FACTS:

The plaintiff (Coca-Cola company) is the largest soft drink brand in 200 countries and, in this case, the defendant (Bisleri International Pvt Ltd) is a popular Indian brand that is well known for its bottled water. On 18th September, 1993, the defendant sold to the plaintiff, Intellectual Property Rights (IPR) of THUMBS UP, GOLD SPOT, CITRA, and MAAZA. The IPR included trademarks and rights to the formulation, and goodwill rights, etc. This case deals only with the product MAAZA.

In November 1993, the parties signed a proclamation agreement to resolve the following MAAZA agreement. The MAAZA Licensing Agreement between the petitioner and Golden Agro Products PVT was concluded in October 1994. In this case, the petitioner embodied that all the trademarks, formulation rights, etc.. were irreversibly conveyed to him.

The defendant learned in March 2008 that MAAZA’s trademark had been registered by the plaintiff in Turkey. The interlocutor sent the plaintiff a notification in September 2008 denying the Licenses Agreements and thus preventing the petitioner from making MAAZA by himself/herself or through his/her partners using their trademark directly or indirectly. The notice sent by the defendant to the plaintiff suggested the intention of the defendant to use MAAZA Trademark in India.

 

ISSUES RAISED:

1. Whether the Delhi High Court has the jurisdiction to take up the matter in this particular case?

2. Whether the export of the products with the trademark “MAAZA” can be considered as an infringement in the exporting country?

3. Has some trademark infringement or passing off taken place?

4. Whether the petitioner has the right to a permanent order?

 

LAW APPLICABLE:

Section 26 of The Trade Mark Act 1999 states that where a trademark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trademark during one year, next after the date of the removal, be deemed to be a trademark already on the register, unless the tribunal is satisfied either

(a) that there has been no bona fide trade use of the trademark which has been removed during the two years immediately preceding its removal; or

(b) that no deception or confusion would be likely to arise from the use of the trademark which is the subject of the application for registration because of any previous use of the trademark which has been removed.

 

JUDGEMENT:

The Court decided, in compliance with Section 41(h) and(l) of the Specific Relief Act, 1963, the deed of assignment to be a legally binding agreement between the parties to the contract. Contractual terms and conditions can be repudiated only if any party continues against the contractual terms and conditions. It means, therefore, that the aggrieved party can only sue for damages in case of breach of a contract. In this case, the defendant had signed an agreement to convey to the plaintiff all IPRs and their associated rights of Trademark  MAAZA.  These rights are specified and absolute, and the defendant had no right to have the contract terminated or dismissed.

The day on which the contract was signed between the defendant and the plaintiff was the day on which all trademark rights were transferred from the defendant to the plaintiff.

The plaintiff is the owner of the mark after the trademark transfer, and so he can determine what to do with it. They do not have to notify the defender or consider their authorization to use the MAAZA trademark.

The plaintiff has the right to register the trademark held by him for use in or outside India when an agreement deed is signed.

The court stated 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.

Delhi High Court is competent to entertain the question because the defendant was manufacturing and exporting the commodity with the MAZAA trademark from India. The provisional injunction against the defendant has been issued not to use the mark either in India or abroad.