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Section 29 in The Trade Marks Act, 1999
Section 30 in The Trade Marks Act, 1999
Section 12 in The Trade Marks Act, 1999
Section 29(4) in The Trade Marks Act, 1999
The Trade And Merchandise Marks Act, 1958
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Delhi High Court
Radico Khaitan Limited vs Carlsberg India Private Limited on 16 September, 2011
Author: Manmohan Singh
*           THE HIGH COURT OF DELHI AT NEW DELHI
%                                  Judgment delivered on: 16.09.2011

                 I.A. No. 8122/2011 in CS(OS) 1216/2011


RADICO KHAITAN LIMITED                       ..... Plaintiff
               Through: Mr. Neeraj Kishan Kaul, Sr. Adv. with
                        Mr. Vivek Dholakia, Mr. Deepak
                        & Ms. Navpreet Kaur, Advs.

                          versus

CARLSBERG INDIA PRIVATE LIMITED               ..... Defendant
               Through: Dr. Abhishek Manu Singhvi, Sr. Adv.,
                        Mr. Rajiv Nayar, Sr. Adv. Mr. Sandeep
                        Sethi, Sr. Adv. with Mr. Peeyoosh
                        Kalra & Mr. Kamal Sharma, Mr. C.A.
                        Brijesh & Ms. V. Mohini, Advs.

CORAM:-
HON‟BLE MR JUSTICE MANMOHAN SINGH

1.   Whether Reporters of local papers may be allowed to
     see the judgment?                                             Yes

2.   To be referred to the Reporter or not?                        Yes

3.   Whether the judgment should be reported in Digest?            Yes

MANMOHAN SINGH, J.

1. By this order I shall dispose of the plaintiff's interim application being I.A. No. 8122/2011 under Order XXXIX, Rules 1 & 2 read with Section 151 CPC. The plaintiff has filed the present suit for permanent injunction to restrain infringement, passing off, dilution and damages under Sections 29, 56 and 135 of the Trade Marks Act, 1999. CS(OS) No.1216/2011 Page No.1 of 81

2. CASE OF THE PLAINTIFF

(a) The plaint states that the plaintiff has been continuously and extensively carrying on an established and reputed business in respect of manufacture and sale of alcoholic beverages in India, as well as numerous countries across the world directly by itself and through its affiliates, subsidiaries, licensees, etc. The plaintiff manufactures a host of products including juices of various kinds, drinking water, liquor, such as, Extra Neutral Alcohol (ENA), Industrial Alcohol (Rectified Spirit), Indian made Foreign Liquor (IMFL), Country Liquor and Cane Juice Spirit. Besides, the plaintiff has a tie-up with 22 bottling units all over the country for bottling of IMFL under their popular brands.

(b) It is stated that the plaintiff commands a major presence in the beverage industry and in connection with its business, it owns and uses many trademarks which have acquired an enviable reputation and goodwill. The well known brands of the plaintiff include CONTESSA RUM, SPECIAL APPOINTMENT, MASTIH, MASTI GOLD, OFFICER'S CLUB, AFTER DARK, EAGLES DARE apart from the family of 8 PM marks.

(c) The plaintiff adopted the mark 8 PM in the year 1997 in relation to whisky and has been extensively using the same since 1999. As a matter of fact, the Plaintiff sold a record one million cases of the 8 CS(OS) No.1216/2011 Page No.2 of 81 PM whisky in the first year alone of its launch, which was recorded in the Limca Book of Records.

(d) The Plaintiff is the Registered Proprietor of the 8 PM/8PM family of marks not only in India but also in other jurisdictions. The mark 8 PM is registered in India in class 32 and 33 and other classes details of which are given as under:



REGISTRATION IN INDIA


            Trademark       Number Class               Status


                8 PM         783398      33     Registered and valid
                                                  till 24.12.2017
                8 PM         978842      32     Registered and valid
                                                  till 24.12.2020
          8 PM Bermuda      1202398      33     Registered and valid
              XXX                                 till 29.05.2013
           8 PM Royale      1332504      25     Registered and valid
              (Label)                             till 17.01.2015
           8 PM Royale      1332505      41     Registered and valid
             (Royale)                             till 17.01.2015
         8 PM Excellency    1333994      33     Registered and valid
             Brandy                               till 24.01.2015
          8 PM Bermuda      1333995      33     Registered and valid
          White Original                          till 24.01.2015




CS(OS) No.1216/2011                                             Page No.3 of 81
 FOREIGN REGISTRATION


    Country       Trademark     Registration No.   Class     Status


    Morocco 8 PM                    89305           33     Registered
            Bermuda               01.12.2003
            XXX Original
            Caribbean
            Rum
      Nepal      8 PM               21483           33     Registered
                 Bermuda          12.04.2004
                 XXX Original
                 Caribbean
                 Rum
    Morocco 8 PM Royale              91040          33     Registered
            Smooth
            Indian whisky
            Blended With
            Scotch
      Nepal      8 PM Royale         21748          33     Registered
                 Smooth
                 Indian
                 Whisky
                 Blended with
                 Scotch
    Morocco 8 PM Special            92019           33     Registered
            rare Blend of         24.05.2004
            Indian whisky
            & Scotch
    ZANZIB 8 PM Rare                80/99           43
           Whisky                 09.03.1999
      AR   Blended With                                    Registered
           Scotch
      Nepal      8 PM Rare         15368/07         33     Registered
                 whisky           08.06.2000
                 Blended with
                 Scotch


CS(OS) No.1216/2011                                        Page No.4 of 81
       Canada     8 PM                  696618                   Registered
                 Bermuda             17.09.2007



(e)         The Plaintiff is also using the trademark 8 PM for its other

products like 8 PM Bermuda XXX Rum (2003), 8PM ROYALE (label) (2003), 8 PM EXCELLENCY Brandy (2005), 8 PM BERMUDA WHITE ORIGINAL CARIBBEAN RUM (2005).

(f) The Plaintiff enjoys substantial turnover from the sale of its 8 PM/8 PM range of products. The modified details of the same are mentioned in the affidavit of Mr. Satish Chandra Pandey dated 05.07.2011 the said figures are:-

                  Financial Year       Sales Turnover Rs.
                                           (in Million)
                      2006-2007               2565.9

                      2007-2008               2325.7

                      2008-2009               2136.4


                      2009-2010                2325


                      2010-2011               2452.1




CS(OS) No.1216/2011                                            Page No.5 of 81
 3.          CASE AGAINST THE DEFENDANT AS PER THE
            PLAINTIFF
(i)         The defendant is engaged in manufacturing and marketing of

alcoholic beverages more specifically beers. The Defendant has been using the brand PALONE/OKACIM PALONE in relation to its strong beers overseas. The brand was launched by the defendant in India in the year 2007 but it was not clicked in the Indian Market. Therefore, the Defendant in Feb, 2011 launched PALONE 8 (alleged to be a super strong beer) in India, numeral 8 being used in a prominent fashion and in fact as a primary mark.

(ii) The impugned mark/numeral 8 is being used by the Defendant as a primary mark despite PALONE/OKACIM PALONE, admittedly, being the Defendant's main brand. The Defendant has also applied for the registration of the PALONE 8 label on 07.02.2011 with the user claim of 23.01.2011. Also, the website of the parent company of the Defendant www.carlsberggroup.com lists PALONE 8 as on of its main brands.

(iii) Being in the same trade and being well aware of the reputation of the Plaintiff's 8 PM/ 8 P.M family of marks, the conduct of the Defendant in adopting and using the impugned mark/numeral 8 in respect of same goods and that too in same font and colour with mala fide intention which is also corroborated by the fact that the Defendant is also using a slogan ―8 KA DUM‖ similar to that of the Plaintiff's well known CS(OS) No.1216/2011 Page No.6 of 81 campaign ―AATH KE THAATH‖. The Defendant is also using the expression ―ROYALS‖ deliberately as ROYALE is part of the of the Plaintiff's ―8 P.M‖ family of marks.

4. In view of the abovementioned facts, it is alleged that the conduct of the Defendant is in violation of Plaintiff's statutory and common law rights, therefore, the Defendant be restrained from using the Numeral 8 in relation to their products.

5. DEFENDANT‟S CASE

(a) The defendant states that it is a company incorporated under the Companies Act, 1956 having its registered office at Delhi. Defendant's parent company, Carlsberg A/S, Denmark, including its subsidiaries and affiliates is one of the leading brewery groups in the world including beers and other beverage brands which are sold in more than 150 countries.

(b) In India they have launched CARLSBERG, TUBORG, OKOCIM PALONE and variants thereof. In the year 2006, Carlsberg Group decided to enter India and incorporated South Asia Breweries Private Limited on May 3, 2006. Later on, the said company changed its name to Carlsberg India Pvt. Limited (Defendant herein) with effect from February 23, 2009.

(c) By the end of year 2009, Defendant has been using three brand names viz. CARLSBERG in ‗Super Premium Mild'; TUBORG in CS(OS) No.1216/2011 Page No.7 of 81 ‗Premium Mild'; and OKOCIM PALONE in ‗Premium Strong Beer' (6.5% ABV - Alcohol by Volume).

(d) The brand OKOCIM PALONE is being used internationally since the year 2005 and in India since the year 2007. OKOCIM PALONE label is registered as a trade mark in India since the year 2007. Considering that there is a high demand for strong beer in the Indian market, the Carlsberg Group through Defendant, in January 2011, launched a stronger variant of its well-established brand OKOCIM PALONE under PALONE 8 label having Alcohol By Volume (ABV) of approximately 8%.

(e) It was for the first time that a beer comprising approximately 8% Alcohol By Volume was launched in India. ‗PALONE 8' traces its roots to the earlier brands OKOCIM PALONE as well as BALTIKA 8, GRIMBERGEN GOLD 8 and DRAGON 8. Defendant filed an application for registration of the marks ‗PALONE 8 label', ‗PALONE 8 DUMDAR MELA', and ‗8 KA DUM' with the Trade Marks Registry. Defendant applied for registration of PALONE 8 label under No.2096009.The product under the PALONE 8 label also became a great success.

(f) The gross sales revenue of the same from January 2011 to April 2011 is in the region of Rs. 262.2 million (26.2 crore). CS(OS) No.1216/2011 Page No.8 of 81

6. The entire case of the plaintiff in nut-shell is that the use of the numeral ‗8' by the defendant in relation to one of its products which is beer under the mark PALONE infringes and violates the statutory and common law rights of the plaintiff in its well known and registered mark ‗8 PM, numeral 8 being its essential, distinguishing and identifying feature.

7. Learned Senior counsel for the plaintiff Mr. Neeraj Kishan Kaul has made his submissions which can be enumerated as under:

a) Firstly, learned counsel for the plaintiff argued that the present case is a case involving the infringement of the trade mark wherein the trade mark 8 PM is registered with the plaintiff is 8pm in class 33 in respect of whisky and class 32 in respect of the juices of various kinds, drinking water and other allied goods.
b) Mr. Kaul submits that the Trademarks Act, 1999 provides for the registration and protection of numerals as trademarks. The definition of the mark under Section 2 (m) of the Trade Marks Act, 1999 expressly covers numerals. Courts have consistently upheld rights in numeral marks and have also passed the orders to restrain from time to time in infringement cases holding the misusers of the numeral mark liable. Learned senior counsel has referred the following decisions in support of his first submission:
CS(OS) No.1216/2011 Page No.9 of 81
(i) Shaw Wallace & Co. v. Superior Industries Ltd. 2003 27 PTC 63 - Para 1, 5, 12, 14, 15-20, 27 (Marks Involved: Haywards 5000/Superior 5000)
(ii) Jagan Nath Prem Nah v. Bhartiya Dhoop Karyalaya AIR 1975 Del 149 - Para 2, 8, 17-19 (Marks Involved: Kasturi 555/ Anand Durbar 555)
(iii) M/s Vrajlal Manilal v. Adarsh Bidi Co.

1995 1 Arb. L.R 471-Para 2, 7, 10-12 (Marks Involved: 22/122)

(iv) Kamal Trading v. Gillette UK Limited 1988 1 (7' O Clock)

c) It is submitted by Mr. Kaul that it is a classic case of infringement of trademark wherein the Plaintiff is the Registered Proprietor of the 8 PM in India but also in other countries of the world. The details of registration are given in Para 4 of the plaint. Section 28 of the Trade Mark Act, 1999 gives the registered proprietor the exclusive right to use of the registered mark and the use of an ―identical‖ or ―deceptively similar‖ mark by another without any permission/authority amounts to infringement of the registered mark under Section 29 of the Act.

d) The registration of the plaintiffs' trademarks is not challenged by the defendant or any third party, thus it is a valid registration within the meaning of Section 32 of the Act and the court has to take the prima facie view of the validity of the mark at this stage.

e) In support of his submission on the question of infringement, he has relied upon the following decisions: The defendants' usage of CS(OS) No.1216/2011 Page No.10 of 81 the mark 8 as a trade mark without being a registered proprietor is a clear invasion upon plaintiff's rights.

i. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR1965SC980 - at 989- 990 page wherein it was held that:

"The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods"

"if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would be immaterial"

ii. In the case of American Home Products v. Mac Laboratories AIR 1986 SC 137 in Para 36 it was held as under:

"When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction...."

iii. In the case of National Bell Co. v. Metal Goods Mfg. Co. AIR 1971 SC 898 at page 903 it was held as under: CS(OS) No.1216/2011 Page No.11 of 81 "On registration of a trade mark the registered proprietor gets under Section 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark."

f) Mr. Kaul has referred the two images of the products used by the parties in the present case in order to show that the defendant has taken the essential and dominate feature of the main 8 without any valid justification.

PLAINTIFF DEFENDANT

g) Learned counsel for the plaintiff argued that the mark 8PM of the plaintiff is registered in respect of whisky which is well known and famous mark and the use of the mark by the defendant is in respect of beers which are the goods of the same description CS(OS) No.1216/2011 Page No.12 of 81 within the meaning of Section 29 (1), (2) and (4) of the Trade Mark Act, 1999.

h) Thus, the infringement of the present trade mark 8PM of the plaintiff is in respect of the same or similar goods and therefore the said infringement is bound to cause confusion and deception in the market as to the source of the goods.

8. By relying the said observations of the Apex Court, learned counsel has explained that there is no doubt that the courts must respect the registration and the valuable rights of the plaintiff in the form of registration must be given due credence in the form of interim injunction and third party use of the same mark becomes irrelevant and injunction must follow in the present case.

9. On the aspect of an action of passing off, Mr. Kaul submits that the defendant has deliberately and intentionally adopted and used the essential feature of the mark i.e. numeral 8 in order to take the advantage of the goodwill and reputation gained by the plaintiff in relation to its business as two sets of products i.e. whisky and beers are allied and cognate goods which are purchased by the same set of customers and sold by the same shopkeepers. Both set of goods are placed side by side at the selling counter and served to the consumer at the same time. CS(OS) No.1216/2011 Page No.13 of 81

10. Mr. Kaul has thus concluded the arguments by stating that the present case is a straightforward case of infringement of the registered trade mark rights of the plaintiff and the prima facie case is in the favour of the plaintiff as the defendant by misusing the numeral mark 8 has slavishly copied or imitated the mark of the plaintiff. The balance of convenience also falls in favour of the plaintiff as the defendant is the recent entrant in the market. The plaintiff will suffer irreparable loss in the event of rejection of injunction. Therefore, this court should grant ad interim injunction restraining the defendants from infringing the plaintiff mark 8PM.

11. Per contra, learned Senior Counsel Dr. A.M. Singhvi, appearing on behalf of the defendants has made his submissions which can be crystallized in the following terms.

(i) Dr. A.M. Singhvi in his first submission states that the plaintiff is only engaged in the business of manufacturing and marketing of ‗Whisky, Rum' (Class 33) under the brand 8 PM and is not at all in the business of ‗beer' which falls in Class 32. The plaintiff has no registration for the brand 8 PM for ‗beer'. Plaintiff has got registered the mark 8 PM in Class 32 but only in respect of mineral water and not beer etc. in Class 33. Thus, no case of infringement is made out as the plaintiff's trademark is 8 PM in relation to Whisky and Rum etc. and numeral 8 is admittedly not identical with the mark of the plaintiff 8 PM CS(OS) No.1216/2011 Page No.14 of 81 Therefore, the test of passing off would apply while comparing the two marks in question.

(ii) The defendant's brand BALTIKA 8 is being used in Russia since the year 2001 and is registered in the USA in Class 32 in respect of ‗beer' with user claimed since October 2007. The defendant is not using the mark 8 PM all alone. It is being used along with international brand of the defendant who is engaged in the business of beers.

(iii) That the defendant has obtained excise registrations for its PALONE 8 label in 24 States of the country. The said product was first launched in January 2011 in Maharashtra. Defendant's affiliate/s has/have been using the numeral 8 along with/as a part of famous international brands such as BALTIKA 8, GRIMBERGEN GOLD 8, DRAGON 8. The instant Suit was filed on May 16, 2011. On the said date, defendant did not even had an excise approval in Delhi to sell beer under PALONE 8 label. Therefore, the contention of Plaintiff that the products of Defendant under PALONE 8 label are available within the jurisdiction of Delhi is false, misleading and absurd.

(iv) That the plaintiff is not entitled to the exclusive proprietory rights over the numeral mark ―8‖ due to following reasons:

 Plaintiff has not obtained any separate registration for ‗8' or ‗P.M.' per se nor has filed any application for registration of ‗8' per se. In order to buttress his submission, learned senior CS(OS) No.1216/2011 Page No.15 of 81 counsel has read section 17 of the Trade Marks Act which provides for the part of the trade mark and nature of rights available in the case of part of the trade mark. It is contended by the learned senior counsel for the defendant that the Plaintiff is seeking to assail Defendant's use of ‗8' as a part of the PALONE 8 label on the basis of its alleged registration ‗8 PM'  Plaintiff's mark 8 PM is descriptive. It attributes 8 PM to the preferred recreation time of the evening when everyone desires to unwind. It is argued that the registrar was conscious of the fact that the mark of the plaintiff is inherently non-distinctive, the Registrar (under the Trade Marks and Merchandise Act, 1958 which has now been repealed) granted registration to Plaintiff for its trade marks 8 PM in Part B of the Register which are comparatively weaker trade marks and the court can question the same. As the mark 8 PM is descriptive and non-distinctive, it does not entitle Plaintiff to claim exclusive rights over the numeral 8 to the exclusion of others.

12. After reliance, as mentioned above, it is stated by Dr. Singhvi that the numeral ‗8' is publici juris and common to the trade therefore, question of any exclusivity in respect thereof to the Plaintiff alone does CS(OS) No.1216/2011 Page No.16 of 81 not arise. As it has been mentioned in Narayanan's Law of Trade Marks and Passing Off 6th Edition @ page 180 para 8.63 that "Numeral though come within the scope of the definition of a mark, they are and cannot be prima facie considered distinctive or capable of distinguishing as they are descriptive of the number of articles...". He argues that the trademark consisting of a single number will always be considered as lacking distinctive character unless presented with distinctive stylization. Single numbers which have little or no stylization will normally be open to objection because they are often used in trade to indicate model or catalogue reference.

13. In view of the abovementioned facts and documents referred, Dr. Singhvi says that the plaintiff has failed to make out any case of infringement of trademarks and passing off. In substance, the following reasons are given:

(i) Plaintiff has no registration for the numeral ‗8' per se and no registration in respect of beer. It is common to the trade. The defendant is not using the numeral 8 per se
(ii) The goods viz. beers and whisky are totally different; and belong to different segments as class of consumers is different; it is impossible for one to buy whisky for beer or vice-versa; even illiterate consumers will not be confused.
(iii) The labels/packaging/bottles of 8 PM whisky and PALONE 8 beer are totally different.
CS(OS) No.1216/2011 Page No.17 of 81
Therefore, there has been no confusion and deception.
(iv) Defendant's use of ‗8' is indicative of the kind, quantity and characteristics of the product in question. The Alcohol By Volume in Defendant's product is approximately 8%. Thus the use of the numeral ‗8' by Defendant is a bona fide description of the character of its goods.
(v) Plaintiff's whisky is priced at approximately INR 300 whereas Defendant's beer bearing the label PALONE 8 is priced at INR 65. The plaintiffs sale of products and 8 PM is lower than defendant's sale.

14. As regards the objection of the plaintiff about the Defendant's use of slogan 8 KA DUM and the expression ROYALS on the basis of its erstwhile campaign AATH KE THAATH and the expression ROYALE. No relief has been claimed in the Suit in respect of the same thus the injunction does not arise. About the mark Royal used by the defendant is concerned it is stated that though no relief is sought in the plaint but even the plaintiff's application of 8 PM Royale has been opposed by the third party. It is stated that the Plaintiff has neither any interest in ‗beer' nor has any registration in respect of ‗beer' in Class 32 for its mark 8 PM.

15. Thus, it is alleged that the plaintiff has not been able to make out a prima facie case of infringement for the grant of injunction. This is more so when there are several players in the whisky trade using 8 numeral but the plaintiff has chosen to sue the defendant only who is CS(OS) No.1216/2011 Page No.18 of 81 dealing in respect of the beers, therefore, no case is made out by the plaintiff for infringement rather in view of the peculiar facts of the present case, the plaintiff has not met its case under Section 29(4) as the plaintiff has not been able to show that the main 8 PM has well known status which seems unfeasible in view of several players in the market using the expression or numeral 8 in respect of whisky itself who have more business than the plaintiff and their user of the mark 8 numeral is prior to the use of the plaintiff.

16. Learned Senior Counsel Dr. Singhvi has vociferously argued that the use of the numerals are quite common in the liquor industry as demonstrated from the above listed drinks emanating from well known brands. It is further argued that the numeral mark is per se non distinctive.

Learned Senior Counsel submitted that it is difficult to ascribe distinctiveness to the numeral unless very high degree of distinctive character is shown. Furthermore, the said distinctiveness has to be seen from case to case basis and the plaintiff in the present case has been miserably failed to show any such distinctiveness with respect to numeral 8 per se in respect of whisky even due to the prevalent trade practice and thus the plaintiff is clearly disentitle to any such protection.

17. The next submission of the learned Senior Counsel is that the plaintiff has approached this court after inordinate delay of 5 CS(OS) No.1216/2011 Page No.19 of 81 months after attaining the knowledge about the defendant's products under the mark PALONE 8. This has been explained by the plaintiff by stating that Plaintiff's knowledge of the Defendant/its product dates back to January 2011 when Defendant launched its product under PALONE 8 label in Maharashtra. Defendant's label was published on the Notice Board of the Excise Department, Mumbai for 15 days in January, 2011 for objections, if any. Further, Plaintiff filed objections to the application filed by Defendant with the Excise Office, Hyderabad for approval of PALONE 8 label in February 2011, which was granted in favour of the Defendant.

18. Lastly, Dr. Singhvi, learned senior counsel has argued that the plaintiffs claim of passing off is also not made out due to following reasons:

a) Defendant's products under PALONE 8 label are not so far available in Delhi.
b) Defendant is using PALONE 8 label comprising its flagship brand PALONE whereas Plaintiff's mark is 8 PM
c) 8 PM does not command goodwill/reputation.
d) There has been no misrepresentation on the part of Defendant.
e) The source of origin of the product bearing the PALONE 8 label is clearly discernible.
CS(OS) No.1216/2011 Page No.20 of 81
f) The goods viz. beers and whisky are totally different; and belong to different segments.
g) The labels/packaging/bottles of 8 PM whisky and PALONE 8 beer are totally different.
h) The Defendant's bottle is specially designed wherein its name is clearly embossed on the bottle.
i) Class of consumers is different; it is impossible for one to buy whisky for beer or vice-versa; even illiterate consumers will not be confused. [Please see Khoday Distilleries Limited Vs. Scotch Whisky Association].
j) Plaintiff's whisky is priced at approximately INR 300 whereas Defendant's beer bearing the label PALONE 8 is priced at INR
65. [Please see White Horse Distillers Limited Vs. The Upper Doab Sugar Mills Limited].
k) 8 KA DUM and AATH KE THAATH cannot be mistaken for each other. In any case 8 KA DUM is a slogan used on the product of the Defendant to indicate the strength i.e. 8% Alcohol By Volume, whereas the campaign AATH KE THAATH was in respect of music CDs of the Plaintiff which is no longer in use.

Therefore, it is argued by the defendant that in view of all abovementioned factors the defendant cannot pass off its goods as that of goods of the plaintiff.

CS(OS) No.1216/2011 Page No.21 of 81

19. I have gone through the pleadings, application, reply and documents filed therewith and also the submissions made by the parties at the Bar. Before dealing with the submissions of the parties, I deem it appropriate to discuss the law on the subject on the question of infringement of trade mark.

INFRINGEMENT

20. The law relating to infringement of a registered trademark has been envisaged u/S 29 of the Trade Marks Act, 1999 and exclusive rights granted by virtue of registration under Section 28 which reads as under:-

"29. Infringement of registered trade marks - "Infringement of registered trade marks.- (1) 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.
(2) 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 because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or CS(OS) No.1216/2011 Page No.22 of 81 similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) 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-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. ......‖ ―28. Rights conferred by registration -
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each CS(OS) No.1216/2011 Page No.23 of 81 other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those person as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.‖ By mere reading of these provisions, it is clear that a registered trademark is infringed by a person who not being a registered proprietor, uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner.

21. So far as infringement qua different goods is concerned, separate enactment of Section 29(4) makes it clear that the strict rigors are prescribed as against the ordinary case of similar goods wherein a registered proprietor has to establish that the registered trademark has reputation in India and is of such a nature wherein the use of the mark by the other side without due cause would tantamount to taking unfair advantage or detrimental to the distinctive character or repute of a trademark.

22. A reading of Section 29(4) of the Act would reveal that the said protection qua different goods is earmarked by the Legislature for the trademarks which are either highly reputed or well known or famous CS(OS) No.1216/2011 Page No.24 of 81 trademarks and enjoy either high level of distinctiveness or the marks which are inherently distinctive in nature or has become distinctive due to their repute; the use of which will cause detrimental to the distinctive character and repute of the trademark only when the ingredients of Section 29(4) are satisfied conjunctively which is sub sections (a), (b) and (c) the infringement qua Section 29(4) in relation to different goods is attracted.

23. Let me also examine the provisions relating to the limitations of infringement of a trademark. For the purposes of present case, Section 30(1) is relevant extract of the provision which is reproduced herein after:-

Section 30 (1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use-
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.

24. A careful reading of Section 30(1) would reveal that the said Section provides that nothing in Section 29 shall be construed as preventing the use of a registered trademark by any person for the purposes of identifying the goods or services as those of the proprietor CS(OS) No.1216/2011 Page No.25 of 81 provided that the use is in accordance with honest practices in industrial or commercial matters. The said section is enacted within two parts which is section 30(1) (a) and (b). In-between the two sub clauses the word used is ‗and‖ which means that both the conditions prescribed are to be satisfied conjunctively which means that the user of any trademark for the purposes of identifying the goods or services as those of the proprietor shall not be construed as infringement if the use is in accordance with honest practices in the industrial/commercial matters at the first place and is also not amounting to taking unfair advantage or detrimental to the character or repute of the trademark.

25. Now, the question arises that what can be termed as the honest practices in commercial or industrial matters as used in the sub clause (a). The said honest practices in Industrial or commercial matters can be interpreted either way as the honesty can be subjective terms inasmuch as what maybe honest in the eyes of one person may not be honest in the eyes of another. Therefore, in order to rule out the subjectivity in the expression ―honest practices in industry or commercial matters‖, the Courts have developed the doctrine of objectivity rather than the subjectivity while applying the test of honest practices in the industry and commercial matters.

26. By interpreting honest practices as those which are satisfying the objective standards in Aktiebolaget Volvo V. Heritage (Leicester) CS(OS) No.1216/2011 Page No.26 of 81 Ltd cited as 2000 FSR 253, the Chancery Division has said " It appears to be now well settled that the test of honesty for the purposes of the proviso is one that has to be judged by an objective standard and in my judgment the appropriate question to be asked in relation to the test in the present case is whether a reasonable motor service provider would think the use complained of in the present case to be honest, or, rather, in accordance with honest practices in that business (see Cable & Wireless PLC & Anr. V. British Telecommunications PLC). The Court further held that the application of the proviso namely "the use in accordance with honest practices in industrial or commercial matters" involves "looking at the particular use complained of as being an infringement of the relevant trademark and determining whether a reasonable person in the trade concerned, that is to say, in this case the trade of motor car service provider, knowing all the relevant facts that the defendant knew would think it an honest use of a trade mark concerned - that is to say, honest use in the commercial activity in which such a trader is involved. That, in my judgment, must involve considering all the circumstances surrounding the use complained of and the context in which that use was made."

27. From the above, it is clear that the honest practices in commercial/industrial matters have to be seen from the two standpoints of objectivity. First is the standpoint of a reasonable person in the trade CS(OS) No.1216/2011 Page No.27 of 81 whether he will think that the said use is in the honest way after knowing fully well about the trade and secondly from the perspective of the practices prevalent in the industry, which means that what the other persons/proprietors are doing in the same industry and if there is an established practice in the industry to use such expression in the particular manner, then it would not be unfair to call that practice as honest.

28. The second test is relevant due to the express wordings of the Section 30 (1) (a) which are honest practices in industrial or commercial matters. Once the said provision provides for such honest practices in the industrial or commercial matters as an exception to an infringement, then the said practice in the trade becomes relevant for the purposes of examining any case where the infringement is alleged by the proprietor.

29. Thus, the standards of determining what is honest and what is not would be much dependent upon the practice and the manner of usage of that expression which is prevalent in the market. After all that is what is called objective standards rather than subjective use which may vary from one person to another.

30. From the above discussion, another thing is clear that it is always not necessary to infer that trade practice is honest solely because the manner of use of the expression is in descriptive sense and not in a CS(OS) No.1216/2011 Page No.28 of 81 prominent fashion. The converse may be true also in some cases. There are certain industries wherein special emphasis has to be given to the said expression upon the product or an ingredient of the product so as to catch the customers or attract the consumer rather than using it as a small word on the label. Just like in liquor industry wherein one has to prominently display as to how old that liquor is by mentioning the number of years or the volume of content of alcohol.

31. Thus, the decisive test for examining the honest practice in industrial practice is not prominence or non-prominence of the said expression which may though be relevant but much will be dependent upon the manner of use of the said expression as warranted in the said industry which will set out the limit for what can be the honest and what can be dishonest.

32. The propositions which are emerging from the abovementioned discussions are as under:-

a) That Section 30 acts as an exception to Section 29 which provides for infringement of trademark;
b) Section 30(1) safeguards the use of the trademark by anyone other than the registered proprietor if the use of the said trademark is in accordance with the honest practices in the industrial or commercial matters and is not such as to take CS(OS) No.1216/2011 Page No.29 of 81 unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
c) Honest practices in the industry/ industrial or commercial matters have to be examined objectively and not subjectively for which it can be tested on two-fold basis:-
i) Reasonable man having knowledge in the trade.
ii) Practice prevalent in the respective industry.

33. Let me now proceed to discuss the law relating to numeral trademarks. Section 2(1)(m) of the Trade Marks Act, 1999 defines the expression ‗mark' which is reproduced herein below:-

Section 2(1)(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof."

34. On bare perusal of the said definition, it becomes clear that the said definition is an inclusive definition which includes numeral. Mark also includes numerals which shows and denotes that the said numeral can perform the function of a trademark. Although numeral has been included in the definition of mark but it has to be examined as to whether a single-numeral 8 in the facts and circumstances of the present case can be protected while comparing the two marks of the parties, i.e. 8 PM and PALONE 8 and the two sets of goods are whisky and beer. Likewise, Dr. Venkateswaran on Trademarks and Passing CS(OS) No.1216/2011 Page No.30 of 81 off (5th Edition 2010) also observes about the numeral trademarks as under:-

"Mark‖ is defined to include letters and numerals - See Section 2(1)(m). However, they notoriously lack inherent distinctiveness on account of common and natural practice of firms and persons to use their initials on goods, letter paper and so forth, or to use them as symbols indicative of quality or of other characteristics. Whether a letter or numeral mark can be registered prima facie will therefore depend upon whether it is devoid of any distinctive character. Letters and numerals also presented with additional features or which are intertwined, conjoined etc. and which have a trade mark character will be accepted."(Emphasis Supplied"
―For example, numbers, letters which may be used in trade for bona fide description will entail objections under Section 9(1) (c ) are:-
 The date of production of goods/ provision of services (e.g. 2001, 2002)  Size, eg XL for clothes, 1600 for cars, 34R for clothing, 185/65 for tyres.
 Quantity 20, 200 for cigarettes.
 Dates for printed matter eg 1066 for history books, 1996 for wines, 2003 for anything.
 Telephone codes eg 022, 011, 033 etc.  The time of provision of service, eg 8 to 10  The power of goods eg 115 (BHP) for engines or cars.  Speed, eg 386, 486, 586, 686, & 166, 266 for computers.
CS(OS) No.1216/2011 Page No.31 of 81
 Strength eg, "8.5% for lager."(Emphasis Supplied) The reliance of the above referenced excerpts from the authority would show and reveal that even it is recognized in the field of the trade marks that there are certain numerals which are considered to be of non distinctive character and also having some connection with the trade. Numeral 8 is one of those numerals which are earmarked as one which has some connection and relevance in the field of beer as mentioned above. Further, it also clarifies the position in the law that the numeral trade marks which are intertwined with other features can succeed for registration. But then it is to be looked into that the monopoly can be accorded to the numeral per se or the mark in totality.

35. The said argument that the numeral 8 is common to the trade and also has some relevance with the alcohol trade also gains strength when the defendants stand is examined wherein the defendants have shown number of major players /traders in the alcohol trade to be using the numeral 8 on their labels. Dr. Singhvi, learned Senior counsel has relied upon the entries on the registers worldwide as well as in India and also the labels of the current use of several alcoholic drinks so as to demonstrate that the numeral 8 is common to the trade. The said entries and the pictorial representation thereof of the same are reproduced hereinafter:

CS(OS) No.1216/2011 Page No.32 of 81

Signature 8, a whisky, was recently launched by United Spirits Limited.
BACARDI 8 RUM - a variant of well-known BACARDI brand was launched in the year 2000.
CS(OS) No.1216/2011 Page No.33 of 81
CELLAR NO. 8 is a well known Californian Red Wine. The same is being sold since 1881.
BLACK DOG 8 whisky, a premium scotch whisky brand, is being sold in India by United CS(OS) No.1216/2011 Page No.34 of 81 Spirits Ltd. since the year 2006.
V8 VEGETABLE JUICE - V8 is a well-known Vegetable juice brand. V8 was launched in 1933 and have been available in India since at least the year 2005. ―A few cocktail drinks use V8, most famously the "bloody eight" or "eight ball", which is a Bloody Mary with V8 instead of tomato juice‖.

36. By citing the detailed analysis of aforementioned brands of alcoholic drinks available in the market, the learned Senior counsel for the defendant sought to urge that the plaintiff's grievance is nothing but a frivolous one and it does not survive in view of the market trend demonstrated above, and it reveals that there are not merely entries on CS(OS) No.1216/2011 Page No.35 of 81 the register which reveal ―8‖ as one of the features of the registration but rather there is substantive actual user by the third parties.

37. For ease of reference, reproduced hereinbelow is a list of few ‗8' and/or ‗8' formative marks in Classes 32 and 33. The list is illustrative and not exhaustive :

LIST OF „8‟/‟8‟ FORMATIVE MARKS IN INDIA S. No. Trade Proprietor/Date of User Status Mark/Number Application Claimed (as per online) Class Registration records of the Trade Marks Registry)

1. 8 PM and device of Baldev Pawan, Since Registered Globe/ Ashwani Kumar April 1, 1008765/ trading as English 2001 Class 32 Food Specialties (India), Punjab/ May 11,2001

2. Anil Gupta, Ashwani Since Pending Aath Ke Thaath/ Kumar, November Madikan 2063536/ Mehra, Jammu 1,2010 Tawi/ Class 32 December 6, 2010

3. Jai Baba Lai Since Pending Industries CS(OS) No.1216/2011 Page No.36 of 81 (JBI Groups), April 1, Jammu 1950320/ Tawi/ 2010 Class 32 April 15,2010

4. 8 '0' Clock (Club Baldev Pawan, Since Opposed Soda with spirit)/ Ashwani Kumar April 1, 1076845/ trading as English 2001 Class 32 Food Specialities (India), Punjab/ January 30, 2002

5. 81H DAY/1212633/ Industrial Proposed Registered Beverages Class 32 Limited, Mauritius/ to be used July 9, 2003

6. AQUA 8/ Pepsi Foods Private Proposed Opposed 1221399/ Limited, Punjab/ to be used Class 32 August 7, 2003

7. AQUA 8/ Pepsi Foods Private Proposed Opposed 1221402/ Limited, Punjab/ to be used Class 32 August 7, 2003 CS(OS) No.1216/2011 Page No.37 of 81

8. Campbell Soup Co., Proposed to Registered be used USA/June 16, 2005 1364360/ Class 32

9. V8/ Campbell Soup Co., Proposed Registered 1300537/ USA/ August 4, to be used 2004 Class 32

10. AFTER 8/ Mahavir Lall Mehra Proposed Registered 374742B/ and Nirmal Mehra to be used Class 33 trading as Mohan Lall & Company, New Delhi/ April 15, 1981

11. XLR8/ Guinness United Proposed Registered 684571/ Distillers & Vintners to be used Class 33 B.V., The Netherlands/ October 25, 1995

12. Damian Thomas Proposed Registered Knowles, Australia/ to be used February 9, 2007 1529710/ Class 33

13. 8 MILLION/ Jagdish Chandra Proposed Registered CS(OS) No.1216/2011 Page No.38 of 81 to be used 1865348/ Agarwal, New Class 33 Delhi/ September 22, 2009

14. Registered Societe Des Proposed to Products Nestle be used S.A., Switzerland/ 1667206/ March 19, 2008 Class 32

15. Pending 8AM/ V.R. Industries Proposed to 1574492/ Private Limited, be used Class 32 Gurgaon/ July 02, 2007 LIST OF „8‟/‟8‟ FORMATIVE MARKS INTERNATIONALLY S. Trade Country/Jurisdict Proprietor/Da Status No. Mark/Number/C ion te of lass Application/R egistration

1. LOW8/ Community Trade Gabriele Pending E9406331/ Mark Ascione, Italy/ Classes 5, 30, 32 November 4, 2010

2. one.8 United Kingdom Santeau Registered One.8 Limited, ONE.8/ UK/ CS(OS) No.1216/2011 Page No.39 of 81 2368274/ July 15, 2004 Classes 5, 30, 32

3. 8 Ost/ Community Trade BIS Registered E3227121/ Mark Bremerhavener Classes 3, 8, 9, Gesellschaft fur 12, 14, 16, 18, Investitionsford 21, 24, 25, 28, e rung und 31, 32, 33, 35, Stadtentwicklu 38, 39, 41, 42, 43 ng mbH, Germany/ June 16, 2003

4. United States of Baltika Registered America Breweries BALTIKA 8/ Corporation, 3668468/ Class Russia 32

5. United States of Table Bluff Registered America Brewing, Inc. DBA Lost 8 STOUT/ Coast Brewery 2827476/ Corporation, Class 32 CS(OS) No.1216/2011 Page No.40 of 81 USA/ April 29, 2003

6. HARD 8/ United States of Hard 8 Pending 85127026/ Class America Beverage 32 Company, USA/ April 29, 2003

7. BISTRO 8/ United States of Anheuser- Registered 3096356/ Class 32 America Busch, Incorporated, USA/ September 19, 2003

8. OLD NO. United States of Diageo Registered 8 BRAND/ America North America, 1310336/ Class Inc., USA/ 33 October 25, 1982 CS(OS) No.1216/2011 Page No.41 of 81

9. 8 STAGIONI/ Hong Kong 8 Stagioni Registered 301218663/ S.R.L., Italy/ Class 33 October 10, 2008

10. 8 BILL/ Hong Kong Glory Trading Registered 301533898 (International) Class 33 Co., Ltd., Hong Kong In addition to the above, the defendant submits that goods in Classes 32 and 33 are available in Indian and International market with the numeral mark ‗8' which is used as part of trade mark. These are: BACARDI 8, V8, HARD 8, 8 STOUT, BISTRO 8, OLD NO.8 BRAND, 8 BALL, PLANTATION JAMAICA 8 YEAR RUM, GEORGE DICKEL NO. 8 TENNESSEE WHISKY, BASIL HAYDEN'S 8 YEAR STRAIGHT BOURBON WHISKY, BARBANCOURT 8 YEAR RUM, OLD CHARTER 8 YEAR STRAIGHT BOURBON WHISKY, WILD TURKEY 8 YEARS STRAIGHT BOURBON, BLACK DOG 8 YEARS etc. In all the aforesaid examples, numeral '8' is used conspicuously and is a prominent feature of the packaging.

CS(OS) No.1216/2011 Page No.42 of 81

38. It is also submitted by the defendant that plaintiff has not obtained any separate registration for ‗8' or ‗P.M.' per se. Numeral ‗8' is common to trade as large number of manufacturers in India and abroad are using the Numeral ‗8' in relation to similar business as that of the plaintiff. even some of them prior to user of the plaintiff. It is also argued by Mr. Singhvi that Plaintiff's mark 8 PM is descriptive. It attributes 8 PM to the preferred recreation time of the evening when everyone desires to unwind. Realizing that the mark is inherently non-distinctive, the Registrar of Trademarks granted the registration to Plaintiff for its trade marks 8 PM in Part B of the Register.

The defendant has also referred the search report issued by the Trade Marks Registry as well as the Trade Marks Offices of various countries in order to indicate numerous ‗8'/‗8' formative applications/ registrations in India and internationally standing in the name of different entities.

39. The defendant has placed on record the evidence which shows that there are various other international brands which use 8/8 formative marks in relation to products falling in Classes 32 and 33 and are available internationally. Defendant has filed images of several products using 8/8 formative marks. Few examples of such brands are reproduced hereinbelow:

       S. No.                 Product                  Page Nos.
CS(OS) No.1216/2011                                             Page No.43 of 81
        1.




                          8 STOUT BEER
       2.




                      OLD NO. 8 Brand - George
                       Dickel Tennesse whisky
       3.




                      OLD CHARTER 8 years old
                          Straight Bourbon




CS(OS) No.1216/2011                              Page No.44 of 81
        4.




                      WILD TURKEY 8 Years Old
       5.




                  TRAPPISTES ROCHEFORT 8
                           BEER
       6.




                      ―8‖ Chardonnay 2007 Wine




CS(OS) No.1216/2011                              Page No.45 of 81

40. I find substance in contention of the learned counsel for the defendant that the numeral mark 8 is prima facie of non distinctive character. This is due to following reasons:

 That the aforementioned analysis done by the defendants itself shows that major players or competitor like Bacardi, Signature and others etc nationally and internationally use the numeral 8 on their label. Thus, it does not remain the case of mere formal entries on the register but also is backed by the substantive user of the other parties which negatives the claims of exclusivity.
 There are authorities on the subject stating that there are some numerals like 8.5 or atleast 8 which are requirement of the trade which denotes the strength. The said aspect further clarifies that there is some nexus of the numeral 8 in respect of alcohol drinks.
 The plaintiffs are not registered for 8 per se and rather the registration is of 8PM in Part B of the register. The mark on part B was considered to be weak trade mark and rather prima facie descriptive one. The exclusivity in the said mark can be defeated by showing the evidence of non distinctiveness. In the present case, the same thing has been shown.
 Overall by reading section 30 of the Act and testing the numeral 8 on the principles of the same (which I have already dealt with above on honest practices of trade), the use of the numeral in CS(OS) No.1216/2011 Page No.46 of 81 these circumstances by a tradesman when there are such overwhelming user by other parties as stated above coupled with the nexus of numeral in the trade, it can be safely said that use of the numeral 8 by any other person including defendant in respect of alcohol or beers cannot be said to be dishonest and would be protected by section 30 of the Act.

41. Thus, it is prima facie established that the numeral 8 has the role to play in the industry of liquor, but no doubt and the defendant as bona fide description is entitled to use the same in order to denote the strength of the product.

42. However, one should not forget that the Apex Court has further extended this proposition by stating that where there is a case of infringement of trade marks wherein the marks are not identical but are deceptively similar, the tests for measuring the case of infringement and passing off coincide and they become the same. (See Ruston & Hornsby Ltd. vs. The Zamindara Engineering Co., 1970 SCR (2) 222). The same has also been upheld by this court in Allied Blenders and Distillers P. Ltd. vs. Paul P. John and Ors., 2008 (38) PTC 568 (Del).

43. In the present case also, the competing trade marks are 8 PM per se in respect of whisky and PALONE 8 in respect of the beers. At the first place, the marks of both the plaintiff as well as the defendants CS(OS) No.1216/2011 Page No.47 of 81 are not identical but at the best these can be considered as deceptively similar as numeral 8 in both the trade marks is common.

44. It is the admitted position that the registration obtained by the plaintiff in Clauses 32 & 33 is not pertaining to the beers as the said both registrations on the face of it are in relation to Whisky and Mineral Water, etc. Under Section 28, the rights are conferred by the registration to the registered proprietor to the use trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain the relief in respect of the infringement of the trade mark in the manner provided by the Act.

45. Under Section 29(1) of the Act, a registered trade mark is infringed by a person who, not being a registered proprietor of the mark, uses in the course of trade, which is identical with, or deceptively similar to, the trade mark in relation to the goods or services in respect of which the same is registered or use of the mark is likely to be taken as being used as trade mark.

Under sub-section (2) and (3) of Section 29 postulates that in case the Court finds similarity to the registered trade mark and the identity and similarity of the goods or services covered by such registered trade mark, there is a presumption that the use of mark by a person who not being a registered proprietor is likely to cause confusion CS(OS) No.1216/2011 Page No.48 of 81 on the part of the public or which is likely to have an association with the registered trade mark.

46. Unless the prominent feature of the mark is proved to be prima facie enjoying high degree of distinctiveness which may become heart and soul of particular trade mark, such kind of monopoly cannot be accorded to the same. This may not hold true in the case of single letter or numeral like 8 which has been extensively used by the number of major players selling alcohol and is a requirement of the trade as a practice denoting strength.

47. In the present case, admittedly, the defendant is not using the trade mark - the numeral-8, in relation to Whisky and Mineral Water for which the plaintiff has obtained the registration in Clauses-32 & 33 of the Act. As already stated that the present case is also not covered under sub-section (4) of Section 29 of the Act, therefore, the plaintiff cannot derive the benefits available in sub-section (4) of Section 29 of the Act which provides additional protection for infringement of trade mark in relation to dissimilar goods.

48. The other important aspect of the matter is that the main registration obtained by the plaintiff bearing mark ‗8 PM' under Registration No.783398 in Clause-33 as of 24.12.1997 advertised in Journal No.9998-2 was granted under the old Act, i.e. Trade and Merchandise Marks Act, 1958 in Part-B. In the said Act, the CS(OS) No.1216/2011 Page No.49 of 81 registration could have been granted by the Registrar of Trade Marks in Part- under Sections 7 & 9 of the Act due to the prevailing circumstances at the time of granting the registration. In the said Act, under Section 29(2), in an action for infringement of a trade mark in case the registration is granted in Part-B and the defendant is able to establish to satisfy the Court that the mark is not likely to deceive or cause confusion in the trade and some other person having the rights either as registered proprietor or registered user, the relief under those circumstances shall not be granted to the plaintiff.

49. Section 17 provides the effect of registration of parts of the trade mark. The said Section reads as under:-

―17. Registration of trade marks subject to disclaimer. If a trade mark -
(a) contains any part -
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character;
The tribunal, in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration:
CS(OS) No.1216/2011 Page No.50 of 81
Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.‖ It is the admitted position in the present case that the numeral-

8 is a part of the trade mark which is not separately registered in favour of the plaintiff. In fact, the plaintiff has got the registration of the trade mark ‗8 PM'. Therefore, in view of the fact that no separate registration is granted, the test of passing off under those circumstances would apply.

The infringement of the mark is also not to be made out in view of the Part B registrations relied upon by the defendant. It is now well settled that the Part B registrations are granted to the marks which even the registrar of the trade mark also considers to be prima facie non distinctive or descriptive.

Section 29 of the old Act in this respect is equally apposite which reads as under:

―29. Infringement of trade marks.
(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof 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 any goods 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 use as a trade mark.
(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court CS(OS) No.1216/2011 Page No.51 of 81 that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark."

Thus, the mark if it is shown to be descriptive one or the one which does not indicate connection in the course of the trade by the plaintiff even at during the infringement proceedings, the injunction against the defendant cannot be granted as then it is outside the purview of the infringement.

The said aspect becomes relevant as then the plaintiffs case of Part B registration is overcome by the evidence of the descriptiveness or non distinctiveness of the numeral 8. Thus, the said act is not an infringement under the old Act.

At this stage, it is relevant to examine the saving clause of section 159 of the Trade Marks Act which reads as under:

―159. Repeal and savings.--
(1) The Trade and Merchandise Marks Act, 1958 (43 of 1958) is hereby repealed.
(2) Without prejudice to the provisions contained in the General Clauses Act, 1897 (10 of 1897), with respect to repeals, any notification, rule, order, requirement, registration, certificate, notice, decision, determination, direction, approval, authorisation, consent, application, request or thing made, issued, given or done under the Trade and Merchandise Marks Act, 1958 (43 of 1958) shall, if in force at the commencement of this Act, continue CS(OS) No.1216/2011 Page No.52 of 81 to be in force and have effect as if made, issued, given or done under the corresponding provisions of this Act.
(3) The provisions of this Act shall apply to any application for registration of a trade mark pending at the commencement of this Act and to any proceedings consequent thereon and to any registration granted in pursuance thereof.
(4) Subject to the provisions of section 100 and notwithstanding anything contained in any other provision of this Act, any legal proceeding pending in any court at the commencement of this Act may be continued in that court as if this Act had not been passed.
(5) Notwithstanding anything contained in this Act, where a particular use of a registered trade mark is not an infringement of a trade mark registered before the commencement of this Act, then, the continued use of that mark shall not be an infringement under this Act.
(6) Notwithstanding anything contained in sub-section (2), the date of expiration of registration of a trade mark registered before the commencement of this Act shall be the date immediately after the period of seven years for which it was registered or renewed‖

50. A bare reading of the sub section 159(5) would reveal that the same is the non obstante clause and would therefore prevail over in addition to what has been stated under the Act. The new Act of 1999 although extends the registration under the existing law of 1958 to the New Act. However, the exception is carved out under sub section (5) which states that the particular user of the mark if it is not an infringement under the old Act then, the same shall also not to be an infringement under this Act.

CS(OS) No.1216/2011 Page No.53 of 81

51. The combined reading of Section 29 of the old Act and saving clause of section 159 makes it amply clear that the user of the numeral 8 would not have been an infringement under the old act and injunction cannot be granted if it is established the said numeral does not indicate the connection in the course of the trade with the plaintiff. Thus, the said user cannot be extended to be an infringement under the new act by virtue of the saving clause of section 159 of the Act of 1999.

52. There is an additional surrounding factor which is seen from the search report relied upon by the defendant wherein the entry no. 1008765 in the name of some Baldev Pawan which reveals that the mark 8PM is registered since the year 2001 which is still renewed in respect of Beers which is not the plaintiff concern. On the otherhand, the plaintiff has relied upon the registration of mineral water etc to claim infringement against beers under the same class 32. I think the said factor is also crucial factor both for the purposes of infringement and passing off as some third party is holding the registration of the mark 8PM in respect of the beers and not the plaintiff. This also becomes a surrounding circumstance for the purposes of the grant or non grant of injunction.

53. Therefore, I am of the prima facie view that the registrations relied upon by the plaintiff do not establish the prima facie case of infringement under section 29 (1) and 29 (2) as I have already CS(OS) No.1216/2011 Page No.54 of 81 expressed doubts about the nature of goods being either non similar or similar which depends number tests discussed by me along with the facts to be proved in trial. Thus, it is more of a mixed question of law and fact. At this stage, suffice it to say that the registration of the plaintiff clearly do not cover beer, the said registration are in Part B which are weak ones, the goods can be conclusive said to be similar goods, therefore, the infringement under section 29 (1) (2) and (3) cannot be established. So far as grounds under section 29(4) is concerned, the other surrounding factors like extensive user of the numeral 8 by the other parties, observations that 8 has a role in liquor industry and other factors discussed above prevents the numeral 8 to be categorized as reputed mark of the plaintiff and the user of the same is protected under section 30 of the Act. Therefore, I am prime facie of the view that no case is made out in view of statutory provision of Sections 28 and 29 in order to establish the case of infringement. The surrounding factors like no infringement of Part B registration under the old act, 8 is not per se registered in view of section 17 of the Act, registration of someone else in relation to beers also act as special circumstances which militate against the grant of injunction.

Thus, the decisions referred by the plaintiff on the point of infringement are not applicable as in those case, two set of goods of the parties were same. As far as proposition of law in those cases referred CS(OS) No.1216/2011 Page No.55 of 81 to by the plaintiff is concerned, there is no dispute that law laid down in those decisions well-established law.

54. So far as the judgments cited by the plaintiff in the cases of Shaw Wallace & Co. v. Superior Industries Ltd., 2003 27 PTC 63, Jagan Nath Prem Nah v. Bhartiya Dhoop Karyalaya, (Marks Involved: Kasturi 555/ Anand Durbar 555), M/s Vrajlal Manilal v. Adarsh Bidi Co., 1995 1 Arb. L.R 471-Para 2, 7, 10-12, & Kamal Trading v. Gillette UK Limited, 1988 PTC 1 (7' O Clock) are concerned, the same are distinguishable on the facts and circumstances of each case. The same are distinguished as under:

 In Shaw Wallace (Supra), the court was concerned with a mark 5000 which is not a single letter mark for strict rigors of law are applicable. It is now well established and has even stated in the Narayanan on Trade mark and other authorities that as the letters or numeral in the marks grows from two to three and thereon, the said numerals or letters comes closer to the trade mark. The relevant excerpt for the same is reproduced herein after.

Further in Shaw Wallace, the court was concerned with the case of Beer versus Beer wherein the plaintiff is well known in the market which is the major point of distinction with that of the present case with that of Shaw Wallace (supra).

CS(OS) No.1216/2011 Page No.56 of 81  Again in Jagan Nath (Supra), the court was concerned with the three letter mark rather than a single letter mark. Further again the goods in that case were identical which are aggarbatties. The said mark was essential feature of the mark which was considered by the court as distinctive. I have also held in the present case that in a given case where it is established the essential feature of the mark is such which is heart and soul of the mark which has enjoys distinctiveness can enjoy equal level of monopoly. However, the same may not hold good for a single letter mark like 8 which is supposed to be prima facie of non distinctive character and has been used several major players in the market to denote and connote strength of the alcoholic drink. The said judgment is distinguishable on facts  Again in Virajlal (Supra), this court was concerned with the mark 22 which was used in the market for 5 decades in respect of bidis. The said mark 22 per se stood registered with the plaintiff as noted by the court. The defendant adopted the mark 122 which subsume 22 in respect of identical goods which are bidis. The same is accordingly distinguishable on its facts  In Kamal Trading (Supra), the court was concerned with the world famous mark 7 O CLOCK which was used for more than 30 years for shaving creams, shaving brushes rajors etc and the defendant CS(OS) No.1216/2011 Page No.57 of 81 used the identical mark for tooth brushes and the Bombay Division Bench rightly confirmed the injunction. The said case is distinguishable on facts as in the said case, the court was concerned with the usage of identical mark 7 O CLOCK by the defendant and not a part of the numeral mark and the mark 7 OCLOCK is not a single letter mark but a composite mark. All the facts are sufficient to take out the present case from that of the judgment of Kamal Trading (Supra).

55. Thus, the said judgments on numeral marks are distinguishable on the facts and circumstances. Further, the judgments relied upon the defendants upon the legal effect of registration as rendered by the Apex court, no one is disputing the said judgments but in the present case, the plaintiff is registered with 8 PM in respect of whisky and the case involves use of the numeral 8 in respect of Beers which is not falling within the registration of the plaintiffs. Thus, the said judgments cannot aid the case of the plaintiff. Further, the tests of the infringement and passing off coincide when the marks are deceptively similar as laid down by the apex court itself also comes under the way of this court to extend the effect of the registration of the plaintiff to the part of the mark which is to the numeral 8 when it is not per se registered under Section 17 of the Act.

PASSING OFF CS(OS) No.1216/2011 Page No.58 of 81

56. Mr. Kaul further argues that third party usage is no defense in a trade mark infringement and passing off action and further that a Plaintiff is not expected to sue each and every infringer.

Bhagwan Dass Gupta v. Shri Shiv Shankar Tirath Yatra Company Pvt. Ltd.: 93 (2001) DLT 406 - Para 10 "the basic test to find out whether a particular mark is publici juris or not is that if the mark has come to be so public because of its universal use that it does not confuse or deceive, by the use of it, the purchasers of the goods of the original trader."

Shri Pankaj Goel v. Dabur India Ltd.

FAO (OS) 82 of 2008 - Para 22 "22. As far as the Appellant's argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the Appellant has not been able to prima facie prove that the said 'infringers' had significant business turnover or they posed a threat to plaintiff's distinctiveness. In fact, we are of the view that the Respondent/plaintiff is not expected to sue all small type infringers who may not be affecting Respondent/plaintiff business. The Supreme Court in National Bell v. Metal Goods reported in AIR 1971 SC 898 has held that a proprietor of a trademark need not take action against infringement which do not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. and Ors. reported in 1989 (7) PTC 14 it has been held as under:

...To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by CS(OS) No.1216/2011 Page No.59 of 81 way of pinpricks.... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence.... Mere delay in taking action against the infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark. This Court is inclined to accept the submissions of the respondent No. 1 on this point.... The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers....

In fact, in Dr. Reddy Laboratories v. Reddy Paharmaceuticals reported in 2004 (29) PTC 435 a Single Judge of this Court has held as under:

...the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers."

Rolex Sa v. Alex Jewellery Pvt. Ltd. and Ors. 2009 (41) PTC 284 (Del) - Para 22 "22. The next aspect to be considered is the effect/impact, if any, of a large number of other persons using the word ROLEX as claimed by the defendant. At this stage, this plea will be examined believing the same to be true. In my view, the same would be immaterial. Firstly, nothing has been shown that any of the said users has any significant presence. Secondly, it is now well settled in Honda (supra) in turn relying upon Indian Shaving Products Ltd. v. Gift Pack that merely because the plaintiff who is otherwise found entitled to the interim injunction is shown to have CS(OS) No.1216/2011 Page No.60 of 81 not taken any step against other infringers is no ground to deny relief to the plaintiff. It cannot also be said that the plaintiff's trademark has lost its distinctiveness for the said reason. The reply affidavit of the plaintiff lists the orders of the Trade Mark Registry from 1964 to 2000, where plaintiff's mark has been protected inter alia for reason of having great reputation. It also shows that the plaintiff has been enforcing its rights. Though the list filed by defendant No. 1 in this regard is long but a perusal thereof shows a number of applicants to have abandoned or withdrawn their applications. This is a vast country. Mere long list of applicants/registrants of mark, without any extensive use of the mark, cannot dent the distinctive character or repute of the mark."

Express Bottlers Services Pvt. Ltd. v. Pepsi Inc. and Ors. 1989 (9) PTC 14 - Para 50 "50.To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks. In answer to this allegation, the respondent No. 1 in Joyce's supplementary affidavit dated 1.12.86 stated that there was no whisper of this case of public use of the mark in the petition itself. This case has been set up for the first time in the affidavit-in-reply. Moreover, 'Pepsi' and 'Pepsicola' were registered as carbonated beverages, syrups and concentrates under Class 32 of the Fourth Schedule to the Trade and Merchandise Marks Act 1958. It is alleged by the petitioner that the mark 'pepsi' is being used by others in respect of ice, ice-cream or ice candies which come under class 30 of the said Fourth Schedule and the sealing machine manufactured in the name of Pepsi comes under Class 7 of the 4th Schedule relating to machine and machine tools. The alleged banners, stickers, danglers, etc. disclosed by the petitioner for establishing common use of the marks of the respondent No. 1 are not the type of goods CS(OS) No.1216/2011 Page No.61 of 81 for which the marks of the respondent No. 1 were registered. The use of the mark Pepsi on goods falling within Class 7 or 30 are wholly irrelevant for the purpose of this case. Moreover, the plea of common use must fail because for establishing that, it must be proved that the businesses carried on by the infringers are of similar nature and are extensive and substantial. The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence."

Indian Shaving Products Ltd & Anr v. Gift Pack & Anr 1998 PTC (18) - Para 52 & 53 "52. It was next argued by the learned counsel for the defendant that the said trade mark Ultra is being used by several other persons/companies besides the defendants such as Toshiba, National and Sony. Thus the same has become publici Juris and the plaintiffs can not claim any exclusive right therein.

53. Admittedly, the said parties are not before this Court. Neither the said parties are claiming any relief against the plaintiffs nor the plaintiffs are claiming any relief against them. Hence the said defense, that other persons are also using the said trade mark, is not available to the defendants. The Court is called upon to decide disputes in between the parties which are before it. The Court cannot be expected to adjudicate upon a dispute which is not before it."

Novartis AG v. Crest Pharma Pvt. Ltd. and Anr. 2009 (41) PTC 57 - Para 32, 33 "32. The next contention of the defendant is that there are number of other companies who are using the similar trade mark as that of the plaintiff, those are CEFF, SIMCEF, CEF, BECEF, SYCEF, CEACEF, SYCEF, SICEF and C- CEF. The contention of the defendant has no force as the defendants have failed to produce any evidence of the actual user of the said marks referred by the defendants. In order to take the said defence, the party has to give cogent evidence before this Court as to since when these trade marks are being used and what is the goodwill and CS(OS) No.1216/2011 Page No.62 of 81 reputation of the said trade marks. The defendant in the present case has not produced the samples of the third parties in order to show as to whether the said marks are being used and goods are available in the market or not. The similar defence raised in various cases has been dealt by the courts from time to time in the cases of Century Traders (supra), Corn Products refining Co. v. Shangrila Food Products Ltd.AIR 1960 SUPREME COURT 142 and Pankaj Goel v. Dabur India Ltd. 2008(38) PTC 49 (Del). Relevant part of the decision of Corn product(supra) is reproduced hereinbelow:

17. The series of marks containing the common element or elements therefore only assist the applicant when those marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register.

33. A mere filing of the search report from the trademarks office does not prove as to whether the marks mentioned in search report was actually been used or not. It is imperative on the part of the party who relies upon the marks of third party to produce cogent and clear evidence of user in order to prove the defence of common marks to the trademark on the basis of the third party user. Hence, in the absence of valid and cogent evidence, the submission of the defendant cannot be accepted."

57. It is argued by the plaintiff that the plea of the Defendant is nothing but a bald averment without any merits. The Defendant in the instant case has failed to discharge the onus of leading evidence in CS(OS) No.1216/2011 Page No.63 of 81 support of this argument as mandated by various judicial pronouncements cited herein above. It is stated that the Defendant in support of this argument has also sought to rely upon certain website printouts, but all these printouts date subsequent to the institution of the suit, otherwise why the defendant itself would apply the Mark 8 for registration in respect of Beers, thus defence set up by the Defendant is meritless which has been only to justify its illegal acts. The third party usages referred by the defendant would show BACARDI RON 8 ANOS and BLACK DOG AGED 8 YEARS refers only to the age of the product otherwise no invoice has been placed on record to show that these products are readily available for sale in India bearing the Mark 8.

58. In the present case, the principles for measuring the deceptive resemblance are overlapping, be it of infringement or of passing off, as the marks are not identical to each other but merely numeral 8 is same in the rival marks of both parties i.e. 8PM versus PALONE 8. Thus, it would not be unwise to rely upon third party user in the present case.

59. It is true as stated by the plaintiff that the third party user may or may not be a relevant consideration in the infringement case but I feel that it may be considered in the case of passing off to the extent when the defendant is able to produce cogent evidence about the user of third party which is prior to the user of the plaintiff's mark. CS(OS) No.1216/2011 Page No.64 of 81

60. It is one thing to say that there are some third parties using the mark of the plaintiff in question which may be a defence in equity relevant in equitable remedies, however it is another thing to say that there is a honest practice in industrial matters or commercial matters which is a statutorily recognized defence or an exception to an infringement. If there is a prima facie material on record to demonstrate the numeral as requirement of the trade or trade practice, it may not be appropriate to discard the same when the law allows such practice to be considered by the Courts.

61. I have gone through the decisions referred to by the plaintiff on the aspect and I agree with the submission of the plaintiff that a mere filing of search report received from the trade marks office and occasionally user by third parties in tainted manner, the defendant cannot derive any benefit out of it. But circumstances of such nature depend upon case to case basis.

62. It is well said that each case of trade mark depends upon its own circumstances. The decisions referred by the plaintiff in support of its submissions are not applicable to the facts and circumstances of the present case, as in all the cases referred by the plaintiff, the trade marks of the parties were distinctive and in some of the cases, the brands were well-known brand names. This Court, therefore, cannot compare those cases as per the facts of the present case in hand. CS(OS) No.1216/2011 Page No.65 of 81

63. Thus, in the present case, the contention that the Court is precluded from seeing the third parties use is also not correct as two sets of goods/products of the parties are not same. All the decisions referred to by the plaintiff are those cases wherein the goods of the parties are same. In the present case, the defendant has not only to show extensive third party user of numeral 8 in relation to whisky, the goods used by the plaintiff but also to show the prima facie evidence that some of the third parties are prior in time than the plaintiff. The defendant has also to produce some original samples of third parties user before the Court during the course of hearing. Thus, the third parties user in the present case has become relevant factor to decide the interim application.

64. Admittedly, the marks used by the parties are not identical. The plaintiff's grievance is confined to the use of the numeral 8 by the defendant in respect of the beers which according to them has escalated its sales. I have already arrived at the prima facie opinion that the numeral 8 has a role to play in the liquor business which is being used by many third parties who are denoting the strength. In these circumstances, the contention of the plaintiff that there is sudden rise in the sales of the defendants beers due to the usage of the numeral 8 is due to the popularity of the mark 8 PM of the plaintiff prima facie cannot be accepted. I am doubtful whether such rise in the sales is on account of the alleged popularity of the mark 8 PM of the plaintiff or due to the CS(OS) No.1216/2011 Page No.66 of 81 exhibition of the strength of the beer which contains 8 % of the alcoholic content and consequently, there is an increase in the consumption of the same. At this prima facie stage, it can be safely said that it is for the plaintiff to prove during the course of the trial the correctness of the said allegations in the plaint that actually the rise in the sales of the defendant is directly connected with the popularity of the mark 8PM or singularly 8 and the argument cannot be accepted by mere saying of the plaintiff unless supported by the documents.

65. It is also note worthy to state that the mark 8PM is not registered in respect of the beers by the plaintiff. The plaintiff is pressing for injunction by putting reliance of 8PM in respect of whisky in Class 32 as well as on the basis of registration in class 33 in relation to mineral water etc., which compels this court to go into the question of examining the similarity of goods.

66. The plaintiff has admitted during the hearing of the application that the defendant is engaged only in manufacturing of ―Beer‖ and the Plaintiff has no presence in the beer market, but according to the plaintiff, the nature, uses and the users of the respective products of the parties are identical. The respective goods of the parties received reach the market through the same trade-channels. The products of the parties are being purchased by consumers from all sectors of the society, including the uneducated, illiterate and unwary customers. The would bound to be CS(OS) No.1216/2011 Page No.67 of 81 deceived by the adoption/use of the impugned mark/numeral 8 by the Defendant. The plaintiff has referred to few cases in support of its submission. The following is the case which is heavily relied upon by the plaintiff :

United Breweries Limited and Anr. v. Balbir and Son (Agencies) and Anr. - 2005 (30) PTC 315 - Para ...
"2. Respondent, M/s Balbir and Sons (Agencies), filed application No. 412036 for registration of trade mark 'BALBI BLACK LABEL' in respect of liquors including brandy, whisky and gin and the same was advertised before acceptance in the Trade Marks Journal No. 974 dated 1.1.90 at page 1251. Appellant, M/s Kalyani Breweries Ltd., filed a notice of its intention to oppose the registration on 29.3.90 on the grounds that it is the registered proprietors of the trade mark 'KALYANI BLACK LABEL' under No. 308 in class 32 in respect of beer, but which in the course of trade is sold under the trade mark 'BLACK LABEL' and it is asked by, the customers as BLACK LABEL BEER. Thus, the word 'BLACK LABEL' has acquired a great reputation in the market for the appellant. Beer, though being in class 32 of the Fourth Schedule, and wine etc., being in class 33 of the Fourth Schedule, are sold from the same counters and asked for by the same class of customers. Thus, both the products by the established use of the trade are bound to be regarded as goods of the same class. The mark 'BALBI BLACK LABEL' applied for is confusingly and deceptively similar to the appellant's well known trade mark 'BLACK LABEL'. Thus, the registration of the trade mark applied for is contrary to provisions of Sections 11, 12 and 13(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act)."
3. Deputy Registrar of Trade Marks took up the matter for hearing on 5.5.93. His conclusions are based upon the examination of the matter under Sections 11(a), 12(1) and 18(1) of the Act. In matter of his examination under Section 12(1) of the Act, he concluded:-
CS(OS) No.1216/2011 Page No.68 of 81
(i) The prefixes in the mark 'KALYANI BLACK LABEL' and 'BALBI BLACK LABEL' being 'KALYANI' and 'BALBI' respectively, are distinct and dissimilar and the suffix 'BLACK LABEL' is identical and/or deceptively similar to each other and the prefixes being essential feature of the mark have greater significance and weight than all suffixes. Thus, the condition relating to the mark being identical with or deceptively similar to the similar mark registered in the name of a different proprietor is not satisfied;
(ii) Appellant's goods are in respect of beer and the respondent's goods are in respect of liquor, including brandy. Hence rival goods are of the same description falling in different classes and thus, goods being similar, the condition relating to goods being of the same description under Section 12(1) of the Act is met. Thus, the impugned mark meets the requirements of Section 12(1) having not been disqualified on both the grounds in relation to deceptive similarity of the marks and the similarity of the goods.
13......(emphasis supplied). We hold that the impugned mark is likely to deceive or cause confusion in terms of Section 11(a) of the Act and is also disentitled under Section 12(1) of the Act since it pertains to the same description of goods and is deceptively similar to the mark of the appellant. Accordingly, for these reasons the impugned Order of the Deputy Registrar dated 30.9.93 is set aside and the appeal is allowed with no Order as to costs."

67. It is also submitted by the plaintiff that the different classes of criteria has no concern in an action for passing off if the confusion and deception is apparent on the face of it. The plaintiff has referred the CS(OS) No.1216/2011 Page No.69 of 81 case of Australian Wine Importers‟ Trademark - IN THE HIGH COURT OF JUSTICE - CHANCERY DIVISION (COURT OF APPEAL) - Page 316 at placitum 15-25, page 318 at placitum 35-45.

"We find that they are goods which are generally sold by the same persons, and for the purposes of trade may, in some respects, be considered as the same description of goods; for they are both alcoholic, and although there may be differences in them, they may fairly be considered as coming within the same description of goods, through they are not the same goods. Therefore, although it does not depend on the class - because both these descriptions of goods are included in the same class -yet, in my opinion, it may depend on the description, and if it was determined on that alone, I should hold that they do come within that term
-"the same description of goods."
Now, for the purpose of deciding whether two sets of goods are the same description, when they are not the same goods, we must not, as it appears to me, lay too much stress on the classification of the framers of the rules. If you come to look at that classification, you will find goods of the same description, in one sense, in different classes; and you will find goods of different descriptions in the same class. For example, if you turn to classes 26 and 29, you will find flax, hemp, and jute, all of which are fibrous, and more or less of the same description for trade purposes, and you find them in different classes. Supposing, for example, that a man who deals in hempen goods and in flax goods had a trade mark for flax and hempen goods, it would be a strong thing to register somebody else in the same class in respect of jute goods."

68. The goods more specifically beers and whisky are not identical and again they are either same description of the goods or allied or cognates or different. The judicial opinion in this respect is CS(OS) No.1216/2011 Page No.70 of 81 also not consistent as to whether the said goods are actually the goods of the same description. It is noteworthy that the alcoholic drinks like whisky wines, spirits are falling in class 32 and beers, water and other aerated drinks are falling in class 33.

69. Although I am aware that the classification is not material for measuring the likelihood of confusion and deception. But the same cannot be completely overlooked in the present circumstances. The ―alcoholic drinks‖ may be a very wide classification wherein there may be goods including whisky, Rums, spirits, wines, Jins of different price ranges. The same may also include the drinks which are not purely alcoholic ones but are dilutions like beers which contain the alcolohic content. If one may apply the test of identity of composition, identity of consumers, price ranges, consuming public as tests, the said goods seem to be goods of different description as composition wise the beers and whisky are not the same, price wise, there is a great price variation as beer may be cheaper and whisky may be expensive, consuming public wise people are discerning as to whether they want beer or whisky.

70. In Khoday Distilleries Limited (Now known as Khoday India Limited) vs. Scotch Whisky Association and Others, reported in (2008) 10 Supreme Court Cases 723. The relevant paras of the said judgment run as under:-

CS(OS) No.1216/2011 Page No.71 of 81

"65. In Scotch Whisky Assn. v. Marton De Witt, the Federal Court of Australia was concerned with the question as whether the mark ―Glenn Oaks‖ was deceptively similar to trade marks that, before the priority date of the application, had acquired a reputation in Australia for Scotch whisky and Scotch whisky-based liquors as envisaged under Section 60 of the Trade Marks Act, 1995. In that proceeding also Ian Barclay had affirmed an affidavit in favour of Respondent 1 Association. As regards the market(s) and consumer knowledge, it was held:
―33. There are two classes of consumers in the Scotch whisky and bourbon markets: the involved consumer and the uninvolved consumer. The knowledge of these consumers may be obtained in several ways--including labels, customer, salespeople, word of mouth and past experiences.‖ Noticing the details involving the manufacture of Scotch whisky that it is ordinarily made from barley; it originates in Scotland; if there are two forms of whisky: blended and malt; it has various brands and its alcoholic content is at least 40% by volume. It has further been noticed:
―35. All the applicant's expert witnesses would fall within this class of consumer. Given the market is quite small, product distinction between Scotch whisky and other products is more readily discerned by consumers in this class. They would also be aware that Scotch whisky is sold in bottles and in pre-mixed drinks (Scotch whisky products).‖ It was also held:
―38. The purchase of bourbon and Scotch whisky products is not one of impulse. The habits of alcohol purchasers differ from those of purchasers of soft drinks or sports drinks, who are usually teenagers and children. Are, (sic) pricing and product quality are all factors that make for CS(OS) No.1216/2011 Page No.72 of 81 more discerning consumers of Scotch whisky and bourbon.
39. The uninvolved purchaser buying a present for someone else will usually ask a salesperson, who will assist in product distinction between bourbon products and Scotch whisky products. The salesperson in a liquor store is a means by which consumers become knowledgeable about different products. By contrast, consumers would not typically ask a salesperson what a bottle of coke or a new soft drink tastes like. They would purchase the product and try it themselves. Consumers would also read product labels, see that ‗Scotch whisky' is written on the container, and infer that Scotch whisky is made in Scotland.‖
66. The tests which have been laid down therein are as under (Marton De Witt case):
―38. The purchase of bourbon and Scotch whisky products is not one of impulse. The habits of alcohol purchasers differ from those of purchasers of soft drinks or sports drinks, who are usually teenagers and children. Are, (sic) pricing and product quality are all factors that make for more discerning consumers of Scotch whisky and bourbon.
39. The uninvolved purchaser buying a present for someone else will usually ask a salesperson, who will assist in product distinction between bourbon products and Scotch whisky products. The salesperson in a liquor store is a means by which consumers become knowledgeable about different products. By contrast, consumers would not typically ask a salesperson what a bottle of coke or a new soft drink tastes like. They would purchase the product and try it themselves.
Consumers would also read product labels, see that ‗Scotch whisky' is written on the container, CS(OS) No.1216/2011 Page No.73 of 81 and infer that Scotch whisky is made in Scotland.‖ The Court held that both involved and uninvolved purchasers of bourbon and Scotch whisky products could not be confused save and except those who are exceptionally stupid or careless.‖ In the sharp contra distinction, if one applies the trade channel test and overall ground reality situation existing in India, there may seem to be a commonality in the trade channel wherein these drinks are served or sold in the shops in India. In these circumstances, it becomes a question which has to be seen in more depth in trial as to whether the goods like beer and whisky are the goods of same description.

However, applying the principles of passing off at this prima facie stage as in my opinion, single numeral mark ‗8' is prima facie non distinctive and more so when there is a nexus being found out in the trade of alcohols with respect to numeral 8. The authorities on the subject also make the reference of numeral 8 as requirement of the trade in alcohol business to denote the strength of the beer. The plaintiff is also not the registered proprietor of the numeral 8 and rather is registered of 8PM. Thus, unless the plaintiff is exclusively registered for 8 per se, it cannot be said to enjoy the proprietory rights over the part of the mark as per section 17 of the Act. Prima facie, it appears that the numeral 8 cannot be exclusively enjoyed by the plaintiff.

CS(OS) No.1216/2011 Page No.74 of 81

The cases referred by the plaintiff have no bearing, as in all the cases, the trade marks in question were not single letter mark and the defendants in those cases have appropriated the entire mark of the plaintiff or used deceptively similar mark in totality unlike a mere single letter.

71. It is also argued by the plaintiff that the malafide intention of the defendant is further corroborated by the fact that the defendant is also using a slogan ―8 KA DUM‖ similar to that of the plaintiff's well-known campaign ―AATH KE THAATH‖. The defendant is also using the expression ―ROYALS‖ deliberately as ROYALE is part of the of the plaintiff's ―8 P.M‖ family of marks. In support thereof, he referred the following cases:

(a) Laxmikant Patel v. Chetanbhai shah (2002) 3 SCC 65 - Para 10 "The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury."
In this case, the Apex Court further observed that:
"Where there is probability of confusion in business, an CS(OS) No.1216/2011 Page No.75 of 81 injunction will be granted even though the defendants adopted the name innocently."
(b) Midas Hygiene v. Sudhir Bhatia and Ors. 2004 (28) PTC 121 (SC) - Para 5 "The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest."

72. In order to establish his case on passing off, Mr. Kaul has argued that the Defendant launched its brand PALONE/OKACIM PALONE in India in the year 2007. However, the said product turned out to be an unsuccessful one and not get with the Indian market. Therefore, the Defendant in Jan- Feb, 2011 launched PALONE 8 which is alleged to be a super strong beer in India. Numeral 8 being used in a prominent manner and rather alleged success of the said product i.e. sales turnover of around 26 crores from Jan, 2011 - April, 2011 shows the commercial potential of the numeral 8 and the malafide intention on the part of the defendant, thus the plaintiff has been able to make out a strong case of passing off.

The decisions relied upon by the plaintiff on the point of passing off are distinguishable on the reason that in those cases, the courts had come to conclusion that the trade marks in question were distinctive and even the defendants had taken the whole trade marks of the plaintiffs. Even in the case of B.K. Engineering (supra), the defendant was using the letter marks ‗B.K. 81', the entire mark of the CS(OS) No.1216/2011 Page No.76 of 81 plaintiff B.K. was appropriated by the defendant by just adding numerals 81 and they were using the mark in relation to same goods, i.e. cycle bells. Similar is the position of the case referred by the plaintiff, of Laxmikant Patel. In the case of Midas Hygiene (supra), the defendant was using the same trade mark Laxmanrekha with the similar packaging as that of the plaintiff. Therefore, the Court had made the observation that the grant of injunction becomes necessary. All the prevailing circumstances in the present case are missing.

73. Let me also examine the argument that the sales of the defendants have increased by user of the numeral 8. At this stage where I have already arrived at the finding that the numeral 8 is usually used to denote strength or lager in the beer. Further, there are number of the traders using the numeral 8 on their product. It cannot be said with such certainty as to whether the sales of the defendants have risen due to the infringement of the rights of the plaintiff when the plaintiffs are not even in beers and not even registered in beer or whether the said the rise of the sales is due to reason that the beer which is sold of large strength and the same is made clear to the customer by showing the same on the product. Thus, the said argument does not persuade me much to believe that there is a case of passing off made out merely due to rise in the sales of the defendant which may be incidental and is not directly related to the infringement of the rights of the plaintiff. CS(OS) No.1216/2011 Page No.77 of 81

74. At this stage, it is for me to discuss the decision rendered by the Division Bench of this court in the case of Rhizome Distilleries P. Ltd. & Ors. vs. Pernod Richard S.A. France & Ors. 2010 (42) PTC 806 wherein the court was concerned with the similar dispute relating to Alcohol industry wherein the marks used were IMPERIAL BLUE and RHIZOME IMPERIAL GOLD and the court was concerned with the part of the mark IMPERIAL which was full fledged word found in the dictionary as against the prima facie weaker mark 8 and the Hon'ble Division Bench observed thus:

―24. It is our analysis that no exclusive or proprietary rights can be claimed by either of the parties before us in respect of the word IMPERIAL which is not only in common parlance to be found in every dictionary, but also is laudatory in nature as it alludes to royalty or grandeur. With respect, we are not convinced that IMPERIAL refers only to royalty, empowering only such persons to take litigative umbrage. Illusions of royalty and grandeur are one of the sentiments resulting from imbibing spirits, and, therefore, IMPERIAL may justifiably be seen as descriptive.‖ ―It may still be pleaded by the Plaintiffs that the Defendants are guilty of passing off because of the adoption of the word IMPERIAL. To this we may clarify that neither party has any exclusive right for the use of the word IMPERIAL. The two labels, that is IMPERIAL BLUE and RHIZOME Imperial Gold are totally dissimilar and if a flat amber bottle is used by the Defendants/Appellants, no deception is likely to arise. It is also relevant to mention that the word IMPERIAL is used by several other manufacturers of alcohol such as IMPERIAL TRIBUTE, IMPERIAL FAMOUS, TETLEY‟S IMPERIAL, IMPERIAL‟S HERO FIVE WHSKY, CAREW‟S IMPERIAL CS(OS) No.1216/2011 Page No.78 of 81 WHINE WHISKY, OLDIMPERIAL, SUMMERHILL IMPERIAL, XO IMPERIAL, DONFULANO IMPERIAL, RON BARCELO IMPERIAL ETC. All these parties will have to co-exist. In view of the widespread use of the word IMPERIAL, especially in the alcohol business, it is not possible to accept the contention of Mr. Chandra that the word IMPERIAL has attained a secondary meaning which would justify exclusivity. Moreover, secondary meaning would evolve over a number of years; in the present case, the Plaintiffs started marketing its product in 1997 and that is too short a period to make such an extreme claim. In this regard, it is also relevant that both the parties have received registration under the TM Act for their competing brands.‖

75. The present case obviously is similar to the case referred above and covers within the observations of the Pernod Ricard (supra), as there are number of traders who are using the numeral-8 in respect of the alcohol drinks and there are number of parties who have not and are securing the registration of numeral-8. Therefore, it is not possible at this stage to restrain the defendant from using the numeral 8 due in view of the facts and circumstances explained earlier. I am of the considered view that the defendant is not liable to be restrained from using the mark numeral-8 completely as prayed by the plaintiff in the injunction application, as the plaintiff has failed to make out any prima facie case in its favour. The balance of convenience also does not lie in favour of the plaintiff. The irreparable loss will be caused to the defendant if they will be directed to not to use the numeral 8 when the plaintiff is not CS(OS) No.1216/2011 Page No.79 of 81 even carrying on business in beers. Thus, the present case do not warrant the grant of interim injunction.

76. However, I find some substance in the submission of the plaintiff about its grievance that the defendant is using the mark-8 in similar writing style and also in the golden colour which may be avoided. Thus, in order to avoid any confusion, I direct the defendant to use the mark PALONE and numeral-8 together in the same line. The numeral-8 is allowed to be used by the defendant in different writing style in different colour other than in golden colour. This, I am directing this even to avoid any bleak chances of misrepresentation. The mark ‗PALONE 8' would be used by the defendant in the same size of lettering and fonts. The defendant is, however, granted time upto 31.12.2011 to make such changes and amendment in the packaging and advertisement material as well as in slogan ―8 KA DUM‖ if used by the defendant at present. The defendant shall also maintain true statement of account for the aforementioned products and file the same in this case every quarterly with an advance copy to the plaintiff. The defendant is allowed to use the same as the manner mentioned above.

77. Consequently I.A. No.8122/2011 is disposed of with the above said directions. No order as to costs.

CS(OS) No.1216/2011 Page No.80 of 81

78. The findings given in this order are tentative and shall have no bearing when the matter will be considered at the final stage after recording the evidence.

IA No.9007/2011 In view of order passed in IA No.8122/2011, this application is also disposed of.

CS(OS) No.1216/2011 Parties are allowed to file original/certified copies of documents within six weeks.

List the matter before the Joint Registrar for admission/denial of the documents on 21.11.2011.

MANMOHAN SINGH, J.

SEPTEMBER 16, 2011 sa/dp/jk/ka CS(OS) No.1216/2011 Page No.81 of 81