Infringement and Passing Off Involving Numerals: Haywards 5000 Vs Cox 5001
Introduction: This case involves a trademark infringement and passing off dispute in the beer industry, where the plaintiff sought to protect its well-established brand "HAYWARDS 5000" against the defendant's use of "COX 5001." The Bombay High Court examined the deceptive similarity between the marks, focusing on the numeral "5000" as an essential feature, and addressed issues like disclaimers, prior user, and suppression of facts. Decided in 2014, the judgment reinforces principles of trademark law, particularly regarding the protectability of numerals in composite marks and the limited role of disclaimers. It highlights the court's approach to granting interim injunctions in cases of registered trademarks, emphasizing prima facie case, balance of convenience, and irreparable harm.
Factual Background: The plaintiff, Sabmiller India Ltd., is the proprietor of the trademarks "HAYWARDS 5000" (registered under No. 436744 in Class 32 since 1983) and "FIVE THOUSAND" (registered under No. 1521743 in Class 32), both for beer. The plaintiff and its predecessors have continuously used "HAYWARDS 5000" prominently on labels, achieving significant sales and promotional expenses, establishing goodwill. The defendant, Jagpin Breweries Ltd., began using "COX 5001" on beer labels, which the plaintiff discovered in September 2011. Prior litigation between the parties included a 2006 suit where the court restrained the defendant from using "COX 5000," and a 2011 Madras High Court order against the defendant for infringing the plaintiff's bottle design. The defendant challenged the plaintiff's registration before the Intellectual Property Appellate Board but lost, and no appeal was filed. The plaintiff alleged that "COX 5001" was deceptively similar, misleading consumers and trading on its reputation.
Procedural Background: The plaintiff filed Suit No. 56 of 2012 in the Bombay High Court for infringement and passing off, along with Notice of Motion No. 92 of 2012 seeking interim injunctions. On January 13, 2012, the court granted an ex parte ad interim injunction restraining the defendant from using "COX 5001." The defendant sought vacation, but the court confirmed the injunction on February 7, 2012. The defendant's appeal (No. 189 of 2012) was dismissed on August 28, 2012. In February 2013, the court granted leave to combine passing off with infringement claims. The notice of motion was heard, with arguments on deceptive similarity, disclaimers, suppression, and delay, leading to the final order on February 6, 2014.
Core Dispute: The primary issue was whether the defendant's "COX 5001" infringed the plaintiff's registered trademarks "HAYWARDS 5000" and "FIVE THOUSAND" and amounted to passing off, given the prominence of the numeral "5000." The plaintiff argued deceptive similarity in visual, phonetic, and structural aspects, claiming exclusive rights without disclaimer on "5000." The defendant contended that "5000" was descriptive, disclaimed, common to trade, and that the plaintiff suppressed facts, delayed action, and abandoned the mark. Additional disputes included jurisdiction (later withdrawn), balance of convenience, and whether prior litigation barred the suit.
Discussion on Judgments: The plaintiff relied on De Cordova v. Vick Chemical Co. (1951) 68 RPC 103 to argue that rival marks must be compared as a whole, focusing on essential features like the numeral "5000." Reckitt & Colman of India Ltd. v. Wockhardt Limited (unreported, Bombay High Court, Appeal No. 1180 of 1981, decided July 8, 1992) was cited in the context of holistic comparison of marks to establish deceptive similarity. Shaw Wallace & Co. Ltd. v. Mohan Rocky Spring Water Breweries Ltd. (2006) 3 Bom CR 252 was referenced to support that "5000" is distinctive and not disclaimed, as the Registrar specifies disclaimers for numerals explicitly. Laxmikant V. Patel v. Chetanbhat Shah (2002) 3 SCC 65 was invoked to outline the elements of passing off—reputation, misrepresentation, and damage—asserting the plaintiff's mark's goodwill. Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145 was used to contend no need for proving mala fide intent, only likelihood of confusion. Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. (1993) PTC 253 was cited to argue that in registered trademark cases, balance of convenience plays a minimal role. SKOL Breweries Ltd. v. Som Distilleries & Breweries Ltd. (2012) 49 PTC 231 (Bom) and SKOL Breweries Ltd. v. Fortune Alcobrew Pvt. Ltd. (2012) 50 PTC 413 (Bom) were relied upon to affirm that substantial use of a registered mark, even with variations, constitutes deemed use, and disclaimers do not cover essential numerals unless specified. Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (1955) 2 SCR 252 was discussed in the context of disclaimers' purpose, distinguishing it as not applying to non-descriptive numerals. Shaw Wallace & Co. Ltd. v. Castle Douglas Industries Ltd. (unreported, Bombay High Court, Notice of Motion No. 1259 of 1994, decided June 20, 1996) was used to establish "5000" as essential despite disclaimers in similar marks. Shaw Wallace & Co. Ltd. v. Superior Industries Ltd. (2003) 27 PTC 63 (Del) supported that numerals like "5000" can acquire distinctiveness through use. Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 was cited to argue that mere registration does not prove use, dismissing the defendant's reliance on other numeral marks. The defendant invoked S.P. Chengalvaraya Naidu v. Jagannath (1994) 1 SCC 1 on suppression of facts, contending the plaintiff hid applications and oppositions. Shelke Beverages Pvt. Ltd. v. Rasiklal Manikchand Dhariwal (2010) 3 All MR 667 was relied upon to claim "5000" is common to trade, but the court distinguished it on facts of dissimilarity. S.J.S. Business Enterprises (P) Ltd. v. State of Bihar (2004) 7 SCC 166 was used to define material suppression affecting merits.
Reasoning and Analysis of the Judge:The judge compared the marks holistically, finding "5001" deceptively similar to "5000" visually and phonetically, likely causing confusion in beer sales. He rejected the disclaimer argument, holding it applied only to descriptive matter, not the distinctive numeral "5000," as the Registrar specifies numeral disclaimers explicitly. Citing prior rulings, he affirmed "5000" as essential and protectable. On passing off, the judge found the plaintiff's extensive use established reputation, with the defendant's mark misrepresenting origin and damaging goodwill. He dismissed suppression claims, deeming alleged facts irrelevant to the suit's registered marks. Delay defenses were rejected due to dishonest adoption, and jurisdiction was upheld under the Trade Marks Act. Balance of convenience favored the plaintiff, given long user since 1983 versus the defendant's unsubstantiated claims, with irreparable harm from continued infringement.
Final Decision: The court made the notice of motion absolute, granting temporary injunctions restraining the defendant from using "COX 5001" or any mark with "5001" deceptively similar to "HAYWARDS 5000," for infringement and passing off in beer sales.
Law Settled in This Case: This judgment settles that numerals in composite trademarks can be distinctive and protectable if not explicitly disclaimed, with disclaimers limited to descriptive matter unless specified. It reinforces holistic mark comparison, emphasizing essential features, and deems substantial use of registered marks as valid despite minor variations. In passing off, likelihood of confusion suffices without proving intent, and delay or acquiescence defenses fail against dishonest adoption. Suppression must involve material facts affecting merits, and mere registration of similar marks does not prove use or commonality without evidence.
Case Title: Sabmiller India Ltd. Vs Jagpin Breweries Ltd.
Date of Order: 06.02.2014
Case Number: Notice of Motion No. 92 of 2012 in Suit No. 56 of 2012
Neutral Citation: 2014 SCC OnLine Bom 4842
Name of Court: High Court of Bombay
Name of Hon'ble Judge: Kathawalla S.J., J.
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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