“Coca Cola vs. Bisleri: A Case of Trademark Infringement and Passing off”

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Headline of the article: “Coca Cola vs. Bisleri: A Case of Trademark Infringement and Passing off”

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Author: Gurleen kaur, student at st. soldier law college.

case title:Coca-cola company v. Bisleri international Pvt. Ltd. & Ors.

citation: (2009) 164 DLT 59

Court: Delhi High Court

Date of judgement: 20th October, 2009

Judge: Justice Manmohan Singh

Abstract :

This landmark judgment is based on the infringement of intellectual property rights, delves into the legal dispute between coca-cola and Bisleri international concerning the “MAAZA” trademark, famously known as the MAAZA conflict.the Bisleri company sold the Trademark right of itsjuice brand called MAAZA to the renowned company Coca-Cola. Even after the transaction of the rights to the coca-cola, Bisleri started selling drinks with the same name in Turkey, which infringes the trademark rights of the coca-cola company. This landmark judgement is also called as “Maaza war”, and also used as a precedent for the cases relevant to the matters of infringement of trademark agreement by limiting its application based on territory or geographical area.

Keywords: Trademark, infringement, passing off, unfair competition, injunction, branding.

Hindustan Pencils Private Limited v. India stationery Products Co.: 4

S.M Dyechem Ltd. v. Cadbury (India) Ltd. 4

Conclusion: 4

FAQs: 4

What was the main issue in the Coca Cola vs Bisleri case? 4

What was the outcome of the case? 5

Did Bisleri appeal the decision? 5

What was the significance of this case? 5

Sources: 5

Fact of the case:

The plaintiff is the biggest soft drink company, with operations in more than 190 countries. Bottling companies are hired by it, and it gives tem license to sell drinks under certain of its brands. Furthermore, it names other companies to produce beverage bases that the bottlers will market. The defendants, Mr. Ramesh Chauhan and Mr. Prakash Chauhan, signed a master agreement on September 18, 1993, whereby they sold the plaintiff the trademarks, formulation rights, know-how, intellectual property rights, goodwill, etc. of their products, which included “THUMBS UP,” “LIMCA,” “GOLD SPOT,””CITRA,” and “MAAZA”is the only product in question. Despite owning the trademark, the defendant subsidiary “Golden Agro Products Ltd.”possessed the proprietary beverage base used in the creation of “MAAZA,”The company now became “Bisleri Sales Ltd.” after merging with the defendant along with a few other companies. The plaintiff and “Golden Agro Products Pvt. Ltd. in October of 1995,signed the MAAZA license agreement. This agreement gave the plaintiff complete and irrevocable ownership of all trademarks, formulation rights, etc. Regarding other nations where “MAAZA”had been registered, the defendant held trademark rights. The defendant was informed by the plaintiff in March 2008 that an application had been submitted to register the trademark “MAAZA”in Turkey. On September 7, 2008, the defendant sent a legal notice to the plaintiff, rescinding the licensing agreement and forbidding the plaintiff from using the defendant’s trademarks,etc., in any way while producing “MAAZA”or utilizing them through its affiliated companies. According to the plaintiff’s claim, the notice stated that by trying to register “MAAZA”in Turkey, the plaintiff had violated the terms of the agreement previously mentioned, since the agreements and assignments between the parties permitted the plaintiff to use “MAAZA” only in India. Additionally, the defendant’s intention to begin using the trademark “MAAZA”in India was revealed in the previously mentioned notification. The plaintiff alleges that the defendant fully ignored the irreversible and complete transfer of the intellectual property rights in the plaintiff’s favor in an effort to obtain a permanent injunction, damages, and relief for trademark infringement and passing off.

Issue:

Whether Delhi High Court has the proper jurisdiction to entertain this case?
Whether the coca-cola company is entitled to damages for passing off and infringement of trademark?
whether the plaintiff is entitled to get the order of permanent injunction against the defendant?
Does the plaintiff’s trademark rights get violated when goods bearing the “MAAZA”trademark are exported?

Arguments:

The plaintiff argued in the court that the defendant cannot use the trademark MAAZA as if they use it without authorization summed up to trademark infringement and passing off. The plaintiff further claimed that a newspaper article demonstrating the defendant’s intent to use the trademark within the court’s jurisdiction validated the claim of trademark infringement. The plaintiff relied on section 134 of the trademarks Act, 1999, to establish the court’s jurisdiction.Controversy, the defendant contended that the court lacked jurisdiction to hear the defendant’s intent to use the mark within the court’s jurisdiction validated the claim. Additionally, the defendant stated that because it acknowledged the plaintiff’s exclusive rights to the mark, it had no intention of using the infringing trademark within the court’s jurisdiction.

Laws concerned:

This whole judgement covers the concept of trademark infringement and in context of this infringement Section 26 of the Trademark Act of 1999 states the effect of removal from register for failure to pay free for renewal says that in any event that a trademark is removed from the register due to nonpayment of the renewal fee, it will still be considered to be on th register for the purpose of any subsequent trademark registration applications filed within a year of the removal date. this is unless the registrar or the High court, as applicable, is satisfied with either:

that during the two years prior to its removal, there was no legitimate commercial use of the trademark; Alternatively
that, in light of any prior usage of the trademark that has been deleted, there is no likelihood that the use of the mark that is the subject of the application for registration will cause deception or confusion.

Section 41 of the Specific relief Act 1993 states the ground for refusal of injunction; the practical application implies that parties cannot enter into such a contract that is detrimental or willingly, which would discourage the injunction lawsuit. This section says that since there was a mutually beneficial or consensual contract between the parties, the lawsuit cannot between the parties, the lawsuit cannot be dismissed. As a result, the plaintiff is qualified to obtain a perpetual injunction to uphold and fulfill their exclusive rights.

Section 42 of the Specific Relief act, 1993 states that the plaintiff becomes entitled to the imposition of injunction if they had performed their part of the contract to which they made themselves bound. according to this section, it is not authorized for the defendant to use the “MAAZA”trademark. In other words, “if the plaintiff had performed their part of the contract as was binding on them, they would be entitled to the injunction.” This implies that if the plaintiff fulfills his end of the bargain, he will receive an injunction.

The decision:

On the grounds that this court lacks jurisdiction, the defendant requested that the court’s order be vacated. nonetheless, from the standpoint of criminal law, the Indian Penal code 1860 has an extraterritorial jurisdiction, meaning that an Indian citizen who commits an offense on foreign soil will still be held accountable. Thus, the Delhi High Court has jurisdiction over this case in accordance with this principle. The court has the authority to take up this issue because the goods were made in India and sold in Turkey.

An interim order of injunction was issued against the defendant company Bisleri, prohibiting them from using the trademark that is each purchasable in India and from exporting goods, and the Delhi High Court restricted the sale of MAAZA products by Bisleri in India. It was completely worn out to prevent the plaintiff from experiencing irreversible loss and harm, and the court rejected the Bisleri company’s appeal.

Additionally, it was decided that since Bisleri was still allowed to sell its goods abroad and that the purpose of the manufacturing was to sell them abroad, the court should have issued an injunction restricting the sale of the goods to India rather than allowing for exports.

While coca-cola Company owned the MAAZA trademark only in India, Bisleri International Pvt. Ltd. has registered the trademark globally. If the Coca-Cola Company attempts to claim all rights and trademarks globally, they will be unjustified in their request for an injunction to stop manufacturing products for export.

Investigating further revealed that Verma International was shipping the trademark goods to Australia. Verma International became a party to the case when the Court decided that there was trademark infringement because the product was made in India and exported, which is regarded as a sale made within the country. In order to stop verma International from making any more sales and from incurring significant financial losses for The Coca-Cola Company, the Court further upheld the injunction against the company.

Case laws:

Hindustan Pencils Private Limited v. India stationery Products Co.:

In this case, the Court held that a party cannot be allowed to use a trademark or trade name that is deceptively similar to another company’s trademark as in this case, Bisleri was using coca- cola company’s trademark even after the transfer of the trademark rights.

The test for determining similarity is not just visual or phonetic, but also considers the overall impression and likelihood of confusion among consumers.

The court relied on this precedent in the case of Coca Cola vs. Bisleri ruled that Bisleri’s use of the MAAZA Trademark and logo was likely to cause confusion among consumers, despite arguments that the products were similar.

S.M Dyechem Ltd. v. Cadbury (India) Ltd.

In this case the court stated that a Trademark owner’s rights are not limited to the specific goods or services for which the mark is registered, but also extend to similar or related goods or services.

The court in coca cola vs. Bisleri case relied on this precedent to rule that Bilseri’s use of the MAAZA trademark and logo for a mango drink was likely to cause confusions among the consumers, despite Coca Cola’s MAAZA being a cola drink. The court applied the principle that a trademark owner’s rights extend to similar or related goods or services.

Conclusion:

The trademark is the very crucial aspect of IPR, which signifies the identity of any company or enterprise. it covers brand names or any firm’s name or any product’s name which cannot be used by any other company the coca-cola vs. Bisleri international Pvt. Ltd. case states as an best example for the Trademark infringement and also known as an renowned case of MAAZA war. it will be further used as a precedent for the future arising conflicts related to this matter. The court’s decision regarding the protection of trademark rights of the coca cola company implies the importance of safeguarding brand identity and preventing consumer confusion. This case highlights the descriptive concepts of intellectual property rights and the significant steps to protect the rights of the rights holder.it also highlights the need for clear contractual agreements and clauses during mergers and acquisitions.the court’s decision reinforced Coca Cola’s ownership and control over the MAAZA brand in India. This case also showcased the intense competition in the India beverage market and the lengths to which companies will go to protect their brands.

FAQs:

What was the main issue in the Coca Cola vs Bisleri case?

The main issue was trademark infringement and passing off by Bisleri’s use of the “MAAZA”mark.

What was the outcome of the case?

The court granted a permanent injunction in favor of Coca Cola , restraining Bisleri from using the “MAAZA”mark.

Did Bisleri appeal the decision?

Yes, the Bisleri appealed the decision, but the appeal was dismissed.

What was the significance of this case?

The case highlighted the importance of trademark protection and the need for businesses to ensure that their branding and marketing strategies do not infringe on the rights of others.