A Thums Up in Protection for Coca-Cola's Well Known Marks

HK Avenue, 19, Swastik Society
Navrangpura
Ahmedabad - 380 009. INDIA
Phone : +91 79 26425258/ 5259
Fax : +91 79 26425262 / 5263
Email : info@hkindia.com
Web : www.hkindia.com

2123 , Stanford Avenue
Mountain View, CA 94040
United States of America
Tel. : 1 650 964 1434
Fax : 1 650 964 4857

A Thums Up in Protection for Coca-Cola's Well Known Marks

The Honorable High Court of Delhi granted an injunction in favour of the plaintiffs connected to the marks SPRITE, THUMS UP and FANTA being infringed with the use of marks, BRIGHT and FUNS UP by the defendant.

Plaintiff No. 1, the Coca-Cola Company, incorporated in the United States of America and No. 2, an authorized bottler of plaintiff No. 1, incorporated in India, filed a suit for injunction and damages for infringement of registered trade mark, against one Mr. K.M Salim, which interestingly also touched upon the issues of infringement of copyright, passing off and unfair competition.

Plaintiff No. 1, founded in the year 1886 is the world's leading manufacturer, marketer and distributor of non- alcoholic beverages, concentrates and syrups, used to produce nearly 400 beverage brands, with local operations in over 200 countries, including India. It is the owner and registered proprietor of several well known trade marks like SPRITE, THUMS UP, FANTA, COCA-COLA, COKE, MINUTE MAID, KINLEY, MAAZA etc. The defendant had adopted and was using the trade marks BRIGHT and FUNS UP, which were confusingly and deceptively similar to the registered trade marks SPRITE and THUMS UP, respectively. Further, the mark BRIGHT was also being used with a trade dress, confusingly and deceptively similar to that of SPRITE. Also, for its product FUNS UP, the defendant copied distinctive elements of FANTA label, comprising of a unique colour combination and distinctive style of writing. With these acts, the defendant was infringing the plaintiff's registered trade marks SPRITE and THUMS UP and was passing off and infringing the copyright in SPRITE and FANTA labels.

The plaintiffs came to know about the defendant's usage of trade marks BRIGHT and FUNS UP for their products in 2008 and with a letter in early 2009, the defendant was called upon to cease and desist from manufacturing, selling or offering for sale any goods under the offending labels and/ or trade dress which were confusingly and deceptively similar to plaintiff No. 1's trade marks. The defendant denied that the use of BRIGHT and FUNS UP violate the plaintiffs' rights in any manner, as it was a small scale industrial unit, in the State of Kerala, that wasn't a threat to the commercial giant plaintiff. Further, it contended that the plaintiffs' products were banned in the State of Kerala. Thereafter, in mid 2009, the defendant asked for an amicable settlement, being ready to make specific changes in the infringing marks. The defendant seemed to be taking positive steps, however, on making investigations into its activities in 2012, it was revealed to the plaintiffs that the defendant was still engaged in the manufacturing and sale of beverages bearing the infringing marks and in the same trade dress. Hence, this suit, where the statements filed by the plaintiffs have gone un-rebutted with no written statement from the defendant.

Plaintiff No. 1, proved sufficiently through various evidences, how it has earned a name so renowned, globally. It believes that a continuous and huge investment in advertisement and promotion of the brand names have only added to the glory of this prosperous corporation. The company's earliest registration in India for the trade mark SPRITE dates back to April, 1961, while that for THUMS UP is in November, 1973. It also holds a registration for the trade mark FANTA.

The Honorable High Court states, that owing to the enormous reputation that SPRITE, THUMS UP and FANTA have gained in India, they are categorized as 'well known' trade marks as defined in Section 2 (1) (zg) of the Trade Mark Act, 1999, thus enjoying the highest and widest degree of statutory protection. The court looked into the decision of Rolex Sa v. Alex Jewellery Pvt. Ltd. and ors., where it was held that a party cannot even come in the way of a consumer from a class not being able to afford a pricey product but who could still believe that the product has some relation to a well reputed company. Here, the defendant's use of the trade marks similar to those of the plaintiff, could cause confusion and deception in the minds of the consumer, enough to dilute the distinctiveness they carry which could further result in misappropriation of plaintiff's goodwill and reputation. The decision by European Court of Justice (ECJ) in Sabel BV v. Puma AG was appreciated, wherein it was held that the likelihood of confusion must be taken globally and is to be judged through the eyes of an average consumer who is supposed to be well informed and observant.

As regards to the infringement of copyright, the Court held that apart from being a civil violation, the use, imitation and reproduction also constitute a cognizable criminal offence under Sections 63 and 64 of the Copyright Act, 1957.

The Honorable High Court referred to decisions in cases initiated by the Coca- Cola Company, where it has been held that several parties seek to ride a piggy back, owing to the fame attached with the different trade names of the company. While dealing with the concept of cross- border reputation, the Court referred to N.R. Dongre v. Whirlpool Corporation and Apple Computer Inc. v. Apple Leasing & Industries, and held that the Indian legislature and judiciary have been generous enough to extend protection to name(s) or mark(s) of international corporations without the insistence that a particular plaintiff must carry on business in a jurisdiction before improper use of its name/ mark can be restrained by a Court.

Thus, the Honorable High Court of Delhi, protected the well known marks as well as copyrights in logo/label of the Coca-Cola Company, appreciating its global presence and proving well that the legislature and judiciary of India are well in place with regards to the Trade Mark Law and its intricacies.


----------------------------------------------------------------------------------------TOP

Contributed By : Hetvi Trivedi (Advocate)
   Designed By : Vikash Singh