Appellant

UID – SF0116024
IN THE HONOURABLE HIGH COURT OF TIMBAPUR
IN THE MATTERS BETWEEN:
Sri Soft Drinks Pvt. Ltd…………...............................................................APPELLANT
AND
Nova Beverages Pvt. Ltd………………………………………………….RESPONDENT
UPON SUBMISSION TO THE HON’BLE HIGH COURT OF DUMDUMA
WRITTEN SUBMISSIONS ON BEHALF OF THE APPELLANT
COUNSELS FOR THE APPELLANT

TABLE OF CONTENTS
List of Abbreviations 4-5
Index of Authorities 6-9
Statement of Jurisdiction 10
Statement of Facts 11-12
Issues Raised 13
Summary of Arguments 14-16
Written Submissions 17-30
1. Whether SSD Ltd. is entitled to raise the jurisdictional issue before the High
Court for the first time, in an appeal? 17-19
1.1 Jurisdiction under S. 96 of The Code of Civil Procedure, 1908

1.2Online sales in Dumduma shall confer jurisdiction on the Dumduma
Court
1.3the suit is maintainable before this Hon'ble Court.
2. Whether the word ‘Power’ in the registered Trademark ‘Sporty Power’ is

not distinctive in character to disentitle the exclusive right to use it? 19-21
2.1 The word ‘Power’ is of non-distinctive nature
2.2 The Trademark should be taken into consideration as a whole
2.3 Respondent failed to prove that the word ‘POWER’ is a distinctive
part of his trademark
3. Whether the SSD Ltd. has infringed the NBP Ltd.’s trade mark ‘Sporty
21-24
Power’ by using the trademark ‘Games Power’?
3.1 No Infringement pursuant to Sec.29
MEMORANDUM ON BEHALF OF THE APPELLANT Page 2

3.2 Applying the various test envisaged by the Courts
3.3 Honest and Concurrent User
3.4 No relief can be claimed pursuant to Sec.135 of the Act
4. Whether SSD Ltd. can claim prior user rights for its trademark ‘Games
Power’ over the NBP Ltd.’s trademark ‘Sporty Power’? 24-26
4.1 Prior User Rights pursuant to Sec.34 of the Act
5. Whether SSD Ltd. infringed the copyright in trademark of NBP Ltd.?

26-28
5.1 No Artistic Work involved to claim Copyright
5.2 No Copyright in Words only
5.3 Prior Rights in Copyright are also protected against Subsequent
User
6. Whether Trademark ‘Sporty Power’ was a well known mark?

29-30
Prayer 31

LIST OF ABBREVIATIONS
& And
Act Trade and Merchandise Marks Act, 1958
AIR All India Reporter
Art. Article
Anr. Another
Bom Bombay
Coprn. Corporation
CPC Code of Civil Procedure
Constitution The Constitution of India
Copy Rights Act Copy Rights Act of 1957
Ed. Edition
HC High Court
Hon’ble Honourable
i.e., Id est (that is)
Ors. Others
Petitioner M/S Sri Soft Drinks (Pvt.) Ltd
NBP M/S Nova Beverages (Pvt.) Ltd

SSD M/s Sri Soft Drinks (Pvt.) Ltd
Para Paragraph
PC Privy Council
pg. Page No.
Respondent M/s Nova Beverages(Pvt.) Ltd

Sec. Section
Supp Supplementary
SCC Supreme Court Cases
SC Supreme Court
SCR Supreme Court Rules
TMA Trade Marks Act of 1999
v. Versus

INDEX OF AUTHORITIES
List of Statutes:
SERIAL NO. STATUTES
1. The Supreme Court Rules, 2013
2. The Trade Marks Act, 1999.
3. The Copy Rights Act, 1957.
4. The Code of Civil Procedure, 1908.
Scholarly Books and Other Materials:
1. P.M.Bakshi The Constitution of India 12th Ed.

2. B.M. Prasad & Manish Mohan Manual of the Civil Procedure Code, 15th
Ed., Vol. I.
3. SudiptoSarkar& VR Manohar Code of Civil Procedure, 11th Ed.
4.C. K. Takwani Civil Procedure Code with Limitation

Act, 7th Ed.
5.A.N. Saha
Code of Civil Procedure, 4th Ed.
6.Justice P.S. Narayana Code of Civil Procedure, 1908, 4th Ed.
7.K.C.Kailasam&RamuVedaraman Law of Trade Marks & Geographical

Indications.
8.V.S.R.Avadhani&V.SoubhagyaValli Law of Intellectual Property Rights

9.Ashwani Kr. Bansal Law of Trade Marks in India
10.P. Narayana Law of Trademarks & Passing off, 6th Ed.
11. Iyengar The Copyright Act, 1957, 6th Ed.

Websites:
 Indiankanoon
 Manupatra
 SCC Online
 West Law
 Hein Online
List of Cases:
SERIAL NUMBER NAME OF THE CASE CITATION
1. Abbey Sports Co. Ld. v. Priest Bros (1936) 53 RPC 300
2. Associated Electronic and Electrical AIR 1991 Karnataka 406
Industries Pvt. Ltd. v. Sharp Tools
3. BhagwanGoverdhandasKedia v. AIR 1966 SC 543
GirdharilalParshottamdas& Co
4. ChandrikaMisir&Anr. v. BhaiyaLal AIR 1973 2 SCC 474.
5. Chief Engineer Hydel Project v. (2008) 2 SCC 350
RavinderNath
6. Dhodha House v. S.K. Maingi 2006 (9) SCC 41
7. F. Hoffmann-La Roche & Co. Ltd vs. 1970 AIR 2062
Geoffrey Manners & Co. Pvt. Ltd
8. HarshadChimanLalModi v. DLF (2005) 7 SCC 791

Universal Ltd
9. Isabella Johnson v. M.A Susai (1991) 1 SCC 494
10. Indo-Pharma Pharmaceutical vs. (1978) 80 BOMLR 73
Pharmaceutical Company of India
11. Kiran Singh &Ors. v. [1955] 1 SCR 117
ChamanPaswan&Ors
12. Kisan Industries v. Public Food AIR 1983 Delhi 387
13. P.R. Srinivasan v. Sri Devi Farm 1999 PTC (19) 581
14. PianotistCo’s Application (Pianola) (1906) RPC 774.
15. Patel Roadways Ltd v. Prasad Trading (1991) 4 SCC 270
Co
16. Ruston & Hornby Ltd. v. Zamindara AIR 1970 SC 1649
Engineering Co. Ltd
17. Sabel BV v. Puma AG AIR 1998
18. Saville Perfumery Ld v. June Perfect (1941) 58 RPC 147
Ld.
19. Sushil Kumar v. Gobind Ram (1990) 1 SCC 193
20. S.M.Dyechem Ltd. v. Cadbury (India) 2000 (2) Arb. LR. 498 (SC)
Ltd
21. Torrent Pharmaceuticals Ltd. vs The 2001 (2) CTMR 158
Wellcome Foundation Ltd. (Guj.)
22. VikasMakhija v. Bengal 2001 (2) CTMR 338 (Del).

Phenyle&Allied Products (P) Ltd
23. World Wrestling Entertainment v. AIR 2013
Reshma Collection
24. Whiting’s Appl. (1952) 69 RPC 219

STATEMENT OF JURISDICTION
The Hon’ble High Court of Timbapur is vested with the jurisdiction to hear the presentmatter
under Section 96 of The Code of Civil Procedure, 1908.
Section 96- Appeal from original decree.
(1) Save where otherwise expressly provided in the body of this Code or by any other law for
the time being in force, an appeal shall lie from every decree passed by any Court exercising
original jurisdiction the Court authorized to hear appeals from the decisions of such Court.
(2) An appeal may lie from an original decree passed ex parse.
(3) No appeal shall lie from a decree passed by the Court with the consent of parties.
[(4) No appeal shall lie, except on a question of law, from a decree in any suit of the nature
cognisable by Courts of Small Cause, when the amount or value of the subject-matter of the
original suit does not exceed [ten thousand rupees].

STATEMENT OF FACTS
1.M/s Nova Beverages (Pvt.) Ltd is a company incorporated in 1960 under the Companies Act
with its registered office in Timbapur and has been marketing and selling the soft drinks with
popular brands like Top and Kick. NBP Ltd wanted to foray in to the energy drink market and in
1980 came out with the energy drink. NBP Ltd applied for the marketing approvals from the
Drug Controlling Authority of India and got approvals in 1981.
2.On 11-06-1982, NBP Ltd has applied for the registration of Trade mark ‘SPORTY
POWER’ in Ariel Black font (Italic) and in script form wherein it limited the registration of
trademark to color combination of white background and orange letters. The trademark
certificate was issued in favour of the NBP Ltd on 6-2-1984 for beverages under class 32 of the
Trademarks Act. After the completion of these formalities, NBP Ltd started marketing its new
product energizing drink, ‘SPORTY POWER’ from 6-7-1984. NBP Ltd has number of
consumers across the Eastern regions of Xandia,as it launched this new product simultaneously
in all the major towns of the Central, Northern and Southern Xandia. The product has been so
successful that the consumers started purchasing the energy drink, directly from the Company’s
outlet at Timbapur by placing orders on company’s website and making payments through credit
or debit cards and taking delivery at their doorsteps.
3.Another Company, M/s Sri Soft Drinks (Pvt.) Ltd located in Dumduma which has been in to
the manufacturing soft drinks, started selling energy drink with a mark ‘GAMES POWER’in
the script forma and in the same font as used by the NBP ltd. SSD Ltd started marketing the
‘GAMES POWER’ from 4-7-1983 in the Dumduma state and was using the ‘GAMES
POWER’ for its energy drink with green background and white letters.
4. On 4-6-1985, NBP Ltd filed a trademark infringement suit against SSD Ltd in District Court
of Timbapur for using similar mark or a mark with some identity to its registered trademark.
NBP Ltd. also claimed the infringement of copyright for using the similar font and for the use of
the word ‘Power’. In its suit NBP Ltd. claimed a prohibitive remedy of injunction restraining the
defendants from using the mark as their mark and claimed the damages. The Trial Court, on 22-

06-1987 disposed the suit by granting permanent injunction and awarding damages of Rs. 20
Lakhs to NBP Ltd.
5. Aggrieved by this, SSD Ltd preferred an appeal to the High Court. In the appeal SSD Ltd also
raised jurisdictional issue. It was argued that as per the provisions of the CPC the suit had to be
instituted in Dumduma only because it happened to be the place of cause of action, also the
defendant’s place of business. Even under the additional forum (i.e. the plaintiff’s place of
business) provided in Trademarks Act, the suit has to be instituted in Dumduma only, being the
place of cause of action and also as the NBP Ltd.’s branch is located at Dumduma and further its
business takes place through online sales. The High Court on 7-8-1987 admitted the appeal.

ISSUES RAISED
I. Whether SSD Ltd. is entitled to raise the jurisdictional issue before the High Court for
the first time, in an appeal?
II. Whether the word ‘Power’ in the registered Trademark ‘Sporty Power’ is not
distinctive in character to disentitle the exclusive right to use it?
III. Whether the SSD Ltd. has infringed the NBP Ltd.’s trade mark ‘Sporty Power’ by
using the trademark ‘Games Power’?
IV. Whether SSD Ltd. can claim prior user rights for its trademark ‘Games Power’ over
the NBP Ltd.’s trademark ‘Sporty Power’?
V. Whether SSD Ltd. infringed the copyright in trademark of NBP Ltd.?
VI. Whether trade mark ‘Sporty Power’ was a well known mark?

SUMMARY OF ARGUMENTS
ISSUE- I
It is humbly submitted before this Hon'ble Court, that, the present suit filed by the appellant is
maintainable u/s 96 of CPC. An appeal shall lie from every decree passed by any Court
exercising original jurisdiction the Court authorized to hear appeals from the decisions of such
Court.It is submitted that the use of the trademark ‘Games Power’ does not infringes the
trademark right over the registered trademark of the respondent ‘Sporty power’ as power is a
generic word and is not deceptively similar to that of the respondent. The trademark ‘Sporty
power’ was not even registered trademark when SSD Limited had started using their own
trademark ‘Games power’.
ISSUE- II
The word ‘Power’ in the appellant’s trademark is not distinctive in character and it is merely
descriptive in nature. To prove the non-distinctive nature in the word ‘Power’ reliance is placed
upon the Register of the Controller General of Patents Design and Trademarks, Government of
India which contains as manyas 30 registered/ abandoned trade marks in class 32 which feature
the word ‘Power’. Furthermore, the trademark as registered under the 1999 Act shall be
considered to be distinctive when perceived as whole and no dissection of the registered
trademark is permissible to claim trademark over each of the words used in the registered
trademark.The word ‘Power’ is a generic word and such words can be used by anybody. There is
no trademark infringement by merely using the word ‘Power’. The word ‘Power’ in the
registered trade mark is a descriptive/laudatory word and of a non- distinctive character.
Therefore, the word ‘Power’ in the registered trade mark is a descriptive/laudatory word and of a
non- distinctive character. As such, the word ‘Power’ is not protectable part of the registered
trademark capable of claiming exclusive rights over its use as per the provisions of the
Trademarks Act.

ISSUE- III
The appellant has not infringed the trademark of the respondent asit is neither identical with nor
deceptively similar to the trademark of the respondent and further it has not been used in such
manner as to render the use of the mark likely to be taken as being use as a trade mark.
Infringement is contested only on the ground that the word “Power” has been used. However it is
pertinent to note that the work “Power” has been used for 30 other trademarks under Class 32 as
per the information in the website ofController General of Patents Designs and Trademarks and
hence there is no infringement and no relief can be granted.
ISSUE-IV
The appellant can claim the prior user rights under Sec.34 of the Act of its trademark ‘Games
Power’ over the respondent’s trademark ‘Sporty Power’ being the prior user as the appellant
started using the trademark on 04.07.1983 only which is much prior to the date of registration
which was completed on 06.02.1984. Hence the appellant is the prior user and has protection
under Sec.34 of the Act even assuming but not conceding to the existence of any similarity.
ISSUE- V
The contention of the Respondent as to copyright infringement for using the similar font is short
of merit as no copyright exists with respect to the work in ‘Ariel Black font’ as no original
artistic work exists when the words are written in a font that is widely used. Further, the courts
have unequivocally stated that no copyright exists in words only as there is no copyright in the
ideas and it subsists only in the material form in which the ideas are expressed. Furthermore,
there is no copyright infringement by the appellant as he being the prior user with respect to the
label of his energy drink in the Ariel font in script form with green background and white letters
and as such hisvested rights with respect to his unregistered copyright are immune and are
protected under Sec.34 of 1999 Act.

ISSUE-VI
The appellant submits before the Hon’ble court that the Trade mark “Sporty Power” was not a
well-known trade mark because its marketing was done much later than the appellant.The Trade
mark ‘Sporty Power started marketing in the year 1984 after the completion of its formalities,
however the Appellant came with their trademark in the year 1983. Your lordship therefore the
trademark ‘Games Power’ has been in the market for substantial time and before Sporty Power
and thus making their distinct consumer base.

ARGUMENTS ADVANCED
ISSUE- I
It is humbly submitted before this Hon'ble Court, that, this Hon'ble High Court of Dumdumahas
jurisdiction to entertain the present suit under [A] S.96 of CPC and hence, [B] the suit is
maintainable before this Hon'ble Court.
[A] Jurisdiction under S.96of The Code of Civil Procedure, 1908.
1. The counsel for the appellant humbly submits that the Hon’ble High Court has jurisdiction to
entertain the present suit underSection 96 of The Code of Civil Procedure, 1908. S. 96 of CPC
reads:
(1) Save where otherwise expressly provided in the body of this Code or by any other law for
the time being in force, an appeal shall lie from every decree passed by any Court exercising
original jurisdiction the Court authorized to hear appeals from the decisions of such Court.
(2) An appeal may lie from an original decree passed ex parse.
(3) No appeal shall lie from a decree passed by the Court with the consent of parties.
[(4) No appeal shall lie, except on a question of law, from a decree in any suit of the nature
cognisable by Courts of Small Cause, when the amount or value of the subject-matter of the
original suit does not exceed [ten thousand rupees].
2. In the case of Suresh Chand Purwar(Karta) V.VivekPurwar&Ors 1the Court held that: the
Hon’ble court of Delhi has the jurisdiction upon the case as the plaintiff carried out its
business and said good under the said trade mark in Delhi. The cause of action in whole
and/or in part has arisen within the jurisdiction of this Hon’ble court. It is humbl y
1CM APPL. 6777/2013

submitted before the Hon’ble court that in the instant case the appellant carries out its
business in Dumduma and therefore the cause of action is also Dumduma but however the
trial court of Timbapur entertained the case despite not having jurisdiction. Therefore an
appeal lies in the High Court for the instant case.
3. It is submitted that the use of the trademark ‘Games Power’ does not infringes the trademark
right over the registered trademark of the respondent ‘Sporty power’ as power is a generic
word and is not deceptively similar to that of the respondent.
4. The trademark ‘Sporty power’ was not even registered trademark when SSD Limited had
started using theirown trademark ‘Games power’.
[B] Inherent lack of jurisdiction- Coram Non Judice

The Counsel relies upon Sec.20 of CPC and a perusal of Sec.20 clearly mandates that the
suit shall be filed at the place of residence or business of the defendant or the place where
cause of action wholly or in part have arisen. From the facts it is evident that the place of
business of the respondent is dumduma and that the cause of action, if any, arose in
Dumduma. Therefore, the court of Timbapur lacks inherent jurisdiction read with Sec. 20 of
CPC.
[C] Decree by a court lacking inherent jurisdiction is a nullity

It is submitted that a decree passed by a court without jurisdiction over the subject matter or
on other grounds which goes to the root of its exercise of jurisdiction, lacks inherent
jurisdiction and a decree passed by such a court is a nullity and is non est. It is a coram non
judice i.e., ‘before a judge not competent or without jurisdiction.’ The SC has set forth this
principle in cases of Sushil Kumar , Isabella Johnson , Patel Roadways Ltd , Harshad
Chiman Lal Modi. and Chief Engineer Hydel Project , and held that the invalidity of the
decree can be set up whenever it is sought to be enforced or is acted upon as a foundation
for a right, even at the stage of execution or in collateral proceedings.
Further, a defect of jurisdiction, whether it is pecuniary or territorial, or whether it is in
respect of the subject- matter of the action, strikes at the every authority of the Court to pass

any decree, and such a defect cannot be cured even by consent of parties. The SC while
determining the issue held that if the court is coram non judice, and that its judgment and
decree would be nullities. Furthermore, in Chandrika Misir & Anr. , it was held that the
decree passed by the Civil Court in relation to matters governed by U.P. Zamindari
Abolition and Land Reforms Rules, 1952 for possession was a nullity and in the appeal it
was for the first time permitted to be raised in this Court and the decree was declared to be a
nullity.
[D]Online sales in Dumduma shall confer jurisdiction on the Dumduma Court
5. The traditional rules of jurisdiction of civil courts as determined by CPC cannot be applied in
the case of online transactions as cyber space is not a physical world to determine precisely the
place of defendant or the place of cause of action. Also, there is no specific legislation that
governs such transaction and as such for such transactions, the jurisdiction has been evolved on
the basis of Indian Contract Act, 1872 by the courts.
Reliance is placed on the rulings of the Delhi HC in World Wrestling Entertainment2with

respect to the jurisdiction in case of e-commerce transactions in cases of trademark and copyright
violations, based its reasoning on the SC judgments of BhagwanKedia3 and Dhodha
House4wherein it held that the website makes an invitation to offer and if the invitation is
accepted by the customer in Delhi, it becomes an offer and through the mode of browser if the
transaction is confirmed and payment is made through website, the communication takes place
instantaneously through the internet in Delhi and hence the cause of action would arise in Delhi.
The Court held that the contracts would be completed at the place where the acceptance is
communicated. In the present case, the acceptance is communicated in Dumduma in case of
consumers residing in Dumduma, the appropriate forum having exclusive jurisdiction for filing a
suit is the District Court in Dumduma as the cause of action has arose in a relying Dumdumaon
the principles laid down by the Delhi HC.
2
World Wrestling Entertainment v. Reshma Collection, C.S (OS) 1801/2013.
3
BhagwanGoverdhandasKedia v. GirdharilalParshottamdas& Co, AIR 1966 SC 543.
4
Dhodha House v. S.K. Maingi, 2006 (9) SCC 41.

[E] the suit is maintainable before this Hon'ble Court.
6. Thus, accordingly, it is submitted that the appellant at the time of filing the appeal was
carrying on its business within the local limits of the Dumduma High Court and thereby it may
exercise jurisdiction over the matter.
ISSUE- II
The Counsel for the appellant submits that the word ‘Power’ in the respondent’s Trademark is
not distinctive in character and that it is merely descriptive in nature based on the following
grounds:
2.1 The word ‘Power’ is of non-distinctive nature:
It is submitted that word ‘Power’ is of distinctive nature and needs to be combined with
another/other elements in order to be considered registrable trademark. To prove the non-
distinctive nature in the word ‘Power’ the counsel primarily relies upon the Register of the
Controller General of Patents Design and Trademarks, Government of India5 which contains as
many as 30 registered/ abandonedtrade marks in class 32 which feature the word Power and that
these trademarks are in a range of different ownerships. Thus, this evidently proves that contrary
to respondent’sclaim that there are no other Power trademarks being used for class 32, 30 other
registered trademark users in class 32 are using word Power in their trademark.
From this evidence it can be concluded that the average consumer would be familiar with the use
of the word Power on all sorts of beverages under class 32 and would as a result be readily able
to discern the differences between such products from other distinctive elements within the
respective marks as such non- distinctive nature exists in the word Power.
2.2 The term ‘Power’ is merely descriptive in nature:
It is submitted that the term ‘Power’ in the respondent’s Trademark has low imaginative content
and is merely descriptive in character. The word ‘Power’ is a noun which means ‘extreme
5
http://ipindiaonline.gov.in/tmrpublicsearch/tmsearch.aspx?tn=37377069&st=Wordmark.

pleasure’ or ‘something which causes extreme pleasure’ and the above said word does not has
any distinctiveness in isolation as it is solely describing the pleasure the consumer of the energy
drink manufactured by the respondent’s company would have experienced and lacks innovation
and distinctive character.
2.3 The Trademark should be taken into consideration as a whole:

It is submitted that the trademark as registered under the Trade Marks Act, 1999 shall be
considered to be distinctive when perceived as whole6 and no dissection of the registered
trademark is permissible to claim trademark over each of the words used in the registered
trademark.
The respondent, in the instant case does not have an exclusive right over the word ‘Power’ but
was granteda trademark over ‘Sporty Power’. Under the 1999 Act, a trademark certificate is
issued with respect to the entire mark and not over each of the terms in the mark separately.
Furthermore the average consumer normally perceives a mark as a whole and does not proceed
to analyse its various details7.Thus the contention of the respondent’s that they are having an
exclusive right over the word ‘Power’ is not admissible as it is only a descriptive word and of a
non-distinctive character and as such the mere usage of such word by the appellant cannot
amount to infringement.
2.4 Respondent failed to prove that the word ‘POWER’ is a distinctive part of his
trademark:
Further, the respondent in the instant case have failed to prove that the word ‘Power’ is a
distinctive part of their trademark ‘Sporty Power’ but have merely contended that the appellants
have caused an infringement by using the word ‘Power’ in their unregistered trademark. It is
submitted that the onus of proof lies on the respondent to show that the word ‘Power’ is a
distinctive part of their trademark and not a descriptive word and that they are having an
exclusive right over the term.
6
F. Hoffmann-La Roche & Co. Ltd vs. Geoffrey Manners & Co. Pvt. Ltd1970 AIR 2062.
7
Sabel BV v. Puma AG, [1998] E.T.M.R. 1, para 23.

In the present case, the registered trade mark of the respondent and the mark of the appellant
both contain the word POWER as the second element. As it has already been established that
there are other trademarks on the Register of Controller General of Patents Design and
Trademarks, Government of India in respect class 32 goods which consist of or contain that word
Power, therefore, the word Power has a low imaginative content and is lacking in distinctive
character. In their view the public would not see it as being distinctive and would therefore
distinguish the respondent’s and the appellant’s trade marks on the basis of the first elements,
both of which are ordinary words of the English language. In the present case the respondent’s
trademark is having the first word ‘Sporty’ which is of inherently distinctive from that of the first
word of the appellant’s registered trademark ‘Games’ and hence the question of deception does
not arise.
ISSUE- III
SSD Ltd. has by using the mark ‘Games Power’ subsequent to the use of the trademark of the
respondenti.e., ‘Sporty Power’ has not infringed the trademark of the respondent. The following
contentions are made to establish the same.
3.1 No Infringement pursuant to Sec.29
It is submitted that the appellant has not infringed the trade mark of the respondent by using the
mark ‘Games Power’ as Sec.29 of 1999 Act explains as to what amounts to infringement of
trademarks and as such the only case where infringement of trademarks shall take place is when
any person uses a mark which isidentical with, or deceptively similar to the trademark that is
registered. However in the present case, the respondent has a registered trademark ‘Sporty
Power’ and the appellant is using ‘Games Power’.
It is necessary to note at this juncture that the respondent has used a combination of white
background with orange letters and the appellant has however used green background with white
letters. A mark shall be considered to be deceptively similar or identical only when a difference
cannot be made between the two trademarks by a customer. But in the present case the appellant
has used extremely different trademark with different combination which itself shows that there

was no intention on the part of the appellant to render the use of his mark likely to be taken as
that of the respondent’s trade mark. Further, the appellant is the prior user of the trademark and
as such no claim can be made against the prior user.
As per Sec.29(2) of 1999 Act, if the appellant can establish that the mark used is not similar to
that of the respondent, then no relief shall be granted to the respondent. As in the present case,
there is clear picture to depict that the appellant has not used any trademark that is similar to that
of the respondent’s mark, no relief can be claimed or granted to the respondent.
3.2Applying the various test envisaged by the Courts:
The SC in Cadbury (India) Ltd8 held that, a plaintiff in a suit of infringement has to provide not
only that his trademark had been infringed by an unregistered user but also that his mark is
identical with or deceptively similar to that of the plaintiff’s trademark in such manner as to
render the use of the mark is likely to be mistaken as the registered one.
The Court has in Saville Perfumery Ld.9 held that “In an action for infringement, where the
defendant’s trademark is identical with the plaintiff’s mark, the court will not enquire whether
the infringement is such as is likely to deceive or cause confusion. But where the alleged
infringement consists of using not the exact mark on the Register, but something similar to it, the
test of infringement is the same as in an action for passing off. In other words, the test as to the
likelihood of confusion or deception arising from similarity of marks is the same both in
infringement and passing off actions.” When this test is applied to the present case, the
respondent’s goods absolutely do not cause any confusion to be taken as petitioner’s goods as the
name is distinct from that of the petitioner and also by a glance at the good they can be easily
distinguished having extremely different combination of colors.
Further, in Abbey Sports Co. Ld.10, the court held that, “infringement is use by the defendant a
mark identical with the plaintiff’s mark or comprising some of its essential features or
colourablyresembling it so as to be calculated to cause the goods to be taken by ordinary
purchasers for the goods of the plaintiff.”It is clear that to establish infringement any of these
8
S.M.Dyechem Ltd. v. Cadbury (India) Ltd , 2000 (2) Arb. LR.498 (SC).
9
Saville Perfumery Ld v. June Perfect Ld.9 (1941) 58 RPC 147 p.161.
10
Abbey Sports Co. Ld. v. Priest Bros, (1936) 53 RPC 300 p.304.

conditions should exist viz., firstly, use of an identical mark, secondly the comprising some
essential features and thirdly colourably resembling the goods of the plaintiff.
In the present case, there is neither use of identical mark nor use of essential features as the
goods of the respondent vary in size, shape, colour, packing, pricing and such other features.
Further, when the 3rd test is applied there is absolutely no colour resemblance as the respondent’s
goods have white background with orange letters and the appellant’s goods contain green
background with white letters. As such none of the conditions have been fulfilled to establish
infringement by the appellant.
InRuston & Hornby Ltd.11, the SC held that, “It very often happens that although the defendant
is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much
like the plaintiff's that a clear case of passing off would be proved. It is on the contrary
conceivable that although the defendant may be using the plaintiff's mark the get up of the
defendant's goods may be so different from the get up of the plaintiff's goods and the prices also
may be so different that there ‘would be no probability of deception of the public’.” As the get
up of the goods of the respondent are different from that of the petitioner it cannot be said that
the mark used by the respondent is likely to deceive.
Another test has been give in the case of Torrent Pharmaceuticals Ltd.12“the test to be applied
in determining whether two marks are identical with or too nearly resembles each other or is
likely to deceive or cause confusion or deceptively similar is in nutshell the test of an average
person with imperfect recollection. The court has to visualise a customer or a tradesman or a
citizen who may happen to have dealings with the company complaining or who may happen to
want to purchase the goods manufactured such company and decide whether such a customer or
tradesman or citizen would get confused and would mistake one for the other.”
No prudent man can get confused for the products of the respondent to that of the products of the
petitioner being very distinct from each other in all the features as such even by applying this
test, it is clear that there is no infringement by the respondent.In so far as resemblance in words
is concerned, the SC has quoted with approval PARKER. J’S dictum in PianotistCo’s
11
Ruston & Hornby Ltd. v. Zamindara Engineering Co. Ltd., AIR 1970 SC 1649.
12
Torrent Pharmaceuticals Ltd. vs The Wellcome Foundation Ltd (Guj.) 2001 (2) CTMR 158.Para 5.2.

Application (Pianola)13 where it was said that, “You must take the two words. You must judge
both by their look and by their sound.” Even applying this dictum, neither both marks look alike
being in distinct colors and being neither distinct words nor do they sound alike.
3.3 Honest and Concurrent User:
The appellant being the honest and concurrent user of his mark ‘Games Power’, he cannot be
deprived of his right to use the mark. The bona-fide users of a mark are to be protected as there is
neither an intent of passing off the goods nor any intent of infringing the trademark of any
proprietor. The respondent had been using his trade mark prior to completion of the registration
of that of the respondent and hence has in no way infringed the trademark of the respondent.
3.4 No relief can be claimed pursuant to Sec 135(3)(b)(i) of the Act:
Further reliance is placed upon Sec.135, wherein it specifies as to when a relief can be granted in
the suits for infringement. A perusal of Sec.135(3)(b)(i) makes it clear that, in a suit for
infringement, that is the appellant herein satisfies the court that at the time when he commenced
to use the trademark he was unaware or had no reasonable ground for believing that the
trademark of the respondent was on register or was a registered user, then the court shall not
grant relief by way of damages or account of profits. In the present case, the appellant being
unaware of the existence of the trademark of the respondent, no relief can be granted.
ISSUE- IV
SSD Ltd can claim the prior user rights under Sec.34 of the Act of its trademark ‘Games Power’
over the NBP Ltd.’s trademark ‘Sporty Power’ being the prior user even assuming but not
agreeing to any resemblance in the trademarks.
4.1 Prior User Rights pursuant to Sec.34 of the Act:
The prior users are given protection under the Trade Marks Act, 1999 for the unregistered mark
users under Sec.34 of the Act.
13
(1906) RPC 774.

In order to come within the ambit of Sec.34 the main requirement is the user claiming under this
must have used the trademark from a date prior to the use of registered trade mark or date of its
registration whichever is earlier and should have been used in respect of same goods for which
the trademark is registered14.
In the present case, the protection given under Sec.34 of the Act shall apply as the unregistered
trademark used by the appellant was prior to the date of completion of registration of the
respondent’s trademark. To establish the same, it is submitted that the date of completion of
registration of the trademark ‘Sporty Power’ is 06.02.1984 and has first used the trademark on
06.07.1984 but whereas the appellant has started using the trademark ‘Games Power’ from
04.07.1983 itself which is much prior to the date of completion of registration of the
respondent’s trademark and also to the date when the trademark was first used and has also been
in continuous use from 06.07.1984. Hence, as per the Sec.34, the respondent cannot interfere
with or restrain the use of the mark15 ‘Games Power’ even assuming the resemblance between
the marks of the appellant and the respondent.
In VikasMakhija v. Bengal Phenyle& Allied Products (P) Ltd.,16 it was held that, “this Section
confers absolute protection or immunity on a defendant who is able to prove or establish
continuous user prior to the date of registration of the trade mark of the plaintiff who is seeking
an Order of injunction or restrain against him. It is not the actual previous use which is protected
from interference or restrain but all use”.
In the case of N.R. Dongre v. Whirlpool Corpn17, it was held that the owner of an unregistered
mark can restrain the defendant who is a registered owner, if the plaintiff establishes prior user of
his own mark. Here the respondent/plaintiff had started using the registered for the Whirlpool
mark in India but its registration lapsed in 1977. However, the mark was being used in as many
as 65 countries and domestic registration across the world has been obtained. The appellant
ought to be restrained from using the trademark, which they started using in the year 1986 as the
respondent contended that “Whirlpool” has gained a transborder reputation in India. The
appellant claimed its statutory protection as per Section 29 of the Act as being a registered
14
Whiting’s Appl., (1952) 69 RPC 219 .
15
Indo-Pharma Pharmaceutical vs. Pharmaceutical Company of India(1978) 80 BOMLR 73.
16
2001 (2) CTMR 338 (Del).
17
N.R. Dongre v. Whirlpool Corpn (1996) PTC (16) 583 (SC) (India).

owner. The Court held the contentions of the respondent and held that “whirlpool mark was
associated with the respondent for long and much prior to the appellants’ trademark application
and with the respondent.
In the case of MukeshKhadaria v. DCM Shriram Consolidated Ltd18, it emerges that the usage
must not be erratic or intermittent in order to avail the benefit under Section 34 of the Act.
In Consolidated Foods Corp v. Brandon & Co. Pvt Ltd19 it has been upheld that to claim the
proprietorship of a mark, it is not necessary that the goods should have acquired a reputation for
quality under that mark. Actual use of the mark under such circumstances as showing intent to
adopt and use it as a trademark is the test rather than the extent or durability of the use. However,
a mere casual, intermittent or experimental use may be insufficient to show an intention to adopt
the mark as a trademark for specific article of goods.
Thus, in the instant case it can be concluded that the appellant has been using its ‘Games Power’
continuously since 1983 for its specific same class of goods as that of the respondent and the
appellant is having an intention to adopt and use “Games Power” as a trademark for its energy
drink and thus can claim proprietorship of the mark. Additionally, the appellant can claim the
benefit of prior user rights under Section 34 as it has been using previously and continuously
than that of the respondent.
Therefore, the appellant has got absolutely immunity with respect to use of his mark even
assuming the existence of any similarity between the trademarks.
ISSUE- V
No, there is no infringement of copyright by the appellant in the registered trademark of the
respondent. To establish that the Appellant has not infringed the copyright in the trademark of
the Respondent the following three contentions are put forth.
18
MukeshKhadaria v. DCM Shriram Consolidated Ltd(2010) (43)PTC 321 (Del) (India).
19
Consolidated Foods Corp v. Brandon & Co. Pvt Ltd (1964) AIR 1965 Bom 35 (India).

5.1 No Artistic Work involved to claim Copyright:
Copyright subsists in original literary work. The Sec. 13 of the Copyright Act, 1957 exhaustively
lists three classes of work in which copyright subsists throughout India and clause (a) lists,
among others, original artistic work.
It is humbly submitted that no “original artistic work” exists in the trademark of the Respondent
as it is evident from the facts that the trademark ‘Sporty Power’ was registered in Ariel Black
font in script form with orange letters. To claim copyright protection, it is necessary for the
owner of trademark to ensure that he has either created the original label or got it prepared under
a contract of service or should have been an assignee as per the law.20 Where a company or any
other organization is claiming copyright, the proof of assignment of copyright from the artist
should be produced. It is evident from the facts that the proof assignment or creation of original
label was not produced by the Respondent and hence, as the trademark does not consists of any
original artistic work, the question of copyright infringement does not arise.
Further, the contention of the Respondent as to copyright infringement for using the similar font
is short of merit as no copyright exists with respect to the ‘Ariel Black font’ as no original artistic
work exists when the words are written in a font that is widely used.
5.2 No Copyright in Words only:
The general law prevailing with respect to copyright is that there is no copyright in the ideas and
it subsists only in the material form in which the ideas are expressed. There can be no copyright
in any word, but the right can only be in the artistic manner in which the same is written21.
It is submitted that the Respondent has claimed copyright infringement for using the word
‘Power’ against the Appellant. The courts have unequivocally stated that no copyright exists in
words only. In one of the landmark judgments in Prestige House Wares v. Prestige Estate,22
wherein, the petitioner used the word ‘Prestige’ and were also owners of the trademark prestige,
the Court has held that there can be no copyright violation as no copyright is vested to be found
in the word ‘Prestige’.
20
Sec. 17, 18, 19, 19-A of Copyright Act, 1957.
21
Associated Electronic and Electrical Industries Pvt. Ltd. v. Sharp Tools, AIR 1991 Karnataka 406.
22
1999 PTC (19) 585.

5.3 Prior Rights in Copyright is also protected against Subsequent User:
Furthermore, there is no difference in protection granted to registered and unregistered copyright

work for the infringement action. To claim copyright protection for artistic features in a
trademark consisting of a label or a wrapper etc., it is necessary that the label or wrapper
should first be used in relation to goods in India. The Trade Mark Act, 1999 under Sec 34
protects the right of the prior user against the interference or restraint by the registered user of a
trademark in relation to goods in which the prior user has his title which he has been
continuously using with respect to that trade mark. Hence, this right even extends to the right of
copyright in trademark.
It is evident from the facts that the appellant has been the prior user with respect to mark ‘Games
Power’ in the Ariel font in script from since it started selling its energy drink from 04-07-1983
well ahead of the Petitioner, who has entered the market only in 06-02-1984. The Appellant is
the prior user with respect to the label of his energy drink is in the Ariel font in script form with
green background and white letters and the unregistered copyright exists with him with respect to
his original artistic work. Pursuant to Sec. 34 of the 1999 Act, the all rights of the prior user are
saved and the copyright registration of the subsequent user is cancelled.
Reliance is placed on the observations made in P.R. Srinivasan v. Sri Devi Farm23 , wherein, the
court was of the view that the artistic works of the plaintiff and defendant were similar and that
plaintiff’s work was earlier in point of time. Thus, an order was passed for cancellation of the
Respondent’s work.
Therefore, in the light of above contentions, there is no copyright infringement in trademark of

the Respondent by the Appellant as the rights of the Appellant are protected under Sec. 34, also
there is no original artistic work nor copyright can be claimed on any specific words or common
fonts.
23
1999 PTC (19) 581.

ISSUE –VI
It is humbly submitted before the Hon’ble court that the Trade mark “Sporty Power” was not a
well-known trade mark because its marketing was done much later than the appellant.
The counsel for the appellant humbly submits before the Hon’ble Court that The term “Well-
Known trade mark” has been defined under the Trade Marks Act, 1999 as “a mark which has
become so to the substantial segment of the public which uses such goods or receives such
services that the use of such mark in relation to other goods or services would be likely to be
taken indication a connection in the course of trade or rendering of services between those
goods or services and a person using the mark in relation to the first mentioned goods or
services. In the instant case, the Trade mark ‘Sporty Power started marketing in the year 1984
after the completion of its formalities, however the Appellant came with their trademark in the
year 1983. Therefore the trademark ‘Games Power’ has been in the market for substantial time
and before Sporty Power and thus making their distinct consumer base.
It is humbly submitted before the Court that for the Trademark to acquire the status of a well
Known Trade Mark its must adhere to certain Factors. Section 11(6)(iii) of the Act, lays that
‘The duration, extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods or services to which
the trade mark applies.24 In the present case, the respondent have merely launched their product
in different cities, of which no such publicity and presentations were done. In addition the Trade
mark ‘Games Power’ has been in the market for a longer duration than trade mark Sporty Power.
Therefore, the appellant contend that sporty power is not a well-known trade mark.
In the case of Bloomberg Finance LP v. PrafullaSaklecha&Ors25, it was held that ‘a mark

which has become so to the substantial segment of the public which uses such goods or receives
such services that the use of such mark in relation to other goods or service would be likely to be
taken as indicating a connection in the course of trade or rendering of services between those
goods or services and a person using the mark in relation to the first-mentioned goods or
services. It is humbly submitted before the Hon’ble court that the trade mark Games Power have
24
Trade-mark act 1999.
25
CS(OS) No. 2963 of 2012.

been there in the market for substantial amount of time and traded in the market different that of
the Sporty Power.
It is also contended before the Hon’ble bench that the respondents have their venture in soft
drinks and have been marketing in soft drinks. Marketing of their trade mark Sporty power has
come much later and was very lately marketed and thus do not have such significant publicity. ,
therefore the fact that it is completely known to all the people cannot be assumed and mere
assumption cannot make a trade mark a well-known trade mark.
In the case of Toyota Kabushiki Kaisha v. Prius Auto Pvt26 Ltd Hon’ble court held that the
modern day trade will be governed by the territorial doctrine. A mark, which claims to be a well-
known mark, will have to produce necessary evidences to show that it has earned the local
goodwill and local reputation. Mere placing of orders from the company’s website shall not be
considered to have made a local reputation and therefore shall not be considered as well-known
trademark.
26
CIVIL APPEAL NOs.5375-5377 OF 2017.

PRAYER
Wherefore, in the light of the facts stated, issues raised, arguments advanced and authorities
cited, it is most humbly prayed before this Hon’bleHigh Court of Dumdumathat it may be
pleased to hold and adjudge:
1. That the decision of the High Court of Judicature at Dumdumabe upheld to be valid.
2. That the present petition be dismissed in limine.
3. That the word ‘Power’ is non-distinctive in character and as such the respondent is
disentitled to the exclusive right to use it.
4. That there is no infringement of the respondent’s trademark as the appellant is a prior
user.
5. That there exists no copyright in the respondent’s trademark and as such there is no
copyright infringement.
And/or pass any other order(s) that the Hon’ble Moot Court deems fit in the interest of
Justice, Equity and Good conscience.
For this act of kindness, the Appellant as in duty bound, shall humbly pray.
Place: COUNSELS FOR THE APPELLANT

Date:


Appellant

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Appellant

Uploaded by

Copyright:

Available Formats

UID – SF0116024

IN THE HONOURABLE HIGH COURT OF TIMBAPUR

IN THE MATTERS BETWEEN:

Sri Soft Drinks Pvt. Ltd…………...............................................................APPELLANT

Nova Beverages Pvt. Ltd………………………………………………….RESPONDENT

UPON SUBMISSION TO THE HON’BLE HIGH COURT OF DUMDUMA

WRITTEN SUBMISSIONS ON BEHALF OF THE APPELLANT

COUNSELS FOR THE APPELLANT

List of Abbreviations 4-5

Index of Authorities 6-9

Statement of Facts 11-12

Summary of Arguments 14-16

Written Submissions 17-30

Court for the first time, in an appeal? 17-19

1.1 Jurisdiction under S. 96 of The Code of Civil Procedure, 1908

1.3the suit is maintainable before this Hon'ble Court.

2. Whether the word ‘Power’ in the registered Trademark ‘Sporty Power’ is

3.1 No Infringement pursuant to Sec.29

MEMORANDUM ON BEHALF OF THE APPELLANT Page 2

Power’ over the NBP Ltd.’s trademark ‘Sporty Power’? 24-26

4.1 Prior User Rights pursuant to Sec.34 of the Act

5. Whether SSD Ltd. infringed the copyright in trademark of NBP Ltd.?

6. Whether Trademark ‘Sporty Power’ was a well known mark?

MEMORANDUM ON BEHALF OF THE APPELLANT Page 3

Act Trade and Merchandise Marks Act, 1958

AIR All India Reporter

CPC Code of Civil Procedure

Constitution The Constitution of India

Copy Rights Act Copy Rights Act of 1957

i.e., Id est (that is)

Petitioner M/S Sri Soft Drinks (Pvt.) Ltd

NBP M/S Nova Beverages (Pvt.) Ltd

pg. Page No.

Respondent M/s Nova Beverages(Pvt.) Ltd

MEMORANDUM ON BEHALF OF THE APPELLANT Page 4

SCC Supreme Court Cases

SCR Supreme Court Rules

TMA Trade Marks Act of 1999

MEMORANDUM ON BEHALF OF THE APPELLANT Page 5

SERIAL NO. STATUTES

1. The Supreme Court Rules, 2013

2. The Trade Marks Act, 1999.

3. The Copy Rights Act, 1957.

4. The Code of Civil Procedure, 1908.

Scholarly Books and Other Materials:

1. P.M.Bakshi The Constitution of India 12th Ed.

3. SudiptoSarkar& VR Manohar Code of Civil Procedure, 11th Ed.

4.C. K. Takwani Civil Procedure Code with Limitation

7.K.C.Kailasam&RamuVedaraman Law of Trade Marks & Geographical

8.V.S.R.Avadhani&V.SoubhagyaValli Law of Intellectual Property Rights

MEMORANDUM ON BEHALF OF THE APPELLANT Page 6

SERIAL NUMBER NAME OF THE CASE CITATION

1. Abbey Sports Co. Ld. v. Priest Bros (1936) 53 RPC 300

2. Associated Electronic and Electrical AIR 1991 Karnataka 406

Industries Pvt. Ltd. v. Sharp Tools

3. BhagwanGoverdhandasKedia v. AIR 1966 SC 543

4. ChandrikaMisir&Anr. v. BhaiyaLal AIR 1973 2 SCC 474.

5. Chief Engineer Hydel Project v. (2008) 2 SCC 350

6. Dhodha House v. S.K. Maingi 2006 (9) SCC 41

7. F. Hoffmann-La Roche & Co. Ltd vs. 1970 AIR 2062

Geoffrey Manners & Co. Pvt. Ltd

8. HarshadChimanLalModi v. DLF (2005) 7 SCC 791

MEMORANDUM ON BEHALF OF THE APPELLANT Page 7