Introduction

This case involves a trademark infringement and passing off dispute in the beer industry, where the plaintiff sought to protect its well-established brand “HAYWARDS 5000” against the defendant’s use of “COX 5001.” The Bombay High Court examined the deceptive similarity between the marks, focusing on the numeral “5000” as an essential feature, and addressed issues like disclaimers, prior user, and suppression of facts. Decided in 2014, the judgment reinforces principles of trademark law, particularly regarding the protectability of numerals in composite marks and the limited role of disclaimers. It highlights the court’s approach to granting interim injunctions in cases of registered trademarks, emphasizing prima facie case, balance of convenience, and irreparable harm.

Factual Background

The plaintiff, Sabmiller India Ltd., is the proprietor of the trademarks “HAYWARDS 5000” (registered under No. 436744 in Class 32 since 1983) and “FIVE THOUSAND” (registered under No. 1521743 in Class 32), both for beer.

The plaintiff and its predecessors have continuously used HAYWARDS 5000 prominently on labels, achieving significant sales and promotional expenses, thereby establishing goodwill. The defendant, Jagpin Breweries Ltd., began using COX 5001 on beer labels, which the plaintiff discovered in September 2011.

Prior litigation between the parties included a 2006 suit where the court restrained the defendant from using COX 5000, and a 2011 Madras High Court order against the defendant for infringing the plaintiff’s bottle design. The defendant challenged the plaintiff’s registration before the Intellectual Property Appellate Board but lost, and no appeal was filed. The plaintiff alleged that COX 5001 was deceptively similar, misleading consumers and trading on its reputation.

Procedural Background

The plaintiff filed Suit No. 56 of 2012 in the Bombay High Court for infringement and passing off, along with Notice of Motion No. 92 of 2012 seeking interim injunctions. On January 13, 2012, the court granted an ex parte ad interim injunction restraining the defendant from using COX 5001.

The defendant sought vacation, but the court confirmed the injunction on February 7, 2012. The defendant’s appeal (No. 189 of 2012) was dismissed on August 28, 2012. In February 2013, the court granted leave to combine passing off with infringement claims. The notice of motion was heard, with arguments on deceptive similarity, disclaimers, suppression, and delay, leading to the final order on February 6, 2014.

Core Dispute

The primary issue was whether the defendant’s COX 5001 infringed the plaintiff’s registered trademarks HAYWARDS 5000 and FIVE THOUSAND and amounted to passing off, given the prominence of the numeral 5000.

The plaintiff argued deceptive similarity in visual, phonetic, and structural aspects, claiming exclusive rights without disclaimer on 5000. The defendant contended that 5000 was descriptive, disclaimed, common to trade, and that the plaintiff suppressed facts, delayed action, and abandoned the mark. Additional disputes included jurisdiction (later withdrawn), balance of convenience, and whether prior litigation barred the suit.

Discussion on Judgments

The plaintiff relied on a line of authorities to support holistic comparison and the protectability of the numeral 5000:

• De Cordova v. Vick Chemical Co. (1951) 68 RPC 103 — rival marks must be compared as a whole, focusing on essential features like 5000.
• Reckitt & Colman of India Ltd. v. Wockhardt Limited (unreported, Bom HC, Appeal No. 1180 of 1981, decided July 8, 1992) — holistic comparison to establish deceptive similarity.
• Shaw Wallace & Co. Ltd. v. Mohan Rocky Spring Water Breweries Ltd. (2006) 3 Bom CR 252 — supports that 5000 is distinctive and not disclaimed.
• Laxmikant V. Patel v. Chetanbhat Shah (2002) 3 SCC 65 — outlines passing off elements: reputation, misrepresentation, and damage.
• Satyam Infoway Ltd. v. Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145 — no need to prove mala fide intent; likelihood of confusion suffices.
• Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. (1993) PTC 253 — in registered trademark cases, balance of convenience plays a minimal role.
• SKOL Breweries Ltd. v. Som Distilleries & Breweries Ltd. (2012) 49 PTC 231 (Bom) & SKOL Breweries Ltd. v. Fortune Alcobrew Pvt. Ltd. (2012) 50 PTC 413 (Bom) — substantial use of a registered mark, even with variations, constitutes deemed use; disclaimers do not cover essential numerals unless specified.
• Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (1955) 2 SCR 252 — discusses the purpose of disclaimers, distinguished here for non-descriptive numerals.
• Shaw Wallace authorities (various) and Shaw Wallace & Co. Ltd. v. Superior Industries Ltd. (2003) 27 PTC 63 (Del) — numerals like 5000 can acquire distinctiveness through use.
• Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 — mere registration does not prove use; defendant’s reliance on other numeral marks was dismissed.
• S.P. Chengalvaraya Naidu v. Jagannath (1994) 1 SCC 1 — cited by defendant on suppression of facts; court assessed materiality.
• Shelke Beverages Pvt. Ltd. v. Rasiklal Manikchand Dhariwal (2010) 3 All MR 667 — defendant’s claim that 5000 is common to trade was distinguished on facts of dissimilarity.
• S.J.S. Business Enterprises (P) Ltd. v. State of Bihar (2004) 7 SCC 166 — defines material suppression affecting merits.

Reasoning and Analysis of the Judge

The judge compared the marks holistically, finding 5001 deceptively similar to 5000 visually and phonetically, and likely to cause confusion in beer sales.

The disclaimer argument was rejected: the judge held disclaimers apply only to descriptive matter, not to the distinctive numeral 5000, noting that the Registrar specifies numeral disclaimers explicitly. Relying on prior rulings, the court affirmed 5000 as an essential and protectable element.

On passing off, the judge found the plaintiff’s extensive use established reputation, with the defendant’s mark misrepresenting origin and damaging goodwill. Suppression claims were dismissed as irrelevant to the suit concerning registered marks. Delay defenses were rejected due to dishonest adoption, and jurisdiction was upheld under the Trade Marks Act. The balance of convenience favored the plaintiff, given long use since 1983 versus the defendant’s unsubstantiated claims, with irreparable harm from continued infringement.

Final Decision

The court made the notice of motion absolute, granting temporary injunctions restraining the defendant from using COX 5001 or any mark with 5001 deceptively similar to HAYWARDS 5000, for infringement and passing off in beer sales.

Law Settled in This Case

This judgment settles that numerals in composite trademarks can be distinctive and protectable if not explicitly disclaimed, with disclaimers limited to descriptive matter unless specified. It reinforces holistic mark comparison, emphasizing essential features, and deems substantial use of registered marks as valid despite minor variations. In passing off, likelihood of confusion suffices without proving intent, and delay or acquiescence defenses fail against dishonest adoption. Suppression must involve material facts affecting merits, and mere registration of similar marks does not prove use or commonality without evidence.