TaxTMI 
TaxTMI 
2011 (6) TMI 937
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....ufacturing packaged drinking water under the trade mark/label AQUAFINE or any other mark or label which is deceptively or confusingly similar to the Plaintiffs' Trade Mark AQUAFINA. 4. Further in I.A. No. 15435/2009, the Court appointed Mr. Vipin Nair as a Local Commissioner and directed him to visit the premises of the Defendants to comply with the following directions: 1. If, on visiting the site, the local commissioner discovers any infringing products of the Defendants under the mark/label AQUAFINE or any other mark, which is identical or deceptively and confusingly similar to the Plaintiffs, mark AQUAFINA, he shall seize the same and make out an inventory. 2. Any moulds, dyes, packaging, labels, price list pamphlets, brochures, posters and bill books, etc. which carry the mark/label AQUAFINE, which is identical or deceptively and confusingly similar to the Plaintiffs' mark AQUAFINA, shall also be seized and taken into custody and an inventory for the same shall also be made. 5. The Local Commissioner visited the site of the Defendants and has inter alia made the following inventory: PARTICULARS QUANTITY Bottle Jar 20 ....
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....MM 85.4 2005 10.6 MM 123.3 2006 12.3 MM 153.3 (vi) The trade mark AQUAFINA as well as the label AQUAFINA of the Plaintiffs have been regularly protected against any act of infringement and third party use as apparent from following orders? S. No Suit No. and Title Impugned Mark/label Favorable Order Current Status of the Suit 1. Suit No. 33/02 - PepsiCo Inc. Vs. Vijay Kumar AQUAFINA Ex-parte interim injunction dated 07.01.2002 Settled and decreed 2. Suit No. 748/2006 - AQUANINE Ex-parte interim Settled and PepsiCo India Limited Vs. M/s. Siri Springs & Anr. injunction dated 04.05.2006 decreed 3. Suit No. 941 / 2007 - PepsiCo Inc. Vs. Rajendra Gilda & Anr. AQUAFINE Ex-parte interim injunction dated 22.05.2007 Settled and decreed 4. Suit No. 940/2007 - PepsiCo Inc. Vs. Annamar Aqua Products AQUA‟SAFINE Ex-parte interim injunction dated 22.05.2007 Settled and decreed 5. Suit No. 2078/2007 - ....
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....k AQUAFINE either visually or phonetically with the trader mark of the Plaintiffs. (d) The Defendant's label AQUAFINE is not similar to the label of the Plaintiffs. (e) At No. point of time, the Plaintiffs have objected to the said mark being used by the Defendants. 9. As far as the first objection about the territorial jurisdiction raised by the Defendants is concerned, the Plaintiffs have invoked the jurisdiction of the Court by making the statement that the Plaintiffs' mark/label AQUAFINA is a registered trade mark. The Plaintiffs substantially conduct their business both directly and through their bottlers in Delhi. Therefore, under Section 134 of the Trade Marks Act, 1999 this Court has the territorial jurisdiction. It is alleged by the Plaintiffs that the Defendants have applied for the registration of the trade mark which was published in the Trade Marks Journal and the same is available in Delhi and there is a threat from the Defendants of launch of their products in Delhi, therefore, this Court has the jurisdiction to try and entertain the present suit. 10. The Trade Marks Act, 1999 is a special Act and Section 134 of this Act provides an ad....
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....ment of their own firm as alleged showing the user of the mark since 1992 nor they have placed any public advertisement of the Defendants which could have attributed knowledge on the part of the Plaintiff to file the present suit at an earlier point of time. The Defendants have filed very few documents which No. doubt give indication that few certificates have been issued by the Senior Scientific Assistant of the Directorate of Health Services, Environmental and Pollution Control Wing, Panaji, Goa for the year 1992, 1994 to 1999 in the name of M/s. Aquafine Industries. The Defendants have also filed the certificate of analysis issued by the ITALAB dated 31.8.2001 as well as the copy of the letter dated 23.10.2001 in the name M/s. Aquafine Industries. Copy of the statement of one of the partners of the Defendants recorded before the Chief Metropolitan Magistrate under Section 200, Code of Criminal Procedure, notice dated 18.1.2001 issued by the Assistant Commissioner of Commercial Taxes and few invoices for the year 2000 to 2001 have also been filed. There is No. continuity at all about the user of the trademark AQUAFINE even after filing of cogent and clear documents. 13. After ....
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....that the packaging used by the Defendants is not similar is also without any merit as the question raised by the Defendants have been decided by the various Courts at many occasions. Some of the cases are referred as under: (a) In Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. India Trading House AIR 1977 Delhi 41, the Plaintiff claimed the relief on the basis of get up, layout and arrangement of violet and grey and colour combination of the Plaintiff's container. It was alleged that the Defendant has very recently adopted identical container in respect of white paints as mentioned in Paras 3 and 4 of the judgment. In Para 9 of the said judgment, it is observed as under--"Having noticed the principles which have to be borne in mind, the application thereof is not difficult in the present case. It is true that there is a phonetic difference between the numerals "1001" and "9001" but taking into account the entire get up the combination of colours, it will be noted that the essential features of Plaintiff's containers have been absolutely copied. The entire scheme of the containers is also the same. There is a common large circle with the same colour scheme....
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..... Thorn cascade Co Ltd. 1982 RPC 459, the Plaintiffs were marketing the gas cylinders of grey colour under their trade mark 'Sodastream' and the Defendants having also been marketing their black colour cylinders under their own trade mark' Thorn Cascade., the proposals of the Defendants to refill the grey colour gas cylinders of the Plaintiff, even with their own trade mark amounts to passing off as the grey colour cylinder is distinctive of the Plaintiffs in respect of which the reputation accrued in favour of the Plaintiffs. Interlocutory injunction granted. (d) In the case of Tavener Rutledge Ltd. v. Specters Ltd. 1959 RPC 83 at Page 88, it was observed as under: It seems to me that one has to take into consideration people who have what is called imperfect recollection, as was pointed out in the case of Saville Perfumery Ltd. v. June Perfect Ltd. (1941) 58 RPC 147 at 174.5 and one has to allow for cases where the person who has not got the two tins side by side perhaps does not remember the Plaintiff's name accurately, or does not know that there are two different traders in the same line of business, or many others for that matter, and takes a....
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....Mere registration is not enough to prove the use of the trade mark. It is the admitted position that the application for registration of the trade mark AQUAFINE was filed by the Defendants after the registration of the trade mark was already granted in favour of the Plaintiffs. The registration relied upon by the Defendants gives No. advantage to the Defendants because the present case is also a suit for passing off and as per documents placed by the Plaintiffs. It has been established that the Plaintiff is the prior user of the trade mark AQUAFINA which has been protected by the Courts from time-to-time. It is a coined trade mark of the Plaintiffs. It has goodwill and reputation not only in India but in other parts of the world as well. It has also been well advertised in modern media. As per record, the Plaintiffs have been able to establish the prior user of the trade mark, hence, the registration granted in favour of the Defendants does not help the case of the Defendants in view of the settled law on point decided in the case of AM?. Dongre and Ors. v. Whirlpool Corporation and Anr. AIR 1995 Delhi 300. The following are the paras wherein the similar point has been discussed: ....
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.... user of a trade mark against a registered user of the same. In other words registration of a trade mark does not provide a defense to the proceedings for passing off as under Section 27(2) of the Act a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Again this right is not affected by Section 31 of the Act, under which the only presumption that follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrepeatable one & can be displaced. Besides Section 31 is not immune to the over-riding effect of Section 27(2). Placing reliance on Section 28(3) of the Act the I warned Counsel for the Appellant contended that when two registered proprietors of identical or near similar trade marks cannot be deemed to have acquired exclusive right to the use of any of those trade marks against each other, how can an unregistered user of the trade mark maintain an action for passing off against a registered user of the same mark and seek an injunction restraining him from using it. This argument of the learned Co....
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....recognised at common law even before it was subject of statutory law. Prior to codification of trade mark law there was No. provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognised by Sections 27(2) and 33. (33) The law of 'passing off as it has developed, permits an action against a registered proprietor of a trade mark for its mendacious use for inducing and misleading the consumers into thinking that his goods are the goods of or are connected with the goods of a prior user of the trade mark. It seems to us that in so far as this Court is 'concerned, this position cannot be disputed in view of the judgment of the Division Bench in Century Traders v. Roshan Lal Duggar & Company 15 (1979) DLT 269 : 1978 Del 250, where, while construing Sections 27(2) and 106 of the Act, it was held as follows: FROM a reading of the above Sections it is clear that registration of mark in the trade mark registry would be irrelevant in an action for passing off. Thus, the law is pretty well settled that in order to succeed at this stage the Appe....