The plaintiff is the largest brand of soft drinks operating in 200 countries and
the defendant in this case is a well-known Indian brand which is highly regarded
for its bottled water. On September 18, 1993 the defendant sold the trade marks,
formulation rights know how, intellectual property rights and goodwill etc. of
their products THUMS UP, LIMCA, GOLD SPOT, CITRA and MAAZA inter alia to the
plaintiff. The present case concerns with the product MAAZA only.
On November 12, 1993, the plaintiff and defendant entered into a deed of
assignment by way of which the following agreements as regards MAAZA were
concluded. Finally, in October 1994 the Licensing Agreement for MAAZA between
the plaintiff and Golden Agro Products Pvt. Ltd. was entered into and executed.
It is the plaintiff's case that by this agreement all the trademarks,
formulation rights etc. were irrevocably conveyed to the plaintiff forever.
In March 2008, the defendant became aware of the fact that the plaintiff had
filed for registration of MAAZA trademark in Turkey. On September 7, 2008 the
defendant sent the plaintiff a legal notice repudiating the Licensing Agreement
thereby ceasing the plaintiff from manufacturing MAAZA and using its trademarks
etc. directly or indirectly, by itself or through its affiliates.
As per the
plaintiff, the notice claimed that the plaintiff had breached the said agreement
by attempting to register MAAZA in Turkey as the agreements/assignments between
the parties allowed the plaintiff to use MAAZA in India alone. The notice also
stated the defendant’s intention to start using the trademark MAAZA in India.
The plaintiff subsequently filed a law suit.
- Does the High Court of Delhi have jurisdiction to deal with the matter
in this particular case?
- Is the Plaintiff entitled to get permanent injunction and damages for
infringement of trade mark and passing off?
- The defendant prayed for the vacation of this court's order dated 15
October, 2008. The objection was mainly on the ground that this court lacks
jurisdiction to hear the present suit. The reasons of plaintiff in the
plaint to state that this court has jurisdiction are that the defendant is
carrying on business within its jurisdiction, the plaintiff has further
supplemented his submissions by adding that the license agreement dated 13th
May, 2004 has originated within the jurisdiction of this Court. A newspaper
report showing the defendant intention to use the trademark MAAZA in India has been published in
the Delhi edition of Times of India.
The defendant has a factory in Delhi from
where the defendant is operating a sales and distribution infrastructure similar
to that in Mumbai and has an extensive market share in and around Delhi. Further
it is alleged that Mr. Ramesh Chauhan, who is the person with whom the
correspondence was exchanged and who has now been impleaded as defendant, is
residing in New Delhi. The court has jurisdiction to entertain the suit for
infringement of trademark under Section 134 (2) of the Trademark Act, 1999 and
Section 20(c) of the Code of Civil Procedure, 1908. The plaintiff is
commercially and deeply engaged in business in Delhi.
Therefore, there is no bar
under the said provision as the plaintiff is carrying on business by selling and
advertising its products within the territory of this court. The plaintiff has
argued that no one can dispute that the product of the plaintiff is available in
every nook and corner on extensive manner in Delhi under the trade mark MAAZA.
Since the court at this stage has to take the prima facie view of the matter and
see the averment made in the plaint, therefore in view of the mandate of Section
134 (2) of the Act, there is no bar against filing this suit in Delhi and having
Similar issues of jurisdiction has been dealt with in the case of Tata Iron &
Steel Co. Ltd. v. Mahavir Steels & Ors.; 47(1992) DLT 412 and LG Corporation &
Anr. v. Intermarket Electroplasters(P) Ltd. and Anr.; 2006 (32) PTC 429 held
The question as to whether the Court has territorial jurisdiction to
entertain a suit or not has to be arrived at on the basis of averments made in
the plaint, that truth or otherwise thereof being immaterial as it cannot be
gone into at this stage.
- The grounds on which the plaintiff established that the defendant had an
intention to use the mark as appeared from its notice and as per newspaper
reports published in the Delhi edition of Times of India. The plaintiff’s
argument that the defendant has a factory at 66, Shivaji Marg, New Delhi clearly
states the misconduct. In accordance with its own admission in the present
application, the defendant also has a place of business in Delhi where it is
bottling water there and that its registered office is in Mumbai are facts of no
The invoices filed by the Local Commissioner which were recovered
from M/s.Varma International show that the latter has been exporting MAAZA
products to one Mr. Pars Ram Fruit and Spices in Australia. The Local
commissioner has also filed various documents issued by one M/s. MAAZA Beverages
Inc., New York pertaining to the purchase of MAAZA drinks which were addressed
to M/s. Parle Bisleri Pvt. Ltd.
This is further established from the certificate
of registration of MAAZA issued by the Trade mark office, Australia in the name
of M/s. Pars Ram Bros, Australia Pvt. Ltd. M/s. Varma International has admitted
during the course of the hearing that the said firm has been receiving orders to
manufacture beverages under the trade mark MAAZA and defendant has regularly
been exporting products under the mark MAAZA on a large scale. it is established
that the defendant no. 1 not only had the intention to use the trade mark MAAZA
but in fact, directly or indirectly, the defendant was involved in the said
activities with other firms/companies.
It is well settled law that exporting of
goods from a country is to be considered as sale within the country from where
the goods are exported and the same amounts to infringement of trade mark as per
section 29 of the Trade Marks Act, 1999. The plaintiff is the registered owner
of the trademark MAAZA.
Finally in the light of the above stated reasons the Hon’ble Court granted an
interim injunction against defendant. The court said that there is a prima facie
case in favor pf plaintiff and also the balance of convenience also lies in
favor of the plaintiff only and if the injunction is not issued the plaintiff
will suffer irreparable loss and injury.
Therefore the repudiation of the agreement by the defendant was invalidated by
the court of law and all the trademark rights of MAAZA were given back to the
The Trademark is a unique symbol or word(s) used to represent a business or its
products. Once registered, that same symbol or series of words cannot be used by
any other organization, forever, as long as it remains in use and proper
paperwork and fees are paid. As the definition explains what trademark is, the
present case is an elaboration to the definition of Trademark. If a trademark is
licensed by a corporation, no other corporation may use it, or it may constitute
It was a similar situation in the present case where the defendant sold all the
rights of the trademark to the plaintiff but still used it, resulting in a
trademark infringement suit. The present case is a landmark case concerning
patent infringement. The issues raised were of the jurisdiction and
infringement. But this case has made it evident that the Trademark is a global
phenomenon and it protects proprietors across boundaries.
Also, this case has made it clear that a trademark of any organization can be
registered anywhere once there is an assignment conferring the rights entirely,
be it within the country or outside of it. The judgement laid the groundwork for
several similar decisions where separate companies that have rights over the
same goods in different nations will supply products to the same manufacturers.