Written by: Lex Protector|June 6, 2013
Sabmiller India Limited files a suite of trademark infringement against Som Distilleries & Breweries Limited in Bombay High Court. Dr. Virendra V. Tulzapurkar, along with Mr. Himanshu Kane with Mr. Hiren Kamod, the learned advocates of the plaintiff informed the court the following facts. .
Allegations against the defendant
On 19th February, 2009, the plaintiff applied for registration of its trademark “SABMiller India – SABMILLER INDIA” under the Trade Marks Act, 1999 (“the Act”) under Application No. 1787321 in Class21 in respect of glass bottles and in Class32 in respect of beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks, fruit juices, syrups and other preparations for making beverages.
The plaintiff conceived a design of glass bottle for selling beer. The company applied for registration of the said design under the Designs Act-2000 in class 09-01 and the design was registered 15th January, 2009 under No. 223479. Meanwhile, the plaintiff changed its name from SabMiller to SKOL Breweries Limited.
The plaintiff started marketing its beer in India after January 2010. The company used the bottle that was designed under No. 223479. The bottles were also inscribed with the Company trade mark SABMILLER INDIA.
In the second week of January 2012, the plaintiff found that the defendant was filling and distributing beer into recycled bottle instead of brand new bottles. The beer bottles used by the defendants are fully identical with the design of the bottle that was registered by the plaintiff under design no. 223479.
Not only that, the defendant was embossing the exactly same logo SABMILLER INDIA that was the registered trademark of the plaintiff.
History of proceedings
Therefore, the plaintiff filed a suit against the defendant in the District court of Raison in Madhya Pradesh praying for permanent injunction restraining from infringing the defendant’s registered design and trademark. The court issued an interim injunction on 3rd February, restraining the defendant from using the said designs and trademark until the next hearing. The interim injunction was extended time to time. The case was transferred to the 3rd. Additional District Judge and the court vacated the interim injunction on 3rd. July, 2012.
Thereafter, the plaintiff appealed before the High Court of Madhya Pradesh, Jabalpur against the said order. On 9th August 2012, M.P High Court discarded the order by an interim injunction. The injuntion was extended from time to time till 18th December 2012. However, Madhya Pradesh High Court dismissed the plaintiff’s appeal in final verdict.
The plaintiff filed a new suit before Bombay High Court for infringement of the trademark “SABMiller India – SABMILLER INDIA”.
Arguments of Defense Counsel
The claim should not be raised again as M.P. High Court already dismissed the plaintiff’s verdict.
The use of the recycled bottle is a common practice in the trade circle. The plaintiff also uses the recycled bottle of Kingfisher. Therefore, it is not a wrongful work.
Plaintiff is guilty of suppression of facts of using recycled Kingfisher bottles in the past.
Defendant is entitled to continue using the registered trade mark of the Plaintiff because such use is protected by the provisions of Section 30 (1) of the Act and
also in view of the provisions of Section 30 (2) of the Act.
Verdict
The Bombay High Court ultimately gave the following verdict in favor of the plaintiff.
“The Defendant is guilty of infringing the Plaintiff’s trade mark SABMiller India/SABMILLER INDIA”.
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