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THE COCA-COLA COMPANY VS. BISLERI INTERNATIONAL PVT.LTD
Facts
The petitioner, Coca-Cola, is the largest company of soft drinks functioning in 200 countries. The respondent is a famous Indian company which is highly considered for its bottled water. On September 18, 1993, the respondent sold the Trade Marks, Formulation Rights, Intellectual Property Rights, and Goodwill, etc. of their products (thumbs up, Limca, gold spot, Citra, and Maaza, etc) to the petitioner. This case is regarding the MAAZA only.
In November 1993, the parties entered into an agreement of assignment by which the following agreements regarding MAAZA were settled. In October 1994 the Licensing Agreement of MAAZA between petitioner and Golden Agro Products Pvt. Ltd. was entered and executed. It is the petitioner’s case that by this deed all the trademarks, formulation rights, etc. were irreversibly conveyed to the petitioner.
In March 2008, the respondent came to know that the petitioner filed for registration of MAAZA’s trademark in Turkey. In September 2008 the respondent sent the petitioner a notice rejecting the Licensing Agreement and hence stopping the petitioner from manufacturing MAAZA and using its trademark, directly or indirectly, by themself or through its associates.
As per the petitioner, the notice claimed that the petitioner breached the deed by attempting to register MAAZA in Turkey as the deed between them allowed the petitioner to use MAAZA in India alone. The notice also said that the respondent’s intention to start using the trademark MAAZA in India. The petitioner filed a lawsuit.
Issues
- Does the Delhi High Court have jurisdiction to deal with the subject of this case?
- Is the petitioner eligible to get a permanent injunction and compensations for violation of the trademark and passing off?
Court decision
1. The respondent requested the vacation of the court order of October 15, 2008. The objection was mainly due to the factor that the court lacks jurisdiction to hear the suit. The reason for the petitioner to state that the court has jurisdiction is that the respondent is carrying on business within the jurisdiction of the court, the petitioner has further added to his submissions by adding that the license agreement of 13th May 2004 has originated within the jurisdiction of this Court. A newspaper report showing the respondent’s intention to use the trademark MAAZA in India has been published in the Delhi publication of Times of India.
The respondent has a factory in Delhi from where they are operating a sales and distribution infrastructure similar to the one in Mumbai and has an extensive market share in and around Delhi. Further, it was said that Ramesh Chauhan, the person with whom the correspondence was exchanged, is residing in New Delhi. The court has jurisdiction to use the suit for infringement of trademark under Section 134 (2) of the Trademark Act, 1999, and Section 20 (c) of the Code of Civil Procedure, 1908.
Hence, there is no bar under the provision as the petitioner is carrying on business by selling and advertising their products within the territory of this court. The petitioner has claimed that no one can dispute that the product of the petitioner is available in every nook and corner in an extensive manner in Delhi under the trademark MAAZA. Since the court has to take the prima facie view of the matter and see the statement made in the complaint. Hence in view of the order of Section 134 (2) of the Act, there is no ban against filing the suit in Delhi and having jurisdiction.
Similar jurisdiction disputes were dealt with in the case of Tata Iron & Steel Co. Ltd. v. Mahavir Steels & Ors and LG Corporation & Anr. v. Intermarket Electroplasters(P) Ltd. and Anr.
2. The petitioner’s argument that the respondent has a factory at Shivaji Marg, New Delhi states the misconduct. In agreement with its own admission in the application, the respondent also has a place of business in Delhi where it is bottling water there and that the registered office is in Mumbai are facts of no consequence.
The invoices filed by the Local Commissioner which showed that they been exporting MAAZA products to Pars Ram Fruit and Spices in Australia. The Local commissioner also filed documents issued by MAAZA Beverages Inc., New York relating to the purchase of MAAZA drinks that is addressed to Parle Bisleri Pvt. Ltd.
They admitted that during the course of the trial, the Australian company has been receiving orders for the production of beverages under the trademark MAAZA and the respondent has regularly been exporting products under the mark MAAZA on a large scale. It is stated that the respondent had the intention to use the trademark MAAZA.
It is clear that exporting goods from a country is to be considered as sale within the country from where the goods are exported and it amounts to infringement of trademark according to Section 29 of the Trade Marks Act, 1999.
The Court granted an interim injunction against the defendant. The Bench said that there is a prima facie case in favor of the petitioner and the balance of convenience lies in favor of the petitioner. If the injunction is not issued the petitioner will suffer irreparable loss and injury.
Therefore the denial of the agreement by the respondent was nullified by the court of law and all the trademark rights of MAAZA were given back to the petitioner.
Conclusion
Trademark is a unique symbol or word(s) that used to signify a business or its products. Once registered, it cannot be used by any other organization, as long as it remains in use with proper accounts. The case is an explanation of the definition of Trademark. If a trademark is licensed by a company, no other establishment may use it, or it may institute as an infringement.
The case made it clear that a trademark of any business can be registered anywhere once there is a deed discussing the rights, either within the country or outside of it. The judgment helped for several other decisions where different companies that have rights over the same goods in different countries will supply products to the same producers.
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