By Tanvi Bhatnagar and Hashmeeta Sehgal
Single Bench of Delhi High Court, recently adjudicated upon an application for ad-interim injunction in a suit filed by Carlsberg Breweries A/S against Tensberg Breweries Industries Pvt. Ltd. & Ors, being CS (COMM) No. 646/ 2022, and dealt with the question of deceptive and phonetic similarity between the marks as well as the similar get-up of beer bottles and cans.
Facts of the Case:
Carlsberg Breweries AS (hereinafter referred to as the Plaintiff),claims to be one of the most popular brand across the world for alcoholic and non-alcoholic beverages and is widely known for its effervescent beer under the brand name ‘CARLSBERG’. The Plaintiff in order to protect its intellectual property rights applied and obtained various trademark registrations (word and device) for the mark ‘CARLSBERG’, the first registration of the Plaintiff dates back to 1949!
A list of registrations obtained for the famous ‘CARLSBERG’ is mentioned below:
The Plaintiff learnt that Tensberg Breweries Industries Pvt. Ltd (hereinafter referred to as the Defendant) was incorporated on July 22, 2022 and is engaged in the business of manufacturing and selling alcoholic and non-alcoholic beverages.
One Tensberg India JV i.e. Defendant No.3 applied for registration of registration of the mark ‘TENSBERG’ (hereinafter referred to as the impugned mark/label). Details of the applications are as below:
|Mark||Application No.||Date||User Claim||Class|
|TENSBERG||5426236||April 27, 2022||Proposed to be used||32|
|5427237||April 27, 2022||Proposed to be used||32|
- One Tensberg Microbreweries Pvt. Ltd. i.e. Defendant No.4, is incorporated on April 1, 2022 is engaged in the business of manufacturing and selling beer bearing the impugned mark/ label ‘TENSBERG.’ In IndiaDefendant No.5 was in the business of manufacturing, brewing and exporting beer under the impugned mark/label from Nepal to India, while Defendant No.6 is the Indian subsidiary registered on January 6, 2021.The present suit was filed by the Plaintiff claiming that there was deceptive similarity between the Plaintiff’s mark ‘CARLSBERG’ and Defendants mark ‘TENSBERG’ and they sought a decree of permanent injunction from restraining the Defendants from using the mark/label ‘TENSBERG’ among other reliefs.SUBMISSIONS ON BEHALF OF THE PLAINTIFF:The Counsel for the Plaintiff made the following submission for grant of ad-interim injuction in their favour:Plaintiff started the manufacturing the beer under the name ‘CARLSBERG’ in India in the year 2007 and started using the three- dimensional shape of a green opaque bottle with the word ‘CARLSBERG’ embossed around the bottle on the lower side since September 22, 2007 in India and the same was thereafter registered on February 13, 2022 under application no, 1653606 under class 32. The representation of the bottle is extracted below:
- Plaintiff’s marks appears in various variants of its beer, some of which include CARDINAL EDITION D’ETE, CARLSBERG 0.0% ALCOHOL FREE, CARLSBERG 1883, CARLSBERG 47, CARLSBERG CHILL, CARLSBERG ELEPHANT STRONG, CARLSBERG EXPORT, CARLSBERG KURVAND, CARLSBERG KURVAND CITRUS, CARLSBERG LIGHT, CARLSBERG, CARLSBERG NORDIC ALE, CARLSBERG NORDIC GYLDEN BRYG, CARLSBERG ORGANIC NONALCOHOLIC, etc. The pictures of Plaintiffs’ beers bottle/ can are as under:
- In the year 2019, Plaintiff’s beers reported volume sales amounting to approximately 112.5 hectolitres (where 1 hectolitre equals 100 litres). In India it showed an impressive growth of approximately 19% in the past two years, with its primary brands CARLSBERG and TUBORG accounting for about 18% of the market share. Globally, in the year 2019 the Plaintiff had an annual revenue of USD 9.879 Billion;
- Defendants have adopted deceptively similar mark and is marketing its beer in deceptively similar bottle so as to cause confusion in the minds of the general consumers. The similarities between the Plaintiff and the Defendants’ products are as under:
Trademark PLAINTIFFS TRADEMARKS/ LABELS DEFENDANTS TRADEMARKS/ LABELS CARLSBERG TENSBERG
- The above adoption of the trade mark and the trade dress by the Defendants is an infringement of the Plaintiff’s right and is dishonest, with an intention to encash upon the goodwill and reputation of the Plaintiff.
Subsmissions on Behalf of the Defendants
The Senior Counsel appearing on behalf of the Defendants made the following submissions before the Hon’ble Court:
- Plaintiff is guilty of misrepresentation and concealment of facts in the Plaint. The Plaintiff had the knowledge of existence of Defendants selling the beer under the impugned mark since 2019. To support its contention, the Defendants produced an order passed by the Department of Excise, State of Uttarakhand which granted the Defendants as well as the Plaintiff the permission to sell beer.
- The Defendants have been marketing its products under the impugned mark and packaging since 2018 and its average revenue sales have increased from Rs. 3,65,40,000/- in the year 2018-2018 to Rs. 14,44,60,800/- in the year 2021-2022 and Rs. 11,08, 37,250/- up to August 2022.
- Defendants have been advertising its product on YouTube and Facebook, which is within the knowledge of the Paintiff. Hence, since the Plaintiff has concealed material information from this Hon’ble Court, it is not a fit case for grant of ad-interim injunction;
- There are several other marks in which are also registered with the suffix ‘BERG’ and therefore, since the prefix of the two marks are different, there can be no cause of confusion between the two marks ‘CARLSBERG’ and ‘TENSBERG’;
OBSERVATIONS OF THE COURT:
After hearing the submissions of both the parties, the Hon’ble Court observed the following:
- Prima facie the mark Plaintiff’s mark ‘CARLSBERG’ and Defendants mark ‘TENSBERG’ appear to be deceptively and phonetically similar;
- There is no doubt that the Plaintiff is the registered proprietor and prior adopter of the mark ‘CARLSBERG’. The mark of the Plaintiff has been registered since the year 1949 and has been used/sold in India since the year 2007. Therefore, the Plaintiff has better rights than the Defendants, who have adopted the mark ‘TENSBERG’ only in 2018 and to date hold no registration for the same;
- Plaintiff has also registered the shape of the bottle since 2008. Prima facie the shape of the bottle and can adopted by the Defendants appears to be deceptively similar to that of the th Plaintiff.
- The Similarity between the packaging of both parties is – the same green colour of the bottle and the same green/white colour of the cans, the placement of marks, and the appearance of a deceptively similar crown.
- Beer bottles and cans are not bought with minute scrutiny but in a more casual manner. Therefore, by applying the test of an unwary consumer with imperfect recollection, the two marks and their trade dress, prima facie appear to be deceptively similar and likely to deceive and confuse such consumer;
- Delay in prosecution cannot be a ground to allow infringement to continue, provided the user of the offending mark is not honest and concurrent.
- The claim of Defendant that it has been advertising its products on Facebook and YouTube, is not sufficient to deny Plaintiff its statutory rights.
- The submission of the Defendant that there various marks are registered with the suffix ‘BERG’ cannot be accepted as the present case is not only for the use of the mark alone but also for get-up of the product, which prima facie indicates the intent of the Defendants to ride upon the reputation and goodwill of the Plaintiff, thereby causing confusion and deception to the mind of unwary consumers;
- No impact of the proceedings that took place in Nepal, since the present case will determine the rights of the parties by way of use of the mark in India;
DECISION OF THE COURT:
After observing the above submissions, the Hon’ble Court directed that the Plaintiff has a good prima facie case in its favour and the balance of convenience is also in their favour. Further, the Defendants have not been able to clearly show its presence in other parts of country except Uttrakhand. Therefore, the Hon’ble Delhi High Court granted ad-interim injunction in favour of the Plaintiff and restrained the Defendants from sing the mark/ label ‘TENSBERG’ among other reliefs.