Sabmiller India Ltd. vs Jagpin Breweries Ltd.

S.J. Kathawalla, J.—The above Notice of Motion has been taken out by the plaintiff inter alia for the following reliefs:

"(a) that pending the hearing and final disposal of the suit the defendant by itself, its directors, servants, agents, stockist, distributors and dealers, be restrained by a temporary order and injunction of this Hon''ble Court from infringing the plaintiffs registered trade mark bearing Nos. 436744 and/or 1521743 both in class 32, by using in relation to beer the impugned trade mark "COX 5001" or any other trade mark containing the numeral 5001 or any other trade mark deceptively similar to the registered trade mark Nos. 436744 and/or 1521743 both in class 32, or in any other manner whatsoever;

(b) that pending the hearing and final disposal of the suit the defendant by itself, its directors, servants, agents, distributors and dealers, be restrained by a temporary order and injunction of this Hon''ble Court from manufacturing, selling, marketing, trading, distributing, exhibiting for sale or advertising beer or the like goods bearing the impugned trade mark "COX 5001" or any other trade mark containing the numeral 5001 or any other trade mark deceptively similar to the plaintiff''s trade mark "HAYWARDS 5000", so as to pass off or enable others to pass off the defendant''s beer, as and for the beer of the plaintiff;"

By an order dated 13th January 2012 this Court has granted ad interim relief to the plaintiff in terms of prayer Clause (a) of the Notice of Motion.

Briefly set out, the relevant facts are as under:

The plaintiff has stated that it is the proprietor of the trade marks "HAYWARDS.5000" and "FIVE THOUSAND" registered under Nos. 436744 and 1521743 both in Class 32 in respect of beer. Since about 1983, the plaintiff and its predecessors have been openly, continuously and extensively using in respect of beer the trade mark label containing the word "HAYWARDS 5000" wherein the number "5000" appears prominently. The plaintiff has been vigilantly protecting its exclusive right in the said trade mark. Copies of several orders and judgment passed by various courts including this Court against the infringing parties have been annexed and marked as Exhibits G, H, I, J, K, L, N, O, P, Q, R, R-1, U-1, U-2 and U3 to the plaint. The said orders include the orders passed by this Court against the present defendant, restraining it from using the trade mark "COX 5000" in respect of beer.

Previous Litigation between the plaintiff and the defendant

"5.1 in or about January 2005, the plaintiffs predecessors Shaw Wallace & Co. Ltd., came to learn that the defendant had started brewing, bottling and/or marketing beer under the trade mark "COX 5000" of which the numeral "5000" formed an essential and leading feature. By their Advocates'' notice dated 18th January 2005, the plaintiffs predecessors therefore called upon the defendant to cease and desist from using the impugned trade mark "COX 5000". The defendant, by its Patent and Trade Mark Attorney''s letter dated 1.2.2005 denied and disputed several statements and submissions made in the plaintiffs said notice dated 18.1.2005 and refused to comply with the requisitions contained in the plaintiff''s notice dated 18.1.2005. The plaintiff therefore filed a suit against the defendant and another in this Court being Suit No. 2510 of 2006 for an injunction restraining them from using the trade mark COX 5000 or any other trade mark deceptively similar to the plaintiff''s trade mark HAYWARDS 5000 in relation to beer. In the Notice of Motion No. 2990 of 2006, taken out by the plaintiff in the said suit, a learned single Judge of this Court passed an ad interim order dated 21st September 2006 restraining the defendant and another from infringing the plaintiffs registered trade mark bearing No. 436744 in Class 32 and from passing off its beer, by using in relation to beer the trade mark "COX 5000", or any other trade mark containing the numeral "5000" or any other trade mark deceptively similar to the plaintiffs registered trade mark No. 436744 in Class 32. The defendants therein preferred an appeal from the said order dated 21st September 2006 being Appeal No. 805 of 2006. The said appeal was dismissed vide an order dated 15th November, 2006. Thereafter, by an order dated 8th March 2011, this Court confirmed the said ad-interim order of injunction dated 21st September 2006. The evidence in the said Suit No. 2510 of 2006 is complete and the said Suit is pending for final arguments.

5.2 in the year 2007, the defendant challenged the validity of registration of the plaintiff''s trade mark bearing registration No. 436744 in Class 32. However, the defendant''s said application was dismissed by the Intellectual Property Appellate Board (''IPAB''), vide its order dated 14th September, 2011 (Exhibit-V - page 169 - to the plaint). By the said order, IPAB held that the disclaimer of all descriptive matter in the registered trade mark No. 436744 in Class 32 did not include "5000"; that there was no evidence that the numeral "5000" described the potency of beer; and that the Registrar had on many instances separately disclaimed the descriptive words and numerals. The said order has not been challenged by the defendant. The defendant has also not challenged the validity of the registration of the plaintiffs second registered trade mark FIVE THOUSAND bearing registration No. 1521743 in Class 32.

5.3 in September 2011, the plaintiff came to learn that the defendant is using the plaintiffs empty beer bottles to which the plaintiffs registered design No. 223479 was applied and which bottles were embossed with the plaintiff''s mark "SABMILLER/SABMILLER INDIA". The defendant was selling its beer in the said bottles under the trade mark label wherein the numeral "5001" was prominently displayed. The plaintiff therefore filed Suit No. 652 of 2011 in the Hon''ble High Court of Madras and obtained an ex parte order of injunction restraining the defendant from infringing the plaintiffs said registered design No. 223479 and from passing off by using the plaintiffs trade marks SABMILLER/SABMILLER INDIA (Exhibits V-1 and V-2 -pages 185 to 193 - to the plaint)."

On or about 9th January, 2012 the plaintiff filed the present suit and made an application for ex parte ad interim injunction in terms of prayer Clause (a) of the above Notice of Motion. As stated aforesaid, by an order dated 13th January 2012, this Court granted relief to the plaintiff in terms of prayer Clause (a) of the above Notice of Motion. Thereafter, the defendant filed its affidavit in reply dated 31st January, 2012 and further affidavit in reply dated 3rd February, 2012 and made an application for vacating the said ex-parte order of injunction. By an order dated 7th February, 2012, this Court dismissed the defendant''s application seeking vacation of the said ad-interim order of injunction dated 13th January 2012. The defendant preferred appeal No. 189 of 2012 against the said order dated 7th February 2012. However, the said appeal was dismissed by the Division Bench of this Court vide its order dated 28th August 2012. Under the circumstances, the ex parte ad interim order of injunction dated 13th January 2012 continues to operate against the defendant.

In the meantime, by an order dated 12th February 2013, this Court granted leave to the plaintiff to combine the cause of action for passing off with the cause of action for infringement of trade mark. Therefore, the plaintiff is now seeking both the reliefs against the defendant in the above Notice of Motion i.e. against infringement as well as passing off.

Learned Advocate appearing for the plaintiff has submitted that the plaintiff is, admittedly, the registered proprietor of the trade mark "HAYWARDS 5000" bearing registration No. 436744 in Class 32 in respect of beer wherein the numeral "5000" forms one of the leading, essential and prominent features. The plaintiff is also the proprietor of the trade mark "FIVE THOUSAND" bearing registration No. 1521743 in Class 32 in respect of beer. The defendant''s application for cancellation of registration of the plaintiffs trade mark bearing registration No. 436744 in Class 32 has been dismissed by IPAB and the said order has not been challenged. The defendant has also not disputed the registration of the plaintiffs trade mark bearing registration No. 1521743 in Class 32. The plaintiff has filed certified copies of entries in the Register of Trade Marks in respect of both the registered trade marks which prima facie show that the plaintiff is the registered proprietor of the said trade marks. Thus, the plaintiff has, by virtue of the registration of the aforesaid trade marks, acquired the statutory right to exclusive use of the aforesaid registered trade marks in respect of beer and adopt appropriate proceedings for infringement of the said registered trade marks as provided under section 28(1) of the Trade Marks Act, 1999. The defendant is admittedly using the trade mark "COX 5001" label (Exhibit W and W-1 - pages 195 and 196 - to the plaint). Even a cursory look at the impugned trade mark shows that the leading, essential and memorable part of the impugned trade mark is numeral "5001". The said numeral "5001" is almost identical with and/or deceptively similar to the plaintiffs trade mark "5000" (FIVE THOUSAND). The photographs of the defendant''s bottles at Exhibit W-1 - page 196 makes this position amply clear.

Relying on the decisions in (i) (De Cordova v. Vick Chemical) reported in (1951)68 R.P.C. 103; (ii) (Reckitt & Colman of India Ltd. v. Wockhardt Limited] unreported judgment of Bombay High Court dated July 8, 1992 in Appeal No. 1180 of 1981, Notice of Motion No. 2141 of 1991 in Suit No. 2970 of 1991; and (iii) Shaw Wallace and Company Ltd. and Another Vs. Mohan Rocky Spring Water Breweries Ltd., , the learned Advocate appearing for the plaintiff has submitted that the rival marks are to be compared as a whole and with reference to the leading, essential and memorable parts thereof. It is submitted that upon undertaking such exercise it is clear that the rival marks in the present case are deceptively similar.

The learned Advocate appearing for the plaintiff has further submitted that as held by the Supreme Court in Laxmikant V. Patel Vs. Chetanbhat Shah and Another, , the three elements of passing off action that are required to be proved by the plaintiff are, that the plaintiff''s mark has become by user distinctive of the plaintiff''s goods and has acquired reputation; that there is a possibility of confusion and deception if the defendant uses the impugned trade mark; and that there is a likelihood of damage to the plaintiffs reputation and/or business. The plaintiffs trade mark "HAYWARDS 5000" is a distinctive trade mark. The plaintiff has continuously and extensively used the said trade mark and has widely advertised and publicized it. The plaintiffs annual sales and annual publicity and sales promotional expenses in respect of beer bearing the trade mark "HAYWARDS 5000" since May, 2005 as stated in paragraph 9 of the Plaint support such user. The value of sales and the extent of advertisement are sufficient to prima facie prove that the plaintiff has acquired substantial reputation and goodwill in the trade mark "HAYWARDS 5000". As the defendant''s impugned trade mark "COX 5001" is deceptively similar to the plaintiffs trade mark "HAYWARDS 5000", by the use of the impugned trade mark the defendant is misrepresenting to the members of the trade and public that the defendant''s beer bearing the impugned trade mark is that of or originating from the plaintiff. Reliance has been placed upon the judgment of Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd., wherein the Hon''ble Supreme Court has held that the plaintiff does not have to prove mala fide intention on the part of the defendant. The plaintiff has to only establish likelihood of confusion in the minds of the public that the goods of the defendant are those of the plaintiff. Learned Advocate appearing for the plaintiff has submitted that due to such misrepresentation by the defendant, the plaintiff is bound to suffer damages, not only to its business but also to its reputation and goodwill. The plaintiff has thus proved the three requisite elements of passing off.

Learned Advocate appearing for the plaintiff has submitted that so far as the relief of interim injunction restraining the defendant from infringing the plaintiff''s registered trade mark is concerned, this Court need not go into the issue of balance of convenience. In support of the said submission, reliance has been placed upon the following observations, of the Division Bench of this Hon''ble Court in (Appeal No. 436 of 1989 in Notice of Motion No. 1920 of 1988 in Suit No. 2903 of 1986)6, decided per Bharucha J. and Srikrishna J. (as they then were), dated 8th February, 1991.

"Since, however, it was stated on behalf of the defendant that Kurdukar J., was in error in declining to consider balance of convenience, we shall touch upon that aspect, though we must make it clear that, in our view, it is only in unusual circumstances that the balance of convenience should play a part in a matter where the plaintiff is the owner of a registered trade mark".

It is submitted that the above observations are quoted with approval by this Court in its judgment in Poddar Tyres Ltd. Vs. Bedrock Sales Corporation Ltd. and Another, .

Learned Advocate appearing for the plaintiff has submitted that in any event, the plaintiff is using its registered trade mark "HAYWARDS 5000" since 1983 whereas the defendant claims to be using its impugned trade mark since April, 2007. However, apart from stating the annual sales in Exhibit "G'' to the affidavit in reply of Nikhil Bansal dated 3rd February, 2012, the defendant has not produced any supporting material such as copies of invoices, delivery challan etc. supporting the defendant''s claim of user of the impugned trade mark since 2007. Thus, the balance of convenience is in favour of the plaintiff and against the defendant. Further, in any event, the defendant has adopted the impugned trade mark knowing well that due to its deceptive similarity with the plaintiff''s well-known trade mark, the defendant will be able to trade upon the immense reputation and goodwill of the plaintiff in the trade mark "HAYWARDS 5000" and thereby make unlawful gains. The defendant has no reason to adopt and use the impugned trade mark consisting of numeral "5001" except to encash on the plaintiffs said goodwill and reputation. In fact, the defendant is a habitual infringer and its dishonesty is writ large from its conduct, more particularly described in the Plaint.

Learned Advocate appearing for the plaintiff has submitted that it is clear that the plaintiff will suffer irreparable injury to trade and business in its goods sold under the mark "HAYWARDS 5000" due to the use of the impugned trade mark by the defendant. The plaintiffs reputation and goodwill is also likely to be adversely affected if the defendant is allowed to continue the use of the impugned trade mark. Learned Advocate appearing for the plaintiff has submitted that the defendant''s adoption and use of the impugned trade mark after the aforesaid order of ad interim injunction dated 21st September, 2006 in the Notice of Motion No. 2990 of 2006 in Suit No. 2510 of 2006 is dishonest and mischievous. It is clear that the defendant has deliberately adopted the impugned trade mark with a view to trade upon the plaintiffs reputation and goodwill and the defendant is therefore not entitled to any equities.

The learned Advocate appearing for the defendant has submitted that this Court does not have jurisdiction to try and entertain the present Suit since the defendant''s beer is not sold in the State of Maharashtra or within the jurisdiction of this Court. The defendant has lost sight of the fact that the defendant has already given up the issue pertaining to lack of jurisdiction and the same cannot be raised again. On 13th March 2013, when the above Suit was listed under the caption "For Issues", the plaintiffs Advocate had pointed out that the defendant in its Affidavit in Reply and the Written Statement has pleaded that this Court does not have jurisdiction to try and entertain the present Suit and in view thereof, the issue of jurisdiction will have to tried and decided as a preliminary issue. However the Advocate appearing on behalf of the defendant, on instructions, stated that the defendant is not pressing the issue of jurisdiction. The statement of the defendant''s Advocate was accordingly recorded by its Court in its order dated 13th March 2013 as under:

"The learned Advocate for the defendants, on instructions, states that the defendants are not pressing their earlier stand that this Court has no jurisdiction to try and entertain the above Suit. The statement is accepted."

In any event, the above Suit is filed by the plaintiff under section 134(2) of the Trade Marks Act, 1999. The plaintiff has its Registered Office in Mumbai from where it is carrying on its business. This Court therefore has jurisdiction to entertain and try this Suit in so far as it relates to infringement of the plaintiffs registered trade marks. The plaintiffs petition No. 15 of 2012 for leave of this Court under Clause XIV of the Letters Patent to combine the cause of action for passing off with the cause of action for infringement of trade mark has been allowed by the Court vide its order dated 12th February 2013. Admittedly, the defendant has not preferred any appeal from the said order dated 12th February 2013. In view thereof, this Court also has jurisdiction to entertain and try this Suit for the cause of action of passing off

Learned Advocate appearing for the defendant has also submitted that there cannot be any case of passing off or infringement as the goods of the defendant are being sold under the trade mark COX 5001, which is distinct or easily distinguishable from the plaintiffs trade mark HAYWARDS 5000 and that the plaintiff has not filed any affidavits or documents showing any deception or confusion between the goods bearing the rival trade marks and that the case of the plaintiff is unsupported by any documentary evidence in this regard. He has further submitted that the necessary ingredients for passing off are absent in the present case.

The plaintiffs trade mark HAYWARDS 5000 bearing registration No. 436744 in Class 32 in respect of beer consist of the numeral "5000" as one of its leading, essential and prominent features. The leading, prominent and essential feature of the defendant''s trade mark label at Exhibit W and W-1 to the Plaint is the numeral ''5001''. The numeral "5000" and "5001" are deceptively similar. This is amply demonstrated by Exhibit W-1 to the Plaint which shows that visually the rival trade marks especially their essential features look alike. Further, the words "FIVE THOUSAND" and numeral "5001" are phonetically similar. It is a settled principle of law that the rival marks are to be compared as a whole and with reference to the leading, essential and memorable parts thereof. The ratio in the judgments relied upon by the learned Advocate appearing for the plaintiff viz. (i) De Cordova v. Vick Chemical, (1951) 68 R.P.C. 103; (ii) Reckitt & Colman of India Ltd. v. Wockhardt Limited, an unreported judgment of Bombay High Court dated July 8, 1992 in Appeal No. 1180 of 1981 in Notice of Motion No. 2141 of 1991 in Suit No. 2970 of 1991 and (iii) Shaw Wallace and Company Ltd. and Another Vs. Mohan Rocky Spring Water Breweries Ltd., , aptly applies to the present case. The defendant''s impugned trade mark is applied to round bottles and when those bottles are viewed from certain angles e.g. as seen in Exhibit W-1 to the Plaint, the impugned trade mark is likely to look similar to the plaintiffs trade mark "5000" (Five Thousand). In view of the above, upon coming across the defendant''s beer bearing the impugned trade mark, the members of the trade and public are likely to be put in a state of wonderment and misled to believe that the defendant''s goods bearing the impugned trade mark are those of or an extension of the plaintiffs well known beer bearing the trade mark "HAYWARDS 5000". It is a settled principle of law that even likelihood of confusion and deception is sufficient and actual instance of confusion or deception is not required to be proved by the plaintiff. I am therefore prima facie of the view that the plaintiffs trade mark "HAYWARDS 5000" has acquired reputation and that there is a possibility of confusion and deception if the defendant uses the impugned trade mark. There is therefore also a likelihood of damage to the plaintiffs reputation and/or business.

Learned Advocate appearing for defendant has further submitted that the plaintiffs registered trade mark HAYWARDS 5000 bearing registration No. 436744 in class 32 has never been used in the same form as it is registered by the plaintiff; that the plaintiff has therefore abandoned the said registered trade mark; and that the plaintiff is therefore not entitled to the relief against infringement. Learned Advocate appearing for the plaintiff in reply has submitted that the plaintiff has been using the trade mark HAYWARDS 5000 registered under No. 436744 in Class 32 as also other label marks containing as their leading, prominent, essential and distinctive features the word and numeral "HAYWARDS 5000" openly, continuously and exclusively; that the said other labels are substantially same/similar to the trade mark HAYWARDS 5000 registered under No. 436744 in Class 32; that the user of said other trade mark labels constitute deemed use of the registered trade mark itself; and that the plaintiff has therefore not abandoned the said registered trade mark.

I am not in agreement with the above submission advanced on behalf of the defendant. Only because a registered trade mark is not used in exactly the same form as it is registered, it cannot be said that the registered proprietor has abandoned the said registered trade mark. So long as the registered trade mark is used, substantially in the same form or manner in which it is registered, it must be deemed/considered to constitute the use of the registered trade mark. The word HAYWARDS and the numeral 5000 are the leading, essential and prominent features of the plaintiffs registered trade mark bearing No. 436744 in Class 32. So long as the trade mark which is actually used by the plaintiff consists of its leading, essential and prominent features, the use of the said trade mark will be deemed to constitute use of the registered trade mark itself. The trade mark label undergoes change in shape/size to suit the container on which it is affixed. Sometimes, additions/deletions are made in the trade mark label in accordance with the statutory/regulatory requirements. Use of such altered trade mark labels would be deemed to constitute the use of the registered trade mark. However the alterations should not be such as would substantially alter the identity of the mark with reference to its prominent, leading and essential features. I am fortified in this view by the decisions of this Court in (SKOL Breweries Ltd. v. Som Distilleries & Breweries Ltd.), reported in 2012 (1) Bom. C.R. 333(O.S.) : 2012(49) P.T.C. 231 (Bom.) and Skol Breweries Limited Vs. Fortune Alcobrew Pvt. Limited, Hindustan Breweries and Bottling Limited and Shaw Wallace and Co. Limited, .

In SKOL Breweries Ltd. v. Som Distilleries (supra), this Court held as follows:

"19. Mr. Bookwala contended that the plaintiff had abandoned the registered label mark. Relying upon paragraph 8 of the plaint read with Exhibit "E" thereto he submitted that the mark actually used by the plaintiff was entirely different from the registered mark. The registered mark he submitted had never been used and must therefore be deemed to have been abandoned. Exhibit "E" to the plaint is a photograph of a bottle with the label affixed thereon. The words "HAYWARDS 5000" form not only an important but a predominant part of the label. These letters and numerals are in the centre of the label and are about four times the size of the letters and numerals of the other material on the label. Reliance however is placed on the fact that the label in addition thereto contains considerable other material. Firstly the word PREMIUM is added to the registered mark. Below the mark "HAYWARDS 5000" are the words "PREMIUM SUPER STRONG BEER". Below these words is the device of a star within a circle and below the same the quantity is mentioned as 650 ml. Above the mark are the words "THE ORIGINAL". The use of this additional material, Mr. Bookwalla contended, established that it is not the registered trademark that has been used by the plaintiff but another trademark altogether.

The added material in the present case does not indicate that the plaintiff has abandoned the registered mark or the word mark "HAYWARDS 5000". Nor does it indicate that the label on the bottle containing the plaintiffs product does not constitute the use of the registered label mark. The submission that any variation or deviation from the registered mark does not constitute use of the registered mark is not well founded. Indeed in most cases the label affixed on the products or packages containing the products would contain in addition to the trademark, registered or unregistered, other material. The added material may be of the proprietors volition as well as on account of statutory compulsion For instance the labels may contain the name of the entity packing/bottling the goods, the name and address of the manufacturer and the quantity of the contents of the package upon which the label is affixed. The label may also contain certification obtained by the manufacturer and the proprietors compliance with statutory requirements whether compulsorily required to be stated or not If Mr. Bookwalla''s submission is accepted it would lead to the absurd result that the mere introduction/mention of such material would lead to the conclusion that the registered mark has not been used and consequently must be deemed to have been abandoned by the proprietor thereof So long as the registered mark is used in substantially the same manner in which it is registered it must be deemed/considered to constitute the use of the registered mark itself. Where the use of a mark, registered or unregistered, is apparent the mere addition of material on the label or other material on which it appears would not lead to the conclusion that the mark has not thereby been used. In either case the use of the mark must be apparent to wit, the Court must be satisfied that despite the added material the trademark has been used. The use of the mark must be as a trademark and must be obvious/perceptible. The mark must not be lost as a result of the added material for then it is not to the use of the mark for the purpose of an infringement or a passing of action."

In the case of SKOL Breweries Ltd. v. Fortune Alcobrew (supra), this Court held as follows:

Mr. Kirpekar also submitted that the registration is only in respect of a neck label. He submitted that the shape of the label is such that it can only be placed on the neck of a bottle and nowhere else and that therefore the registration is confined to the label being placed at the neck of a bottle. The plaintiff had not used the registered mark in this manner.

The registration certificate does not mention anything to this effect namely that the label can be used only by placing it on the neck of a bottle. There is no such restriction or requirement in the registration certificate. The shape of the label may be one of the features of the label/label mark. The essential and dominant features thereof are the words ''Haywards 5000'', ''Haywards'' and ''5000''. The plaintiff is entitled to use the mark exclusively in such manner as it pleases in respect of the said products. There is nothing that prevents the plaintiff from placing the label even on different types of containers such as on cans or plastic or paper sachets or even on the outer cover of the containers in which the bottles, cans or sachets are placed. Once it is held that the words ''Haywards 5000'' or ''Haywards'' or ''5000'' are the significant and dominant features of the registered mark, it follows that the use thereof substantially in that manner is permissible. A similar contention was also rejected in Skol Breweries Limited v. Som Distilleries and Breweries Limited & Anr. (supra)."

Learned Advocate appearing for defendant has next submitted that the plaintiff cannot claim any right in respect of the numeral "5000", and it cannot make a claim of infringement of its trade mark HAYWARDS 5000 bearing registration No. 436744 in Class 32 thereof. He further submitted that the Trade Marks Registry has always held that all numerals attached to any mark are disclaimed and no exclusive right can be claimed in such numerals. Learned Advocate appearing for the plaintiff has submitted that in view of the order passed by the IPAB on 14th September 2011 in Rectification Application No. ORA/170/2007/TM/KOL filed by the defendant herein, against the plaintiffs registered trade mark HAYWARDS 5000 bearing registration No. 436744 in Class 32, whereby IPAB has already decided the above issue against the defendant, the defendant is now barred from raising the same issue before this Court. He has further submitted that the plaintiffs registered trade mark No. 436744 in Class 32 is a composite trade mark label comprising the word "HAYWARDS" and numeral "5000" and both are distinctive and leading features of the mark and the descriptive words appearing on the said trade mark label are "SUPER STRONG BEER". He has submitted that there is no disclaimer in respect of the numeral "5000" in the plaintiffs trade mark bearing registration No. 436744 in Class 32. He has submitted that section 28 of the Trade Marks Act, 1999, gives an exclusive right to the plaintiff to use the trade mark "HAYWARDS 5000" and the essential feature/s thereof including the numeral "5000" and also gives a right to the plaintiff to prevent anyone from using any deceptively similar trade mark.

In my view, even a cursory look at the plaintiffs registered trade mark bearing No. 436744 in Class 32 reveals that the word "HAYWARD" and the numeral "5000" are the leading, essential and memorable features of the said trade mark and both the said features are distinctive. By no stretch of imagination can they be termed as descriptive. The disclaimer condition of registration of trade mark bearing No. 436744 in Class 32 viz. "Registration o/said trade mark shall give no right to the exclusive use of all descriptive matters appearing on the label" therefore, would not apply to the said essential and distinctive features. A Disclaimer is the antithesis of an essential particular of a trade mark. I am fortified in my view by the judgments of this Court in the following cases:

(i) Shaw Wallace & Co. Ltd. v. Mohan Rocky Spring Water Breweries Ltd. (supra), wherein the learned Single Judge of this Court has held:

It is submitted that there is no disclaimer. The registration certificate and the entry relating thereto clearly does not mention any disclaimer regarding the numeral "5000". It is submitted that whenever the Registrar required any numeral to be disclaimed, he made a specific reference to that as is to be found in the documents produced by the defendants along with the further Affidavit of the said Kolambe dated 10th January, 2005 in respect of Application No. 941704 in respect of "Haywards 5000" advertised before acceptance, Application No. 941634 in respect of "Haywards 2000" advertised before acceptance. The Registrar had suggested disclaimer in respect of numeral "5000". Thus, whenever there is a disclaimer in respect of a numeral the reference is specifically made. In the instant case i.e. the mark which is registered, there is no such disclaimer in respect of the numeral "5000" and disclaimer is for descriptive words which obviously are "strong beer". In any event, the plaintiffs have by their letters dated 20-3-2003 objected to the disclaimer in the matter of the plaintiffs'' another application No. 940878 in class 32 which are to be found at page 9 of the Affidavit of Sonali Chanda dated 20-1-2005.

Now, if in the light of these rival submissions the record of the case is perused, it becomes clear that the trade-mark of the petitioner "HAYWARDS 5000" is a registered trademark. Perusal of the registration shows that numeral "5000" is not disclaimed. What is disclaimed is the descriptive material on the label. Whenever numeral in the label or trade mark is disclaimed, it is clear from the material available on record that it was specifically so mentioned, and therefore, in my opinion, it is clear from the material available on record that so far as the registration of the label of "HAYWARDS 5000" is concerned, the numeral has not been disclaimed, and therefore, in view of the registration of the trade-mark and the label, the plaintiffs will have a statutory right to prevent the defendants from using a deceptively similar mark. In so far as the question whether the numeral is an essential part of the label is concerned, perusal of the judgment of this Court in Notice of Motion No. 1259 of 1994 in the case of (Shaw Wallace & Company Ltd. v. Castle Douglas Industries Ltd. and anr.), dated 20-6-1996 shows that in that case the trade-mark involved was "HAYWARDS 2000". In that case the numeral "2000" was specifically disclaimed, still the Court held that the said numeral was an essential part of the trade mark of the plaintiff. In view of the judgment of this Court referred to above, in my opinion, it cannot be said in the present case that the numeral "5000" is not an essential part of the trade-mark of the plaintiff and is not associated exclusively with the plaintiffs. In the present case, as has been rightly contended by the plaintiffs, the defendants have, while entering into an agreement with the plaintiffs which are on record, admitted that the Brand "HAYWARDS 5000" is a well-known brand and that the defendants have no right and are not entitled to question the popularity or the suitability of the brand. From the material available on record it is clear that the defendants were aware, when they adopted their brand about the popularity of the registered trade mark of the petitioners, and therefore, it prima facie appears that the adoption of the impugned trade-mark by the defendants was dishonest and they adopted the trade mark to take advantage of the popularity of the trade-mark of the plaintiffs, and therefore, in my opinion, as there is no disclaimer of the numeral "5000" at the time of registration of the trade-mark and as the numeral "5000" is an essential part of the registered trade mark label of the plaintiffs, the plaintiffs will prima facie have a statutory right to prevent the defendants from using a deceptively similar trade label and trade mark. The plaintiffs would be entitled to a temporary injunction also because it prima facie appears that the adoption of the impugned mark by the defendants appears to be dishonest. So far as the defence that there are others who are using the numeral "5000" in relation to beer and therefore it is common to the trade is concerned, apart from the fact that one party other than the defendant who was using the numeral "5000" has been proceeded against by the plaintiff, the defendant has not produced material on record to show as to what is the extent of sale and business of the other parties who according to the defendant are using the numeral "5000". In the absence of production on record of the above referred material, the defendant cannot successfully confer that the numeral "5000" is common to the trade.

(ii) SKOL Breweries Ltd. v. Som Distilleries & Breweries Ltd. (supra), wherein the learned Single Judge of this Court has held:

Mr. Bookwala, the learned Senior Counsel appearing on the half of defendant No. 1 submitted that in view of the limitations and conditions placed by the Registrar in respect of the registration of the said mark the plaintiff cannot claim a monopoly/exclusive right to use the numeral 5000 with respect to products falling under class 32.

The submission is answered in the plaintiffs favour in view of the judgment of a learned single Judge of this Court in the case of Shaw Wallace and Company Ltd. and Another Vs. Mohan Rocky Spring Water Breweries Ltd., . In that case it was contended on behalf of the plaintiff that it had an exclusive right to use the trademark "HAYWARDS 5000" an essential feature whereof included the numeral 5000 and that the defendant had committed the acts of infringement and passing off by using that trademark "PRESTIGE 5000" and "FOUR SQUARE 5000". In that case also the defendant contended that the plaintiff was not entitled to claim an exclusive right to use the numeral 5000 as it was descriptive and common to the trade and due to the disclaimer stipulated in the registration certificate. The learned Judge held as under:-

..............

The judgment supports Mr. Kane''s submission that the disclaimer placed by the Registrar did not pertain to the numeral 5000. It also supports his contention that whenever the Registrar intends ordering a disclaimer in respect of a numeral it is specifically so mentioned. Apart from being bound by the judgment the evidence on record in the present case also supports the submission.

I am not inclined to uphold Mr. Bookwalla''s submission that the judgment is per in curium as the learned Judge had not considered the judgment of the Supreme Court in The Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., . The case dealt with the order of the Registrar rectifying the register by directing the respondents to disclaim the exclusive use of the word "Shree" from the registered mark. The mark was a device which comprised inter alia of the words "Shree Durga Chandra Rakhit". The Court therefore referred to various factors relied upon by the Registrar while insisting upon the disclaimer. The question was whether the disclaimer was rightly insisted upon by the Registrar. The learned judge had however held that there was no disclaimer of the numeral 5000. The judgment therefore cannot be said to be per incuriam.

In the case before me the plaintiffs registered mark has not been rectified. It cannot therefore be challenged in these proceedings. I must therefore presume the same to be valid. The mark is the same as the one before the learned Single Judge and I consider myself therefore bound by the judgment in Shaw Wallace and Company Ltd. and Another Vs. Mohan Rocky Spring Water Breweries Ltd., .

Mr. Bookwala relied upon various advertisements before acceptance in respect of the plaintiffs application for registration of its marks. Firstly he relied upon an application for the registration of a label mark a dominant and essential part whereof consisted of the words "HAYWARDS 5000 SUPER STRONG BEER". The advertisement before acceptance stated:

"REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF THE DISCLAIMER OF NUMERAL 5000 AND EXPRESSION "SUPER STRONG" AND ALL DESCRIPTIVE MATTERS APPEARING ON THE LABEL"

It was submitted that the intention always has been to insist on a disclaimer inter alia of the numerals including the numeral 5000.

The advertisement not only does not support the defendant No. 1 but in fact supports the plaintiff. Firstly it is only an advertisement before acceptance. The plaintiffs application for registration is pending. The plaintiff has not accepted this condition to the registration. The Registrar is yet to decide the issue. The advertisement by itself therefore cannot be relied upon against the plaintiff.

Further it is pertinent to note that this advertisement in fact supports the plaintiffs contention that whenever the Registrar insists on a disclaimer in respect of a numeral he specifically provides for the same. This is clear from the fact that in the above advertisement the numeral 5000 is treated as distinct and separate from "all descriptive matters appearing on the label". In the present case there is no such disclaimer insisted upon by the Registrar to wit, a disclaimer specifically in respect of the numeral 5000 has not been insisted upon

A condition or limitation placed in respect of one registration cannot be read into a separate and distinct registration albeit of the same trademark

The submission that the disclaimer in the present case includes the numeral 5000 is, therefore, rejected.

(iii) SKOL Breweries Ltd. v. Fortune Alcobrew Pvt. Ltd. (supra) wherein the learned Single Judge of this Court has held:

Mr. Kirpekar, the learned Counsel appearing on behalf of the defendants, submitted that the limitations and conditions subject to which the registration was granted disentitles the plaintiff from claiming an exclusive right to use the numeral 5000 in respect of products falling under class 32.

This point stands concluded against the defendants by the judgment of a learned single Judge of this Court in Shaw Wallace & Co. Ltd. & anr. v. Mohan Rocky Spring Water Ltd. dated 5th April 2006 in Notice of Motion No. 3480 of 2004 in Suit No. 3443 of 2004, I am bound by this judgment. The same contention raised in respect of the same mark Haywards 5000 was rejected. Following the judgment, I rejected the same contention raised before me in Skol Breweries Limited Vs. Som Distilleries and Breweries Limited and Shaw Wallace and Company Limited, . It was inter alia held that disclaimer placed by the Registrar did not pertain to the numeral 5000 and that whenever the Registrar intends ordering the disclaimer in respect of a numeral, it is specifically so provided.

The plaintiff''s mark came up for consideration in (Shaw Wallace and Company Limited v. Superior Industries Limited), 2003 (27) P.T.C.(Del.). The defendants used the mark ''SUPERIOR 5000''. The learned Judge held that in respect of the plaintiffs said label, the numeral ''5000'' is inter alia emphasized prominently. The defendants contended that the numeral 5000 lies in the public domain and the plaintiff had no right to appropriate the same. Following the previous judgments of the Delhi High Court, the learned Judge came to the conclusion that a person may have a right to trade mark in numerals as well; that the plaintiff had been using the numeral in connection with its products and had been exclusively using the numeral resulting in the general reputation in respect of the products sold under the numeral and that the products sold under the numeral were identified in the minds of the consumers with the plaintiff''s products. The learned Judge held that the defendant had used the numeral 5000 in respect of its products to cash in on the reputation and the goodwill built over the years by the plaintiff. The injunction was granted in the plaintiff''s favour. The defendant in that case thereafter used the numeral 50000. I am informed that the contempt proceedings filed by the plaintiff for the same are pending.

8-A. Mr. Tulzapurkar also relied upon several orders passed in similar matters by this Court which are annexed to the plaint it is not necessary to refer to all of them except for the purpose of establishing that the plaintiff and its predecessors have been vigorously and diligently taking steps to protect their mark.

The submission that the disclaimer in the present case included the numeral 5000 is therefore rejected.

It is therefore clear that the disclaimer imposed by the Registrar in relation to the plaintiffs trade mark HAYWARDS 5000 bearing registration No. 436744 in Class 32 did not pertain to the numeral 5000. Had the Registrar intended to impose a disclaimer on the numeral "5000", he would have specifically done so. In the present case, there is no such disclaimer specifically with respect to the numeral "5000" in the plaintiffs trade mark bearing registration No. 436744 in Class 32. The plaintiff is therefore entitled to claim statutory right in the said trade mark containing the word and the numeral "HAYWARDS 5000" as its leading, essential and prominent features.

Learned Advocate appearing for the defendant also submitted that the plaintiff has come to this Court with unclean hands and by suppressing that the plaintiff and its predecessors have filed application for registration of the trade mark "5000" in Class 32. He has submitted that the plaintiff has not disclosed in the plaint as to why the application for registering the numeral "5000" has been made by the plaintiff when it claims that the registration of the trade mark bearing No. 436744 in Class 32 gives the plaintiff exclusive right to the use of the numeral "5000". He has further submitted that the plaintiff has not disclosed the Opposition Proceedings filed before the Trade Marks Registry against the plaintiffs application for registration of numeral "5000", including the opposition filed by the defendant herein. He has submitted that the plaintiff has not disclosed in the suit that the scheme of amalgamation of Haryana Breweries Ltd. and the plaintiff in C.P. No. 182 of 2001 in the High Court for the States of Punjab and Haryana was sanctioned by the Courts on 14th December 2001. The plaintiff has not explained as to why the plaintiffs name has not been recorded as the subsequent proprietor of the numeral mark "5000" originally standing in the name of Haryana Breweries Ltd.

Learned Advocate appearing for the plaintiff responded by submitting that the facts, (i) that the plaintiffs predecessor and the plaintiff had filed applications for registration of the trade mark "5000" under No. 699313 and No. 1521741 respectively, both in Class 32; (ii) that the said applications were opposed by M/s. Deepa Agency and Mr. Jagdish Chandra Agarwal (Director of the defendant herein) vide their Opposition No. 212293; (iii) that the plaintiff is the proprietor of the trade mark bearing registration No. 916683 in Class 32 by virtue of the Scheme of Amalgamation of Haryana Breweries Ltd. and the plaintiff, sanctioned by the Hon''ble High Court of Punjab and Haryana at Chandigarh; and (iv) that an application in Form TM-24 to bring on record the name of the plaintiff as the subsequent proprietor of the trade mark "5000" bearing registration No. 916683 in Class 32 which is filed and is pending, are irrelevant and do not in any manner alter the rights of the plaintiff in the registered trade marks HAYWARDS 5000 and FIVE THOUSAND bearing registration Nos. 436744 and 1521743 both in Class 32, which are the subject matter of the present Suit. In any event, the above facts have been brought on record in the plaintiffs Affidavit in Rejoinder dated 26th July 2013 filed in the above Notice of Motion.

Admittedly, the present Suit is based on the plaintiffs registered trade marks bearing Nos. 436744 and 1521743 both in Class 32. The said trade marks are therefore the only relevant trade mark for deciding the question of infringement in the present suit. The fact that the plaintiff or its predecessors have filed separate applications for registration of the trade mark "5000" or that the same have been opposed or is pending, is not material or relevant and is of no consequence for the purposes of the present Suit which is based on trade marks bearing registration Nos. 436744 and 1521743 both in Class 32 and hence there is no question of suppressing these facts from the Court. The above submission of the learned Advocate appearing for the defendant is therefore rejected.

Learned Advocate appearing for the defendant has also submitted that the list of trade marks said to be assigned to the plaintiff vide the Deed of Assignment made and executed on May 27, 2005 by and between the plaintiffs predecessors and Shaw Wallace Distilleries Ltd. (the plaintiffs predecessors'' licensee) as the Assignors of the ONE PART and the plaintiff as the Assignee of the OTHER PART (Exhibit 1 - Page 103 to the plaintiffs Affidavit in Rejoinder) on the basis of which the plaintiff claims to be the proprietor of inter alia the trade mark HAYWARDS 5000 bearing No. 436744 in Class 32, did not specifically include the numeral mark "5000".

Learned Advocate appearing for the plaintiff has submitted that vide the said Deed of Assignment dated 27th May 2005, the plaintiffs predecessors assigned and transferred unto and to the use of the plaintiff several registered trade marks and/or trade marks pending registration including those which were set out in the Schedule 1 thereunder written. This fact has also been stated in paragraph 6 of the plaint. Hence, the list attached to the said Deed of Assignment is only inclusive and not exhaustive. He submitted that upon reading the said Deed of Assignment, it is clear that the intention of the parties was to transfer in favour of the plaintiff all the right, title and interest in the trade mark HAYWARDS, HAYWARDS 5000, HAYWARDS 2000, 5000 and 2000.

A bare reading of the Deed of Assignment dated 27th May 2005 and more particularly a conjoint reading of the definition of terms "Assigned Rights", "Intellectual Property Rights" and "Trade Marks" in the said Deed of Assignment, which are reproduced below, makes the position clear:

"Assigned Rights" means

(a) the Trade Marks;

(b) any device, design, logo or get-up consisting of or including any Trade Mark which was used by the Assignors or any of their Affiliates before the Commencement Date;

(c)all common law rights connected with any of the items in (a) or (b) immediately above;

(d) all goodwill associated with any of the items in (a) to (c) immediately above; and

(e) any Intellectual Property Rights (as defined below) in or relating to any of the items referred to in (a) to (d) immediately above which the Assignors own or which are licensed to the Assignors;

"Intellectual Property Rights" means all copyright (including rights in software), registered and unregistered design rights, all rights to bring an action for passing-off, rights in Domain Names, all rights to apply for protection in respect of any of the above rights and all other forms of protection of a similar nature or having equivalent or similar effect to any of these which may subsist anywhere in the world;

"Trade Marks" means:

(f) all trade marks whether or not registered and applications for registered trade marks consisting of or including the words HAYWARDS and/or H2K including the names HAYWARDS 2000 and HAYWARDS 5000;

(g) any trade marks which are confusingly similar to words HAYWARDS and/or H2K including the names HAYWARDS 2000 and HAYWARDS 5000: and

(h) any and all rights in or to the name words HAYWARDS and/or H2K including the names HAYWARDS 2000 and HAYWARDS 5000 owned by or applied for on behalf of the Assignors or any of their Affiliates from time to time anywhere in the world including those registered trade marks and applications for registered trade marks, details of which are set out in Schedule 1.

(Emphasis supplied)

It is clear that the list mentioned in Schedule-1 to the said Deed of Assignment is only inclusive and not exhaustive. In my view non-mentioning of the trade mark "5000" or trade marks containing the numeral 5000 in the list attached to the said Deed of Assignment dated 27th May 2005 cannot be taken to mean that the said trade marks were not assigned to the plaintiff under the said Deed of Assignment dated 27th May 2005. The plaintiff is therefore the proprietor of the trade marks containing the numeral 5000.

Learned Advocate appearing for the defendant has further submitted that the plaintiff has suppressed the fact that there are other trade marks with the numeral "5000"/"50000"/"2000"/"2001" registered in the name of different entities with the Trade Marks Registry. He also relied upon the trade marks MAST 5000 bearing registration No. 1232149 in Class 32, SUPERIOR 50000, 5001 PLUS bearing registration No. 744614 in Class 32 and LONDON 2001 bearing registration No. 744613 in Class 32. Learned Advocate appearing for the plaintiff has submitted that in view of the order passed by the IPAB on 14th September 2011 in the Rectification Application No. ORA/170/2007/TM/KOL filed by the defendant herein against the plaintiffs registered trade mark HAYWARDS 5000 bearing registration No. 436744 in Class 32, IPAB has already decided the above issue against the defendant and that the defendant is now barred from raising the same issue before this Court. He has further submitted that the plaintiff in its Affidavit in Rejoinder dated 26th July 2013 has denied that the trade mark MAST 5000 is registered in Class 32 or in the name of Vinod Kumar Ramanlal Shah or that the said mark is used since 1st January 1989 or that it is valid upto 5th September 2013; that the plaintiff has not seen in the market products bearing the trade mark "MAST 5000"; and that assuming, while denying the alleged registration, the Registrar of Trade Marks has specifically imposed a condition on the Applicant therein to disclaim the numeral "5000" as can be seen from a copy of the journal advertisement annexed and marked as Exhibit-4 to the plaintiffs Affidavit in Rejoinder. Regarding the second trade mark, SUPERIOR 50000, he has submitted that the plaintiff has denied that the said trade mark is registered in the name of Superior Industries Ltd. or that the alleged registration is valid upto 16th April 2021. He has submitted that the plaintiff has, apart from filing contempt petition No. 140 of 2004 against Superior Industries Ltd. & ors. for violating inter alia the order of injunction dated 20th June 2003 passed by the Hon''ble Delhi High Court (Exhibit-G to the Plaint hereto), also filed a Suit against the said Superior Industries Ltd. in the Delhi High Court being suit No. CS (OS) No. 554 of 2008 for permanent injunction and for other reliefs restraining Superior Industries Ltd. from using the trade mark "SUPERIOR 50000". The said Suit and the Interlocutory application taken out by the plaintiff in the said suit are still pending. Regarding the trade marks 5001 PLUS and LONDON 2001, learned Advocate appearing for the plaintiff has submitted that the plaintiff has denied that the trademarks 5001 PLUS and LONDON 2001 stood registered in the name of Associated Breweries & Distilleries Ltd. under Nos. 744614 and 744613 respectively as alleged or to the knowledge of the plaintiff. He has submitted that in any event, from the documents annexed as Exhibit I and J to the defendant''s further Affidavit in Reply dated 3rd February 2012, it is clear that the said marks were not renewed on time in accordance with the Trade Marks Act, 1999 and have therefore been removed from the Register of Trade Marks. He has submitted that the plaintiff has denied the use of the trade marks 5001 PLUS or LONDON 2001 by Associated Breweries & Distilleries Ltd.

Reliance on the alleged registrations is in my view of little or no assistance to the defendant. The defendant has failed to prove that the trade mark MAST 5000, SUPERIOR 50000, 5001 PLUS or LONDON 2001 are valid and subsisting and more particularly that the said trade marks are in use. The defendant has not produced any evidence of sale much less open, extensive and continuous sale of beer bearing the trade mark MAST 5000, SUPERIOR 50000, 5001 PLUS or LONDON 2001. In so far as the trade mark MAST 5000 bearing registration No. 1232149 in Class 32 is concerned, the defendant has further failed to prove that there is no disclaimer in respect of the numeral "5000" in the said registration. From the bare perusal of Exhibit-A to the plaintiffs Affidavit in Rejoinder, it is clear that the Registrar of Trade Marks has specifically imposed a condition on the Applicant therein to disclaim the numeral "5000". In so far as the trade marks 5001 PLUS and LONDON 2001 in the name of Associated Breweries 8s Distilleries Ltd. under Nos. 744614 and 744613 respectively are concerned, it is clear from Exhibit I and J to the defendant''s Further Affidavit in Reply dated 3rd February 2012 that the said marks were not renewed on time in accordance with the Trade Marks Act, 1999 and have been therefore removed from the Register of Trade Marks. In any event, the alleged registrations do not in any way impact the plaintiffs exclusive right in its trade marks HAYWARDS 5000 and FIVE THOUSAND. As held by the Hon''ble Supreme Court in the case of Corn Products Refining Co. Vs. Shangrila Food Products Ltd., , the mere presence of a mark on the Register does not prove its user. From the Plaint, it is clear that the plaintiff and/or its predecessors have. taken action against "Castle 2000" "President 5000", "Cox 5000", "Superior 5000", "Prestige 5000", "Holyward 5000", "VALLEY 50000", "Prestige 50000", "Four Square 5000", "Kohinoor 5000", "Dansberg 5000", "Mount''s 5000" "Maikal 5000", "Dollar 5000", "Power 5000" and "Dollar 5000" and have restrained most of them from using the trade marks containing the numeral "5000". In any event, having regard to the enormity of the goodwill and reputation acquired by the plaintiff in the suit mark, some solitary instances of such nature are of no consequence.

Learned Advocate appearing for the defendant has also submitted that the plaintiff has not disclosed the letter dated 1st July 1988 sent by the plaintiffs Advocate to the Trade Marks Registry in relation to its trade mark No. 436744 in Class 32, wherein the plaintiff has specifically set out that its claim to the mark is only in the name HAWYARDS, and the plaintiff has agreed to the disclaimer of descriptive matters. He has submitted that the plaintiff vide its said letter has agreed to associate registration of its said label mark HAYWARDS 5000 with the other marks registered by the plaintiff where the numeral 5000 has been specifically disclaimed. He has submitted that vide the said letter, the plaintiff has admitted that the goods of the plaintiff "are asked for or called for by the word HAYWARDS".

Learned Advocate for the plaintiff in response has drawn my attention to the Preliminary Examination Report dated 15th September 1987 annexed as Exhibit-5 to the plaintiffs Affidavit in Rejoinder dated 26th July 2013 and the plaintiffs reply thereto dated 1st July 1988 annexed as Exhibit B to the defendant''s further Affidavit in Reply dated 3rd February 2012. He has submitted that the defendant has falsely stated that at the time of replying to the First Examination Report issued by Trade Marks Registry in respect of the plaintiffs trade mark application No. 436744 in Class 32, the plaintiff agreed to disclaim exclusive right to the numeral "5000". The objection was raised by the Trade Marks Registry on the basis of similarity with the other earlier trademarks consisting of the "device of coat of arms" and in response to which the Trade Mark Attorneys of the plaintiffs predecessors vide their letter dated 1st July 1988 had stated that, the distinctive part of the mark is not the coat of arms but the word "HAYWARDS" which is already registered by our clients" and that "the device of coat of arms is common to the trade". The Registrar never raised any objection in respect of the numeral "5000" and hence the question of disclaiming the numeral "5000" or stating the fact that the numeral "5000" is the distinctive feature of the said trade mark did not arise at all. The Registrar has put a condition that, "Registration of this trade mark shall give no right to the exclusive use of all descriptive matters appearing on the label". The plaintiff therefore cannot claim exclusive right over the words "SUPER STRONG BEER" appearing in the said registered trade mark but there is no disclaimer regarding the numeral 5000. At no point of time it has been stated by the plaintiff that the numeral "5000" is not the distinctive feature of its said trade mark HAYWARDS 5000.

I have perused the aforesaid correspondence. It is clear that while examining the trade mark HAYWARDS 5000, the Registrar of Trade Marks had considered the similarity of the said trade mark with the other earlier trademarks consisting of the "device of coat of arms" and in response to the preliminary examination report dated 15th September 1987, the Trade Mark Attorneys of the plaintiffs predecessors vide their letter dated 1st July 1988 had stated that, "the distinctive part of the mark is not the coat of arms but the word "HAYWARDS" which is already registered by our clients" and that "the device of coat of arms is common to the trade". Since the objection raised by the Registrar of Trade Marks was not in respect of the numeral 5000, but only with respect to the device of coat of arms, there was no reference to the numeral "5000". The same can also be seen from the fact that the third un-numbered paragraph of the plaintiff''s Advocate''s letter dated 1st July 1988 begins with the sentence, "As regards the cited marks on the ground of device of coat of arms, we submit that........". At no point of time it has been stated by the plaintiff that the numeral "5000" is not the distinctive feature of its said trade mark HAYWARDS 5000. There is no rule that the plaintiff has to disclose the entire history of its trade marks while filing a suit before any Court especially when it is irrelevant, as in the present case. The above submission of the learned Advocate appearing for the defendant is therefore rejected.

Learned Advocate appearing for the defendant has next submitted that the plaintiff has made false representation to this Court and has deliberately suppressed the fact that the plaintiff was aware of the defendant''s use of the trade mark COX 5001 since 2007, or at least since 2009, when the plaintiff had filed Notice of Opposition to the defendant''s application for registration of the trade mark COX 5001 under No. 1492407 in Class 32. He has submitted that the plaintiff ought to have disclosed the above facts in the Plaint.

Learned Advocate appearing for the plaintiff has submitted that the plaintiff has not at any given time, suppressed any material facts or made any false representation to this Court. He submitted that the defendant''s application for registration of the impugned trade mark under No. 1492407 in Class 32 was opposed by the plaintiff in December 2009. In the said Notice of Opposition, the plaintiff had denied the alleged user claimed by the defendant. In the absence of any use of the impugned trade mark by the defendant, the question of the plaintiff suppressing the alleged fact does not arise at all. He has submitted that the user claimed by the defendant of its impugned trade mark COX 5001 is not only inconsistent but also false. The plaintiff had called upon the defendant to produce copies and give inspection of the documents relied upon by the defendant in its Affidavit in Reply, further Affidavit in reply, including the documents in support of its claim of user but the defendant has failed to comply with the same. He has submitted that the proceedings before the Trade Marks Registry are independent proceedings and the Trade Marks Registry cannot entertain or decide the question of infringement and passing off. He has submitted that the plaintiff has clearly stated in paragraph 36 of the Plaint that the cause of action for the first time arose in the month of September 2011, when the plaintiff came across the defendant''s beer bottles bearing the impugned trade mark COX 5001 for the first time. Since by the use of the said bottles, the defendant was infringing the plaintiff''s registered design No. 223479, the plaintiff immediately thereafter filed a suit against the defendant for infringement of the registered design of its bottle in the Madras High Court and obtained an ex-parte order of injunction dated 30th September 2011 (Exhibit V-1 to the Plaint). The defendant however continued to use the impugned trade mark COX 5001. The plaintiff therefore filed the present suit for infringement of its registered trade marks and passing off against the defendant on or around 9th January 2012. In view of the above, there is no question of delay on the part of the plaintiff in approaching this Court.

In my view mere making of an application for registration of a trade mark does not prove its actual use by the defendant. The defendant may have filed the application for registration of the impugned trade mark, but the defendant has not even prima facie proved that it has been using the impugned trade mark as alleged by the defendant. The defendant''s application for registration of the impugned mark COX 5001 under No. 1492407 in Class 32 dated 29th September, 2006, claims user from 1st July, 1995 (Exhibit-D to the defendant''s Further Affidavit in Reply dated 3rd February 2012). The plaintiff filed an opposition thereto on 15th December, 2009. However, there is nothing to indicate the actual use by the defendant of the mark from 1st July, 1995. It is pertinent to note that the defendant has filed another application for registration of the mark "5001" under No. 1492408 in Class 32 dated 29th September 2006 on proposed to be used basis (Exhibit-E to the defendant''s Further Affidavit in Reply dated 3rd February 2012). The user claimed by the defendant of its impugned trade mark COX 5001 from 1st July 1995 is not correct in view of the fact that the defendant''s label bearing the impugned trade mark COX 5001 has been approved by Excise Department of Madhya Pradesh only in the year 2007. Save and except the bald statements, the defendant has not filed any documentary evidence to show that the defendant has effected sales of its beer bearing the impugned trade mark since 1995 or since 2006, much less to the knowledge of the plaintiff. The sales figure of the defendant''s beer under the impugned trade mark as shown as Exhibit ''G'' to the further affidavit in reply dated 3rd February 2012, are not supported by any document despite the plaintiffs calling upon the defendant to produce the same. In any event, it is a well settled principle of law that the defence of laches or inordinate delay is a defence in equity. An equitable defence can be put up by a party who has acted fairly and honestly. Looking at the previous litigation between the parties and the conduct of the defendant, it cannot be said that the defendant has acted fairly or honestly in the present case. Mere delay cannot be a ground for refusing injunction to the plaintiff in an action for infringement of trade mark, especially when the adoption and use of the impugned trade mark itself by the defendant is dishonest.

Learned Advocate appearing for the defendant has further submitted that the plaintiff is estopped from making any claim against the numeral "5001" used by the defendant in view of the following statement made by the plaintiff in paragraph 17 (b) of the plaint in its earlier Suit No. 2510 of 2006 against the defendant:

b)Several other fancy numerals e.g. "2001", "4000", "5001", "6000", "10000" were or are being used by other manufacturers/marketers of beer. None of the said numerals had any reference to the potency or character or quality of beer".

He has submitted that in view of the above statement, it is clear that plaintiff has not only acquiesced but also abandoned any claim against 5001 and hence the present action of the plaintiff cannot be sustained.

Learned Advocate appearing for the plaintiff has in response submitted that the above statement was made by the plaintiff in its earlier suit in the context of the defendant''s contention that the numerals were descriptive of the product and that they indicated the strength of beer. The said position is clear from the opening lines of paragraph 17 which deal in detail with the letter dated 1st February 2005 sent by the Patent and Trademark Attorneys of the first defendant therein (defendant herein), disputing the contents of the plaintiffs cease and desist notice dated 18th January 2005. He has submitted that the said paragraphs cannot be taken to mean that the plaintiff has been aware of the defendant''s alleged use of the impugned trade mark containing the numeral 5001 or that the plaintiff has no objection to the same.

I am not inclined to accept the submission of the learned Advocate appearing on behalf of the defendant. The relevant portion of paragraph 17 of the Plaint in its earlier suit No. 2510 of 2006 is reproduced hereinbelow:

The first defendant, by its Patent and Trade Mark Attorney''s letter dated 1.2.2005 denied and disputed several statements and submissions made in the plaintiff''s said notice dated 18.1.2005; raised false and baseless pleas; and refused to comply with the requisitions contained in the plaintiffs notice dated 18.1.2005. Hereto annexed and marked Exhibit "N" is a copy of the reply letter dated 1.2.2005. In particular, the defendants contended that the numeral 5000 was and is not distinctive of the plaintiffs predecessors'' goods; that the said numeral refers to the strength of the contents of the beer to a lay person; that the registration of the said trade mark in the name of the plaintiffs predecessors under No. 436744 does not confer any right to the exclusive use of the numeral 5000; that the plaintiffs predecessors were under legal obligation to have filed separate application with numerals 5000, but they have not done so; that in the plaintiffs predecessors subsequent application No. 940878, the Registrar imposed a condition that the plaintiffs predecessors shall not have any right to the exclusive use of the numerals 5000 and that the plaintiffs predecessors agreed to the same; that the defendants'' mark contains the word COX and the word JAGPIN prominently, apart from numerals 5000; that the said trade mark is different from the plaintiff''s predecessors'' trade mark; that the defendants had initiated use of the impugned trade mark in December 2003 and had made an application for its registration on 26.12.2003; that the defendants'' said application has been ordered to be advertised in the Trade Marks Journal; that the defendants have obtained the Registrar''s No Objection Certificate under section 45 of the Copyright Act, and have made application for registration of the label under the Copyright Act. The plaintiff says and submits that none of the aforesaid contentions of the defendant are valid or tenable for the following reasons:

a) Numeral "5000" is purely a fancy number. The plaintiff''s predecessors were first to conceive and adopt the numerals "2000" and "5000" in respect of their beer. The said numerals have no reference to the potency or any other character or quality of the goods.

b) Several other fancy numeral e.g. "2001", "4000", "5001", "6000", "7000", "10,000" were or are being used by other manufacturers/marketers of beer. None of the said numerals had any reference to the potency or character or quality of beer."

A bare perusal of the above paragraph makes it clear that the statement was made by the plaintiff in reply to the defendant''s contention that numeral 5000 refers to the strength of the contents of the beer to a lay person. The said position is also clear from the second sentence in paragraph 17 (b) of the plaint filed in the earlier suit. The said sentence is reproduced hereinbelow:

"None of the said numerals had any reference to the potency or character or quality of beer."

It is therefore clear that the above statement was made by the plaintiff in its earlier suit in the context of the defendant''s contention that the numerals were descriptive of the product and that they indicated the strength of beer. Nothing turns on the said statement and the plaintiff cannot be estopped from making any claim against the impugned trade mark containing the numeral "5001" used by the defendant in respect of its beer.

The Advocate for the defendant has next submitted that since the plaintiff has already obtained an injunction order from this Court against the defendant from using the trade mark COX 5000 in respect of beer or any other trade mark deceptively similar to the plaintiffs trade mark HAYWARDS 5000 in its earlier suit No. 2510 of 2006, in the event that the impugned trade mark COX 5001 was similar to the plaintiffs trade mark HAYWARDS 5001, the plaintiff ought not to have filed the present Suit separately but could have had the issue adjudicated by taking out proper proceedings in the earlier suit itself. This submission of the Advocate appearing for the defendant deserves to be rejected. The impugned trademarks against which the plaintiff has filed the earlier suit and the present suit, though similar are separate. The use of the impugned trade mark COX 5001 by the defendant gives rise to a fresh cause of action and the plaintiff is therefore entitled to file a suit restraining the defendant from using the impugned trade mark on the basis of the said fresh cause of action as it has correctly done in the present case.

Learned Advocate appearing on behalf of the defendant has relied upon the judgment of the Hon''ble Supreme Court in S.P. Chengalvaraya Naidu (dead) by L.Rs. Vs. Jagannath (dead) by L.Rs. and others, , in support of its submission that a litigant who approaches the Court is bound to produce all the documents executed by him which are relevant to the litigation. The said judgment is of no assistance to the defendant since the judgment clearly holds that, "a litigant who approaches the Court is bound to produce all the documents executed by him which are relevant to the litigation." (emphasis supplied). The facts and documents which are alleged to be suppressed by the plaintiff in the present case are not material or relevant to the issue involved in the above suit and hence the said judgment does not help the defendant. Had the plaintiff stated the facts or produced the documents which are alleged to be suppressed, it would not have had any effect on the merits of the case. As a general rule, suppression of a material fact by a litigant disqualifies such litigant from obtaining any relief provided such suppressed fact is material, in the sense that had it not been suppressed it would have had an effect on the merits of the case. It must be a matter which was material for the consideration of the Court as stated by the Hon''ble Supreme Court of India in S.J.S. Business Enterprises (P) Ltd. Vs. State of Bihar and Others, .

Learned Advocate appearing on behalf of the defendant has relied upon the judgment of this Court in Shelke Bevarages Private Ltd. Vs. Rasiklal Manikchand Dhariwal and Dhariwal Industries Ltd., . The said judgment is of no assistance to the defendant, since this Court in the said case had come to a conclusion that the word OXY was common to the trade and no prima facie case was made out by the plaintiff to establish grant of injunction. Further, the Court in that case had concluded that the rival marks were not similar.

In the circumstances I am of the view that the plaintiff has made out a strong prima facie case for grant of injunction against the defendant. The balance of convenience is also in favour of the plaintiff and against the defendant. Irreparable harm and injury will be caused to the plaintiff if the defendant is not injuncted from using the impugned trade mark COX 5001 in respect of beer, and monetary compensation to the plaintiff will not be an adequate relief. In the circumstances, the Notice of Motion is made absolute in terms of prayer Clauses (a) and (b).