Expansion of Trade Boundary does not amount to Trademark infringement

Kandeep Shravan | SASTRA Deemed to be University | 16th July 2020

The Coca-Cola Company vs Bisleri International Pvt. Ltd.

Facts:

The plaintiff is the largest brand that provides soft drinks all around the world and operating in around 200 countries. The plaintiff allowed franchising, appointed bottlers and licenses were granted to them for specific use of trademarks concerned with the sale of beverages. The 1^st defendant used to be a subsidiary company of Parle Group. The defendants have sold the trademarks, know-how, formulation rights, intellectual property rights of their beverage products which are namely: Thums up, Limca, Gold Spot, Citra and also Maaza to the plaintiff through an agreement entered in September 1993. However, the present suit is  filed in respect to Maaza alone. An agreement in November 1993 was entered by the plaintiff and the 1^st Defendant with regards to Maaza in which many assignments were made. The important ones being:

1. The Know-how was transferred at a consideration price of 100,000 USD.
2. Non-compete agreement with the owners and their wives. (Ramesh Chauhan, Prakash Chauhan)
3. Agreement of License with Golden Products Pvt. Ltd.
4. Assignment of Goodwill for a consideration price of 50,000 USD

The trademark rights of Maaza in other countries where it had been registered were preserved by the 1^st Defendant. In March 2008, the plaintiff filed for registration of Maaza trademark in Turkey. However, the 1^st Defendant was informed about this and a legal notice was sent to the plaintiff repudiating the license agreement which would thereby cease the plaintiff from manufacturing Maaza. The legal notice stated that there was a breach of contract committed by the plaintiff by attempting to register Maaza in Turkey as the agreement between the parties specified India alone. The plaintiff has filed the present suit in the High Court of Delhi claiming permanent injunction and also damages for trademark infringement.

Issues:

• Does the Delhi High Court have the jurisdiction to order a permanent injunction to the plaintiff in the present case?
• Whether there is an infringement of trademark or not?
• Whether the plaintiff committed any breach of contract?

Court’s Decision:

It was held that the High Court of Delhi has the jurisdiction to decide in this case whether there exists any infringement threat. It was held by the Court that an assignment deed is a document which is legally enforceable between both the contracting parties. A breach of contract is only when one of the parties act contrary or ultra vires to what is stipulated in the contract. In the present case there is no breach of contract as the defendant transferred the trademark rights of Maaza to the plaintiff and hence the plaintiff is the registered owner of the trademark “Maaza”. These set of rights were considered to be absolute and the defendant could not claim anything to renounce terms. The Court granted an interim injunction to the plaintiff to avoid irreparable losses. The defendant’s appeal was quashed.