Shaw Wallace & Co. Ltd. and Anr. v.Superior Industries Ltd.
2003 (27) PTC 63 (DEL)
Plaintiff was in the business of manufacturing alcoholic beverages for the last 100 years. He had been selling alcoholic beverages under various distinctive trademarks such as Royal Challenge, Haywards 5000, Haywards 2000 etc. Defendant was also in the business of marketing of alcoholic beverages and was a licensee/permitted user for various trademarks of the Plaintiff, including ‘Haywards 5000 Super Strong Beer’.
In the year 1983, Plaintiff started using the mark ‘Haywards 5000 Super Strong Beer’ and got it registered in 1985. Defendant launched its product of super strong beer in the year 2003 under the mark ‘Superior 5000’.
Plaintiff filed a suit for for permanent injunction praying restraining orders against the Defendant towards infringement of Plaintiff’s trade mark and passing off.
• Beer sold by Plaintiff under the trade mark ‘Haywards 5000 Super Strong Beer’ has become one of the largest selling brands of beer. Numeral ‘5000’ has been sufficiently used by the Plaintiff to denote distinctiveness of the origin of the goods i.e. ‘Haywards 5000 Super Strong Beer’ and the exclusive right is conferred on the Plaintiff by way of registration under Section 28 of the Trade and Merchandise Marks Act, 1958 .
• Customers while purchasing Plaintiff’s brand of beer demand the seller with reference only to the numeral ‘5000’ beer.
• The numeral ‘5000’ lies in the public domain and the Plaintiff has no right to appropriate the same. The said numeral can be used by any person in conjunction with any other mark and therefore, the Defendant has a right to market its beer under the trademark ‘Superior 5000’.
• Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to the goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant’s mark is similar to that of the plaintiff’s, as would be remembered by persons possessed of an average memory with its usual imperfections. (Followed Jagan Nath Prem Nath Vs. Bhartiya Dhoop Karyalaya; AIR 1975 DELHI 149)
• On comparison of the essential features of the label ‘Haywards 5000 Super Strong Beer’ used by the Plaintiff with that of the label ‘Superior 5000’ used by the Defendant, it is conclusive that Defendant’s label is very similar to that of the Plaintiff and results in deceptive similarity.
• It cannot be said that the Plaintiff cannot have an exclusive right in the use of the numeral ‘5000’ in connection with his beer. The Plaintiff must prove continuous and exclusive use of the numeral ‘5000’ in connection with his beer, due to which use, the numeral has acquired a distinctiveness resulting in the right to use the said numeral in connection with his beer.
• Plaintiff has been using the numeral ‘5000’ in connection with his super strong beer and has been exclusively using the said numeral The numeral ‘5000’ is identified in the minds of the consumers in the trade with the product of the Plaintiff. It is central to the theme and scheme of the label of the plaintiff.
• Defendant used the numeral ‘5000’ in respect of its beer to cash in on the wide reputation and the goodwill built over the years by the Plaintiff.
• Plaintiff has prima facie shown having built a reputation over the years and it should not be allowed to be tarnished. Moreover, the Defendant has built no goodwill or reputation, as it has just launched its product. Thus, no harm would be caused to the Defendant if the injunction as prayed for is granted.
Author: Aadhya, National Law University, Odisha