UNDERSTANDING WITH CASES
PEPSICO, INC & ANR..... PLAINTIFFS
VERSUS
PSI GANESH MARKETING & ANR..... DEFENDANTS
DEFINING THE CASE
The plaintiffs have filed the present suit for
permanent injunction restraining violation
and infringement of rights in the trade
mark,
trade
name,
label
AQUAFINA,
infringement of copyright, rendition of
accounts,
dilution,
and
delivery
up.
Summons were issued in the suit on
29.01.2013
and
on
21.08.2013.
The
present case relates to the trademark
AQUAFINA and the illegal adoption and use
by
the
Defendant
of
an
identical
trademark/name/logo/label AQUA FIES for
packaged
drinking
water.
the
mark
AQUAFINA is a unique word coined and
adopted by the Plaintiffs and has been
exclusively used by Plaintiffs since 1994.
The adoption of the mark/logo/label AQUA
FIES by the Defendants is completely
illegal
and
unlawful
and
further
the
impugned mark/logo/label AQUA FIES of
LITERATURE REVIEW
the Defendants is identical to Plaintiffs
well-known and registered mark/logo/label
AQUAFINA.
Indias
obligations
under
the
TRIPS
Agreement for protection of trademarks,
inter
alia,
include
protection
to
distinguishing marks, recognition of service
marks, indefinite periodical renewal of
registration,
abolition
of
compulsory
licensing of trademarks, etc. With the
globalization of trade, brand names, trade
names,
marks,
etc.
immense
value
minimum
standards
have attained
that
of
require
an
uniform
protection
and
efficient procedures for enforcement as
were recognized under the TRIPS. In view
of
the
same,
consequential
extensive
amendment
review
of
the
and
old
Indian Trade and Merchandise Marks Act,
1958 was carried out and the new Trade
Marks Act, 1999 was enacted. The said Act
of 1999, with subsequent amendments,
conforms to the TRIPS and is in accordance
with
the
international
systems
and
practices.
Under the Trade Marks Act, both civil and
criminal
remedies
are
simultaneously
available against infringement and passing
off.
Infringement of trademark is violation of
the
exclusive
rights
granted
to
the
registered proprietor of the trademark to
use the same.
Passing of is a common law tort used to
enforce
unregistered
trademark
rights.
Passing off essentially occurs where the
reputation in the trademark of party A is
misappropriated by party B, such that
party B misrepresents as being the owner
of
the
trademark
affiliation/nexus
with
or
having
party
A,
some
thereby
damaging the goodwill of party A.
Registration of a trademark is not a prerequisite in order to sustain a civil or
criminal
action
against
violation
of
trademarks in India. In India, a combined
civil action for infringement of trademark
and passing off can be initiated.
The trademark is initially registered for a
period of 10 years, which is calculated
from the date of filing of the application
and in case of convention application, from
the date of priority. The registration is
required to be renewed within 6 months
before
the
date
of
expiry
of
the
registration, i.e., 10 years from the date of
the application or subsequent renewals.
The failure in renewing the trademark
within the stipulated period of time and a
grace period of maximum 1 year granted
for
restoration
of
the
trademark,
automatically leads to removal of the
trademark
from
the
Register
of
Trademarks.
An
aggrieved
application
person
before
the
may
file
an
Registrar
of
Trademarks or to the Intellectual Property
Appellate Board (IPAB) for cancellation or
varying the registration of the trademark
on the ground of any contravention or
failure to observe a condition entered on
the Register in relation thereto.
QUALITATIVE AND
The application for rectification can also be
QUANTITATIVE DATA
filed for removal of an entry made in
Register,
without
sufficient
cause
or
wrongly remaining on the Register and for
correction of any error or defect in any
entry in the Register.
QUALITATIVE :
On the basis of the documents placed on
record, the plaintiffs have established that
plaintiff
no.
is
the
owner
of
the
trademark, trade name, logo and label
AQUAFINA and the plaintiffs have the
exclusive right to use the same. Plaintiffs
have also established that they are using a
particular label in respect of their product
and said label was created for and on
behalf of the plaintiffs and that the said
label of plaintiffs is an original artistic work
that falls within the meaning of Section
2(c)
of
the
Copyrights
Act,
1957.
Plaintiffs have also established that on
account of enormous amount spent on
advertisement
of
AQUAFINA
packaged
drinking water in India, plaintiffs have been
able to generate vast turnover for years
and that during the past many years, the
plaintiffs have built up an unparalleled
reputation and goodwill with respect to
their trademark, trade name, label and
logo
AQUAFINA.
Plaintiffs
have
also
established that the trade mark AQUAFINA
used for packaged drinking water is highly
distinctive and is identified with plaintiffs
only. Plaintiffs have also established that
the defendants by using the trademark
AQUA
FIES,
deceptively
which
is
identical
and/or
similar
to
plaintiffs
mark
AQUAFINA, in respect of packaged drinking
water, are causing infringement of rights in
the
trademark
and
copyright
of
the
plaintiffs.
QUANTITATIVE :
A bench of Justice G S Sistani restrained
PSI
Ganesh
Marketing
from
using
"deceptively
similar"
trademark
'Aqua
Fies', causing infringement of rights in the
trademark and copyright. The court also
awarded damages to the tune of Rs 5
lakh to Pepsico India on account of
illegal
activities
of
PSI
Ganesh
Marketing and ordered destruction of all
the infringing goods within 4 weeks.
