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  • Dhanunjaya Sivakumar

Case summary: Coca Cola Company V Bisleri International private limited



Citation: 2009 164 DLH 59 

Facts 

The present case established many principles of trademarking along with the principles constituting its uses and infringement. The Coca-Cola Company (Plaintiff), was the largest brand in soft drinks. It had a presence in over 200 countries. It primarily functioned by appointing bottlers and granting them licenses to use its trademarks for the sale of beverages. It also appointed third parties to make beverage bases for sale to the bottlers. Defendant No. 1 was part of the Parle Group of industries; it owned the trademark to various soft drinks such as Thums Up, Limca, Gold Spot, and Maaza. On September 18th, 1993, the owners, Ramesh and Prakash Chauhan, sold all the trademarks, formulation rights, and other intellectual property rights to the plaintiffs. This case was instituted over allegedly unauthorized use of the mark MAAZA after the defendant sold its rights. 


On 12th November 1993, the defendants assigned the trademark and license agreement with their affiliate Bisleri Sales, who made the beverage base for MAAZA. The defendants continued to retain the use of the trademark with respect to countries other than India, where the mark was already registered. In March 2008, the defendant came to be aware of the plaintiff's filing for registration of the impugned mark in Turkey. The Defendant immediately sent a legal notice claiming a breach of their agreement. Defendant No. 1 argued that the assignment deed only allowed the plaintiffs to use the mark in India. The Defendants also spoke of an intention of starting to use the trademark of MAAZA in India as well and repudiated the claims licensing agreement between the both of them. The plaintiff thus approached the High Court with a suit for temporary injunction under Order 39, Rules 1 and 2 of the Civil Procedure Code (CPC). Additionally, the plaintiff also contended that according to the agreement, the right to use the formulation of MAAZA was of the defendant alone, but in violation of the agreement, the defendant had disclosed the information to a third party named M/S Varma International. The court allowed the injunction and appointed a local commissioner to look into illegal disclosure of information. 


The plaintiff accused defendant no. 1, Ramesh Chauhan, of disclosing sensitive information about Maaza’s recipe to Mr. Vishal Varma, owner of Varma International. The plaintiff therefore asked for the impeachment of Mr. Ramesh Chauhan and Mr. Vishal Varma as necessary parties to the case. The Court impleaded Mr. Vishal Sharma as a defendant in the case. 


Issues: 

1. Whether the Delhi High Court had jurisdiction in the instant case? 

2. Whether the plaintiff was entitled to get a permanent injunction? and 

3. it was necessary to implead Mr. R.B. Varma, who was the father of Mr. Vishal Verma and also a former employee of Bisleri. 


The instant case mainly revolved around provisions of three statutes: 

a) The Trademarks Act, 1999 

b) The Civil Procedure Code, 1908 and 

c) Specific Relief Act, 1963. 


Reasoning and Analysis 

The defendant filed a suit under Order 39 Rule 4 of CPC, which allows a party to make an application against an ex-parte order. The defendant prayed for vacating the court’s order made on 15th October 2008 citing lack of jurisdiction of the Delhi High Court. The defendant contended that since their registered office was in Mumbai, it was the Bombay High Court that had the appropriate jurisdiction in the matter. The Court disagreed with the Defendant and established its jurisdiction under Section 131 of the Trademarks Act and Section 20(c) of CPC. Section 131 of the Trademarks Act allows a suit to be instituted at the place of residence or business of the plaintiff. Section 20(c) allows suits to be instituted in jurisdictions where the cause of action wholly or partly arises. Since the defendants had advertised their intention of reusing the impugned mark, therefore the cause of action for the dispute arose in Delhi bringing the case under the Delhi High Court’s Jurisdiction. 


The Court decided in favor of the plaintiff on the issue of permanent injunction as well. The Court held that since the defendant made an advertisement establishing their intention to use the impugned mark, it came within the ambit of the definition of ‘use’ as postulated under section 2(2)(c)(ii) of the Trademark Act, 1999. The Section explicitly mentions any reference to the use of the mark as an example of ‘use’. The Court also reasoned that there were several precedents establishing that interpretation: In Pfizer Products Inc v. Rajesh Chopra. The Delhi High Court itself held that the defendant, who had threatened to sell the offending goods owned by the plaintiff, was to be interpreted as use and conferred jurisdiction on the Court. The Court further held in that case that while it was to be decided later on whether the threat perception was justified, prima facie there was an established case of use.


For the plaintiff to get a permanent injunction the court had to see whether there was prima facie evidence of a dishonest use of the mark. From the reports of local commissioners appointed to visit the factory of M/s Varma International, the court gathered that the company was exporting maza bottles to one Mr. Pars Ram Fruit and Spices in Australia. Mr. Pars Ram Fruit had a trademark registered for “MAAZA” in the same class as the plaintiff’s registration of “MAAZA”. This particular registration was then transferred to defendant no. 1, Bisleri International. Furthermore, M/s Maaza Beverages Inc., New York also issued documents that showed the defendants were purchasing “MAAZA” drinks to the knowledge of the proprietor of Varma International. This proved a nexus between the two parties.


Eventually, defendant no. 1 also admitted to purchasing “MAAZA” drinks from Maaza Inc. and exporting them to Australia through Varma International. The fact that the defendant exported the “MAAZA” drinks from India established that there was a sale within the country thereby infringing the plaintiff’s trademark as established under Souza Cruz v. N.K. Jain [PTC (Suppl) (2) 892 (Del)]. The court held that since there was a case of dishonest case being laid out, therefore it is a well-settled provision in law, established by the apex court in Midas Hygiene Industries Ltd. v. Sudhir Bhati [2004 (28) PTC 121 (SC)], that a grant of injunction must follow.  


The Defendant also attempted to dissuade the court from allowing the injunction through the Specific Relief Act. The Defendant used section 41(h) of the Act to establish that since there was an equally efficacious remedy available, therefore an injunction ought not to be granted. The Court held that since it was an exclusive right of the plaintiff being impugned, there was no efficacious remedy except an injunction. Furthermore, the court pointed out the remedy available under Section 29 of the Trademarks Act and stated that the remedy could be used instead of the Specific Relief Act. 

Lastly, the court also allowed to implead Mr. R. B. Varma as defendant no. 4. The court took the decision because Mr. R. B. Varma, the father of Mr. Vishal Verma and also a former employee of Mr. Ramesh Chauhan, was a key element in determining the real question of controversy in the case. 


Held 

The Court held in favor of the plaintiff on all three issues. The Court held that the Delhi High Court had jurisdiction in the case. The Court also held that the circumstances of the case mandated the exercise of a permanent injunction to ensure that the plaintiff doesn’t suffer more damage lastly the Court also impleaded R.B Verma since it believed that his joinder was necessary for the court to find the truth in the case. 


Conclusion 

This case was a landmark judgment in terms of the scope of protection that was allowed under Trademark Law. This case first and foremost stands as a precedent on the interpretation of what constitutes use under Trademark Law. The case stands as the reference case in questions of court jurisdictions and what constitutes an infringement of a Trademark. Trademark is a territorial right with global implications. Every owner of a trademark should their a caution awareness of their IP. 

 

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