In this case between Coca Cola Company vs Bisleri International Pvt Ltd plaintiff contended that there is an infringement of trademark within and outside the jurisdiction from where the brand trade. Here the question arises is that what amount to the infringement of Trademark if one decides to go outside the territorial limits of the country to do business with the same Trademark.1
Facts of The Coca Cola company vs Bisleri International Pvt Ltd
Coca Cola company which is the largest brand of soft drinks in more than 195 countries and appoint bottlers and grant license to them to use specific Trademark for the sale of the product.
They filed a petition for permanent injunction and damages for passing off and infringement of Trademark against Bisleri International Pvt Ltd.
The plaintiff (Coca Cola Company) purchased and acquired the rights to formulate, intellectual property rights and goodwill attached to the trademark ‘MAAZA’ from Bisleri International Pvt Ltd(Defendant) an Indian beverage company best known for bottled water in 1993.
In the process of acquisition of MAAZA by Coca Cola
- The plaintiff and defendant had signed a Deed of Assignment for assignment of trademark MAAZA for One Million USD.
- Goodwill for consideration of 50,000 USD has been assigned in Deed of Assignment.
- The know-how was transferred for a consideration $1,000,000
- Non-Compete and no use agreement was signed between the plaintiff and defendant Mr Rajesh Kumar and his wife as both are the owners of the secret formula base of MAAZA for consideration of $1,000,000.
- The agreement on the license with Bisleri formerly called Golden Agro Products Pvt. Ltd. was also signed.
- An agreement was also signed for relinquishment and compensation of franchise rights.
- The License Agreement for the total and permanent transfer of all IPR to the plaintiff forever was executed by all parties in October 1994.2
The defendant had filed for the application for registration of Trademark MAAZA in Turkey in 2008 and after that, they started exporting their product with trademark MAAZA.
When defendant filed for the trademark in turkey, they relied on the notion that Agreement signed for the use of MAAZA was only in India and not for export purposes.
The plaintiff when became aware of the situation filed suit against the defendant.
Issues Raised in The Coca Cola company vs Bisleri International Pvt Ltd
Issues raised between the plaintiff and defendant are as follows:
- Is there any infringement of the Trademark or passing off?
- Does Delhi High Court have jurisdiction over the matter?
- Does the plaintiff is entitled to get a permanent injunction?
Arguments raise in The Coca Cola company vs Bisleri International Pvt Ltd
On behalf of the plaintiff, it was argued that concerning Indian market Trademark MAAZA was assigned to the Coca Cola and any manufacturing of the product with trademark MAAZA whether for sale in India or export purposes will be considered as an infringement.
On behalf of the defendant, it was argued that the product was sold in Turkey not in India so they are not infringing the plaintiff’s rights.
It was further argued that the trademark MAAZA was registered by the defendant worldwide so they can sell the product with that mark anywhere on the earth.
Judgment of The Coca Cola company vs Bisleri International Pvt Ltd
After hearing the arguments of both the sides, the court decided that,
- Deed of assignment is a legal and binding agreement between the parties to the contract. The terms and conditions of the contract can only be repudiated when any party action against the terms and conditions of the contract. So it means that only in case of breach of contract the aggrieved party can sue for damages.
- In this case, the defendant had signed an agreement to convey, transfer and assign all IPR and its pertaining rights of the Trademark MAAZA to the plaintiff. These rights are fixed and absolute and the defendant had no right to claim to cancel or repudiate the contract.
- The day when the agreement was signed between the defendant and plaintiff was the day when all the rights to the Trademark were transferred from defendant to plaintiff.
- After the transfer of the Trademark, the plaintiff is the owner of the mark can decide on what to do with it however they want. There is no need for them to inform the defender or to take their permission to make use of the trademark MAAZA.
- When a deed of assignment is signed then the plaintiff has the right to register the trademark owned by them for use within or outside India. Because in the eyes of the law they are the assigned proprietor of the trademark, know-how, formulation, goodwill, etc.
- The defendant had signed a confidentiality and non compete agreement with the plaintiff which means that they can not use, offer, assign and convey the formula, trademark etc to another person.
- They are bound by the agreement to cease from carrying out any action which may cause an infringement of the Trademark.
All these actions of the defendant about the trademark are covered under section 26 of the Trademark Act 1999.
It was held by the court that when goods are exported from the country, it will be considered as a sale within the country from where the goods are exported and the same amount of trademark infringement will be considered.
As the defendant was manufacturing and exporting the product with the trademark MAZAA from India, Delhi High Court has jurisdiction to entertain the matter. The interim injunction has been granted against the defendant to not use the trademark either in India or abroad.
Conclusion of The Coca Cola company vs Bisleri International Pvt Ltd
In this case, it was concluded that the Trademark is one of the various aspects of Intellectual Property rights. It covers brand name and business-related aspects etc. Any individual or company who use the same name or concept as others to confuse people or to get benefited from there goodwill are an infringer of the trademark.
Trademark is a global phenomenon and protect the proprietor across the world. It does not matter where or who the assignee is once it got assigned proprietor has all the right related to it.
In this case, also the decision was given in favour of the plaintiff because the defendant is using the trademark MAAZA thinking that agreement signed by them with the plaintiff is only valid in India, so if they export their product they are not violating any rights and law.
Court has granted an interim injunction against the defendant asking them to stop all the manufacturing and usage of the Trademark MAAZA with immediate effect because after signing the Deed of assignment with plaintiff they don’t have any right on the trademark. Plaintiff is the registered proprietor in the eyes of the law.