TaxTMI 
TaxTMI 
2011 (6) TMI 937
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....he 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 liters Capacity (a) Empty Jars 30 Bottle Jar 20 liters Capacity (b) Filled up Jars....
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....rent 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 - PepsiCo Inc. Vs. M/s. Sagar Food & Beverages & Ors. AQUASAGAR Ex-parte interim injunction granted Settled and decreed (vii) The Defendants are engaged in the sale of packaged drinking water under the trade mark AQUAFINE. The Defendants are using the trade mark AQUAFINE on their bottles which is deceptively similar to the Plaintiffs trade mark AQUAFINA. The Defendants are also using the same getup and colour combination on ....
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....gistered 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 additional forum to initiate the action for infringement of trade mark in addition to the provision of Section 20 of the Code of Civil Procedure in order to invoke the territorial jurisdiction. Section 134(2) mandates that in an action for infringement of trade mark, if at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. 11. In t....
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.... 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 having gone through the said documents, it is crystal clear that the statement of Defendants that they have been using the mark in question regularly since 1992 is wrong. In fact there is hardly any document available on record to show any continuity of the user and in the absence thereof the Court at this stage cannot accept the submissions of the Defendants about the user claim. In order to prove the concurrent user, heavy burden lies on the party who is claiming the user. It is a settled law that the evidence must be clear, cogent and....
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....ite 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 and with the same background. There is the same description of Superior White on top and Zinc paint on the bottom in the circle. Again, the White circle with grey lettering is identically super-imposed on violet background. The only difference is that instead of white parallelogram shapes on top and base borders there are white triangles and on the white parallelograms instead of numeral '1001' in grey lettering, the numeral on the Defendants container is '9001' but the overall effect is just the same. The commodity is such that it is likel....
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....rlocutory 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 casual glance at the tin and imagines that it is the kind of fruit drops that he wants, not entirely casually, but looking at it in the ordinary way that such a customer would go into a shop and see a pile of tins or something of that sort. Afterwards of course raise objection, but it seems to me that it is a case of confusion if customers are induced to buy by a recollection of the general get up of the Plaintiffs, tin so that they purchase a tin of the Defendants, sweets by mistake and I am bound to say that I have come to the conclusion that such confus....
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.... 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: (30) We now proceed to consider the question as to whether the Respondents can maintain an action for passing off against the Appellants who are the registered proprietors of the trade mark "WHIRLPOOL" in India. Learned Counsel for the Appellants submitted that the Appellants have an exclusive right to use the trade mark "WHIRLPOOL" under Section 28(1) of the Act as they are the registered proprietors of the same. In order to appreciate the submission of the learned Counsel, it will be necessary to set out Section 28(1) of the ....
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....othing 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 Counsel seems to stem from a misconception about the real purpose and intent of Section 28(3). Actually Section 28(3) protects registered proprietor of a trade mark from an infringement action by another registered proprietor of an identical or near similar trade mark. In this regard it will also be necessary to extract Section 28(3) and Section 3(1)(d) which carries of the intent of Section 28(3). These Sections read as under: 28(3). Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble eac....
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....re 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 Appellant had to establish user of the aforesaid mark prior in point of lime than the impugned user by the Respondents. The registration of the said mark or similar mark prior in point of lime to user by the Appellant is irrelevant in an action for passing off and the mere' presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trad....