Coca-Cola Co. Vs. Bisleri International Pvt. Ltd., (2009): Case analysis
Trademark is an intellectual property that includes representations, signs, marks, expression, symbols, words or design which identifies the product or services of a particular business or brand. The owner of the trademark can be an individual, Business Corporation or any legal entity.
There are two types of trademark symbol-
- The trademark symbol which is usually not registered- ™
- The other is the registered one- ®
Also there are certain agreements and system where the trademark can be registered and rights relating to trademark can be enforced in more than one jurisdiction i.e. in more han one country (global basis). But still there is no system wherein the trademark can be filed and registered that can be applied against the whole world. Just like any national law the trademark law also pertains to a nation and its jurisdiction.
If any other party wants to use the trademark of one company then one must enter into a licensing agreement with the company to use the same. In conformity to the TRIPS agreement the new Trade Marks Act, 1999 was enacted and is in accordance with the international systems and practices. Protection of trademark has been extended to the domains as well through landmark cases like Tata Sons Ltd. v. Manu Kosuri & Ors, [90 (2001) DLT 659] and Yahoo Inc. v. Akash Arora [1999 PTC 201].
India not only follows the codified law but also the common law principles i.e., section 135 of the Trademarks Act1999 recognises infringement as well as passing off actions. Passing off is a common law principle under which the unregistered trademarks rights can also be enforced. Registration of a trademark is not a sine-qua-non for sustaining a civil or criminal action against infringement of trademarks in India.
The case is famously known as “Maaza War” and the case was decided by the Delhi High Court.
The defendant in this case is Bisleri International Pvt. Ltd. previously known as Acqua Minerals Pvt. Ltd., was a part of Parle group of industries. The defendant sold the trade marks, intellectual property rights, formulation rights, knowhow and goodwill etc. of their products THUMS UP, LIMCA, GOLD SPOT, CITRA and MAAZA amongst others to the plaintiff (The Coca-Cola Company) by the master agreement for India only. This case is in relation to the product Maaza only.
It is because of this agreement that all the above mentioned rights have been transferred to the plaintiff forever meanwhile the defendant retained all such rights in respect of other countries where it had been registered except India.
In early 2008, the defendant got to know that the plaintiff had filed for the registration of trademark of Maaza in Turkey and in late 2008 the defendant sent a legal notice to the plaintiff revoking the licensing agreement ceasing all the conveyed rights directly or indirectly.
To this, the plaintiff brought a suit asking for permanent injunction and damages for passing off and revoking the irrevocable agreement in favour of the plaintiff.
Also the plaintiff accused the defendant of unauthorised manufacturing of some particular ingredients of Maaza base by some third party in India. On this basis plaintiff alleged that the defendant is violating the exclusive right of usage of its legally registered trademark
- Does Delhi High Court have jurisdiction to try the present case?
- Whether exporting the product outside the country will be treated as the infringement of the trademark in that exporting country.
The court gave an order dated 15th October 2008 prohibiting the defendant, agents and his allies from using the trademark and also prohibiting the preparation and manufacturing of ingredients of maaza base for making beverages like maaza. It also restricted the defendant to disclose any knowhow formulations of Maaza to any person.
As the defendant has questioned the jurisdiction of the court to entertain the present case, the plaintiff has shown enough ground for the court to have jurisdiction in this case (1)the defendant carries on the business in the jurisdiction of the court, (2) the defendant has the illegal intention to use the infringing trademark within its jurisdiction as it has stated the same in the Delhi Edition of the newspaper -Times of India and the same can be inferred from the legal notice that the defendant sent to the plaintiff.
By the facts and documents as provided by the plaintiff, it is proved that the defendant not only had the intention but was also involved in the business activity with other international and foreign companies like Australia and USA.
The court observed that it is well established law to consider exporting of any product or goods to be sale within the country from where the goods are exported and this will come under the purview of infringement of trademark.
The defence of the defendant were outright rejected as they were prima facie incorrect in their submissions to the court.
Finally in the light of the above stated reasons the Hon’ble Court granted an interim injunction against defendant. The court said that there is a prima facie case in favour pf plaintiff and also the balance of convenience also lies in favour of the plaintiff only and if the injunction is not issued the plaintiff will suffer irreparable loss and injury.
Therefore the repudiation of the agreement by the defendant was invalidated by the court of law and all the trademark rights of Maaza were given back to the plaintiff.
This case is significant as it reiterates and upheld the previously decided cases on trademark related issues like J.N. Nichols (Vimto) Ltd. v. Rose and Thistle and Anr., 1994 (14) PTC 83 (Cal) (DB), the issue of jurisdiction was previously decided in the case of Tata Iron & Steel Co. Ltd. v. Mahavir Steels & Ors. 47(1992) DLT 412, LG Corporation & Anr. v. Intermarket Electroplasters(P) Ltd. and Anr., 2006 (32) PTC 429, para 12. This case is seen as one of the landmark judgements for reference in today’s IPR related issues.