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An Indian company named Jagpin Breweries was selling country liquor by using the transliteration of the mark 'Mirinda'.
The Delhi High Court has restrained a liquor manufacturer from using the MIRINDA mark. The order is applicable to its Hindi transliteration as well. The suit was filed by PepsiCo seeking a permanent injunction.
An Indian company named Jagpin Breweries had been selling country liquor by using the transliteration of mark 'Mirinda'. After being aware of it, PepsiCo came to the conclusion that it was an infringement on their exclusive rights to sell goods in respect of which the trademarks were registered. The multinational company submitted that Section 28(1) of the Trade Marks Act (TMA), 1999 empowers them for it and it also enables obtaining relief in case of infringement.
PepsiCo submitted before the court that transliteration was causing confusion among purchasers that the said liquor was being produced by it and was causing damage to goodwill of Mirinda. The company alleged that it was an infringement under the ambit of Section 29 of TMA, 1999. Bhatia plastics case was cited to point out that using transliteration is impossible in law.
Defending itself, Jagpin Breweries abridged the court of 108-year-old history of its merged entity Cox India and said that it adopted the transliterated word in 2007 itself and sought its registration. They further said that in the last 15 years, no customer had complained of any confusion whatsoever. It further claimed that the consumer base and trade channels were also different as the liquor was being sold in specific shops.
It was further submitted that marks were neither similar nor deceptively similar. They have different colour schemes, logo, style of writing and the entire get-up of the bottles, moreover details like MRP, address, FSSAI mark are also there to eliminate confusion, the liquor manufacturer claimed.
They also raised the issue of delay on the part of PepsiCo to buttress the case. In response, the multinational company said that it became aware of infringement only in December 2021, when the defendants applied for registration of the mark ‘CONTINENTAL MIRINDA BEER’ in Class 32. Water and Non-Alcoholic Beverages fall under this class.
PepsiCo also pointed out that the beverage in question was sold only in 7 districts of Madhya Pradesh and was also not advertised, therefore it was not easy to know about its existence.
Relying on the Midas Hygiene Industries case, Rajdhani Masala Company case, and Crayons Advertising Ltd. case, PepsiCo further pointed out that delay by itself can not defeat the statutory right of the proprietor.
The single judge bench of Justice Jyoti Singh accepted PepsiCo’s arguments regarding delays. She further stressed on law on acquiescence in India.
She referred to relevant paragraphs of M/s Power Control Appliances judgment. In that case, the Apex Court had analysed various definitions and case laws to establish that mere silence or inaction is not enough for acquiescence and that a positive action is a necessary ingredient.
With respect to the present case, Justice Singh said, “This onus the Defendants have failed to discharge even on a prima facie threshold and to the contrary, Plaintiffs have agitated their claims as soon as they gained knowledge in December 2021
Court then analysed the claim of infringement under Section 29(4) of the TMA, 1999. Since this was not the case of deceptive similarity, ITC Limited Case applied here wherein was held that “a global” look, rather than a focus only on the common elements of the mark, is to be taken, while considering if the impugned or junior mark infringes, by dilution, an existing registered mark".
Justice Singh also looked into C.R Borman & Anr. case, Ashok Leyland Limited case, and Bloomberg Finance LP case to explain the scope of Section 29(4) of TMA, 1999.
Analysing the present question from the aforementioned judgments, the single judge bench held that it was a case of transliteration, which had been held as infringement in the Bhatia Plastics case.
It then checked whether both were identical or similar which is the first ingredient of Section 29(4). Justice Jyoti Singh held, “A bare comparison of the rival marks shows that they are phonetically identical and conceptually similar to each other and therefore the first ingredient of Section 29(4) stands satisfied”.
Another basis for claiming infringement under Section 29(4) is that a company needs to have a reputation in India. The Court analysed the Company's history. It includes the time PepsiCo first adopted MIRINDA inside as well as outside India. In India, it was adopted in 1996. The company had also furnished loads of articles on MIRINDA published by reputed portals like India Today, Financial Express, and Economic Times as well as celebrities endorsing it. They also produced evidence of turnover, sales figures and spending on advertisements.
Justice Singh found the facts of the case similar to the BMW case in which a local company was using the name DMW.
The Single judge bench observed that Jagpin Breweries’ intention was to encash on goodwill and reputation associated with MIRINDA.
The Court also rejected the defendant's claim that they had been using the mark since 2007 as the trademark application was rejected in 2007 after which they had filed another application in 2017.
Jagpin Breweries had also contended that an honest and concurrent user could distinguish both of them. Court held that the adoption of the trademark was already held to be dishonest.
Referring to the Radico Khaitan case, the high court said, “It needs no emphasis that plaintiff's mark MIRINIDA has acquired huge goodwill and reputation and going by the strength of the mark, defendants’ use of a mark which is a transliteration with phonetic identity, cannot be counterbalanced by the defence of honest and concurrent user”.
Conclusively, the court said that until the suit is decided, Jagpin Breweries, their agents, representatives, servants, men, distributors and all those acting in concert with them can’t use the trademark.
Case Title: PEPSICO, INC. & ANR v. AGPIN BREWERIES LIMITED & ANR
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