The Coca-Cola Company vs. Bisleri International Pvt. Ltd. and Ors.

The Coca-Cola Company vs. Bisleri International Pvt. Ltd. and Ors.

Decided On: 20.10.2009

Facts of the Case:
Plaintiff was the largest brand of soft drinks operating in 200 countries. Defendant No.1, which was earlier known as Aqua Minerals Pvt. Ltd., was a part of Parle group of Industries. The owners of defendant, Mr. Ramesh Chauhan and Mr. Prakash Chauhan, on September 18, 1993, sold the trademarks, formulation rights, know-how, intellectual property rights, goodwill etc. of their products THUMS UP, LIMCA, GOLD SPOT, MAAZA to the plaintiff.The company Bisleri Sales Ltd, had the secret beverage base for manufacturing Maaza and was an affiliated company of Defendant No. 1. On September 12, 1993, several agreements were signed between both the parties, such as, deed of assignment, goodwill assignment, know-how, and confidentiality and non- use agreement, non- compete agreement, general assignment, etc. to give effect to the sale for a considerable money value. Then, the plaintiff was envisaged with the right to sell the product Maaza within the territory of India.

The defendant no. 1 retained the trademark rights of MAAZA in respect of other countries where it had been registered. In March 2008, the defendant no. 1 got aware of the fact that the plaintiff had filed for registration of MAAZA in turkey. As a result of this, it sent plaintiff a legal notice repudiating the Licensing Agreement and made it devoid of all other selling rights. The plaintiff filed the suit for permanent injunction and damages for infringement of trademark and passing off, as the defendant had completely ignored many irrevocable and absolute rights embarked upon the plaintiff. Also, it was alleged by the plaintiff that the defendant had unauthorisedly permitted the manufacture of certain ingredients of the beverage bases of MAAZA to be manufactured by a third party in India , known as ‘Varma International’, located in Chittor.

Issues:
1. Does the Delhi High Court have the jurisdiction over the matter?
2. Is there any infringement of the trademark or passing off?
3. Is the company ‘Varma International’ a party to the case?
4. Is the plaintiff entitled to get the permanentinjunction?

Judgment:
The court had the territorial jurisdiction over the matter, because the defendant had issued a news article in Delhi edition of Times of India, and the reports itself created the jurisdiction of the court as they showed his intention to use the mark by way of groundless threat. Also, the defendant had a factory at Shivaji Marg in New Delhi and the threat was also given as notice from New Delhi itself.

There was an infringement of the trademark rights. In the case of J.N. Nichols (Vimto) Ltd. v. Rose and Thistle and Anr. (1994), it was said that ‘USE’ of a mark as provided in Section 2(2)(c)(i) of the Trade Mark Act, does not imply actual physical sale and mere advertisement, without having existed goods, can be said to be the use of mark, defining the intention of the person to use the mark. It depends on two factors, whether there was a use, and whether it was bonafide. Therefore, since, the use of mark was malafide to the effect, it was said to be an infringement of the trademark.

After an investigation, done by the local commissioners appointed by the Court, the documents were recovered. It shows a nexus between defendant no.1, the overseas party and Mr. Vishal Sharma is operating business under the name and style of M/s Varma International and exporting MAAZA products to Australia. It is well settled law that exporting products from a country, is to be considered as sale within the country wherefrom the goods are exported and it amounts to infringement of trade mark. Therefore, ‘Varma International’ was considered a party to the case.

The suit is not barred under Section 41 (h) and (1) of the Specific Relief Act, 1963 as the agreement between both the parties was a determinable contract and plaintiff is entitled to an injunction for enforcement of its exclusive rights. In view of negative covenant under Section 42 of the Specific Relief Act, the defendant no. 1 is not entitled to use the mark MAAZA in India. Hence, the interim order of injunction was granted to prevent the plaintiff from irreparable loss and injury.