate goods which arepurchased by the same set of customers and sold by the same shopkeepers.Both set of goods are placed side by side at the selling counter and served to

the consumer at the same time.

10. Mr. Kaul has thus concluded the arguments by stating that the present caseis a straightforward case of infringement of the registered trade mark rights ofthe Plaintiff and the prima facie case is in the favour of the Plaintiff as theDefendant by misusing the numeral mark 8 has slavishly copied or imitated themark of the Plaintiff. The balance of convenience also falls in favour of thePlaintiff as the Defendant is the recent entrant in the market. The Plaintiff will

suffer irreparable loss in the event of rejection of injunction. Therefore, thisCourt should grant ad interim injunction restraining the Defendants from

infringing the Plaintiff mark 8PM.

11. Per contra, learned Senior Counsel Dr. A.M. Singhvi, appearing on behalf of

the Defendants has made his submissions which can be crystallized in thefollowing terms.

(i) Dr. A.M. Singhvi in his first submission states that the Plaintiff is onlyengaged in the business of manufacturing and marketing of 'Whisky, Rum'

(Class 33) under the brand 8 PM and is not at all in the business of 'beer' whichfalls in Class 32. The Plaintiff has No. registration for the brand 8 PM for 'beer'.Plaintiff has got registered the mark 8 PM in Class 32 but only in respect ofmineral water and not beer etc. in Class 33. Thus, No. case of infringement ismade out as the Plaintiff's trademark is 8 PM in relation to Whisky and Rumetc. and numeral 8 is admittedly not identical with the mark of the Plaintiff 8PM Therefore, the test of passing off would apply while comparing the two

marks in question.(ii) The Defendant's brand BALTIKA 8 is being used in Russia since the year


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2001 and is registered in the USA in Class 32 in respect of 'beer' with userclaimed since October 2007. The Defendant is not using the mark 8 PM allalone. It is being used along with international brand of the Defendant who isengaged in the business of beers.

(iii) That the Defendant has obtained excise registrations for its PALONE 8 label

in 24 States of the country. The said product was first launched in January 2011in Maharashtra. Defendant's affiliate/s has/have been using the numeral 8

along with/as a part of famous international brands such as BALTIKA 8,GRIMBERGEN GOLD 8, DRAGON 8. The instant Suit was filed on May 16, 2011.On the said date, Defendant did not even had an excise approval in Delhi to sellbeer under PALONE 8 label. Therefore, the contention of Plaintiff that theproducts of Defendant under PALONE 8 label are available within the jurisdictionof Delhi is false, misleading and absurd.

(iv) That the Plaintiff is not entitled to the exclusive proprietory rights over the

numeral mark '8' due to following reasons:

Plaintiff has not obtained any separate registration for '8' or 'P.M.' per se nor

has filed any application for registration of '8' per se. In order to buttress hissubmission, learned senior counsel has read Section 17 of the Trade Marks Actwhich provides for the part of the trade mark and nature of rights available in

the case of part of the trade mark. It is contended by the learned seniorcounsel for the Defendant that the Plaintiff is seeking to assail Defendant's use

of '8' as a part of the PALONE 8 label on the basis of its alleged registration '8PM'

Plaintiff's mark 8 PM is descriptive. It attributes 8 PM to the preferred recreationtime of the evening when everyone desires to unwind. It is argued that theregistrar was conscious of the fact that the mark of the Plaintiff is inherently

non-distinctive, the Registrar (under the Trade Marks and Merchandise Act,

1958 which has now been repealed) granted registration to Plaintiff for its trademarks 8 PM in Part B of the Register which are comparatively weaker trademarks and the court can question the same. As the mark 8 PM is descriptiveand non-distinctive, it does not entitle Plaintiff to claim exclusive rights over thenumeral 8 to the exclusion of others.

12. After reliance, as mentioned above, it is stated by Dr. Singhvi that the

numeral '8' is publici juris and common to the trade therefore, question of anyexclusivity in respect thereof to the Plaintiff alone does not arise. As it has been

mentioned in Narayanan's Law of Trade Marks and Passing Off 6th Edition @page 180 para 8.63 that "Numeral though come within the scope of thedefinition of a mark, they are and cannot be prima facie considered distinctiveor capable of distinguishing as they are descriptive of the number of articles...".

He argues that the trademark consisting of a single number will always beconsidered as lacking distinctive character unless presented with distinctivestylization. Single numbers which have little or No. stylization will normally beopen to objection because they are often used in trade to indicate model or

catalogue reference.

13. In view of the abovementioned facts and documents referred, Dr. Singhvisays that the Plaintiff has failed to make out any case of infringement oftrademarks and passing off. In substance, the following reasons are given:

(i) Plaintiff has No. registration for the numeral '8' per se and No. registration inrespect of beer. It is common to the trade. The Defendant is not using the

numeral 8 per se

(ii) The goods viz. beers and whisky are totally different; and belong to


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different segments as class of consumers is different; it is impossible for one tobuy whisky for beer or vice-versa; even illiterate consumers will not beconfused.

(iii) The labels/packaging/bottles of 8 PM whisky and PALONE 8 beer are totallydifferent. Therefore, there has been No. confusion and deception.

(iv) Defendant's use of '8' is indicative of the kind, quantity and characteristicsof the product in question. The Alcohol By Volume in Defendant's product isapproximately 8%. Thus the use of the numeral '8' by Defendant is a bona fidedescription of the character of its goods.

(v) Plaintiff's whisky is priced at approximately INR 300 whereas Defendant'sbeer bearing the label PALONE 8 is priced at INR 65. The Plaintiffs sale of

products and 8 PM is lower than Defendant's sale.

14. As regards the objection of the Plaintiff about the Defendant's use of slogan8 KA DUM and the expression ROYALS on the basis of its erstwhile campaignAATH KE THAATH and the expression ROYALE. No. relief has been claimed in

the Suit in respect of the same thus the injunction does not arise. About themark Royal used by the Defendant is concerned it is stated that though No.relief is sought in the plaint but even the Plaintiff's application of 8 PM Royale

has been opposed by the third party. It is stated that the Plaintiff has neitherany interest in 'beer' nor has any registration in respect of 'beer' in Class 32 forits mark 8 PM.

15. Thus, it is alleged that the Plaintiff has not been able to make out a primafacie case of infringement for the grant of injunction. This is more so when

there are several players in the whisky trade using 8 numeral but the Plaintiffhas chosen to sue the Defendant only who is dealing in respect of the beers,

therefore, No. case is made out by the Plaintiff for infringement rather in viewof the peculiar facts of the present case, the Plaintiff has not met its case underSection 29(4) as the Plaintiff has not been able to show that the main 8 PM haswell known status which seems unfeasible in view of several players in themarket using the expression or numeral 8 in respect of whisky itself who havemore business than the Plaintiff and their user of the mark 8 numeral is prior tothe use of the Plaintiff.

16. Learned Senior Counsel Dr. Singhvi has vociferously argued that the use ofthe numerals are quite common in the liquor industry as demonstrated from theabove listed drinks emanating from well known brands. It is further argued thatthe numeral mark is per se non distinctive.

Learned Senior Counsel submitted that it is difficult to ascribe distinctiveness to

the numeral unless very high degree of distinctive character is shown.Furthermore, the said distinctiveness has to be seen from case to case basis

and the Plaintiff in the present case has been miserably failed to show any suchdistinctiveness with respect to numeral 8 per se in respect of whisky even dueto the prevalent trade practice and thus the Plaintiff is clearly disentitle to anysuch protection.

17. The next submission of the learned Senior Counsel is that the Plaintiff has

approached this Court after inordinate delay of 5 months after attaining theknowledge about the Defendant's products under the mark PALONE 8. This has

been explained by the Plaintiff by stating that Plaintiff's knowledge of theDefendant/its product dates back to January 2011 when Defendant launched itsproduct under PALONE 8 label in Maharashtra. Defendant's label was published

on the Notice Board of the Excise Department, Mumbai for 15 days in January,2011 for objections, if any. Further, Plaintiff filed objections to the application


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filed by Defendant with the Excise Office, Hyderabad for approval of PALONE 8label in February 2011, which was granted in favour of the Defendant.

18. Lastly, Dr. Singhvi, learned senior counsel has argued that the Plaintiffsclaim of passing off is also not made out due to following reasons:

a) Defendant's products under PALONE 8 label are not so far available in Delhi.

b) Defendant is using PALONE 8 label comprising its flagship brand PALONEwhereas Plaintiff's mark is 8 PM

c) 8 PM does not command goodwill/reputation.

d) There has been No. misrepresentation on the part of Defendant.

e) The source of origin of the product bearing the PALONE 8 label is clearly

discernible.

f) The goods viz. beers and whisky are totally different; and belong to differentsegments.

g) The labels/packaging/bottles of 8 PM whisky and PALONE 8 beer are totally

different.

h) The Defendant's bottle is specially designed wherein its name is clearlyembossed on the bottle.

i) Class of consumers is different; it is impossible for one to buy whisky for beer

or vice-versa; even illiterate consumers will not be confused. [Please seeKhoday Distilleries Limited v. Scotch Whisky Association].

j) Plaintiff's whisky is priced at approximately INR 300 whereas Defendant'sbeer bearing the label PALONE 8 is priced at INR 65. [Please see White Horse

Distillers Limited v. The Upper Doab Sugar Mills Limited].

k) 8 KA DUM and AATH KE THAATH cannot be mistaken for each other. In anycase 8 KA DUM is a slogan used on the product of the Defendant to indicate thestrength i.e. 8% Alcohol By Volume, whereas the campaign AATH KE THAATHwas in respect of music CDs of the Plaintiff which is No. longer in use.

Therefore, it is argued by the Defendant that in view of all abovementionedfactors the Defendant cannot pass off its goods as that of goods of the Plaintiff.

19. I have gone through the pleadings, application, reply and documents filedtherewith and also the submissions made by the parties at the Bar. Beforedealing with the submissions of the parties, I deem it appropriate to discuss the

law on the subject on the question of infringement of trade mark.

INFRINGEMENT

20. The law relating to infringement of a registered trademark has beenenvisaged Under Section 29 of the Trade Marks Act, 1999 and exclusive rightsgranted by virtue of registration under Section 28 which reads as under:

29. Infringement of registered trade marks -

Infringement of registered trade marks.-

(1) A registered trade mark is infringed by a person who, not being a registeredproprietor or a person using by way of permitted use, uses in the course of

trade, a mark which is identical with, or deceptively similar to, the trade markin relation to goods or services in respect of which the trade mark is registered


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and in such manner as to render the use of the mark likely to be taken as beingused as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registeredproprietor or a person using by way of permitted use, uses in the course oftrade, a mark which because of-

(a) its identity with the registered trade mark and the similarity of the goods orservices covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity ofthe goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods orservices covered by such registered trade mark, is likely to cause confusion onthe part of the public, or which is likely to have an association with theregistered trade mark.

(3) In any case falling under Clause (c) of Sub-section (2), the court shall

presume that it is likely to cause confusion on the part of the public.(4) A registered trade mark is infringed by a person who, not being a registeredproprietor or a person using by way of permitted use, uses in the course oftrade, 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 forwhich the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the markwithout due cause takes unfair advantage of or is detrimental to, the distinctive

character or repute of the registered trade mark.

28. Rights conferred by registration -

(1) Subject to the other provisions of this Act, the registration of a trade markshall, if valid, give to the registered proprietor of the trade mark the exclusive

right to the use of the trade mark in relation to the goods or services in respectof which the trade mark is registered and to obtain relief in respect ofinfringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under Sub-section (1)shall be subject to any conditions and limitations to which the registration is

subject.

(3) Where two or more persons are registered proprietors of trade marks,which are identical with or nearly resemble each other, the exclusive right tothe use of any of those trade marks shall not (except so far as their respectiverights are subject to any conditions or limitations entered on the register) be

deemed to have been acquired by any one of those person as against any otherof those persons merely by registration of the trade marks but each of those

persons has otherwise the same rights as against other persons (not beingregistered users using by way of permitted use) as he would have if he were

the sole registered proprietor.

By mere reading of these provisions, it is clear that a registered trademark isinfringed by a person who not being a registered proprietor, uses in the course

of trade a mark which is identical or deceptively similar in relation to the goodsor services which are identical or similar to that in respect of which the


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trademark is registered without the permission of the trademark owner.

21. So far as infringement qua different goods is concerned, separateenactment of Section 29(4) makes it clear that the strict rigors are prescribedas against the ordinary case of similar goods wherein a registered proprietorhas to establish that the registered trademark has reputation in India and is of

such a nature wherein the use of the mark by the other side without due causewould tantamount to taking unfair advantage or detrimental to the distinctive

character or repute of a trademark.

22. A reading of Section 29(4) of the Act would reveal that the said protectionqua different goods is earmarked by the Legislature for the trademarks whichare either highly reputed or well known or famous trademarks and enjoy eitherhigh level of distinctiveness or the marks which are inherently distinctive in

nature or has become distinctive due to their repute; the use of which willcause detrimental to the distinctive character and repute of the trademark only

when the ingredients of Section 29(4) are satisfied conjunctively which is Sub-sections (a), (b) and (c) the infringement qua Section 29(4) in relation todifferent goods is attracted.

23. Let me also examine the provisions relating to the limitations ofinfringement of a trademark. For the purposes of present case, Section 30(1) is

relevant extract of the provision which is reproduced herein after:

Section 30

(1) Nothing in Section 29 shall be construed as preventing the use of aregistered trade mark by any person for the purposes of identifying goods or

services as those of the proprietor provided the use-

(a) is in accordance with honest practices in industrial or commercial matters,and

(b) is not such as to take unfair advantage of or be detrimental to the

distinctive character or repute of the trade mark.

24. A careful reading of Section 30(1) would reveal that the said Sectionprovides that nothing in Section 29 shall be construed as preventing the use ofa registered trademark by any person for the purposes of identifying the goodsor services as those of the proprietor provided that the use is in accordancewith honest practices in industrial or commercial matters. The said section isenacted within two parts which is Section 30(1) (a) and (b). In-between the

two sub clauses the word used is 'and' which means that both the conditionsprescribed are to be satisfied conjunctively which means that the user of any

trademark for the purposes of identifying the goods or services as those of the

proprietor shall not be construed as infringement if the use is in accordancewith honest practices in the industrial/commercial matters at the first place andis also not amounting to taking unfair advantage or detrimental to the characteror repute of the trademark.

25. Now, the question arises that what can be termed as the honest practices incommercial or industrial matters as used in the sub Clause (a). The said honest

practices in Industrial or commercial matters can be interpreted either way asthe honesty can be subjective terms inasmuch as what maybe honest in theeyes of one person may not be honest in the eyes of another. Therefore, inorder to rule out the subjectivity in the expression ?honest practices in industryor commercial matters', the Courts have developed the doctrine of objectivity

rather than the subjectivity while applying the test of honest practices in theindustry and commercial matters.


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26. By interpreting honest practices as those which are satisfying the objectivestandards in Aktiebolaget Volvo v. Heritage (Leicester) Ltd cited as 2000 FSR253, the Chancery Division has said " It appears to be now well settled that thetest of honesty for the purposes of the proviso is one that has to be judged byan objective standard and in my judgment the appropriate question to be askedin relation to the test in the present case is whether a reasonable motor service

provider would think the use complained of in the present case to be honest, or,rather, in accordance with honest practices in that business (see Cable and

Wireless PLC and Anr. v. British Telecommunications PLC). The Court furtherheld that the application of the proviso namely "the use in accordance with

honest practices in industrial or commercial matters" involves "looking at theparticular use complained of as being an infringement of the relevant trademarkand determining whether a reasonable person in the trade concerned, that is tosay, in this case the trade of motor car service provider, knowing all therelevant facts that the Defendant knew would think it an honest use of a trademark concerned - that is to say, honest use in the commercial activity in whichsuch a trader is involved. That, in my judgment, must involve considering allthe circumstances surrounding the use complained of and the context in which

that use was made."

27. From the above, it is clear that the honest practices incommercial/industrial matters have to be seen from the two standpoints ofobjectivity. First is the standpoint of a reasonable person in the trade whetherhe will think that the said use is in the honest way after knowing fully wellabout the trade and secondly from the perspective of the practices prevalent inthe industry, which means that what the other persons/proprietors are doing in

the same industry and if there is an established practice in the industry to usesuch expression in the particular manner, then it would not be unfair to call that

practice as honest.

28. The second test is relevant due to the express wordings of the Section 30

(1) (a) which are honest practices in industrial or commercial matters. Once thesaid provision provides for such honest practices in the industrial or commercialmatters as an exception to an infringement, then the said practice in the trade

becomes relevant for the purposes of examining any case where theinfringement is alleged by the proprietor.

29. Thus, the standards of determining what is honest and what is not would bemuch dependent upon the practice and the manner of usage of that expressionwhich is prevalent in the market. After all that is what is called objectivestandards rather than subjective use which may vary from one person toanother.

30. From the above discussion, another thing is clear that it is always not

necessary to infer that trade practice is honest solely because the manner ofuse of the expression is in descriptive sense and not in a prominent fashion.The converse may be true also in some cases. There are certain industrieswherein special emphasis has to be given to the said expression upon theproduct or an ingredient of the product so as to catch the customers or attractthe consumer rather than using it as a small word on the label. Just like in

liquor industry wherein one has to prominently display as to how old that liquoris by mentioning the number of years or the volume of content of alcohol.

31. Thus, the decisive test for examining the honest practice in industrialpractice is not prominence or non-prominence of the said expression which maythough be relevant but much will be dependent upon the manner of use of the

said expression as warranted in the said industry which will set out the limit forwhat can be the honest and what can be dishonest.


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32. The propositions which are emerging from the abovementioned discussionsare as under:

a) That Section 30 acts as an exception to Section 29 which provides forinfringement of trademark;

b) Section 30(1) safeguards the use of the trademark by anyone other than theregistered proprietor if the use of the said trademark is in accordance with thehonest practices in the industrial or commercial matters and is not such as totake unfair advantage of or be detrimental to the distinctive character or reputeof the trade mark.

c) Honest practices in the industry/ industrial or commercial matters have to beexamined objectively and not subjectively for which it can be tested on two-fold

basis:

i) Reasonable man having knowledge in the trade.

ii) Practice prevalent in the respective industry.

33. Let me now proceed to discuss the law relating to numeral trademarks.Section 2(1)(m) of the Trade Marks Act, 1999 defines the expression 'mark'which is reproduced herein below:

Section 2(1)(m)

"mark" includes a device, brand, heading, label, ticket, name, signature, word,letter, numeral, shape of goods, packaging or combination of colours or anycombination thereof."34. On bare perusal of the said definition, it becomes clear that the said

definition is an inclusive definition which includes numeral. Mark also includesnumerals which shows and denotes that the said numeral can perform the

function of a trademark. Although numeral has been included in the definitionof mark but it has to be examined as to whether a single-numeral 8 in the facts

and circumstances of the present case can be protected while comparing thetwo marks of the parties, i.e. 8 PM and PALONE 8 and the two sets of goods arewhisky and beer. Likewise, Dr. Venkateswaran on Trademarks and Passing off(5th Edition 2010) also observes about the numeral trademarks as under:

"Mark' is defined to include letters and numerals - See Section 2(1)(m). However,

they notoriously lack inherent distinctiveness on account of common and naturalpractice of firms and persons to use their initials on goods, letter paper and so

forth, or to use them as symbols indicative of quality or of other characteristics.Whether a letter or numeral mark can be registered prima facie willtherefore depend upon whether it is devoid of any distinctive character.

Letters and numerals also presented with additional features or whichare intertwined, conjoined etc. and which have a trade mark characterwill be accepted.

(Emphasis Supplied)

For example, numbers, letters which may be used in trade for bona fidedescription will entail objections under Section 9(1) (c ) are:

The date of production of goods/ provision of services (e.g. 2001, 2002)

Size, eg XL for clothes, 1600 for cars, 34R for clothing, 185/65 for tyres.

Quantity 20, 200 for cigarettes.

Dates for printed matter eg 1066 for history books, 1996 for wines, 2003 for


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anything.

Telephone codes eg 022, 011, 033 etc.

The time of provision of service, eg 8 to 10

The power of goods eg 115 (BHP) for engines or cars.

Speed, eg 386, 486, 586, 686, and 166, 266 for computers.

Strength eg, "8.5% for lager.

(Emphasis Supplied)

The reliance of the above referenced excerpts from the authority would showand reveal that even it is recognized in the field of the trade marks that there

are certain numerals which are considered to be of non distinctive characterand also having some connection with the trade. Numeral 8 is one of thosenumerals which are earmarked as one which has some connection andrelevance in the field of beer as mentioned above. Further, it also clarifies the

position in the law that the numeral trade marks which are intertwined withother features can succeed for registration. But then it is to be looked into that

the monopoly can be accorded to the numeral per se or the mark in totality.

35. The said argument that the numeral 8 is common to the trade and also hassome relevance with the alcohol trade also gains strength when the Defendantsstand is examined wherein the Defendants have shown number of majorplayers /traders in the alcohol trade to be using the numeral 8 on their labels.Dr. Singhvi, learned Senior counsel has relied upon the entries on the registersworldwide as well as in India and also the labels of the current use of several

alcoholic drinks so as to demonstrate that the numeral 8 is common to thetrade. The said entries and the pictorial representation thereof of the same are

reproduced hereinafter:


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18/40


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36. By citing the detailed analysis of aforementioned brands of alcoholic drinksavailable in the market, the learned Senior counsel for the Defendant sought tourge that the Plaintiff's grievance is nothing but a frivolous one and it does notsurvive in view of the market trend demonstrated above, and it reveals thatthere are not merely entries on the register which reveal ?8' as one of the

features of the registration but rather there is substantive actual user by thethird parties.

37. For ease of reference, reproduced here in below is a list of few '8' and/or '8'formative marks in Classes 32 and 33. The list is illustrative and notexhaustive:

LIST of "8'/'8' FORMATIVE MARKS IN INDIA

S. No. Trade Mark/Number Proprietor/Date of Application

UserClaimed

Status

(as per online)

Class Registration records of the Trade Marks Registry)

1. 8 PM and device of

Globe/

1008765/

Class 32

BaldevPawan,

Ashwani Kumar

trading as English

Food Specialties(India), Punjab/

May 11,2001

SinceApril1,2001

Registered


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2. Anil Gupta,Ashwani

Since Pending

AathKeThaath/2063536/ Class 32

Kumar,

Madikan

Mehra, Jammu

Tawi/

December 6, 2010

November1,2010

3. Jai Baba LaiIndustries

Since Pending

1950320/ Class 32

(JBI Groups),

Jammu

Tawi/

April 15,2010

April1,2010

4. 8 '0' Clock (Club Sodawith spirit)/ 1076845/Class 32

BaldevPawan,

Ashwani Kumar

trading as English

Food

Specialities(India),

Punjab/ January30,

2002

SinceApril1,2001

Opposed

5. 81H DAY/1212633/Class 32

IndustrialBeverages Limited,Mauritius/ July 9,2003

Proposed tobeused

Registered

6. AQUA 8/ 1221399/ Pepsi Foods PrivateLimited, Punjab/

Proposed tobeused

Opposed

Class 32 August 7, 2003

7. AQUA 8/ 1221402/Class 32

Pepsi Foods PrivateLimited, Punjab/August 7, 2003

Proposed tobe

used

Opposed

8.

1364360/ Class 32

Campbell SoupCo., USA/June 16,2005

Proposed tobeused

Registered

9. V8/ 1300537/

Class 32

Campbell SoupCo., USA/ August4, 2004

Proposed tobeused

Registered

10. AFTER 8/ 374742B/Class 33

MahavirLallMehraand NirmalMehra

trading as MohanLall & Company,New Delhi/ April

Proposed to

beused

Registered


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15, 1981

11. XLR8/ 684571/ Class33

Guinness UnitedDistillers & Vintners B.V., TheNetherlands/October 25, 1995

Proposed tobeused

Registered

12.

1529710/ Class 33

Damian ThomasKnowles, Australia/

February 9, 2007

Proposed tobeused

Registered

13. 8 MILLION/ Jagdish Chandra Proposed

Registered

1865348/ Class 33 Agarwal, NewDelhi/ September22, 2009

to beused

14.

1667206/ Class 32

Societe DesProducts Nestle

S.A., Switzerland/March 19, 2008

Proposed to

beused

Registered

15. 8AM/ 1574492/ Class32

V.R. IndustriesPrivate Limited,Gurgaon/ July 02,2007

Proposed tobeused

Pending

LIST of "8'/'8' FORMATIVE MARKS IN INTERNATIONALLY

S. No. Trade

Mark/Number/C

lass

Country/Jurisdict ion

Proprietor/Dateof

Application/Regi

stration

Status

1. LOW8/ E9406331/Classes 5, 30, 32

CommunityTrade Mark

GabrieleAscione, Italy/November 4,2010

Pending

2. one.8 One.8ONE.8/ United Kingdom SanteauLimited, UK/

Registered

2368274/ Classes 5,30, 32

July 15, 2004

3. 8 Ost/ E3227121/Classes 3, 8, 9, 12,14, 16, 18, 21, 24,

25, 28, 31, 32, 33,35, 38, 39, 41, 42,43

CommunityTrade Mark

BIS

Bremerhavener

Gesellschaft furInvestitionsforde rung undStadtentwicklu ng mbH,

Germany/ June16, 2003

Registered

4.

BALTIKA8/3668468/Class 32

United States ofAmerica

BaltikaBreweriesCorporation,Russia

Registered


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5.

8 STOUT/

2827476/ Class 32


Table Bluff

Brewing,

Inc. DBA Lost

Coast Brewery

Corporation,

USA/

April 29, 2003

Registered

6. HARD 8/ 85127026/Class 32


Hard 8BeverageCompany, USA/April 29, 2003

Pending

7.

3096

BISTRO 8/ 356/Class 32


Anheuser-Busch,Incorporated,USA/ September19, 2003

Registered

8. OLD NO. 8 BRAND/1310336/ Class 33


Diageo

North America,Inc., USA/October 25,1982

Registered

9. 8 STAGIONI/301218663/ Class 33

Hong Kong 8 StagioniS.R.L., Italy/October 10,2008

Registered

10. 8 BILL/ 301533898Class 33

Hong Kong Glory Trading(International)Co., Ltd., HongKong

Registered

In addition to the above, the Defendant submits that goods in Classes 32 and33 are available in Indian and International market with the numeral mark '8'which is used as part of trade mark. These are: BACARDI 8, V8, HARD 8, 8

STOUT, BISTRO 8, OLD No. 8 BRAND, 8 BALL, PLANTATION JAMAICA 8 YEARRUM, GEORGE DICKEL No. 8 TENNESSEE WHISKY, BASIL HAYDEN'S 8 YEAR

STRAIGHT BOURBON WHISKY, BARBANCOURT 8 YEAR RUM, OLD CHARTER 8YEAR STRAIGHT BOURBON WHISKY, WILD TURKEY 8 YEARS STRAIGHT

BOURBON, BLACK DOG 8 YEARS etc. In all the aforesaid examples, numeral '8'is used conspicuously and is a prominent feature of the packaging.

38. It is also submitted by the Defendant that Plaintiff has not obtained any

separate registration for '8' or 'P.M.' per se. Numeral '8' is common to trade aslarge number of manufacturers in India and abroad are using the Numeral '8' in

relation to similar business as that of the Plaintiff. even some of them prior touser of the Plaintiff. It is also argued by Mr. Singhvi that Plaintiff's mark 8 PM is

descriptive. It attributes 8 PM to the preferred recreation time of the eveningwhen everyone desires to unwind. Realizing that the mark is inherently non-distinctive, the Registrar of Trademarks granted the registration to Plaintiff forits trade marks 8 PM in Part B of the Register.

The Defendant has also referred the search report issued by the Trade Marks

Registry as well as the Trade Marks Offices of various countries in order toindicate numerous '8'/'8' formative applications/ registrations in India and

internationally standing in the name of different entities.

39. The Defendant has placed on record the evidence which shows that there


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are various other international brands which use 8/8 formative marks in relationto products falling in Classes 32 and 33 and are available internationally.Defendant has filed images of several products using 8/8 formative marks. Fewexamples of such brands are reproduced here in below:


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40. I find substance in contention of the learned Counsel for the Defendant thatthe numeral mark 8 is prima facie of non distinctive character. This is due tofollowing reasons:

That the aforementioned analysis done by the Defendants itself shows that

major players or competitor like Bacardi, Signature and Ors. etc nationally andinternationally use the numeral 8 on their label. Thus, it does not remain thecase of mere formal entries on the register but also is backed by thesubstantive user of the other parties which negatives the claims of exclusivity.

There are authorities on the subject stating that there are some numerals like

8.5 or at least 8 which are requirement of the trade which denotes the strength.

The said aspect further clarifies that there is some nexus of the numeral 8 inrespect of alcohol drinks.

The Plaintiffs are not registered for 8 per se and rather the registration is of8PM in Part B of the register. The mark on part B was considered to be weaktrade mark and rather prima facie descriptive one. The exclusivity in the saidmark can be defeated by showing the evidence of non distinctiveness. In the

present case, the same thing has been shown.

Overall by reading Section 30 of the Act and testing the numeral 8 on theprinciples of the same (which I have already dealt with above on honestpractices of trade), the use of the numeral in these circumstances by atradesman when there are such overwhelming user by other parties as stated

above coupled with the nexus of numeral in the trade, it can be safely said thatuse of the numeral 8 by any other person including Defendant in respect of


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alcohol or beers cannot be said to be dishonest and would be protected bySection 30 of the Act.

41. Thus, it is prima facie established that the numeral 8 has the role to play inthe industry of liquor, but No. doubt and the Defendant as bona fide descriptionis entitled to use the same in order to denote the strength of the product.

42. However, one should not forget that the Apex Court has further extendedthis proposition by stating that where there is a case of infringement of trademarks wherein the marks are not identical but are deceptively similar, the testsfor measuring the case of infringement and passing off coincide and theybecome the same. (See Ruston and Hornsby Ltd. v. The Zamindara EngineeringCompany MANU/SC/0304/1969 : 1970 (2) SCR 222). The same has also beenupheld by this Court in Allied Blenders and Distillers P. Ltd. v. Paul P. John and

Ors. MANU/DE/1381/2008 : 2008 (38) PTC 568 (Del).

43. In the present case also, the competing trade marks are 8 PM per se inrespect of whisky and PALONE 8 in respect of the beers. At the first place, themarks of both the Plaintiff as well as the Defendants are not identical but at the

best these can be considered as deceptively similar as numeral 8 in both thetrade marks is common.

44. It is the admitted position that the registration obtained by the Plaintiff inClauses 32 and 33 is not pertaining to the beers as the said both registrationson the face of it are in relation to Whisky and Mineral Water, etc. Under Section28, the rights are conferred by the registration to the registered proprietor tothe use trade mark in relation to the goods or services in respect of which thetrade mark is registered and to obtain the relief in respect of the infringementof the trade mark in the manner provided by the Act.

45. Under Section 29(1) of the Act, a registered trade mark is infringed by aperson who, not being a registered proprietor of the mark, uses in the course oftrade, which is identical with, or deceptively similar to, the trade mark inrelation to the goods or services in respect of which the same is registered oruse of the mark is likely to be taken as being used as trade mark.

Under Sub-section (2) and (3) of Section 29 postulates that in case the Courtfinds similarity to the registered trade mark and the identity and similarity of

the goods or services covered by such registered trade mark, there is apresumption that the use of mark by a person who not being a registeredproprietor is likely to cause confusion on the part of the public or which is likelyto have an association with the registered trade mark.

46. Unless the prominent feature of the mark is proved to be prima facie

enjoying high degree of distinctiveness which may become heart and soul ofparticular trade mark, such kind of monopoly cannot be accorded to the same.

This may not hold true in the case of single letter or numeral like 8 which hasbeen extensively used by the number of major players selling alcohol and is arequirement of the trade as a practice denoting strength.

47. In the present case, admittedly, the Defendant is not using the trade mark- the numeral-8, in relation to Whisky and Mineral Water for which the Plaintiff

has obtained the registration in Clauses-32 and 33 of the Act. As already statedthat the present case is also not covered under Sub-section (4) of Section 29 of

the Act, therefore, the Plaintiff cannot derive the benefits available in Sub-section (4) of Section 29 of the Act which provides additional protection forinfringement of trade mark in relation to dissimilar goods.

48. The other important aspect of the matter is that the main registration
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obtained by the Plaintiff bearing mark '8 PM' under Registration No. 783398 inClause-33 as of 24.12.1997 advertised in Journal No. 9998-2 was grantedunder the old Act, i.e. Trade and Merchandise Marks Act, 1958 in Part-B. In thesaid Act, the registration could have been granted by the Registrar of TradeMarks in Part- under Sections 7 and 9 of the Act due to the prevailingcircumstances at the time of granting the registration. In the said Act, under

Section 29(2), in an action for infringement of a trade mark in case theregistration is granted in Part-B and the Defendant is able to establish to satisfy

the Court that the mark is not likely to deceive or cause confusion in the tradeand some other person having the rights either as registered proprietor or

registered user, the relief under those circumstances shall not be granted to thePlaintiff.

49. Section 17 provides the effect of registration of parts of the trade mark. Thesaid Section reads as under:

17. Registration of trade marks subject to disclaimer.

If a trade mark -

(a) contains any part -

(i) which is not the subject of a separate application by the proprietor forregistration as a trade mark; or

(ii) which is not separately registered by the proprietor as a trade mark; or

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character;

The tribunal, in deciding whether the trade mark shall be entered or shallremain on the register, may require, as a condition of its being on the register,

that the proprietor shall either disclaim any right to the exclusive use of suchpart or of all or any portion of such matter, as the case may be, to the exclusive

use of which the tribunal holds him not to be entitled, or make such otherdisclaimer as the tribunal may consider necessary for the purpose of definingthe rights of the proprietor under the registration:

Provided that No. disclaimer shall affect any rights of the proprietor of a trademark except such as arise out of the registration of the trade mark in respect of

which the disclaimer is made.

It is the admitted position in the present case that the numeral-8 is a part ofthe trade mark which is not separately registered in favour of the Plaintiff. Infact, the Plaintiff has got the registration of the trade mark '8 PM'. Therefore, in

view of the fact that No. separate registration is granted, the test of passing offunder those circumstances would apply.

The infringement of the mark is also not to be made out in view of the Part Bregistrations relied upon by the Defendant. It is now well settled that the Part Bregistrations are granted to the marks which even the registrar of the trademark also considers to be prima facie non distinctive or descriptive.

Section 29 of the old Act in this respect is equally apposite which reads as

under:

29. Infringement of trade marks.

(1) A registered trade mark is infringed by a person who, not being the registeredproprietor of the trade mark or a registered user thereof using by way of

permitted use, uses in the course of trade a mark which is identical with, or


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deceptively similar to, the trade mark, in relation to any goods in respect of whichthe trade mark is registered and in such manner as to render the use of the marklikely to be taken as being use as a trade mark.(2) In an action for infringement of a trade mark registered in Part B of theregister an injunction or other relief shall not be granted to the Plaintiff if theDefendant establishes to the satisfaction of the court

that the use of the mark of which the Plaintiff complains is not likely to deceive

or cause confusion or to be taken as indicating a connection in the course oftrade between the goods in respect of which the trade mark is registered andsome person having the right, either as registered proprietor or as registereduser, to use the trade mark.

Thus, the mark if it is shown to be descriptive one or the one which does not

indicate connection in the course of the trade by the Plaintiff even at during theinfringement proceedings, the injunction against the Defendant cannot be

granted as then it is outside the purview of the infringement.

The said aspect becomes relevant as then the Plaintiffs case of Part B

registration is overcome by the evidence of the descriptiveness or nondistinctiveness of the numeral 8. Thus, the said act is not an infringement underthe old Act.

At this stage, it is relevant to examine the saving clause of Section 159 of theTrade Marks Act which reads as under:

159. Repeal and savings.-

(1) The Trade and Merchandise Marks Act, 1958 (43 of 1958) is herebyrepealed.

(2) Without prejudice to the provisions contained in the General Clauses Act,

1897 (10 of 1897), with respect to repeals, any notification, rule, order,requirement, registration, certificate, notice, decision, determination, direction,

approval, authorisation, consent, application, request or thing made, issued,given or done under the Trade and Merchandise Marks Act, 1958 (43 of 1958)

shall, if in force at the commencement of this Act, continue to be in force andhave effect as if made, issued, given or done under the correspondingprovisions of this Act.

(3) The provisions of this Act shall apply to any application for registration of atrade mark pending at the commencement of this Act and to any proceedings

consequent thereon and to any registration granted in pursuance thereof.

(4) Subject to the provisions of Section 100 and not with standing anything

contained in any other provision of this Act, any legal proceeding pending inany court at the commencement of this Act may be continued in that court as ifthis Act had not been passed.

(5) Notwithstanding anything contained in this Act, where a particular use of a

registered trade mark is not an infringement of a trade mark registered beforethe commencement of this Act, then, the continued use of that mark shall notbe an infringement under this Act.

(6) Notwithstanding anything contained in Sub-section (2), the date ofexpiration of registration of a trade mark registered before the commencement

of this Act shall be the date immediately after the period of seven years forwhich it was registered or renewed

50. A bare reading of the Sub-Section 159(5) would reveal that the same is the


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non obstante clause and would therefore prevail over in addition to what hasbeen stated under the Act. The new Act of 1999 although extends theregistration under the existing law of 1958 to the New Act. However, theexception is carved out under Sub-section (5) which states that the particularuser of the mark if it is not an infringement under the old Act then, the sameshall also not to be an infringement under this Act.

51. The combined reading of Section 29 of the old Act and saving clause of

Section 159 makes it amply clear that the user of the numeral 8 would not havebeen an infringement under the old act and injunction cannot be granted if it isestablished the said numeral does not indicate the connection in the course ofthe trade with the Plaintiff. Thus, the said user cannot be extended to be aninfringement under the new act by virtue of the saving clause of Section 159 ofthe Act of 1999.

52. There is an additional surrounding factor which is seen from the search

report relied upon by the Defendant wherein the entry No. 1008765 in thename of some Baldev Pawan which reveals that the mark 8PM is registeredsince the year 2001 which is still renewed in respect of Beers which is not thePlaintiff concern. On the other hand, the Plaintiff has relied upon theregistration of mineral water etc to claim infringement against beers under thesame class 32. I think the said factor is also crucial factor both for the purposesof infringement and passing off as some third party is holding the registration ofthe mark 8PM in respect of the beers and not the Plaintiff. This also becomes a

surrounding circumstance for the purposes of the grant or non grant ofinjunction.

53. Therefore, I am of the prima facie view that the registrations relied upon bythe Plaintiff do not establish the prima facie case of infringement under section29 (1) and 29 (2) as I have already expressed doubts about the nature ofgoods being either non similar or similar which depends number tests discussed

by me along with the facts to be proved in trial. Thus, it is more of a mixedquestion of law and fact. At this stage, suffice it to say that the registration ofthe Plaintiff clearly do not cover beer, the said registration are in Part B which

are weak ones, the goods can be conclusive said to be similar goods, therefore,the infringement under Section 29 (1) (2) and (3) cannot be established. So far

as grounds under Section 29(4) is concerned, the other surrounding factors likeextensive user of the numeral 8 by the other parties, observations that 8 has arole in liquor industry and other factors discussed above prevents the numeral 8to be categorized as reputed mark of the Plaintiff and the user of the same isprotected under Section 30 of the Act. Therefore, I am prime facie of the viewthat No. case is made out in view of statutory provision of Sections 28 and 29

in order to establish the case of infringement. The surrounding factors like No.

infringement of Part B registration under the old act, 8 is not per se registeredin view of Section 17 of the Act, registration of someone else in relation tobeers also act as special circumstances which militate against the grant of

injunction.

Thus, the decisions referred by the Plaintiff on the point of infringement are notapplicable as in those case, two set of goods of the parties were same. As far as

proposition of law in those cases referred to by the Plaintiff is concerned, thereis No. dispute that law laid down in those decisions well-established law.

54. So far as the judgments cited by the Plaintiff in the cases of Shaw Wallaceand Company v. Superior Industries Ltd. 2003 27 PTC 63, Jagan Nath PremNah v. Bhartiya Dhoop Karyalaya, (Marks Involved: Kasturi 555/ Anand Durbar

555), M/s Vrajlal Manilal v. Adarsh Bidi Company 1995 1 Arb. L.R 471-Para 2,7, 10-12, and Kamal Trading v. Gillette UK Limited 1988 PTC 1 (7' O Clock) are


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concerned, the same are distinguishable on the facts and circumstances of eachcase. The same are distinguished as under:

andbull; In Shaw Wallace (Supra), the court was concerned with a mark 5000which is not a single letter mark for strict rigors of law are applicable. It is nowwell established and has even stated in the Narayanan on Trade mark and other

authorities that as the letters or numeral in the marks grows from two to threeand thereon, the said numerals or letters comes closer to the trade mark. The

relevant excerpt for the same is reproduced herein after.

Further in Shaw Wallace, the court was concerned with the case of Beer v. Beerwherein the Plaintiff is well known in the market which is the major point ofdistinction with that of the present case with that of Shaw Wallace (supra).

andbull; Again in Jagan Nath (Supra), the court was concerned with the threeletter mark rather than a single letter mark. Further again the goods in thatcase were identical which are agar batties. The said mark was essential featureof the mark which was considered by the court as distinctive. I have also heldin the present case that in a given case where it is established the essential

feature of the mark is such which is heart and soul of the mark which hasenjoys distinctiveness can enjoy equal level of monopoly. However, the samemay not hold good for a single letter mark like 8 which is supposed to be prima

facie of non distinctive character and has been used several major players inthe market to denote and connote strength of the alcoholic drink. The said

judgment is distinguishable on facts

andbull; Again in Virajlal (Supra), this Court was concerned with the mark 22which was used in the market for 5 decades in respect of bidis. The said mark22 per se stood registered with the Plaintiff as noted by the court. TheDefendant adopted the mark 122 which subsume 22 in respect of identical

goods which are bidis. The same is accordingly distinguishable on its facts

andbull; In Kamal Trading (Supra), the court was concerned with the worldfamous mark 7 O CLOCK which was used for more than 30 years for shavingcreams, shaving brushes rajors etc and the Defendant used the identical markfor tooth brushes and the Bombay Division Bench rightly confirmed theinjunction. The said case is distinguishable on facts as in the said case, thecourt was concerned with the usage of identical mark 7 O CLOCK by the

Defendant and not a part of the numeral mark and the mark 7 OCLOCK is not asingle letter mark but a composite mark. All the facts are sufficient to take out

the present case from that of the judgment of Kamal Trading (Supra).

55. Thus, the said judgments on numeral marks are distinguishable on the factsand circumstances. Further, the judgments relied upon the Defendants upon

the legal effect of registration as rendered by the Apex court, No. one isdisputing the said judgments but in the present case, the Plaintiff is registered

with 8 PM in respect of whisky and the case involves use of the numeral 8 inrespect of Beers which is not falling within the registration of the Plaintiffs.

Thus, the said judgments cannot aid the case of the Plaintiff. Further, the testsof the infringement and passing off coincide when the marks are deceptively

similar as laid down by the apex court itself also comes under the way of thisCourt to extend the effect of the registration of the Plaintiff to the part of themark which is to the numeral 8 when it is not per se registered under Section17 of the Act.

PASSING OFF

56. Mr. Kaul further argues that third party usage is No. defense in a trademark infringement and passing off action and further that a Plaintiff is not


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expected to sue each and every infringer.

Bhagwan Dass Gupta v. Shri Shiv Shankar Tirath Yatra Company Pvt. Ltd.MANU/DE/0593/2001 : 93 (2001) DLT 406 - Para 10

the basic test to find out whether a particular mark is publici juris or not is that if

the mark has come to be so public because of its universal use that it does notconfuse or deceive, by the use of it, the purchasers of the goods of the originaltrader. Shri Pankaj Goel v. Dabur India Ltd. FAO (OS) 82 of 2008 - Para 22

22. As far as the Appellant's argument that the word MOLA is common to the

trade and that variants of MOLA are available in the market, we find that theAppellant has not been able to prima facie prove that the said 'infringers' had

significant business turnover or they posed a threat to Plaintiff's distinctiveness.In fact, we are of the view that the Respondent/Plaintiff is not expected to sueall small type infringers who may not be affecting Respondent/Plaintiff business.The Supreme Court in National Bell v. Metal Goods reported in AIR 1971 SC 898has held that a proprietor of a trademark need not take action against

infringement which do not cause prejudice to its distinctiveness. In ExpressBottlers Services Pvt. Ltd. v. Pepsi Inc. and Ors. reported in 1989 (7) PTC 14 ithas been held as under:

...To establish the plea of common use, the use by other persons should beshown to be substantial. In the present case, there is No. evidence regardingthe extent of the trade carried on by the alleged infringers or their respectiveposition in the trade. If the proprietor of the mark is expected to pursue eachand every insignificant infringer to save his mark, the business will come to astandstill. Because there may be occasion when the malicious persons, just toharass the proprietor may use his mark by way of pinpricks....The mere use of

the name is irrelevant because a registered proprietor is not expected to go on

filing suits or proceedings against infringers who are of No. consequence....Mere delay in taking action against the infringers is not sufficient to hold thatthe registered proprietor has lost the mark intentionally unless it is positivelyproved that delay was due to intentional abandonment of the right over theregistered mark. This Court is inclined to accept the submissions of theRespondent No. 1 on this point.... The Respondent No. 1 did not lose its markby not proceeding against insignificant infringers....

In fact, in Dr. Reddy Laboratories v. Reddy Paharmaceuticals reported in 2004

(29) PTC 435 a Single Judge of this Court has held as under:

...the owners of trade marks or copy rights are not expected to run after everyinfringer and thereby remain involved in litigation at the cost of their business

time. If the impugned infringement is too trivial or insignificant and is notcapable of harming their business interests, they may overlook and ignore petty

violations till they assume alarming proportions. If a road side Dhaba puts up aboard of "Taj Hotel", the owners of Taj Group are not expected to swing into

action and raise objections forthwith. They can wait till the time the user oftheir name starts harming their business interest and starts misleading and

confusing their customers.

Rolex Sa v. Alex Jewellery Pvt. Ltd. and Ors. MANU/DE/0796/2009 : 2009(41) PTC 284 (Del) - Para 22

22. The next aspect to be considered is the effect/impact, if any, of a largenumber of other persons using the word ROLEX as claimed by the Defendant. At

this stage, this plea will be examined believing the same to be true. In my view,the same would be immaterial. Firstly, nothing has been shown that any of the
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said users has any significant presence. Secondly, it is now well settled in Honda(supra) in turn relying upon Indian Shaving Products Ltd. v. Gift Pack that merelybecause the Plaintiff who is otherwise found entitled to the interim injunction isshown to have not taken any step against other infringers is No. ground to denyrelief to the Plaintiff. It cannot also be said that the Plaintiff's trademark has lostits distinctiveness for the said reason. The reply affidavit of the Plaintiff lists the

orders of the Trade Mark Registry from 1964 to 2000, where Plaintiff's mark hasbeen protected inter alia for reason of having great reputation. It also shows that

the Plaintiff has been enforcing its rights. Though the list filed by Defendant No. 1in this regard is long but a perusal thereof shows a number of applicants to have

abandoned or withdrawn their applications. This is a vast country. Mere long listof applicants/registrants of mark, without any extensive use of the mark, cannotdent the distinctive character or repute of the mark. Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. and Ors. 1989 (9) PTC 14 -Para 50

50. To establish the plea of common use, the use by other persons should beshown to be substantial. In the present case, there is No. evidence regarding the

extent of the trade carried on by the alleged infringers or their respective positionin the trade. If the proprietor of the mark is expected to pursue each and every

insignificant infringer to save his mark, the business will come to a standstill.Because there may be occasion when the malicious persons, just to harass theproprietor may use his mark by way of pinpricks. In answer to this allegation, theRespondent No. 1 in Joyce's supplementary affidavit dated 1.12.86 stated thatthere was No. whisper of this case of public use of the mark in the petition itself.This case has been set up for the first time in the affidavit-in-reply. Moreover,

'Pepsi' and 'Pepsicola' were registered as carbonated beverages, syrups andconcentrates under Class 32 of the Fourth Schedule to the Trade and Merchandise

Marks Act 1958. It is alleged by the Petitioner that the mark 'pepsi' is being usedby others in respect of ice, ice-cream or ice candies which come under class 30 of

the said Fourth Schedule and the sealing machine manufactured in the name ofPepsi comes under Class 7 of the 4th Schedule relating to machine and machinetools. The alleged banners, stickers, danglers, etc. disclosed by the Petitioner forestablishing common use of the marks of the Respondent No. 1 are not the typeof goods for which the marks of the Respondent No. 1 were registered. The use ofthe mark Pepsi on goods falling within Class 7 or 30 are wholly irrelevant for thepurpose of this case. Moreover, the plea of common use must fail because forestablishing that, it must be proved that the businesses carried on by the

infringers are of similar nature and are extensive and substantial. The mere useof the name is irrelevant because a registered proprietor is not expected to go on

filing suits or proceedings against infringers who are of No. consequence. Indian Shaving Products Ltd and Anr. v. Gift Pack and Anr. 1998 PTC (18) -Para 52 and 53

52. It was next argued by the learned Counsel for the Defendant that the saidtrade mark Ultra is being used by several other persons/companies besides the

Defendants such as Toshiba, National and Sony. Thus the same has becomepublici Juris and the Plaintiffs can not claim any exclusive right therein.

53. Admittedly, the said parties are not before this Court. Neither t

radico khaitan v. calsberg

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