Godfrey Phillips India Ltd. Vs. Girnar Food & Beverages Pvt. Ltd.: Effect of Trademark disclaimer in passing off action: The SUPER CUP Case
Godfrey Phillips India Ltd. Vs. Girnar Food & Beverages Pvt. Ltd.
Case Details Date of Order: 5th December 1997
Case Number:
Neutral Citation: JT 1998 (8) SC 408, (1999) 122 PLR 135, (1998) 9 SCC 531, AIR 1997 SC 233, (1999) 1 REC CIV R 377
Court: Supreme Court of India
Bench: Justice J.S. Verma and Justice B.N. Kirpal
Introduction: This case revolves around a trademark dispute between Godfrey Phillips India Ltd., a well-known manufacturer and marketer of tea, and Girnar Food & Beverages Pvt. Ltd., regarding the use of the term "Super Cup" in the marketing of tea products. The plaintiff sought an injunction against the defendant for allegedly infringing their trademark and engaging in passing off. The trial court granted an interlocutory injunction in favor of the plaintiff. However, the Division Bench of the High Court stayed this injunction, leading the plaintiff to file an appeal before the Supreme Court.
Facts of the Case: Godfrey Phillips India Ltd., a well-established tea manufacturer, filed a suit against Girnar Food & Beverages Pvt. Ltd., alleging trademark infringement and passing off in relation to the term "Super Cup" used for marketing tea.The trial court granted an interlocutory injunction, preventing the defendant from using "Super Cup" in its branding and marketing.
Girnar Food & Beverages Pvt. Ltd. challenged this order before the High Court:The Division Bench of the High Court admitted the appeal and stayed the interlocutory injunction. Dissatisfied with this decision, the plaintiff (Godfrey Phillips India Ltd.) filed an appeal before the Supreme Court via special leave petition.
Issues Involved: Whether the plaintiff could claim an exclusive right over the term "Super Cup" despite having disclaimed it in its registered trademark?Whether a disclaimer in a registered trademark negates the right to file a passing-off action?Whether the High Court Division Bench’s decision to stay the interlocutory injunction was legally sustainable?
Discussion on Judgments Referred: Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558The Supreme Court had previously held that a disclaimer in a registered trademark does not prevent the trademark owner from initiating a passing-off action.This principle was crucial in the present case because Godfrey Phillips India Ltd. had disclaimed the words "Super Cup" in its trademark registration, but it still sought to prevent Girnar Food & Beverages Pvt. Ltd. from using the term through a passing-off claim.
Submissions of the Parties:Plaintiff (Godfrey Phillips India Ltd.)Argued that the trial court’s order granting an interlocutory injunction was justified as the defendant’s use of "Super Cup" was likely to cause confusion in the market.Contended that even though "Super Cup" was disclaimed in the registration, they had acquired goodwill and reputation over the years, entitling them to protection under common law rights of passing off.Relied on Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. to assert that the disclaimer did not preclude them from enforcing their common law rights.
Defendant (Girnar Food & Beverages Pvt. Ltd.)Argued that since "Super Cup" was expressly disclaimed, the plaintiff could not claim any exclusive right over it.Contended that the High Court was correct in staying the trial court’s injunction since there was no prima facie case of exclusive ownership over the term "Super Cup."
Detailed Reasoning and Analysis of the Judge:Nature of Disclaimer and Its Legal Consequences: The Supreme Court analyzed the effect of a disclaimer in a registered trademark and referred to its earlier ruling in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. It reaffirmed the principle that a disclaimer does not strip a trademark owner of common law rights under passing off.
Error in High Court’s Reasoning:The Division Bench of the High Court reasoned that, since "Super Cup" was disclaimed, the only protectable part of the trademark was "Tea City." The Supreme Court found this reasoning flawed, as the legal position is that a passing-off action is still maintainable despite a disclaimer.
Preservation of Market Reputation: The Supreme Court acknowledged that allowing the defendant to continue using "Super Cup" without considering the plaintiff’s rights would be prejudicial, especially when there was an established reputation associated with the term.
Need for Fresh Examination by the High Court: Since the respondent's counsel had not supported the High Court's reasoning, the Supreme Court found it appropriate to set aside the Division Bench's order and remit the matter back to the High Court for a fresh decision. Decision of the Judge.The Supreme Court set aside the Division Bench’s order staying the interlocutory injunction. It remitted the matter back to the Division Bench for a fresh decision, directing it to reconsider the case in light of Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.It directed that the High Court should preferably dispose of the appeal within three months. It maintained the status quo regarding the use of "Super Cup" until the High Court’s final decision.
Significance of the Judgment.This case reinforces the principle that disclaiming a portion of a registered trademark does not eliminate common law rights under passing off. It establishes that passing-off actions remain valid even where certain words in a trademark have been disclaimed. The ruling upholds the importance of protecting market reputation and preventing consumer confusion. It ensures that High Courts properly apply legal precedents when dealing with interlocutory injunctions in trademark disputes.
Conclusion:The Supreme Court’s decision in Godfrey Phillips India Ltd. vs. Girnar Food & Beverages Pvt. Ltd. is a landmark ruling in trademark law. It clarifies that a disclaimer in a registered trademark does not preclude a party from asserting passing-off rights. The ruling ensured that the plaintiff’s reputation in the market was protected while allowing the High Court to re-evaluate the matter based on settled legal principles.
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
