Team Code-

Kandivali Education Society’s

Shri Jayantilal H. Patel Law College

presents

National level Inter-collegiate Legal Fest “ASTRAEA- 2020”

BEFORE THE HON’BLE HIGH COURT OF MUMBA

AT MUMBA

ORIGINAL CIVIL JURISDICTION

Soda-licious (Sindia) and Co. Ltd -----------------------------------------------Petitioner

Versus

Soda-delicious and Co. Pvt. Ltd------------------------------------------------Respondent

Written Submissions on behalf of the Respondent.

1
 THE TABLE OF CONTENTS

Preface Page No.

1. List of Abbreviations -------------------------------------------------------------------- 3
2. The Index of Authorities ----------------------------------------------------------------- 4
3. The Statement of Jurisdiction ----------------------------------------------------------- 6
4. The Statement of Facts-------------------------------------------------------------------- 8
5. The Statement of Issues------------------------------------------------------------------ 10
6. The Summary of Arguments------------------------------------------------------------- 11
7. The Arguments Advanced---------------------------------------------------------------- 12
I.Whether the company Soda Delicious Pvt ltd have right to use the registered
trademark?

II.Whether soda delicious company is liable for infringement and passing off by use of
corporate name, use of trademark, use of packaging and use of domain name of soda
licious pvt ltd?

III.Whether the acts of soda delicious co pvt ltd affected the goodwill of soda licious
cindia pvt ltd and is liable for damages for losses suffered?

IV.Whether the trademark registered for soda delicious should be to remove/strike

off the trademark from register by competent authority?
8. The Prayer----------------------------------------------------------------------------------- 30
9. Annexure------------------------------------------------------------------------------------ 31

2
 LIST OF ABBREVIATIONS

1. AIR - All India Reporter

2. Art - Article
3. s - Section
4. HC - High Court
5. SC -Supreme Court
6. SCC - Supreme Court Cases
7. SCR - Supreme Court Reports
8. P - Page
9. Para - Paragraph
10. TM Act - Trade Marks Act
11. CPC - Civil Procedure Code
12.v-Versus
13.TM-Trademark

3
 THE INDEX OF AUTHORITIES

AUTHORITIES REFERRED

 V.K. Ahuja, Intellectual Property Rights in India (3rdedn LexisNexis 2018)

 The Trade Marks Act 1999,Bare Act 2019
 Code of Civil Procedure 1999

STATUS REFERRED

 The Trade Marks Act 1999

 Code of Civil Procedure

CASES REFERRED

Sau. Pritikiran rajendra katole v. Sau. Harsha Ravindra katole

Cable News Network LP, LLLP (CNN) v. CAM News Network Limited [1]

Kharwar Case

Veerumal Praveen Knmnar Case

Macleods Pharmaceutical Ltd Case

Kirloskar Proprietary Ltd Case

Cadila Healthcare Ltd Case

Hindustan Pencils Ltd Case

J.R. Kapoor Case

Lowenbrau AG and Anr v Jagpin Breweries Ltdand Anr

Goenka Institute of Education and Research v. Anjani Kumar Goenka and Anr

Kopran Case

4
 PremwatiBansal Case

Alkem Laboratories Ltd Case

Hindustan Pencil (P) Ltd. v. India Stationary Products Company

Emcure Pharmaceuticals Ltd. vs. Corona Remedies Pvt. Ltd

Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel and Other.

H.P Balmer Ltd. v. J Bollinger

Anheuser Bush Inc v. Budejovicky Budvar

Calvin klein inc v. International Apparel syndicate

Group Lotus Plc v Malaysia Racing Team

Smithkline Beecham v. V.R. Bumtaria

Green MR in Marengo v Daily Sketch [1948]

B&S Ltd v Irish Auto Trader Ltd.

Radio Taxicabs (London) Ltd (t/a Radio Taxis) v. Owner Drivers Radio Taxi Services
Ltd (t/a Dial-a-Cab)

S.B.L. Limited v. Himalaya Drug Co.

Indo-Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceutical Ltd.

Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises & Ors.

Kirloskar Propreitary Ltd. v. Kirloskar Dimensions Pvt. Ltd

WEBSITES REFFERED

 http://www.indiankanoon.org
 http://www.legalbites.in
 http://www.vakilnumber1.com
 http://www.trademarknow.com

5
 https://indiankanoon.org/doc/186934531/?type=print
 http://en.wikipedia.org/wiki/Trademark
 http://en.wikipedia.org/wiki/Trademark_infringement
 http://www.amarjitassociates.com/articles/trademark-infringement.htm
 http://www.legalserviceindia.com/article/l226-Trademark-Infringement-&-Passing-
Off.html
 http://www.lawisgreek.com/trademark-law-india-and-foreign-brands
 http://www.evancarmichael.com/Management/1035/Remedy-for-Trade-Mark-
Infringement-India.html
 http://www.bitlaw.com/trademark/infringe.html
 http://www.usip.com/pdf/Article_Trademarks/prioruse.pdf
 http://www.mondaq.com/india/x/87398/Trademark/Assigning+Licensing+IPR+In+Indi
a
 http://taxguru.in/excise-duty/effect-making-registration-certificate-applicable-
retrospective-date-based-principle-deemed-equivalence-public-user-mark-extended-
excise-law.html

6
 STATEMENT OF JURISDICTION

The respondent humbly submit the Written statement before the Honourable High
Court of Mumba to the petition filed by petitioner under order IV Rule 1 of CPC read
with section 27(2) ,29 and 134,135 of Trademark act 1999 .

7
 STATEMENT OF FACTS

1. Soda-licious and Co. Ltd. (hereinafter referred to as “Soda-licious”) is a company

based in Unity Kingdom (UK) and registered under appropriate UK Laws in the year
2004.Soda-licious is engaged in production of “apple juice” and immediately started its
production and distribution on registration. Soda-licious sells the juice under its
registered trademark “Thirst Burst” (Annexure 1) and also sells product under this
trade mark in various another countries. The company got mark registered in sindia in
the year 2004.
2. Soda-licious supplies its product in all of Turope. The company undertook various
marketing strategies and also had website in the domain name www.thirstburst.comin
the year January, 2006.
3. Soda-licious started its business activities in Sindia in April 2008 by incorporating a
company “Soda-licious (Sindia) and Co. Ltd.” (hereinafter referred to as “Soda-licious
Sindia”). It established its registered office in Chandheri, Mumba. The company
received orders through the website.
4. Soda-licious sells its apple juice in a unique transparent plastic container which is
apple-shaped however, it did not registered its unique design. The company made
₹24,000,000 annually as profits from the sale and become one of the highest selling
product.
5. The product was well advertised, with tagline “fresh apple juice” and musical jingle
and also engaged a famous celebrity Sabrina Kafe to endorse the product.
7. In the year 2014, the registration of the Trademark “Thirst Burst” expired in Sindia, by
oversight, the said registration was not renewed within the time provided by law.
8. In January, 2016, Soda-delicious and Co. Pvt. Ltd., (hereinafter referred to as “Soda-
delicious”) a Company registered under the Companies Act, 2013, having its registered
office in Aravi, Mumba started production and sales of range of fruit juices under the
trademark “Burst your Thirst” (Annexure 2). In March 2016, Soda-delicious applied
for the registration of its said trademark under Trademarks Act, 1999.
9. In April 2017, Soda-delicious and Co. Pvt. Ltd., was granted trademark registration
certificate for the trademark and logo “Burst your Thirst” by the competent authority.
10. To attract consumers Soda-delicious adopted fruit-shaped packaging; such as litchi
juice in litchi-shaped bottle, orange in orange shaped bottle and so on due this the
company earned heavy profits and also product was advertised with catchy tag-line

8
 “freshness at its best” and musical jingle aired over the television as well as digitally
marketed on social media platforms. They also engaged Jareena Khan, a famous
actress, as brand ambassador, and website in the domain name
www.burstyourthirst.coto attract more customers.
11. Soda-delicious made a lot of profits in southern parts of country and later decided to
expand sales to Western part of the Country in November, 2018.
13. In August, 2019 Soda-licious witnessed a drop in the sales of their juice in Sindian as
well as foreign market. It also received several complaints from the consumers for bad
taste. And also complaints were filed in consumer forum. Soda-licious undertook an
investigation and survey and it was discovered that because of the presence of Soda-
delicious and Co. Pvt. Ltd. and their trademark name “Burst your Thirst”. This was a
matter of concern for Soda-licious (Sindia) and Co. Ltd. and they decide to take up
legal action immediately to avoid confusion amongst consumers and to avoid further
drop in sales. There was also a threat to its goodwill associated with the product and
the company.

9
 STATEMENT OF ISSUES

ISSUE 1:

Whether the company Soda Delicious Pvt ltd have right to use the registered
trademark?

ISSUE 2 :
Whether soda delicious company is liable for infringement and passing off by use
of corporate name, use of trademark, use of packaging and use of domain name
of soda licious pvt ltd?

ISSUE 3 :

Whether the acts of soda delicious co pvt ltd affected the goodwill of soda
licioussindiapvt ltd and is liable for damages for losses suffered?

ISSUE 4:
Whether the trademark registered for soda delicious should be to remove/ strike
off the trademark from register by competent authority?

10
 SUMMARY OF ARGUMENT

 Whether the company Soda Delicious Pvt ltd have right to use the registered
trademark?
Soda Delicious is separate company registered under companies act 2013. It has a
separate trademark, which is registered under competent authority in India.Company’s
trademark is authorized by competent authority and is proprietary right to use the
trademark.

 Whether soda delicious company is liable for infringement and passing off by use
of corporate name, use of trademark, use of packaging and use of domain name
of soda licious pvt ltd?
The petition filed by soda licious pvt ltd before the honourable Mumba High Court for
infringement and passing off by use of corporate name, use of trademark, use of
packaging and use of domain name is not maintainable as their registered trademark is
already expired in 2014 and also passed grace period of renewal.
 Whether the acts of soda delicious co pvt ltd affected the goodwill of soda
licioussindiapvt ltd and is liable for damages for losses suffered?
The petition filed by soda licious pvt ltd before the honorable Mumba High court for
Goodwill affected and damages for losses is not maintainable as Soda Delicious is
separate company registered under companies act 2013. It has a separate trademark,
which is registered under competent authority in India. Company has separate product
line and specialized marketing strategies.
 Whether the trademark registered for soda delicious should be to
remove/strike off the trademark from register by competent authority.
Soda Delicious is separate company registered under companies act 2013. It has a
separate trademark, which is registered under competent authority in India.Company’s
trade mark is authorized by competent authority and is proprietary right to use the
trademark.

11
 ARGUEMENT ADVANCED

1. Whether the company Soda Delicious Pvt ltd have right to use the registered
trademark?
According to Trade Marks Act, 1999.

As Per Section 2(1)(zb)- "trade mark" means a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person
from those of others and may include shape of goods, their packaging and combination
of colours; and

(i) in relation to Chapter XII (other than section 107), a registered trade mark or
a mark used in relation to goods or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods or services, as the case
may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be
used in relation to goods or services for the purpose of indicating or so to indicate a
connection in the course of trade between the goods or services, as the case may be,
and some person having the right, either as proprietor or by way of permitted user, to
use the mark whether with or without any indication of the identity of that person, and
includes a certification trade mark or collective mark.
A trademark or trade mark (represented by the symbol ™)1 or mark is a distinctive sign or
indicator of some kind which is used by an individual, business organization or other legal
entity to identify uniquely the source of its products and/or services to consumers, and to
distinguish its products or services from those of other entities. A trademark is a type of
intellectual property, and typically a name, word, phrase, logo, symbol, design, image, or a
combination of these elements2. There is also a range of non-conventional trademarks
comprising marks which do not fall into these standard categories.

1
The styling of trademark as a single word is predominantly used in the United States and Australia,while the
two word styling trade mark is used in many other countries around the world, including the European Union
and Commonwealth and ex-Commonwealth jurisdiction.

2
(Third)of Unfair Competition 9 (1995).

12
According to Webster’s new International Dictionary, Second Edition, unabridged, gives
the meaning of the word ‘trade’ as ‘purchase and sale’. The worldwide accepted
significance of ‘trade’ is buying and selling.
Section 23. Registration

(1) Subject to the provisions of section 19, when an application for registration of trade mark
has been accepted and either-

(a) the application has not been opposed and the time for notice of opposition has
expired; or

(b) the application has been opposed and the opposition has been decided in favour of the
applicant,

the Registrar shall, unless the Central Government otherwise directs, register the said trade
mark and the trade mark when registered shall be registered as of the date of the making of
the said application and that date shall, subject to the provisions of section 154, be deemed to
be the date of registration.

(2) On the registration of a trade mark, the Registrar shall issue to the applicant a
certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade
Marks Registry.

Opposition to Registration

As per section 21 of the Trade Mark Act,1999 the person need to file an application for
opposing the registration of any trade mark by a proprietor.

In American home Products Corpn V. Mac laboratories (P) ltd 3, The Supreme court held
that once an application for registration is made and accepted by the registrar, the registrar
has to cause the application to be advertised and within three months from the date of
advertisement, any person may lodge with the registrar a notice of opposition in writing to
the registration of such mark. A copy of such notice of opposition is to b served upon the
applicant.

3
(1986) 1 SCC 465 at p.481.

13
Rights Conferred By Registration of a Trade Mark

Section 28 of the Trade Marks Act, 1999 provides for the rights that are acquired by a
registered proprietor of a trade mark. Section 28 of the Act provides as under-

“(1) Subject to the other provisions of this Act , the registration of a trade mark shall,
if valid, give to the registered proprietor of the trade mark the exclusive right to the use
of the trade mark in relation to the goods or services in respect of which the trade mark
is registered and to obtain relief in respect of infringement of the trade mark in the
manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under sub-section (1) shall
be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks,
which are identical with or nearly resemble each other, the exclusive right to the
use of any of those trade marks shall not (except so far as their respective rights
are subject to any conditions or limitations entered on the register) be deemed to
have been acquired by any one of those persons as against any other of those
persons merely by registration of the trade marks but each of those persons has
otherwise the same rights as against other persons (not being registered users
using by way of permitted use) as he would have if he were the sole registered
proprietor.”
The law considers a trademark to be a form of property. Proprietary rights in
relation to a trademark may be established through actual use in the marketplace, or
through registration of the mark with the trademarks office (or "trade marks registry").

Registration of a trademark not only facilitates a remedy but also confers a

presumption of statutory right to the exclusive use of such mark and to restrain others
from using the identical or deceptively similar mark in respect of the same or similar
goods or services in favor of registered proprietor. The rights of registered proprietor
can be defeated by such person who can establish his prior rights under common law.

Registration of trade marks is prima facie evidence of its validity:

In all legal proceedings the proceedings the original registration of the Trade mark and all its
subsequent assignments and transmissions are taken as prima facie evidence of the validity of
the trade mark.

14
A registered trade mark cannot be held to be invalid on the ground that if as not registerable
except upon production of evidence about distinctiveness and that such evidence was not
submitted before registration, it is proved that the registered mark had been so used as to have
become distinct on the date of registration.

Registered trade mark also shall not be declaimed invalid if after registration and before
commencement of any legal proceedings challenging its validity, it had acquired
distinctiveness. This would be so evidence such trade mark was registered even though it
was decided of any distinctive character.

In March 2016, the company applied for the registration of its trademark “Burst your Thirst”
under Trademarks Act, 1999 and in April 2017, the company was granted trademark
registration certificate for the trademark and logo “Burst your Thirst” by the competent
authority. So it can be said that our company had authority to use the concern trademark.

2.Whether soda delicious company is liable for infringement and passing off by use of
corporate name, use of trademark, use of packaging and use of domain name of soda
licious pvt ltd?

The company is registered trademark user. The company is granted with certificate of
registration by the registrar.

According to Wikipedia web dictionary - Trademark infringement is a violation of the

exclusive rights attaching to a trademark without the authorization of the trademark owner or
any licensees (provided that such authorization was within the scope of the license).
Infringement may occur when one party, the "infringer", uses a trademark which is identical
or confusingly similar to a trademark owned by another party, in relation to products or
services which are identical or similar to the products or services which the registration
covers. An owner of a trademark may commence legal proceedings against a party which
infringes its registration.

Section 30 of the Trademarks Act, 1999 lays down the certain conditions wherein a
trademark cannot be said to have been infringed. These conditions include:

1. When any person makes use of a trademark in accordance with honest practices in
industrial or commercial matters;

15
 2. When such use is not in pursuit of taking undue advantage or proves to be
detrimental to the distinctive character or repute of the trademark.
3. Use of a mark for the indication- Whenever any trademark is used in order to
indicate the kind, quality, quantity, intended purpose, value, geographical origin,
the time of production of goods or of rendering of services or any other
characteristics of goods or services.
4. Use of mark which is outside the scope of registration- When trademarks are
registered, there are certain cases where they are subjected to certain conditions
and limitations. Whenever the alleged infringement is under the ambit of those
limitations, then it does not constitute to be a case of infringement of trademarks.
5. Implied consent – Whenever the infringed use of a trademark is in the continuance
of the permitted use by the original proprietor who has subsequently not removed
or obliterated it, in such cases the use cannot be said to be an infringement.
6. Use of trademark in relation to parts and accessories
7. Use of trademarks identical or similar to each other.

Under section 30(2)(e) of the trade mark Act, it is clear that a registered trade mark is not
infringed where the use of a registered trade mark, being one of two or more trade marks
registered under this Act which are identical or nearly resemble each other, in exercise of the
right to the use of that trade mark givensindia by registration under this Act. Therefore no
proprietor can complain of infringement of trade mark by another proprietor who have
registered his trade mark.

In Sau. Pritikiran rajendra katole v. Sau. Harsha Ravindra katole4, Bombay high court after
referring to section 28(3) and 30(2)(e) according to this provision where two or more persons
were registered proprietors of trade mark which is identical with and/or nearly resemble each
other , the exclusive use of the same trademark was not permissible. Both could use those for
all the purposes. Such two persons could not prevent other from using the same registered
trademark. The registered trademark needed to be treated as in their individual capacity “The
sole registered proprietor.” The use of such registered trademark by other registered owner
can not be treated as “infringement”.

4
2014 (57) PTC 350 (Bom) at pp.352-53.

16
In Hearst Corporation v. Dalal Street Communication Ltd 5it was laid down that the main
ingredients of infringement are:

I. the Plaintiff must be the registered owner of a mark.

II. Defendants must use a mark deceptively similar to the Plaintiff mark.

III. The use of the mark must be in relation to the goods in respect of which the
mark is registered.
IV. Use by the defendant must be in the course of trade.

Applying the above ingredients in our case-

1.It is clear that petitioner is not the registered owner of the trade mark.
2.The product sold by us is totally different than that of petitioner.
3.The petitioner was only dealing with manufacturing and selling of apple juice and
we deal with variety of juice.
4.Our company is not using any product similar to that of petitioners company.

The doctrine of ‘Delay or Laches’ is thus an equitable doctrine. It is based on the maxim
“Vigilantibus non dormientius aequitas subvenit” which means equity aids the vigilant
and not the ones who sleep over their rights. It refers to the unreasonable delay in
enforcing a legal claim or moving ahead with legal enforcement as a right. This is an
equitable defence. The party may claim that the person invoking the suit had been “sleeping
over his rights” and therefore such a right is no longer available to him since it is barred by
laches.

The Delhi High Court in the case of Cable News Network LP, LLLP (CNN) v. CAM News
Network Limited 6, has provided an explanation to the three terms delay, latches, and
acquiescence as follows-

“Inordinate delay is generally understood to be delay of such a long duration that the
defendant could have come to the conclusion that the plaintiff has, possibly, abandoned his
right to seek life or to object to the defendant using the trademark. However, ‘inordinate

5
1996 PTC (16).

6
MIPR 2008 (1) 113, 2008 (36) PTC 255 Del

17
delay’ is not analogous to ‘latches’ and the two ought not to be used interchangeably. ‘Mere
passage of time cannot constitute latches, but if the passage of time can be shown to have
lulled defendant into a false sense of security, and the defendant acts in reliance thereon,
laches may, in the discretion of the trial court, be found’. It would follow, logically, that
delay by itself not sufficient defense an action for interim injunction, but delay coupled with
prejudice caused to the defendant would amount to laches.”

The court, in this case, held that defence of delay and laches was not sufficient to for granting
an injunction in case of trademark infringement and passing off. It was held that in order to
contend the defense of delay and latches there is a reciprocal duty on the defendant to also
establish itself to be an honest and concurrent user of the mark in question.

The doctrine of delay and latches being an equitable one is based on the principle of equity
that is one who comes to equity must come with clean hands.

In the Kharwar Case7it has been held that where the plaintiffs delay has caused a change in
the subject matter of an action or brought about a situation in which justice cannot be
done, delay by itself is a valid defence. In the Veerumal Praveen Knmnar Case8and the
Macleods Pharmaceutical Ltd Case9interim injunction was refused as there was delay of
two years and the plaintiffs were not practically doing any business in India. In the
Kirloskar Proprietary Ltd Case 10although the plaintiff has proved a prima-facie case,
interim injunction was refused on ground of delay

Trademark of the Defendant is Descriptive

Where the alleged passing off is based on the use by the defendant of words which are
prima facie descriptive of the goods, the principle of law is the same, the difficulty being
only in proving distinctiveness.11 If the mark of the plaintiff is descriptive of the products
the defendant can raise a valid defence that the plaintiff cannot be allowed to monopolise it.

7
Kharwar case

8
Veerumal Praveen Kumar v.Needle Industries (India) Ltd 2001 PTC 889 (Del) (DB).

9
MacLeod's Pharmaceutical Ltd. v. Tidal Laboratories P. Ltd & Ant 2006 (32) PTC 221(Bom)

10
Kirloskar Proprietary Ltd v. kirloskar Dimensions Pt. Ltd Air 1997 kant 1.

11
Supra n.29 p.772.

18
In the case of Cadila Healthcare Ltd Case12 the plaintiffs sought Defendants to be restrained
from the use of the expression “Sugar Free” in relation to probiotic frozen desserts and
choco minis. The plea of the defendant that the words “sugar free” are descriptive and used
in a descriptive sense to describe the attributes of the product was upheld. However the
defendants were restrained from using the expression in the present font size which is
conspicuously bigger than its trademark “Amul”. In the M/s Johnson and Johnson and
Another Case13 the court held that the defendant was entitled to use the expression “Stay
Free” for sanitary napkins in so far as it was using the same to describe its products in the
descriptive sense and not in a trademark sense.

In the Hindustan Pencils Ltd Case14 it was held that the plaintiff had failed to establish that
the trademarks “Plasto” and “No Dust” for erasers had acquired secondary meaning and
vacated interim injunction granted to the plaintiff. In the J.R. Kapoor Case 15the plaintiff who
was proprietor of the trademark “Microtek’ wanted to restrain the defendant from using the
trademark “Micronix”. The two trademarks were used in respect of electric and electronic
apparatus. The court held that the word “Micro” is descriptive of micro-technology used for
the production of many electronic apparatus.

Defendant is Honest Concurrent User of the Trademark

In India, Section 12 of the TM Act provides for registration of a trademark in case of its
honest concurrent use by providing that ‘in the case of honest concurrent use or of other
special circumstances which in the opinion of the Registrar, make it proper so to do, he may
permit the registration by more than one proprietor of the trademarks which are identical or
similar (whether any such trademark is already registered or not) in respect of the same or
similar goods or services, subject to such conditions and limitations, if any, as the Registrar
may think fit to impose'. So, it is clear that the Registrar is not obliged to register such an
honest concurrent user; rather it depends upon his subjective discretion.

12
2008(36) PTC 168(Del)

13
1988 PTC 39.

14
Hindustan Pencil Ltd v. Puma Stationery Ltd 2005 (31) PTC 541(Del).

15
105(2003) DLT 239, 2003 (26) PTC 593 Del, 2003 (3) RAJ 100

19
In Lowenbrau AG and Anr v Jagpin Breweries Ltdand Anr,16the plaintiffs Lowenbrau
AG and the defendants Lowenbrau Buttenheim, both incorporated in Germany were
involved in the dispute over the usage of the word ‘Lowenbrau' for their beer in India. The
Court made the observation that the word ‘Lowenbrau' means ‘lion's drink' and had also been
used by many other beer manufacturers in Germany for a substantial time, thereby making
the word synonymous with beer of German origin and source. Further, the plaintiffs did not
take any legal action against the defendants for a long time as both of them were involved in
their business in other countries as well. It was a perfect case of the word ‘Lowenbrau'
having become public juris or a generic word. After taking into consideration the high
volume of sales of defendants'products, the Court did not find merit in grant of injunction in
favour of the plaintiffs and thus, allowed the defense of honest concurrent user in favour of
defendants along with damages to the tune of Rs 20,000.

In Goenka Institute of Education and Research v. Anjani Kumar Goenka and

Another 17 , both the applicant and respondent had “Goenka” as a predominant part of their
trademarks: the competing marks were “Goenka Public School” and “G.D. Goenka Public
School”. Honest and concurrent use was established because of the following facts: first, it
was established that both parties started using the word “Goenka” around the same time,
secondly, one institution was based in Delhi and the other in Rajasthan so the appellant could
not have known of the respondent's mark when he started using the same and thirdly, the fact
that Goenka forms part of the appellant's trust name, all pointed to honest and concurrent
adoption. Therefore, the Registrar allowed both marks to be registered with certain
conditions, such as, the appellant was directed to insert the name of their trust in brackets
below the name of their school in order to clarify and differentiate between the two marks.

In the Kopran Case18the plaintiffs used the mark “Aten” for medicines for a number of
years. Defendants also for a number of years used the mark “Beten” for medicines. Interim
injunction was refused. In the Premwati Bansal Case19 both parties using the trademark
“Hariyali” for over five years. Interim injunction was refused. Similarly in the Alkem

16
(1949) 66 RPC 110,112(Reg)

17
FAO (OS) No.118/2009

18
Koprana v.sigma 1993 PTC 245 (Bom)

19
Premvati Bansal v. Ganpati. International 1999PTC640 (Del)

20
Laboratories Ltd Case20.it was held that both the plaintiff and defendant are concurrent users
of the trademark “Gemcal”. Hence it cannot be said that an attempt has been made by the
defendant to pass off its products as those of the plaintiff. In the case where defendant had
been openly using the word “doctor” in respect of medicinal products phenyl and there was
an unexplained delay of 14 months in filing the suit, it was held that in view of honest
concurrent user, interim injunction cannot be granted in favour of the plaintiff.

Acquiescence

The term “acquiesce” has been explained by Justice B. N. Kripal in the Delhi High Court
judgment of Hindustan Pencil (P) Ltd. v. India Stationary Products
Company21According to him acquiesce means encouragement by the plaintiff to the
defendant to use the infringing mark. The plaintiff wants the defendant to believe that the
action of the defendant does not violate the plaintiff's rights. There is also an implied or
express assent from the plaintiff and in a way encourages the defendant to carry on the
business. According to the judgment;

“Acquiescence may be a good defense even to the grant of a permanent injunction because
the defendant may legitimately contend that the encouragement of the plaintiff to the
defendant's use of the mark in effect amounted to the abandonment by the plaintiff of his right
in favor of the defendant and, over a period of time, the general public has accepted the
goods of the defendant resulting in increase of its sale. It may, however, be stated that it will
be for the defendant in such cases to prove acquiescence by the plaintiff. Acquiescence
cannot be inferred merely by reason of the fact that the plaintiff has not taken any action
against the infringement of its rights.”

What the Law States

“If a trader allows another person who is acting in good faith to build up a reputation under
a trade name or mark to which he has rights, he may lose his right to complain, and may
even by debarred from himself using such name or mark”.
According to section 33 of the Trade Marks Act, 1999, the other user can take up the defense
of acquiescence against TM infringement provided, he has adopted and used the TM in good

20
2007(34) PTC 557 (Del).

21
ld

21
faith. Here, good faith implies ignorance or lack of knowledge on part of the other user of the
existence of the TM infringed by him. However, the scope of this section has been challenged
on several occasions. There is still plenty of uncertainty whether this doctrine can deny relief
of permanent injunction.

If the owner of a TM, even after being aware of the use of his TM by another, fails to take
any action against the other user and instead allows him to invest in publicizing his TM and
expanding his business over a period of time, then the owner of the TM may not be entitled to
the remedy of injunction against the other user of his TM, which he could otherwise bring
upon to restrain the other user from the use of his TM. According to the TM law, such
conduct of the TM owner conveys an ‘acquiescence’ i.e., implied consent by the TM owner
in the use of his TM by the other user.

However, there is an exception to every rule and this one, too, has an exception. Where the
other user has applied for registration of ‘your TM’, or for something similar, fully cognizant
of the fact that such a TM already exists and you failed to take any action for a period of five
years against him, then as per the law, you still have a right to sue the other user as long you
prove the mala fide intentions of the defendant. The assumption of ‘good faith’ in such cases
is not applicable, as there is clear dishonesty on the part of the defendant. In such cases, the
court would well be justified in concluding that the defendant had an intention to
commercially benefit from the plaintiff’s name and reputation. This has been the judicial
trend in India and continues to be so as held in the case of Emcure Pharmaceuticals Ltd. vs.
Corona Remedies Pvt. Ltd., where the High Court of Bombay upheld that “a mere failure to
sue without a positive act of encouragement is no defense and is no acquiescence.”

The judiciary in India has always acknowledged the fact that that a mere procrastination by
the owner of a TM in filing a suit against the unauthorized use of his TM by the other user
does not indicate the owner’s acquiescence in the use of his TM by the other user.

‘ACQUIESCENCE’ PRIOR TO THE TRADE MARKS ACT, 1999

Before the enactment of the Trade Marks Act 1999, defence of ‘acquiescence’ was not
clearly established under the Trade and Marks Act, 1958, or under the Trade Marks Act 1940,
but still the other user of the TM used it as a defence against the owner of the TM under the

22
relevant provision that referred to ‘acquiescence’ by the owner of the TM under the TM law
applicable at that time. For instance, legal opinion allowed the other user of the TM to take
the defence of ‘acquiescence’ within the expression ‘special circumstances’ in section 10(2)
of the Trade Marks Act, 1940, which read as under:

Sec.10 (2): “In case of honest concurrent use or of other special circumstances which, in the
opinion of the Registrar, make it proper so to do he may permit the registration by more than
one proprietor of trade marks which are identical or nearly resemble each other in respect of
the same goods or description of goods, subject to such conditions and limitations, if any, as
the Registrar may think fit to impose.”

Later, when Trade Marks Act, 1940 was revoked and Trade and Merchandise Marks Act,
1958 was effectuated, the other user took the defence of ‘acquiescence’ against the owner of
the TM within the expression ‘special circumstances’ under clause (1) of sub-section (b) of
Section 30 of the Trade and Merchandise Marks Act, 1958, which read as under:

Sec.30. “Acts not constituting infringement: (1) Notwithstanding anything contained in this
Act, the following acts do not constitute an infringement of the right to use of a registered
trade mark – (b) the use by a person of a trade mark in relation to goods connected in the
course of trade with the proprietor or a registered user of the trade mark if, as to those goods
or bulk of which they form part, the registered proprietor or the registered user conforming
to the permitted use has applied the trade mark and has not subsequently removed or
obliterated it, or has at any time expressly or impliedly consented to the use of the trade
mark.”

The Trade and Merchandise Marks Act, 1958, has been replaced by the Trade Marks Act,
1999. The Trade Marks Act, 1999, which came into force in 2003, has made a clear provision
for the defense of ‘acquiescence’ for the other user of the TM against the owner of the TM
under sec.33 of the Act.

Sec.33 of the Trade Marks Act, 1999 provides for the defense of ‘acquiescence’ to the other
user of the TM against the owner of the TM and is an improvement over the earlier reference
to the acquiescence within the statutory provision under the Trade and Merchandise Marks
Act, 1958 and Trade Marks Act,1940. Sec.33 of the Trade Marks Act, 1999 establishes the

23
defense of ‘acquiescence’ to the user of the TM against registered owner of the TM with
more clarity.

‘ACQUIESCENCE’: ‘DELAY’ COUPLED WITH ‘IMPLIED CONSENT’

When we trace back judgments of the Indian courts since the beginning, i.e., even before the
enactment of the Trade Marks Law in India, we discover that judicial opinion in India had
firmly established that simple delay by the owner of a TM in filing the suit against the
unauthorized use of his TM by the other does not indicate owner’s acquiescence in the use of
his TM by the other. For the defense of acquiescence against the owner of TM, the other user
of the TM must prove that the owner of the TM, apart from procrastinating in taking action
against the unauthorized use of his TM by the other user, also encouraged him to use his TM
by his conduct.

In the case of Kanungo Media Pvt. Ltd. Vs. RGV Film Factory, 22, it was held that delay in
taking action implies acquiescence and that the TM owner’s silence in claiming his rights
amounted to a waiver of his rights.

In the case of Ramdev Food Products Pvt. Ltd. vs. Arvindbhai Rambhai Patel and
Others,23the Supreme Court held that ‘acquiescence’ includes an element of delay, when a
party allows the other to violate his right and expend money, and the conduct of the party is
such that it is inconsistent with the claim for exclusive rights for TM. Mere silence or
inaction does not constitute acquiescence. Action and conduct of both parties should be
scrutinized to establish whether it would be unfair and arbitrary to prevent the defendants on
the ground of delay. Loss of time, unless compounded with other factors, is usually not
considered as a bar to grant injunction.

It is clear from the fact that petitioner is not the owner of trade mark. The trade mark was not
renewed in a given time by competent authority. Our company is the registered owner of the
trade mark and have compel with all the requirement necessary by authority. We are using
the trade mark since 2016 and the petitioner is not vigilant of their rights and led to

22
2007 (34) PTC 591 (Del)

23
2006, (33) PTC 281 (SC)

24
aquiescence. The mark used by us is of descriptive nature and used in such a way that
ordinary man can also understand about the product. So it can be very well said that our
company is not responsible for infringement or passing off.

3. Whether the acts of soda delicious co pvt ltd affected the goodwill of soda
licioussindiapvt ltd and is liable for damages for losses suffered?

Goodwill - It is the benefit of the good name, reputation and connection of a business. It is
the attractive force that brings in custom. It is the one thing that distinguishes an established
business from a new business. Goodwill is protected by passing off and whilst this may be
associated with a particular name or mark used in the course of trade, this area is wider than
trade mark law in terms of the scope of marks, signs, materials and other aspects of trader
“get up” that can be protected. The owner of the goodwill has a propriety right that can be
protected by an action in passing off. But if the goodwill of a business is only affected due to
competition in the market, this is not passing off as there is no misrepresentation.

A man who engages in commercial activities may acquire a valuable reputation in respect of
goods in which he deals, or of the services which he performs or of his business as an entity.
The law regards such a reputation as an incorporeal piece of property, the integrity of which
the owner is entitled to protect.24

It is pertinent to note that the words “reputation” and “goodwill” are often used
interchangeably but it is really in connection with goodwill that passing off is concerned. It is
possible, after all, to have a reputation without goodwill and existence of reputation without
any associated goodwill was fatal to a claim in passing off. 25 The Budweiser name for beer
was well known in the UK but, in the absence of a trading presence, the claimant could not
establish the necessary goodwill to sustain an action in passing off.26 Merely copying the
name or style of another trader is not, per se, sufficient for a passing off action.

Goodwill is related to the area where it is claimed to exist. For example, a company that had
considerable goodwill in say the USA but was virtually unknown in the UK would not be
able to claim pre-existing goodwill in a case brought in the UK.

24
H.P Balmer Ltd. v. J Bollinger SA [1978] RPC 79 at 93
25
Anheuser Bush Inc v. Budejovicky Budvar [1984] FSR 413
26
Calvin klein inc v. International Apparel syndicate [1995] FSR 515

25
From the perusal of the facts it becomes manifest that the defendant in the present matter is
the Registered owner of trademark in Sindia and its honest industrial & commercial use can
be traced from the fact that it has gained immense recognition and reputation over the years.

The plaintiff claimed that they enjoyed a goodwill and reputation in Sindia, and that the
defendants in the course of their trade, used the plaintiff’s goodwill and reputation to dell
their own product. Now contrary to this, it has been very well mentioned in the factsheet that
the said mark of the defendant had gained immense recognition and reputation due to asle of
their unique product in market.They had their own reputation and customers and the
defendants used their own reputation to sell their own products. They were not banking on
the plaintiff’s goodwill for sale.

In Group Lotus Plc v Malaysia Racing Team27, Peter Smith J held that the parties’ businesses
retained separate goodwill; Group Lotus as a car manufacturer and Team Lotus as a Formula
1 racing team. Further, the specialist consumer of each of these activities was unlikely to be
confused between them. If there were any initial confusion, it could easily be clarified by
media commentators and journalists. Thus Team Lotus could not be liable in passing off.
Neither, in the absence of confusion, could it be liable for trade mark infringement.

In the case of Smithkline Beecham v. V.R. Bumtaria28 the plaintiff applied for permanent
injunction to restrain the defendant from infringing the trademark, passing off, damages,
delivery etc. of its registered trademark ARIFLO, used in respect of the pharmaceutical
preparations. Defendants were using the similar name ACIFLO for their product of the same
drug in India. Plaintiffs were not doing business in India for the particular product and argued
that since their advertisements are been published in medical journals hence they have a
transborder reputation and defendants should be stopped to use the similar trademark which
creating deception in customers.

Misrepresentation - Any misrepresentation must be made by a trader in the course of trade

and it must have led to confusion or the likelihood of confusion in the mind of the customer.

A misrepresentation must be material i.e. more than momentary or inconsequential. It must

be a reasonably foreseeable consequence that as result of the defendant’s misrepresentation
the plaintiff’s goodwill will be damaged.

27
[2011] EWHC 1366 (Ch)
28
[MANU/DE/2840/2005]

26
However confusion alone may not amount to a material misrepresentation. "No one is
entitled to be protected against confusion as such. Confusion may result given the collusion
of two individual rights or liberties and where that is the case neither party can complain;
they must put up with confusion as one of the misfortunes, which occur in life. The protection
to which a man is entitled is protection against passing off which is quite a different thing
from mere confusion. If all that a trader is doing is to carry on trade in his own name and in
disposing of or advertising his goods does no more than make the perfectly true statement
that the goods are his goods, no other trade is entitled to complain."29

In B&S Ltd v Irish Auto Trader Ltd.30, Mr. Justice McCracken refused to grant a preliminary
injunction, notwithstanding a finding of passing-off, where the infringer had acted bona fide
in extending an established business from another jurisdiction into Ireland and it was likely
that any confusion would be limited.

In the case of Radio Taxicabs (London) Ltd (t/a Radio Taxis) v. Owner Drivers Radio Taxi
Services Ltd (t/a Dial-a-Cab)31, the claimant accepted that its trading name, Radio Taxis, was
generic and had not acquired a secondary meaning. Rather, its case was that the defendant’s
behaviour in registering the domain name radiotaxis.com and creating an automatic link from
the web address www.radiotaxis.com to its own website pages amounted to passing off. The
judge held that the defendant did not intend to use the domain name to pass itself off as, or
being connected with, the claimant or to divert its business. The defendant, instead, intend to
promote its services as a supplier of radio taxis, particularly internationally. The domain
name was not, therefore, being used as an instrument of fraud (BT v. One in a Million [1999]
FSR 1 CA). Furthermore, there was no passing off. Although the claimant was able to show
that it was most commonly known as Radio Taxis, it had failed to put in evidence as to how it
was perceived by the public and consequently failed to discharge the burden upon it to show
the requisite reputation. Taking into consideration the generic nature of Radio Taxis, the fact
that there had been no confusion for the two years radiotaxis.com had been registered and the
judge’s findings on motive, there was also no misrepresentation either.

In S.B.L. Limited v. Himalaya Drug Co.32, where two rival marks Liv. 52 and Liv-T
contained a common feature ‘Liv’, it was held that “the common feature is not only

29
Green MR in Marengo v Daily Sketch [1948] 1 All ER 406 HL.
30
[1995] 2 I.R. 142
31
(J Randall Q.C.; 12.10.01)
32
AIR 1998 Delhi 126

27
descriptive but also publici juris; a customer will tend to ignore the common feature and will
pay more attention to uncommon features, i.e., ‘52’ and ‘T’. The two do not have such
phonetic similarity as to make it objectionable. The Cartons of the two products respectively
of the plaintiff and of the defendant show that there is no possibility of one being accused of
being deceptively similar with the other, and the customer mistaking one with the other, even
by recollecting faint impressions. Therefore the proprietor of Liv 52 was not entitled to the
grant of an injunction the use of Liv-T.”

In Indo-Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceutical Ltd. 33, the
plaintiff was selling it product allopathic medicinal preparation under trade mark ‘Enerjex’.
Plaintiff’s grievance was adoption of trade mark ‘Enerjase’ by defendant for selling his
Ayurvedic medicinal preparation. Prefix for both marks viz. “Enerj” was common and
abbreviation of generic name ‘energy’. Suffix to said words “jex” and “jase” were totally
dissimilar not creating confusion in mind of users especially when visual impression of the
said two trade names was completely different. Total sound effect of these two words lacked
any similarity. The court held that no infringement of trade mark of plaintiff was noticed.
Injunction was refused.

The court held in the case of Bharat Enterprises (India) v. C. Lall Gopi Industrial Enterprises
& Ors.34, that the word ‘Heat Pillar’ was a generic word. No manufacturer can have exclusive
right to use of this word.

In this case the plaintiffs were using the word ‘Gopi’ while the defendants are using the word
‘Belco’ before the word ‘Heat Pillar’. The court held that between the words ‘Gopi’ and
‘Belco’ there was clear phonetic distinction. There was thus no case for passing off
established. The court refused to grant temporary injunction restraining the defendant for
using its trade mark.

Damage - This means establishing actual or likely financial loss. This could include loss of
profit in an existing market, loss of reputation or loss of opportunity to expand.

In the present case, there has been no evidence or statistics showing any financial loss being
caused to the plaintiff as a result of the plaintiff’s acts. Also, the defendant has its own

33
AIR 1998 Mad 347
34
AIR 1999P&H 231

28
reputation and caters to its own set of customer’s, therefore, no likelihood of damage can be
foreseen.

In the case of Kirloskar Propreitary Ltd. v. Kirloskar Dimensions Pvt. Ltd35, infringement of
trade mark was alleged. A temporary injunction was sought by the plaintiff. The respondent
had already commenced business in the name of KIRLOSAR as corporate name. The trial
Court dismissed the application of the plaintiff. The plaintiff appealed against the decision of
the trial Court to the High Court of Karnataka. The High Court dismissed the appeal on the
ground that although the plaintiff appellant had made out prima facie case, temporary
injunction could not be granted on the ground of balance of convenience and loss which
would accrue to the defendant.

Since there was no misrepresentation done by the defendant company the question of
Goodwill affected and damages for losses is not maintainable as Soda Delicious is separate
company registered under companies act 2013. It has a separate trademark, which is
registered under competent authority in India. Company has separate product line and
specialized marketing strategies.

4.Whether the trademark registered for soda delicious should be to remove/strike off
the trademark from register by competent authority.

Soda Delicious is separate company registered under companies act 2013. It has a separate
trademark, which is registered under competent authority in Sindia. Company’s trade
mark is authorized by competent authority and is proprietary right to use the trademark.

As mention above in issue 1 the condition for registeration is fulfilled and the defendant
being honest and concurrent user there can be no removal/strike off of the trade mark.

35
1997 PTR 1

29
 PRAYER

Wherefore it is prayed, in light of the issues raised, arguments advanced, and authorities
citied, that this Honourable Court may be pleased to:

a. Not to restrain the manufacture and use of Corporate Name, use of Trademark, use of
packaging and use of domain name;

b. Cancel the Order for the delivery of the infringing labels and marks for destruction or
erasure;

c. Declare that the respondents are not liable for damages for losses suffered, and intentional
damage to the goodwill and reputation of the company;

d. Cancel the request for directions to the competent authority to remove/ strike off the
trademark from register of the respondent.

30
Annexure 1

Annexure 2

31