The coca-cola company vs. Bisleri international Pvt. Ltd.

Author of this article is – Soni (BALLB from BPSMV )

This article will tell you all about this landmark case of IPR related to Trademark.

Name of the case –

The coca-cola company vs. Bisleri international Pvt. Ltd.

Name of the court :-

High Court of Delhi.

Plaintiff :-

 The coca-cola company.

Defendant :-

Bisleri international Pvt. Ltd.

Bench:

Justic Manmohan singh.

Date of judgement :-

20/10/2009

Introduction :-

•The parties to this case contended on infringement of trademark, within and outside the jurisdiction where the brand trades.

•The bisleri International Pvt. Ltd. is defendant in this case, is a well known brand in India ,which is highly known for its water bottle.

•The coca-cola company that is plaintiff was assigned the trademark “MAAZA” by the defendant company Including intellectual property rights and goodwill associated with Mark on September 12,1993.

•Because of this plaintiff had got the right to sell the product with the mark “MAAZA” within the territory of India.

•Later, in 2008 the plaintiff applied for registration of trademark in Turkey.

•After got this information the defendant sent a legal notice to the plaintiff,

•This notice said that the plaintiff had breached the agreement by attempting to register it in Turkey.

•This case is also known as the famous MAAZA War between the two famous beverage industry of India

Facts :-

The plaintiff is the coca cola company has the largest brand of soft drinks operating in over 200 counteris. It permitted its frenchises to package and sell their brands.

The first defendant which Perviously known as aqua mineral Ltd, it was a sub subsidiary of parle industries, but now it is known as Bisleri international Pvt Ltd.

On September 18, 1993 defendant sold their IPR, Trademark, formulation right etc. To the plaintiff company. These product are Thums Up, MAAZA, Gold spot and LIMCA.

Several agreements were signed between both parties on 12th November 1993.These agreement are following-

•The Deed of Assignment assigned the Goodwill for a consideration of $50,000 USD.

•The Know-how was transferred for a consideration of $1,000,000 USD.

• A Confidentiality, Non-use and Non-compete Agreement was signed with the Plaintiff, Defendant, Mr. Ramesh Chauhan, his wife and both (the owners of the secret formulae base for MAAZA) for a consideration of $1,000,000 USD.

• The Agreement on License with Bisleri formerly called Golden Agro Products Pvt. Ltd was also signed.

• An Agreement on relinquishment and compensation of franchise rights was also signed.

• Finally, in October 1994, the License Agreement for the total and permanent transfer of all IPR to the Plaintiff forever was executed by all parties.

Because of this agreement plaintiff acquired the right to sell the product MAAZA within the territory of India.

The first defendant had retained the trademark right of MAAZA in other countries where it had been registered.

In March 2008, plaintiff registered trademark of MAAZA in turkey on defendant became aware of it.

Defendant send a legal notice to plaintiff and claim that it’s selling rights were void.

As a result of this plaintiff filed a law suit.

Issue’s :-

The plaintiff and defendant raised the following issue-

1. Plaintiff asked for damages of Passing off by the defendant.

2. Plaintiff sued for a permanent injunction to refrain the defendant from infringing of trademark.

3. The plaintiff argued that they have exclusive rights to trademark within and outside India.

4. The plaintiff claim that the defendant ignored the terms of deed.

5. The defendant contended that the plaintiff was only authorized to use the trademark inside the India only.

The issue’s that came up before delhi high Court are following-

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

Whether export of product with trademark

 2. MAAZA is considered an infringement in the exporting country??

3. Is there infringement of trademark or passing off??

4. Is plaintiff entitled to get a permanent injunction??

Judgement :-

The court hear all the arguments and decided as follow-

1. The defendant signed to convey transfer and assign all IPR and its related rights pertaining to the MAAZA trademark to the plaintiff. This rights are absolute and defendant has no claim or right to cancel the contract.

2. Because of the agreement plaintiff had all the rights of trademark so that they have all rights to decide on what to do with it. They must not inform the defendant either will they obtain permission to make use of trademark.

3. The plaintiff have all the rights to register the trademark conveyed on them within and outside India. In eyes of law they are the assigned proprietor of trademark, know – how, formulation, goodwill etc. Defendant has no standing in law to register the trademark in other country.

4. Defendant signed confidentiality and a known competent agreement which means they can’t use, sell, offer, assigned, convey the formula, Trademark etc. to another person.

5. They are bound by agreement to cease and desist from carrying out any action which may infringe for the trademark. As such by offring it to another person, they were infringing the trademark and also passing off.

6. It doesn’t matter that the name was assigned in one country and register in other, once their is an assignment conveyed and assigning the right, it can be register anywhere.

7. And considering the criminal law perspective, IPC has an extra-territorial jurisdiction, wherein an offence committed by indian citizen on a foreign land will still hold that person liable.

8. So applying this to here, the Delhi high court can take up the matter , because the manufacturer was taking place in india, so the court had the jurisdiction in this matter.

9. And because defendant had issued a news article in Delhi edition of Times of India , so the report itself created the jurisdiction of the court.

10.In the end, the plaintiff, coca-cola won the case against Bisleri and the court awarded a temporary injunction against the defendant.

References:-

http://www.lawcutor.com

http://www.unimarkslegal.com

http://www.indiankanoon.org

http://www.lawnn.com

http://www.ourlegalworld.com

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