Pradeep Nandrajog, J.— The present order disposes of I.A No. 6394/2003 filed by the plaintiffs under Order 39 Rules 1 and 2 read with Section 151, CPC and IA. No. 6584/2003 filed by the defendant under Order 39 Rule 4 read with Section 151, CPC. By I.A No. 6394/2003, the plaintiffs seek to restrain the defendant, pending adjudication of the suit, from directly or indirectly, selling alcoholic beverages under the trade mark “SUPERIOR 5000” or any other mark identical and/or deceptively similar to the trade mark “HAYWARDS 5000 SUPER STRONG BEER” amounting to infringing of plaintiffs trade mark No. 436744 and/or from reproducing, printing, publishing, selling or offering for sale any product with any label or packaging which is a colourable imitation or substantial reproduction of the plaintiffs “HAYWARDS 5000” packaging and labelling, further injunction is sought restraining the defendant from passing off its goods as the goods of the plaintiff by using packaging and labelling deceptively similar to the plaintiffs trade mark “HAYWARDS 5000”.
2. The suit and the aforesaid injunction application came up for hearing on 29.5.2003, on which date the following ad-interim injunction was granted:
“Accordingly till the next date of hearing the defendant, their partners, proprietors, officers, servants and representatives are restrained from manufacturing, exporting, selling and offering for sale directly or indirectly dealing in beer or any other alcoholic beverages with the trade mark having the digit “5000” or any other identical or marks deceptively similar to the trade mark of the plaintiff, “HAYWARDS 5000 Super Strong Beer” and also from using the labels and packaging with such infringing mark.”
3. The defendant had lodged a caveat and pursuant thereto, as per the record of the suit, copy of plaint, injunction application and all documents relied by it upon were supplied to the Counsel for the defendant on 28.5.2003 and plaintiff had taken out a notice of motion intimating the defendant that the matter would be listed before the Court on 29.5.2003 Indeed, the matter came to be listed before this Court on 29.5.2003 Taking notice of the caveat, this Court recorded in the order that at the first call, request was made on behalf of the defendant for the matter to be passed over and none had appeared at the second call. The order records that when the matter was taken up for the second time, summons were issued to the defendant in the suit and notice was issued in IA No. 6394/2003. As noted above, an ex-parte ad-interim injunction was also granted.
4. As per the case of the plaintiffs, plaintiff No. 1 is in the business of manufacturing of alcoholic beverages for the last 100 years. It has been selling, alcoholic beverages under various distinctive trade marks such as ROYAL CHALLENGE, PREMIUM LAGER BEER, HAYWARDS LAGER BEER, HAYWARDS DIET, HAYWARDS 5000 AND HAYWARDS 2000 etc. which according to the plaintiff No. 1 has become synonymous with the Alcoholic Beverage industry. Plaintiff No. 2 is engaged, inter alia, in the business of marketing of alcoholic beverages and is a licensee/permitted user for various trade marks of the plaintiff No. 1 including “HAYWARDS 5000 SUPER STRONG BEER”. In the year 1983, plaintiff No. 1 claims to have used the trade mark “HAYWARDS 5000 SUPER STRONG BEER” for the first time and on 19th April, 1985 it filed an application for registration of the said trade mark “HAYWARDS 5000 SUPER STRONG BEER” in class 32 in respect of beer in the trade Marks Registry. The said trade marks was duly registered under No. 436744 in Part “A” of the Register. On 19th April, 1999, the said registration was renewed for a period of seven years. Documents have been filed in support of the above averments made by the plaintiffs and for the record it may be noted that these have not been denied by the defendant. It is further the case of the plaintiffs that the beer sold by them under the trade mark “HAYWARDS 5000 SUPER STRONG BEER” has become one of the largest selling brand in relation to beer in the strong beer segment in India. As per the averments made by the plaintiff, the numeral “5000” has been sufficiently used by the plaintiffs to denote distinctiveness of the origin of the goods i.e “HAYWARDS 5000 SUPER STRONG BEER” and thus exclusive rights are conferred by way of registration under Section 28 of the Trade and Merchandise Marks Act, 1985. The plaintiff No. 1 also claims to have got registration of the copyright pertaining to the label used by it since the year 1983 by the registration No. 43438/83 dated 26.10.1983 Documents evidencing said registration has been filed, and for the record may be noted, have not been disputed by the defendant.
5. The essential features of the label “HAYWARDS 5000 SUPER STRONG BEER” used by the plaintiffs as per the case of the plaintiff is:
(i) The numeral “5000” is emphasised, prominent, elongated and is placed central upper portion of the said label.
(ii) The numeral “5000” appears with all digits enveloped in a slim golden border.
(iii) Above the numeral “5000” the words “The Original” appear in first line and in second line “SUPER STRONG BEER” written in golden and block letters.
(iv) The aforesaid features above appear against a striking black and red background.
(v) The lower portion of the label is proportionally smaller to the upper portion and the features appearing herein are placed against the striking black background.
6. Plaintiffs claim as per their balance sheets for the last 10 years of having effected sales of 9.2 lac cases of beer in the year 1993-1994, which has progressively risen to 14.8.88 lac cases in the year 2002-2003. Advertisement expenses for sale of said brand of beer was Rs. 5 crores in the year 2002-2003. Sale and advertisement figures are as under:
Year
Sale (in lacs cases)
Advertisement (in crores)
1993-1994
9.2
2
1994-1995
17.51
2.2
1995-1996
30.54
2.6
1996-1997
43
2.8
1997-1998
63.72
3
1998-1999
96.52
3.2
1999-2000
106.45
3.5
2000-2001
116.45
4
2001-2002
138.3
4.5
2002-2003
148.88
5
7. According to the plaintiffs it has a larger distribution network and has made deep penetration all over India and the customer while purchasing its brand of beer demands from the seller with reference only to the numeral “5000” beer.
8. The defendant launched its product of super strong beer in the last week of May, 2003 under the trade mark “Superior 5000” in a label, which according to the plaintiffs is almost similar with the label and trade mark of the plaintiffs. This was the cause for filing of the suit.
9. Before dealing with the submissions made at the Bar, it would be appropriate for me to pen down various features of the label used by the defendant.
10. The label of the defendant, as is the label of the plaintiffs, is distributed into two unequal portions. In the upper larger part, the figure 5000 is emphasised prominently, elongated and is placed central upper portion, in a manner near identical to that of the plaintiffs. As is the plaintiffs label, defendant's label too contains the figure 5000 in digits enveloped in a slim golden border. Above the figure 5000, the word “PREMIUM” appeared in the first line and in the second line the words “STRONG BEER” appear, those are written in golden and block letters. The aforesaid features of the defendant's label are placed against a striking red and black background colour. The lower portion of the label used by the defendant is proportionately similar and identical to the lower portion of the label used by the plaintiffs. The features appearing in the lower portion of the defendant's label have been placed in a striking red background.
11. Legal aspects requiring consideration for decision of the controversy when infringement of a trade mark or an act of passing off is alleged are well settled in various judicial pronouncements, and since I am dealing with the issue of confirmation or vacation of the ex parte ad interim injunction already granted, I need only refer to the basics; necessary for the passing off the present order.
12. It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned mark used by the defendant is identical with the registered mark of the plaintiffs, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it has to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trade mark has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfections or that its essential particulars or the distinguishing or essential feature has been copied (ILR 1997 (II) Delhi 225; Jagan Nath Prem Nath… v. Bharttya Dhoop Karyalaya…, para 7).
13. Characteristics which must be present in order to create a valid cause of action for passing of are: (a) a misrepresentation; (b) made by a trader in the course of trade; (c) to prospective customers; (d) which is calculated to injure the business or good will of another (in the sense that there is a reasonable foreseeable consequence); and (e) which causes actual damage to the business or goodwill of the trader by whom the action is brought in a quia timid action will probably do so. 1979 AA 739; Erven Warrnik Bestoten v. Townend and Sons (Hull) Ltd..
14. It is not in dispute that the plaintiffs are the registered proprietors of the trade mark “HAYWARDS 5000 SUPER STRONG BEER” and that the plaintiffs have a copyright in the label used by the plaintiffs. Contention raised by the defendant was that the numeral 5000 lies in the public domain and the plaintiffs have no right to appropriate the same. It was contended by the defendant that the said numeral can be used by any person in conjunction with any other mark and therefore, the defendant had a right to market its beer under the trade mark “SUPERIOR 5000”. To put it plain, the right of the plaintiff to restrain the defendant from using the numeral 5000 was disputed.
15. Rights in a numeral was an issue which was a subject matter of consideration in the judgment passed by this Court in Jagan Nath Prem Nath's case (supra). In the said case the plaintiff and the defendants were manufacturing Agarbatties. One was selling its product under the registered trade mark “KASTURI AGARBATTI 555” and the other was selling its product under the trade mark “ANAND DARBAR AGARBATTI 555”. The dispute between the parties pertained to the use of the numeral 555 in the trade mark. It was held that a person may have a right of trade mark in numerals as well. On facts, the injunction prayed for by the plaintiff in that suit was granted.
16. I may note that as per Section 2(1)(j) “Mark” has been defined under the Trade and Merchandise Act, 1958 as:—“Mark includes device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof”. Thus, it cannot be said that the plaintiffs can have no right in the exclusive use of the numeral 5000 in connection with their beer. All that the plaintiffs have to show to succeed is continuous and exclusive use of the numeral 5000 in connection with their beer, due to which user, the numeral as acquired a distinct distinctiveness resulting in the right to use the said numeral in connection with their beer. If so established, in my opinion, plaintiffs would be justified in taking action which is available to them either for infringing of the trade mark or under common law, namely, an action for passing off.
17. Have the plaintiffs, prima facie, acquired a reputation? I have noted above the sale figures and the advertisement figures as laid out in the plaint. The figures speak for themselves.
18. It has not been disputed by the defendant that it has launched its product in the first week of May. The plaintiffs, have promptly filed the suit in the last week of May and have obtained the ex-parte injunction. Material on record prima facie shows that the plaintiffs have been using the numeral 5000 in connection with their super strong beer and have been exclusively using the said numeral resulting in the generation of reputation in the respect of the said beer and the beer manufactured and sold by the plaintiffs with the numeral “5000” is identified in the minds of the consumers in the trade with the product of the plaintiffs. The numeral 5000 is central to the theme and scheme of the label of the plaintiff.
19. I may note that there is no fancy about the numeral 5000 but this by itself is of no consequence when the plaintiff has prima facie established connection of the said numeral in respect of its product in the minds of the consumers. Indeed, this argument has to its flip side a consideration, as to why the defendant hit upon the idea of using the same numeral. In this connection judgment 1978 RPC 495; Hymac Ltd. v. Priestaman Brothers Ltd. may be noted. Plaintiffs therein manufactured mechanical excavators known as 580 series. Defendant began marketing of excavators with the same number. Discussing the manner in which numeral 580 came to be adopted the learned Judge of the Chancery Division, Walton, J. observed:
“This is not the case of a baker's dozen or a rabbit catcher's 1000, which has been decided by one case to be 120. It is in fact a secret numerology. It is a simple secret and one might term it an open secret, but it is a secret numerology. Therefore, in my judgment, whilst I do not in any way impugn the principle laid down in the three cases cited by Mr. Hirst for the defendants they have absolutely no relevance at all. Once one realises that the interpretation of the number 580 requires the kind of key that it does require, a key to be supplied by the plaintiff, one wonders, why 580 was used by the defendants at all. I have seen nothing in the case to cause me to cease to wonder at that.”
20. Prima facie, it cannot be ruled out that the defendant used the numeral 5000 in respect of its beer to cash in on the wide reputation and the good will built over the years by the plaintiffs.
21. Coming to the next two requirements for grant of an injunction, namely, the balance of convenience and irreparable loss and injury. Undoubtedly, it cannot be said that the plaintiffs claim is frivolous or vexatious, indeed there is a serious question to be tried. Plaintiffs have prima facie shown having built a reputation over the years and this cannot be allowed to be tarnished by passage of time (disposal of the suit on merits may take years). Plaintiffs' rights have to be protected. Balance of convenience, to my opinion is clearly in favour of the plaintiffs. Plaintiffs have been selling their beer since the year 1983, their sales figure for the past 10 years shown fundamental growth. Defendant has built no goodwill or reputation, thus, no harm would be caused to the defendant if the injunction as prayed for is granted. Non-grant of injunction would cause irreparable loss and injury to the plaintiffs as the extent of damage to its reputation would be difficult to be ascertained. Once again, at the cost of reputation, no injury would be caused to the defendant as it has just launched its product in the first week of May, 2003 and since 29th May, 2003 stands injuncted.
22. Before concluding on this issue, I may also note that in relation to its beer where the plaintiffs have been using the numeral “2000” as part of registered trade mark and in spite of the fact that while seeking registration, plaintiffs had given a disclaimer in respect of the numeral 2000, by order dated 20th June, 1996 passed in Suit No. 2037/1994 in the Bombay High Court, Hon'ble Mr. Justice B.N Srikrishna (As his Lordship them was) held that notwithstanding a disclaimer, since the plaintiff had proved reputation and goodwill in the product beer sold under the trade mark “HAYWARDS 2000” all ingredients of an action for passing off being available to the plaintiffs, ex-parte injunction granted was liable to be confirmed pending trial in the suit.
23. This takes me to one more submission made at the Bar by Mr. Amarjit Singh Chandhiok, learned Senior Counsel for the defendant. It was argued that the defendant had lodged a caveat which was placed before the Court when the suit was listed. It was argued that the mandate of Section 148A of the Code of Civil Procedure prohibited the Court from granting any ex-parte ad interim injunction. Reliance was placed on Sub-section 3 of Section 148. Same reads as under:
“(i) …………..
(ii) ……………..
(iii) Where, if a caveat has been lodged under Sub-section (1), any application is filed in any suit or proceeding, the Court, shall serve a notice of the application on the caveator.”
24. It was argued that by use of the word “shall”, the legislative intent is clear; namely, it is the duty of the Court to serve notice of the application on the caveator i.e the defendant.
25. To my mind, in the facts of the present case, the said argument has to be rejected. sub-section (4) of section 148a reads as under:
“(4) Where a notice of any caveat has been served on the applicant, he shall forthwith furnish the caveator at the caveator's expense, with a copy of the application made by him and also with copies of any paper or document which has been, or may be, filed by him in support of the application.”
26. As noted above, the plaintiffs who were served with the caveat, duly served upon the defendant, a day prior to the listing of the suit and the application (a copy of the suit plaint, the application for ad interim injunction and all documents). A letter by way of notice of motion was taken out by the plaintiffs on 28.5.2003 The letter by way of notice of motion reads as under:
“Please find enclosed herewith an advance set of documents to be filed in the above said matter as you have filed caveat filed in this matter. Hopefully the matter will be listed before the Court on date 29.5.2003 We will be pressing for an ex-parte ad-interim injunction. We have made certain correction in the suit, hence, please return the earlier set served upon you.”
27. The defendant was thus served with a notice of the application by the plaintiffs. The purpose behind a caveat is to give a right to the caveator to be present at the hearing of an application where any relief has claimed against him so that he may oppose the same. In the present case, said object was achieved and there was substantial compliance with the provisions of Sub-section (3) of Section 148A of the Code of Civil Procedure, 1908. Further, the order dated 29.5.2003 clearly records that the matter was passed over once at the request of the defendant and none appeared at the second call. No doubt the defendant in its application for vacation of the injunction has averred in para 20 that it had not instructed any Counsel to seek pass over and none was present on its behalf when the case was called up. However, I need not dilate on this issue in view of the fact that the defendant was clearly intimated by the plaintiffs on 28.5.2003 that the matter would be listed on 29.5.2003; that the plaintiff would be pressing for an injunction. I may also note the judgment of the Andhra Pradesh High Court AIR 1914 AP 246; Reserve Bank of India Employees Association v. Reserve Bank of India, wherein a view has been taken that Section 148A is procedural and does not relate to the jurisdiction of the Court. It was held that failure to comply with the requirements of the sub-section (3) of section 148a would be procedural and infraction thereof was not a jurisdictional fault. It was held that sub-section (3) of section 148a does not bar to the power to the Court, in an appropriate case, to pass an ex-parte order if the facts and circumstances of the case so warrant.
28. For the reasons stated above, IA 6394/2003 is allowed and IA 6584/2003 is dismissed. The ex-parte ad-interim injunction granted on 29.5.2003 is confirmed till the disposal of the suit.
I.A 6584/03 dismissed.
I.A 6394/03 allowed.