This case analysis is written by Upasna Upadhyay during her internship with LeDroit India.
ABOUT THE CASE:
TITLE OF THE CASE: Coca-Cola Company v. Bisleri International pvt. Ltd.
CITATION: AIR 2009 164 DLT 59
PLAINTIFF: The Coca-Cola Company
DEFENDANT: Bisleri International Pvt. Ltd. & Ors.
DATE OF JUDGEMENT: 20TH October, 2009
BENCH: Manmohan Singh, J.
INTRODUCTION
An important legal issue in the field of intellectual property rights, specifically with regard to trademark protection and the avoidance of unfair competition, is the Coca-Cola Company v. Bisleri International Pvt. Ltd. case. In this instance, Bisleri, an Indian company most known for producing bottled water, was sued by Coca-Cola, a well-known brand in the beverage industry worldwide, on grounds of unfair competition and trademark infringement. Coca-Cola claimed that Bisleri had used branding and packaging that was very similar to its own unique style, confusing consumers and possibly damaging the company’s reputation.
FACTS OF THE CASE
The plaintiff selects bottlers and authorizes them to sell beverages using certain of its trademarks. Additionally, the plaintiff assigns third parties to produce beverage bases that will be sold to the bottlers. Formerly a member of the Parle Group of Industries, defendant number one was Acqua Minerals Pvt. Ltd. The plaintiff purchased the trademarks, formulation rights, know-how, intellectual property rights, and goodwill of defendant number one’s products, including THUMS UP, LIMCA, GOLD SPOT, CITRA, and MAAZA, from the owners, Mr. Ramesh Chauhan and Mr. Prakash Chauhan, by a Master Agreement dated September 18, 1993. Only the product MAAZA is at issue in this case. Even though defendant number one owned the trademark, the secret beverage base used to manufacture MAAZA was owned by defendant number one’s affiliate, Golden Agro Products Ltd. The business, which is now known as Bisleri Sales Ltd.,
The plaintiff and “Golden Agro Products Pvt. Ltd.” signed the “MAAZA” license agreement in October 1994. Under this agreement, the plaintiff received an unconditional and permanent transfer of all trademarks, formulation rights, etc. With reference to the defendant retained the trademark rights in other countries where “MAAZA” had been registered.
The plaintiff’s application to register the MAAZA trademark in Turkey was discovered by the first defendant in March 2008. In order to stop the plaintiff from producing MAAZA and using its trademarks and other intellectual property, either directly or indirectly, through its affiliates, defendant number one sent the plaintiff a formal notice on September 7, 2008, repudiating the licensing agreement. Since the parties’ agreements and assignments permitted the plaintiff to utilize MAAZA only in India, the notification alleged that the plaintiff had violated the aforementioned agreement by trying to register MAAZA in Turkey. Additionally, the notice announced the first defendant’s plan to begin utilizing the MAAZA trademark in India.
ISSUES
- Whether Delhi High Court has jurisdiction over this matter?
- Has infringement of trademark occurred?
- Is the plaintiff entitled to get a permanent injunction?
- Whether export of the products with the trademark “MAZZA” considered a trademark infringement in the exporting nation?
ARGUMENTS
Plaintiff-
The plaintiff claimed that defendant totally disregarded the irrevocable and complete transfer of trademarks, formulations, intellectual property rights, and know-how in the plaintiff’s favor. As a result, the plaintiff filed the lawsuit, seeking a permanent injunction and damages for passing off and trademark infringement. The plaintiff argued that as section 135 of the Trade Marks Act of 1999 provides for the legal remedy of injunction and damages award, section 41(h) and (i) of the Specific Relief Act of 1963 do not prevent litigation. They went on to say that, in accordance with section 42 of the Specific Relief Act of 1963, they are entitled to get an injunction from the court to enforce a negative agreement. Furthermore, they stated that no amount of money would be sufficient to undo the irreparable harm.
Defendant-
The defendant’s main contention was that since the point of sale is outside of India, the Delhi High Court lacks the authority to consider this matter. However, the plaintiff responded that the 13th May 2004 Licensing Agreement was started and finished within the court’s jurisdiction. Additionally, the defendant does its business inside the boundaries of this court’s jurisdiction. The defendant further demonstrated its intentions to utilize the trademark “Maaza” in India going forward. Furthermore, the defendant operates a facility in Delhi that manufactures similar goods, from which it also does business.
JUDGEMENT
Section 134(2) of the Trade Marks Act of 1999 and Section 20(c) of the Code of Civil Procedure of 1908 are the legal provisions that support the court’s conclusion that the defendant’s substantial involvement in Delhi’s commercial activities grants it the proper jurisdiction to decide the case involving trademark rights violations. According to the Indian Penal Code, Indian citizens are held criminally responsible for crimes committed outside of their nation, the court clarified. The Delhi High Court has jurisdiction over this case because the defendant manufactures his wares in Delhi.
It is established that defendant number one not only intended to use the trade mark Maaza, but that defendant number one actually engaged in the aforementioned activities, either directly or indirectly, with other businesses or companies, including M/s. Varma International, M/s. Pars Ram Bros. Australia Pvt. Ltd., and another company in the USA called Maaza Inc., in order to export beverages under the Maaza trade mark through M/s. Varma International. Additionally, defendant number one does not dispute that Mr. R.B. Varma is or was an employee of the company and has dealt with Maaza’s products in the past.
According to sections 41(h) and (i) of the Specific Relief Act of 1963, the assignment deed is a legally binding agreement between the parties. This implies that the party that violated the agreement is accountable to the person who was harmed at the time of the violation. The defendant had consented to transfer the intellectual property rights and all other related rights of the “Maaza” trademark, which were clearly and unqualifiedly stated. As a result, the defendant was not authorized to discontinue the contract in any manner.
RATIO DECIDENDI
- Unless otherwise specified, a trademark assignment deed transfers all of the trademark’s rights, including the ability to use it anywhere in the world.
- Trademark infringement occurs when the original owner of a trademark continues to use it in other nations after assigning it.
LEGAL PRECEDENTS
- J.N. Nichols (Vimto) Ltd. v. Rose and Thistle and Anr. (1993)- The court decided that if a trademark is not being used and there is no good reason not to use it, it may be taken off the register. In other words, a trademark may be struck from the register if it is not used.
- LG Corporation & Anr. v. Intermarket Electroplasters(P) Ltd. and Anr.(2006)- It centers on the issue of territorial jurisdiction, or which court has the power to hear the matter. If the defendant lives or works inside the court’s boundaries, the court usually has jurisdiction. If the cause of action occurred inside the court’s local boundaries, it can also hear the matter. On the basis of forum non conveniens [forum convenience], the court may, nevertheless, decide not to use its jurisdiction.
- Pfizer Products Inc. v. Rajesh Chopra & Ors (2007)- The court granted an injunction to stop the defendant from using the trademark after concluding that the plaintiff had a compelling case. The defendant’s use of the trademark, according to the court, would confuse customers.
CONCLUSION
An important precedent in Indian trademark law is the Coca-Cola Company v. Bisleri International Pvt. Ltd. dispute. The ruling of the court highlights how crucial precisely defined intellectual property rights are, especially in international agreements. It emphasizes the idea that, unless otherwise specified, a trademark assignment distributes all of the trademark’s rights, including the ability to use it anywhere in the world. The case serves as a reminder of the possible complications associated with trademark ownership and use in several jurisdictions. It acts as a reminder to companies to make sure their intellectual property rights are sufficiently protected in every relevant area and to carefully evaluate the extent of trademark assignments.
REFERENCES
- The Coca-Cola Company vs Bisleri International Pvt. Ltd. & Ors. on 20 October, 2009 <https://indiankanoon.org/doc/109517976/>
- Case Study: Coca-Cola Company Vs. Bisleri International Pvt. Ltd. <https://desikaanoon.in/case-analysis-on-the-coca-cola-company-vs-bisleri-international-pvt-ltd-2009-164-dlt-59/>
COCA-COLA COMPANY V. BISLERI INTERNATIONAL PVT. LTD. &
