INTRODUCTION
High court of Delhi, recently has constrained Jagpin Breweries from using Hindi transliteration of the name MIRINDA for the purpose of selling its county-made liquor. Pepsi co (Plaintiff) filed a case against Jagpin Breweries (Defendant) seeking permanent injunction on account of their Well-Known Trademark “MIRINDA” being infringed by the latter. Plaintiff laid down the contentions that the defendants are passing-off their product as former’s goods, violating their statutory and common-law rights.
CAUSE OF ACTION
MIRINDA is a well-known and well-established Trademark owned by Pepsi Co which is engaged in the manufacture and sale of non-alcoholic beverages, packed water and snack foods. MIRINDA is the name of an orange-flavored soda, first adopted in Spain in the year 1959. Cause of action arose when Pepsi co got to known in 2021 that the defendant has filed the application for the registration of name ‘CONTINENTAL MIRINDA BEER' as Trademark (bearing No.3465713 in Class 32) in his name, with the user claim from 06.07.2015. On further investigation it was found that the defendant is using the name मिरिंडा (bearing No. 3471413 in Class 33) in relation to their liquor and even applied for the registration of the same before the Trademarks Registry that got abandoned subsequently.
CONTENTIONS OF THE PLAINTIFF
It is contented by the Counsel for the plaintiff that MIRINDA is the registered Trademark in favour of the plaintiff and use of the impugned mark मिरिंडा by the defendants for selling their own products adds up to the infringement of Plaintiff’s statutory rights granted under Section 29 of the Trade Marks Act, 1999. This unsanctioned use of Hindi transliteration of plaintiff’s mark will undoubtedly cause confusion in the minds of consumers. It will lead them to falsely believe plaintiff’s association with the defendant’s products. The items bearing the MIRINDA markings have been on the Indian market since 1996 and the earliest registration for the abovementioned marks in Class 32 dates back to 1997. It is claimed that the total net revenue generated by the sale of goods bearing the MIRINDA marks in India from 2013 through December 2021 exceeded INR 2500 Crores. The plaintiffs'
products bearing the MIRINDA marks have received extensive advertising in India through a variety of media, with advertising and marketing costs totalling more than INR 157 Crores from 2013 to December 2021. It is clearly evident that the Defendant is trying to take unfair advantage of plaintiff’s massive goodwill and popularity. There should be no doubt that plaintiff’s MIRINDA is a very Well- Known mark hence, considered under the ambit of Section 2(1)(zg) of the Trademarks Act which makes it accredited to maximum level of protection. The MIRINDA marks have become readily apparent as distinct and being exclusively associated with the Plaintiffs alone due to significant spending on promotions and advertisements, long-term, continuous, and widespread usage of the mark both internationally and in India, significant turnover, and thorough implementation of intellectual property rights. All these efforts by the plaintiff, and MIRINDA has successfully become a house-hold name. Defendant should not be allowed to use the name मिरिंडा to the disadvantage of Plaintiff.
JUDGEMENT OF THE CASE
The Counsel for plaintiff made it clear in the eyes of law that the plaintiff has a prima facie case for the grant of ex-parte ad interim injunction which if not been granted, plaintiff can suffer irreparable harm. Balance of convenience clearly lies in support of Plaintiff hence, the court granted the injunction restraining the defendants from using the mark MIRINDA in the form of its Hindi transliteration or transliteration in any other language in reference to the country-made liquor. The Court further pointed out that a cursory analysis of the competing marks reveals that they are conceptually and phonetically similar, fulfilling the first requirement of Section 29(4). In order to capitalise on the goodwill and reputation associated with their brand and profit from it, the Defendants are using the Plaintiffs' mark MIRINDA dishonestly which can be detrimental to the distinctive and unique character of latter’s mark.
SECTION 29 OF TRADEMARK ACT, 1999
Section 29 of Trademark Act, 1999 is the main law in context to this case. The whole case revolves around the Infringement of Plaintiff’s “MIRINDA” mark as the defendant took and made use of its phonetically similar name which is just the Hindi transliteration of name MIRINDA. By the means of Section 29, it is a clear Trademark rule that, “a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark”.
The court mentioned Section 29(4) of the Act whose ambit is broader than that of Section 29. Section 29(4) expands the scope of ‘likelihood of confusion’ test by acknowledging the infringement in the case of dissimilar goods as well. Here, Pepsi co was selling soft drink by the name MIRINDA whereas Jagpin Breweries was trying to sell country- made liquor with the help of phonetically similar name मिरिंडा. Both the products are dissimilar and Section 29(4) of Trademark Act covers likeliness of confusion when both the parties deal in different kinds of goods.
CONCLUSION The learned Senior Counsel for the Defendants put a lot of emphasis on demonstrating that there is no potential for confusion simply because the Defendants mark is a transliteration of the Plaintiffs mark because the items in question, the class of customers, as well as the packaging, price, and trade channels are distinct. Prominent weight was given to the fact that the country-made liquor of the Defendants is sold just through Government liquor vends. The product is available only in the ‘liquor shops’ and not in general confectionary stores unlike plaintiff’s products The product sold by the defendants is a special kind of drink made out of molasses and grains hence, have an unique colour and appearance that is why, can be easily
distinguished from any other kind of drink. Also, this drink far from any other alcoholic
beverage is consumed without the addition of any soft drink or soda which exempt the need of buying any supplementary drink to add to the defendant’s liquor. Even though the Counsel for Defendants tried its best to convince the court that their intentions behind taking the Hindi transliteration of name ‘MIRINDA’ are honest and genuine but it is very much obvious that they took the exact phonetically same name as that of Plaintiff. It is clear to the naked eye that it will definitely create the confusion in the minds of the consumers and as per Section 29(4) such a mark cannot be allowed to get registered.
