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Stay of Suit for Passing off - not maintainable

  01 December 2010       Share Bookmark

Court :
Delhi High Court
Brief :

Citation :
Lowenbrau Ag And Anr vs Jagpin Breweries Ltd



1. This Order will dispose of the application for interim injunction, I.A. No.

11355/2007 and the application for vacation of the ex parte interim injunction

order, IA No.13772/2007.

2. Lowenbrau AG and InBev India International Pvt. Ltd. (hereinafter collectively referred to as the plaintiffs, for short) have filed the present

suit for permanent injunction, rendition of accounts, mandatory injunction in

form of delivery up against Jagpin Breweries Ltd and Lowenbrau Buttenheim

(hereinafter collectively referred to as the defendants, for short). The

plaintiffs claim exclusive right to use the mark/word ?LOWENBRAU?, device of

lion and seek a restraint order against the defendants from using the mark

?LOWENBRAU?, device of lion or any other trade mark or device mark identical or

deceptively similar. By an ex parte injunction order dated 3rd October, 2007 the

defendants have been restrained from manufacturing, selling and advertising

under the mark/word ?LOWENBRAU?, device of lion or any other trade mark/device

mark identical or deceptively similar to the said mark or device.

3. Lowenbrau A.G., plaintiff no.1 and Lowenbrau Buttenheim, defendant no.2 are

entities incorporated under the laws of Germany. Both of them manufacture beer,

which is sold in Germany and other countries. The beer manufactured by the

plaintiff No.1 is sold under the mark/name ?LOWENBRAU? with or without other

word/mark, while the beer manufactured by the defendant no.2 is sold under the

mark ?LOWENBRAU BUTTENHEIM? along with other words/marks in Germany and other


4. Both the plaintiff no.1 and the defendant no.2 claim substantial turnovers

and sales in Germany and other third countries. There is also no dispute that

the plaintiff no.1 and defendant no.2 are not presently involved in any litigation on the right to use the mark/word ?LOWENBRAU? in any country except

in India. Both parties agree that there was litigation in Germany in respect of

right to use the mark/word ?LOWENBRAU? which was decided more than 100 years

back in 1903 in favour of the defendant no.2. It was held that the mark/word

?LOWENBRAU? cannot be monopolised as there were a number of breweries in Germany

who had been using the said word/mark for a long time and therefore the mark/word ?LOWENBRAU? cannot be used to differentiate beer of one brewery from


5. Faced with the above factual background, the plaintiffs have based their

claim/cause on infringement of the registered mark/word ?LOWENBRAU? and their

statutory rights under the Trademarks Act, 1999 (hereinafter referred to as the

Act, for short). It may be however noticed that the cause title of the plaint

states that the suit of the plaintiffs is both for infringement and passing off.

6. The plaintiff No.1?s mark/word ?Lowenbrau Export - Bier? was registered in

1960 with the disclaimer qua the mark/word ?LOWENBRAU? and device of lion.

Subsequently, the plaintiff No.1 got the mark/label ?Lowenbrau munchen? registered in India in 1972. In 1994, the plaintiffs got the mark/word ?LOWENBRAU? registered in India but this time without any disclaimer. Similarly

in 1969, the plaintiffs have got the mark black stylised lion registered in

India. In nutshell, the case of the plaintiffs is that the defendants cannot use

the mark/word ?Lowenbrau Buttenheim? as the plaintiff No.1 is the registered

proprietor of the mark/word ?LOWENBRAU? without disclaimer and therefore in

terms of the statute, i.e. the Act, the defendants have no right to use the

mark/word ?LOWENBRAU? in India. It was submitted that the use of the mark/word

?LOWENBRAU? by the defendants outside India is irrelevant and the defendants

cannot take advantage/benefit of territorial use of the mark/word ?LOWENBRAU?

outside India to defeat the statutory rights of the plaintiffs. The plea of

prior user, it was stated, is not available to the defendants as the mark was

used by the defendants for the first time in India in 1999 and on that date the

plaintiff No.1 was already the registered owner of the mark ?LOWENBRAU?.

7. At this stage, only interim applications for injunction/vacation have to

be disposed of on the basis of prima facie case, balance of convenience and

irreparable harm and loss. Factual disputes are a matter of trial and de-

registration/cancellation of registration of the mark/word ?LOWENBRAU? in favour

of the plaintiff No.1 is a matter to be decided by the Registrar and in appeal.

7. The Act including the earlier enactment Trade and Merchandise Marks Act,

1958 were enacted to provide for registration and better protection of trade-

marks and for prevention of use of fraudulent marks. The Act was also passed to

amend and consolidate the law relating to trade mark. Historically, protection

of intellectual property rights in form of trade- mark, etc. is a common law

right. The object of the trade mark legislations is to provide registration, to

confer certain statutory rights to enable the registered proprietor to sue for

infringement rather than merely passing off. The two rights, Common Law rights

and statutory rights are inter-connected and the test of deception remains the

same. The distinction between the two as explained by the Supreme Court in

Ruston Hornsby Ltd versus The Zamindara Engineering Company, reported in (1970)

2 SCR 222 is that in case of registration Courts are not required to examine

whether infringement is likely to deceive or cause confusion and actual deception or actual damage need not be proved. The test is whether the defendant?s mark is same or imitation of the registered mark. In case of passing

off Courts have to examine and decide whether the defendant is selling goods so

marked as to be designed or calculated to lead purchasers to believe that the

goods are the plaintiff?s goods.

8. Conscious of the Common Law rights, the statutory legislations relating to

trade-marks have protected unregistered owners of marks from action or claims by

registered owners. While conferring statutory rights, the Act consciously did

not affect right of action against any person for passing off or remedies in

respect thereof. There is no penalty for those who do not register their mark.

Section 27(2) of the Act reads as under:- ? No action for infringement of unregistered trade mark 1) xxx

2) Nothing in this Act shall be deemed to affect rights of action against any

person for passing off goods or services as the goods of another person or as

services provided by another person, or the remedies in respect thereof.?

9. It will be appropriate to refer to the observations of the Supreme Court in

The Registrar of Trade Marks versus Ashok Chandra Rakhit, Ltd reported in AIR

1955 SC 558 :

?8. The third thing to note is that the avowed purpose of the section is not to

confer any direct benefit on the rival traders or the general public but to

define the rights of the proprietor under the registration. The registration of

a trade mark confers substantial advantages on its proprietor as will appear

from the sections grouped together in Chapter IV under the heading ?Effect of

Registration?. It is, however, a notorious fact that there is a tendency on the

part of some proprietors to get the operation of their trade marks expanded

beyond their legitimate bounds. An illustration of an attempt of this kind is to

be found in In re Smokeless Powder Co.?s Trade Mark. Temptation has even led

some proprietors to make an exaggerated claim to the exclusive use of parts or

matters contained in their trade marks in spite of the fact that they had

expressly disclaimed the exclusive use of those parts or matters. Reference may

be made to Greers Ltd. v. Pearman and Corder Ltd. commonly called the ?Banquet?

case. The real purpose of requiring a disclaimer is to define the rights of the

proprietor under the registration so as to minimise, even if it cannot wholly

eliminate, the possibility of extravagant and unauthorised claims being made on

the score of registration of the trade marks.?

11. Section 28 of the Act while referring to rights conferred on registration begins with the words ?registration of trade-marks shall, if valid,

..... ?. Rights under Section 28 flow when the registration of the mark is

valid. Registration is only prima facie evidence of its validity (Refer, P.M.

Diesels Pvt. Ltd. versus Thukral Mechanical Works reported in AIR 1988 Del.


12. Section 124 of the Act reads : ?124. Stay of proceedings where the validity of registration of the trade

mark is questioned, etc.

(1) Where in any suit for infringement of a trade mark- (a) the defendant pleads that registration of the plaintiff's trade mark is

invalid ; or

(b) the defendant raises a defence under clause (e) of sub-section (2) of

section 30 and the plaintiff pleads the invalidity of registration of the

defendant's trade mark,

the court trying the suit (hereinafter referred to as the court), shall,-

(i) if any proceedings for rectification of the register in relation to the

plaintiff's or defendant?s trade mark are pending before the Registrar or the

Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the

plea regarding the invalidity of the registration of the plaintiffs or defendant's trademark is prima facie tenable, raise an issue regarding the same

and adjourn the case for a period of three months from the date of the framing

of the issue in order to enable the party concerned to apply to the Appellate

Board for rectification of the register. (2) If the party concerned proves to the court that he has made any such

application as is referred to in clause (b) (ii) of sub-section (1) within the

time specified therein or within such extended time as the court may for

sufficient cause allow, the trial of the suit shall stand stayed until the final

disposal of the rectification proceedings. (3) If no such application as aforesaid has been made within the time so

specified or within such extended time as the court may allow, the issue as to

the validity of the registration of the trade mark concerned shall be deemed to

have been abandoned and the court shall proceed with the suit in regard to the

other issues in the case.

(4) The final order made in any rectification proceedings referred to in

subsection (1) or sub-section (2) shall be binding upon the parties and the

court shall dispose of the suit conformably to such order in so far as it

relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of suit for the infringement of a trade mark under this section

shall not preclude the court from making any interlocutory order (including any

order granting an injunction, directing account to be kept, appointing a

receiver or attracting any property), during the period of the stay of the


13. A defendant can set up a defence challenging validity of registration

as provided in Section 124 of the Act but the civil court trying the suit is

mandated to stay the suit when in defence plea of invalidity of registration is

raised, to await outcome of the rectification proceedings and if no proceeding

is pending and the court is satisfied that the plea of invalidity is prima facie

tenable, adjourn the case for a period of three months from the date of framing

of the issues to enable the defendant to approach the authorities for rectification of the registration. Thereafter on filing of an application for

rectification trial in the suit is to be stayed till disposal of the rectification proceeding (see, Section 124(2) of the Act). Sub-section 4 of

Section 124 states that the suit will be disposed of on the basis of the order

passed by the authorities and the question of validity of registration will be

binding on the court. Sub-section (5) to Section 124, however, stipulates that

the civil court will be competent to pass an interlocutory order even when

procedure under sub-sections 1 to 4 is to be followed and order of the Registrar/authorities is awaited and the suit is stayed.

14. In view of Section 124(5) of the Act, this Court is competent to adjudicate and decide the interlocutory application for injunction. While

deciding the interlocutory application in view of language of Sections 28 and

124 of the Act, the Court is competent to take prima facie view on the question

of validity of registration of the mark in favour of either side. Merely because

the mark is registered, injunction will not automatically follow, when validity

of registration is questioned in the written statement/pleadings. While deciding

whether injunction should be granted or not, a tentative view is required to be

taken on the question of validity of registration and principles for grant of

injunction applied. However, final decision on validity of registration is to be

taken by the authorities and not by the civil court. Registration is prima facie

regarded as valid but mere registration alone is not conclusive and is not

binding on the civil court when the application for injunction is considered and

decided. Onus however, will be on the party which questions validity of registration to show that the registration is prima facie and tentatively bad or


15. Section 31 of the Act reads:- ?Section 31. Registration to be prima facie evidence of validity (1)In all legal proceedings relating to a trade mark registered under this Act

(including applications under 57), the original registration of the trade mark

and all subsequent assignments and transmissions of the trade mark shall be

prima facie evidence of the validity thereof. (2) In all legal proceedings, as aforesaid a registered trade mark shall not be

held to be invalid on the ground that it was not a registrable trade mark under

Section 9 except upon evidence of distinctiveness and that such evidence was not

submitted to the Registrar before registration, if it is proved that the trade

mark had been so used by the registered proprietor or his predecessor in title

as to have become distinctive at the date of registration.?

16. The said section has to read harmoniously with Sections 28 and 124 of

the Act. At the stage of interim application the court is required to examine

question of validity. Registration is prima facie evidence of validity but not

conclusive even at this stage. Sub-section 2 to Section 31 of the Act, stipulates that registration of the mark will not be held to be invalid on the

ground that the mark could not have been registered under Section 9 of the Act

except upon evidence of distinctiveness and there was failure to submit such

evidence before the Registrar, provided evidence is filed in the legal proceedings to prove that the mark had acquired distinctiveness on the date of

registration. Legal proceedings will include Suits filed by the registered

owner of the mark against third parties. Section 32 of the Act, states that if a mark stands registered contrary to Section 9(1) of the Act and

registration is bad for lack of distinctiveness on the date of registration, the

party can defend the challenge by showing that they have acquired a distinctive

character after registration but before commencement of the legal proceedings.

These sections also show that question of distinctiveness can be examined at the

stage of grant of interim injunction by the courts.

17. Section 9(1) of the Act is reproduced below:- ? 9. Absolute grounds for refusal of registration (1) The trade marks

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of

another person;

(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose,

values, geographical origin or the time of production of the goods or rendering

of the service or other characteristics of the goods or service; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established

practices of the trade,

shall not be registered:

Provided that a trade mark shall not be refused registration if before the

date of application for registration it has acquired a distinctive character as

a result of the use made of it or is a well-known trade mark.?

18. Thus whether there was violation and failure to meet conditions of Section 9(1) of the Act, can be examined and a tentative opinion formed by the

court for deciding the interim application.

19. One of the grounds on which registration of a mark can be challenged

is fraud. Fraud with reference to registration of trade mark has been interpreted by Bombay High Court in Indo Pharma Pharmaceutical Works Pvt Ltd

versus Farbenfabriken Bayer Aktiengesel reported in 1976 Bom.L.R. 1972 to mean


?What is meant by fraud in the context of S.32(a) has not been precisely

defined. It might be a fraud for a person to procure registration of a trade

mark of which he knows he is not entitled to claim the exclusive use for

instance, if he knows that it is in use by another trader if an applicant is

aware that there is another party, who ought to be registered, the assertion may

be regarded as a deliberate attempt to deceive the Registrar which would amount

to fraud such as to prevent registration in Part A from becoming conclusive

after seven years.?

20. It is an admitted case of the plaintiffs that the registration granted

in 1960 was subject to disclaimer qua the mark/word ?LOWENBRAU? and the device

of lion. There is hardly any evidence or material placed on record by the

plaintiffs to show and establish that the plaintiffs had started extensive

marketing of their product (beer) in India and the mark/word ?LOWENBRAU? came to

acquire distinctiveness and association with the plaintiff No.1 and disclaimer

was withdrawn. Therefore withdrawal of disclaimer/condition in 1994 (or 1972 as

alleged in the plaint) cannot prima facie be justified. The plaintiffs have not

given their sale figures in India for the period 1960 onwards. Intermittent and

minuscule sales in duty free shops, select hotels in the facts of the present

case are not sufficient to create and establish distinctiveness.

21. It is the case of the defendants that registration in 1972 was in respect of label ?Lowenbrau Munchen? and the said contention appears to be

correct. On 18th Oct.,1994 the word/mark ?LOWENBRAU? was registered without any

disclaimer in favour of the plaintiff No.1 with their particulars mentioned in

the certificate as ?Lowenbrau AG (a company duly organised under the laws of

Germany) Nymphenburger Strasse 4D-80335 Munchen Germany, manufacturer and

merchant?. At the same time, the 1960 registration with disclaimer on ?LOWENBRAU? and device of lion still continues and has been repeated extended.

22. The defendants to question validity of the registration and violation of

Section 9(1) of the Act, in addition to disclaimer made/admitted by the plaintiff No.1 themselves, have evidence in form of judgment of a competent

court in Germany in which the plaintiff no.1 was denied exclusive right to use

the mark/word ?LOWENBRAU?. The defendants have also placed on record ample

evidence to show that the mark/word ?LOWENBRAU? is extensively used by several

brewers of beer in Germany. It is not only the plaintiff no.1 and the defendant

no.2 but there are several others who are using the said mark for beer. The

mark/word ?LOWENBRAU? does not distinguish or distinctive of the plaintiffs, the

defendants or any of the parties dealing with beer. Users of the said mark/word

or the source, is distinguished by addition of other words or use of suffix or

prefix with the word ?LOWENBRAU?. There is no evidence that selective availability of the plaintiffs or the defendants products in duty free shops,

exclusive hotels etc. in India in the present case was sufficient to create

distinctiveness qua them in respect of the mark ?LOWENBRAU? in India. The trans-

border factor and distinctiveness has been examined alongwith the issue of prior


23. Prior user and honest and concurrent user are good defences to a suit

based on action for infringement of the registered mark.

24. Section 34 of the Act stipulates that a registered user or proprietor

cannot interfere with or restrain a third person from using a mark identical or

resembling the registered mark which he has continuously used from a date prior

to the plaintiff?s first use or from the date of registration, whichever is

earlier. Who had first used the mark/word ?LOWENBRAU? in India is a disputed

question of fact. Extent, quantum and nature of sale to claim and justify prior

user rights is a mixed question of law and facts. Plaintiffs have not stated

their total turnover in India. Defendant no.2-Company was incorporated in the

year 1999. Subsequently it entered into a joint venture agreement with defendant

no.1 for manufacture of beer under the mark/word ?LOWENBRAU BUTTENHEIM? in

India. It is the case of the defendants that it has been selling beer under the

mark/word ?LOWENBRAU BUTTENHEIM? in India since 1999 and in 2003 the licence was

granted to defendant no.1 by the Excise Department also. It is also the case of

the defendants that beer under the mark/word ?LOWENBRAU BUTTENHEIM? was sold in

India earlier also. Sales of the defendants it appears are substantially higher

than the sales of the plaintiffs.

25. Learned counsel for the plaintiffs had submitted that prior user in India alone is the determining factor and user outside India is not relevant for

Section 34 of the Act. This is disputed by the defendants. This legal proposition cannot be answered in absolute terms which will be universally

applicable. Answer depends upon facts of each case, extent of use in time,

quantity, area of use, whether the mark has become common to trade, or to a

geographical source/origin etc.

26. As per the plaintiffs the mark/word ?LOWENBRAU? in German stands for

lion?s drink or drink of a lion. The defendants however claim that the said

words in German also stands for house of beer. In Germany it is commonly used

for beer and German beer is sold world over by the said name.

27. Both parties are German Companies. Both of them have been using the mark/word ?LOWENBRAU? all over the world and are distinguished by other mark/word on their label/mark and not by use of the mark/word ?LOWENBRAU? or

device of lion. In the present case, two international brands, both of Germany

origin and marketing and selling beer across the world, want to expand and

market beer in India. In these circumstances the position as it exists abroad

and usage abroad cannot be ignored. The mark/word ?LOWENBRAU? has been extensively used in Germany for beer and even the plaintiffs do not deny that it

has become descriptive and generic word in the said country and other places

where German beer is sold and consumed. The mark/word ?LOWENBRAU? is a part of

public juris in Germany and in most countries with German beer and is not

distinctive of a particular manufacturer. In view of this factual background,

including the litigation in Germany, I do not think in the present case, the

question of prior use can be judged or decided on the basis of user in India

alone. Indian market is opening up and foreign or multinational brands have

moved and/or are likely to move. Similarly, Indian brands are likely to move out

and expand into markets abroad. National and manmade borders and boundaries are

gradually getting diluted and the entire world is now seen as a common market.

It may not be, therefore, proper to ignore ground realities and position in the

home country and abroad in the present case specially when there is ample

evidence and material to show that the mark/word ?LOWENBRAU? is public juris and

a generic word standing for ?German beer? and is not distinctive for any source.

Trans-border reputation has been accepted and recognised in India even when the

products are not being marketed and sold in India. It is clarified that in a

given case prior user in India may be relevant for applying Section 34 of the

Act, depending upon parties involved, nature and type of the mark, its adoption

and extent and nature of use abroad etc. Each case therefore may have to be

decided on its own merits and factual background. In the present case however

while applying Section 34 of the Act, the position as prevailing in the parent

country and abroad should not be ignored and the prior user has reference to

user in India and abroad. Plaintiffs cannot claim different treatment and rights

in India viz. the entire world where both parties are using the mark/word

?LOWENBRAU?. It will be unjust and unfair.

28. Aktiebolaged Jonkoping Vulcean versus S.V. Palanichany Nadar and others, reported in AIR 1969 Cal. 43, relied upon by the plaintiffs is distinguishable. In the said case the appellant therein was a Swedish Company

that was earlier marketing safety matches under the registered mark ?Three

Stars? but due to Government policy was prohibited from selling safety matches

in India. The Indian company had sought cancellation of the registration of the

mark on the ground of non-user. In that context reference was made to English

decisions to decide the question whether non-use of the trade-mark was due to

special circumstances. The Court also examined the question of abandonment with

reference to non-user. It was observed that while examining the question of

cancellation of registration, use and advertisement abroad, outside the territory of India is not of assistance. It was further held that the trade mark

law is a municipal law which is not extra territorial in nature and is confined

to territorial limits of India. The question involved in the said case related

to cancellation of registration in India. In the present case however, the

question relates to the common law rights of the defendants and the extent to

which these are protected under the Act. If the proposition or the claim of the

plaintiffs is to be accepted then even a claim under common law rights of

passing off based on trans-border reputation cannot be accepted. Trans-border

reputation is accepted and is a legal right which can be enforced in India.

Section 34 of the Act accepts common law rights of an unregistered user of

identical or resembling trade mark, provided he is a prior user. It may noticed

that the English Law on trans-border reputation when the foreign manufacturer

does not have business interest in the said country is somewhat different.

Goodwill is treated local and advertisements in periodicals, media, internet and

travel abroad were not considered sufficient in many cases. Normally the English

Court?s insist on a minimal business interest in the said country. (See, pages

456 to 462 in Kerly?s Law of Trade Marks and Trade Names, Fourteenth Edition).

29. Concurrent and honest user was a valid defence against an action for

infringement under the Trade Mark and Merchandise Marks Act,1958. Legal rights

of a third party to use a mark without causing infringement of a mark registered

under the said 1958

Act, is protected under Section 159(5) of the Act. Defendants will be entitled

to benefit and defend this action relying upon honest and concurrent use. Even

otherwise Sections 9(1), 30(1) and(2) and 35 of the Act do recognise honest

concurrent use and on the conditions mentioned therein being satisfied, defend a

suit for infringement. Honest and concurrent user is always recognised as a

defence to action alleging infringement.

30. Section 30 (1) of the Act stipulates that a person cannot be prevented

from using a registered trademark provided the use is in accordance with honest

practices in industrial or commercial matters and does not take unfair advantage

of or is detrimental to the distinctive character or repute of the trade mark.

Similarly Section 30(2) of the Act permits use of trade mark in relation to

goods or services indicating quality or geographical origin. Section 35 of the

Act also protects a person, who bonafidely uses a mark, which describes character or quality of his goods or services. It is the contention of the

defendants that word ?LOWENBRAU? has become synonymous with beer of German

origin and source. The defendants have filed substantial evidence and material

in support of the said contention. The defendants have prima facie established

that the mark ?LOWENBRAU? is being bonafidely used by them and some others all

over the world and is bona fide description of the character or quality of the

goods i.e. the beer, manufactured by a German company or German Beer. Honest and

concurrent user outside India by the defendants and others is practically

admitted by the plaintiffs. For the reasons stated above, in the facts of the

present case honest and concurrent user outside India alongwith the plaintiffs,

without any objection for last 100 years, is a valid defence when both parties

want to expand into India. Reference in this regard can be made to the decision of this Court in SPL Ltd. Versus Himalyan Drug Company Limited reported

in 1997 (67 DLT 803) in which it was observed : ?Any symbol, word or get up commonly used by traders in connection with their

trade and in respect of which no particular trader can claim an exclusive right

to use may be considered common to that particular trade, or public, juris.

Further words, expressions, or devices which are descriptive of particular goods

are open to use by all persons engaged in the trade. Such matters which are

generally of a non distinctive character may or may not be in actual use at any

particular time. What is important is that the trading public has a right to use

them in connection with their business.

21. Whether a matter is or is not common to the trade is a question of fact. A feature which is common to one trade may not be so to a different trade.

Similarly a mark may continue to be trade mark in some countries and public

Jurisdiction in others. A mark which was common to the trade at one time may in

course of time become distinctive and vice versa. A word or words used by a

number of firms as part of their designation may be considered as words in

common use (See: Law of Trade Mark and Passing Off, P. Narayanan, 4th Edn., para


31. The above facts also reveal that the balance of convenience does not

justify grant of interim injunction. The defendant no.1-Company was incorporated

in 1999 and the defendant no.2 has been marketing their products since 2003-04.

In the first year the sales were more than 9000 cases, which increased to more

than 68000 cases in 2004-05. In 2005-06 its sales came down to more than 9000

cases again to go up nearly 34000 cases in 2006-07. The plaintiffs filed the

present Suit in October 2007, after the defendants had already set up their

factory and started marketing their products. The plaintiffs are yet to start

production in India and their turnover in India is not disclosed. The defendants

have pleaded acquiesce and estoppel alongwith delay. Both the parties are

Germans and have been marketing their products world wide using the mark/word

?LOWENBRAU? without objection from the other. The balance of convenience does

not therefore support the plaintiffs? claim for grant of injunction. If both the

parties can sell beer all over the world with the common mark/word ?LOWENBRAU?

but can be distinguished from each other, there is no reason/cause why they

cannot concurrently sell beer in India using the same mark/word ?LOWENBRAU?.

There are other distinguishing features in their marks and labels to separate

them. There are no special grounds or reasons why a consumer of beer in India

will not be able to distinguish between the two beers and will be deceived.

Plea of passing off cannot be sustained.

32. In view of the above findings, the ex parte stay order is vacated. I.A. No.11355/2007 is dismissed and I.A. No.13772/2007 is allowed. The defendants will be also entitled to cost which is assessed at Rs.20,000/-.

Observations and findings in this order are tentative/prima facie and will not

be binding on the Registrar and appellate authorities under the Act and the suit

will be decided without being influenced by the present findings. List before the regular Bench for further orders/directions on 28th January, 2009.

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