UNIVERSITY INSTITUTE OF LEGAL STUDIES

PANJAB UNIVERSITY, CHANDIGARH

CASE ANALYSIS :
Coca-Cola Company v. Bisleri International Pvt.
Ltd. (2009)

A project report to be submitted in the subject of Intellectual Property Rights for

partial fulfilment of the curriculum of the degree B.Com. LL.B. (H) 10TH
semester.

Submitted To:- Submitted by:-

Prof. Kritika. Kanishka
B.Com. LL.B. (Hons.)
Section: E
Roll no.: 241/19
ACKNOWLEDGEMENT
On the successful completion of this assignment, I would like to thank my respected mentor,
Ms. Kritika, who despite all of his pre-occupations, provided me the assistance I needed for the
accomplishment of this assignment and guided me when I tread on the tenebrous boulevard of
ignorance. Had it not been for his support I wouldn't be able to grasp the cognizance of
something as enthralling as this. I thank him profusely for providing me this engrossing topic
to work on which helped me to learn and relearn, to explore my knowledge.

Kanishka
ROLL No. 241/19
 Table of Contents

S. No. Particulars Page No.

1. Introduction 3

2. Types of Trademark 3

3. 7
Meaning of passing off

4. Meaning of Infringement of Trademark 7

5. Case Analysis 8

6. Reasoning and Analysis 10

7. Judgement 12

8. Conclusion 13

9. Bibliography 14
INTRODUCTION
Definition of Trademark Under the Trademark Act, 1999

The term Trademark is defined in section 2(zb) of the Trademarks Act, 1999, which mean a
mark capable of graphical representation that can distinguish goods or services of one person
from those of others. It is further provided that a Trademark may include the shape of goods,
their packaging and a combination of colours.

Types of Trademark Or Category In India

From the practical point of view, while filing the trademark application in TM-A, the
prescribed form for filing a trademark application in India, the applicant has to choose, category
of Trademark, which can be only from below options.

"Word" as Trademark
A word or other groupings of letters/ alphabets is the most common type of mark. Examples
include APPLE, GOOGLE, INFOSYS, TATA, IBM, .etc. The Word Mark as a Trademark is
the most valuable and significant; a word work can be written, drawn, and pronounced. Because
of its greater versatility is considered the Most Powerful Mark for IPR Protection Under the
Trademark Act, 1999. When a Trademark is applied as a wordmark, you can use it in any
format in the market. If some other person using a similar mark, the owner of the wordmark
can easily institute an action of infringement. Please note that a Wordmark need not have a
meaning, and any combination of letters is good enough provided it is unique.
"Device" as Trademark
Device marks are in general referred to the marks like Logo, Pictures of Drawings, A
combination of Pictures and Words or Drawings, etc. Below is a pictorial presentation on
various kinds of device marks. Another example of a device mark is the Brand Name, which
is sometimes created as a combination of image and words. Below are some examples of the
Device Mark.

"Colour" as Trademark
The particular colour or combination of colour is recognised as a trademark if it is established
that the colour (s) function as a unique identifying mark to identify the origin of goods or
services. In recent times there is a growing trend of adopting colours or combining them as a
trademark in the marketplace. However, it is probably the most challenging trademark category
to be protected under law and enforced. The world trade organisation has broadened the legal
definition of a trademark to encompass “any sign…capable of distinguishing the goods or
services of one undertaking from those of other undertakings.” Section 10 of the Trademark
provides for recognition of a trademark having protection to its colour as property, provided
that the particular colour or a combination of several colours are an inherent part of the
Trademark. In other words, the Registration to a Colour Mark is granted once the Trademark
gets public recognition by that colour.
“Shape of goods” as Trademark
The shape of a product or the shape of a container may serve to identify the origin of goods.
The shape of a container may also be another form of intellectual property as design. The
trademark refers to the origin of the goods, whereas the design protection shall refer to the
inherent features of the shape. However, if the shape has acquired distinctiveness through its
widespread usage, then the same can be registered as a trademark. A perfect example to
understand this is the Coca-Cola Bottle.

Sound as Trademark
Sound marks are a non-conventional trademark and are possible to be registered in India,
provided the sound functions as an identifier for the origin of goods or services. The important
ingredient is the presence of factual distinctiveness in the sound which is capable of creating
an immediate recall value for the product or services. Some of the registered sound marks in
India are:

 Yahoo -(Human voice yodelling Yahoo)

 National Stock Exchange – (Theme song)
 ICICI Bank – (Corporate jingle – Dhin Chik Dhin Chik)
 Britannia Industries (Four note bell sound)
 Cisco – (Tune heard on logging in to the conferencing service Web Ex)
 Edgar Rice Burroughs – (Tarzan Yell by its toy action figure)
 Nokia – (Guitar notes on switching on the device)

Three dimensional shape as Trademark

Three-dimensional symbols can be registered as a trademark in India based on strict standards
on the inherent distinctiveness of trademarks and its capability to distinctly identify the origin
of goods and services. The three-dimensional trademarks (3D trademarks) are usually
presented as the physical appearance of the product or substantial packaging in three-
dimensional images. The examples of 3D Trademark is as under
Meaning of passing off

“If a person sells his goods as the goods of another,” then the trademark owner can take
action as this becomes a case of passing off. Passing off is used to protect or safeguard the
goodwill attached to an unregistered trademark. When the trademark has been registered by
the owner and infringement happens, then it becomes a suit for infringement, but if the
trademark has not been registered by the owner and infringement happens, then it becomes a
case of passing off. An example of this could be if someone starts using a business name and
logo that is very similar to yours and selling similar products and services, to try and
convince customers that they are actually buying from you.

Meaning of Infringement of Trademark

Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 is defined as a use
of a mark, by an unauthorised or an authorised person or a person who is not the registered
proprietor, which is identical or deceptively similar to the trademark in relation to the goods or
services in respect of which the trademark is registered. In simple words, it is defined as the
violation of exclusive rights that are attached to a registered trademark without the permission
of the registered owner or licensees. The courts have time and again assumed that similarity of
two marks and the kind of goods and services results in causing confusion in the minds of
general public. They may take an undue advantage of enjoying the hard-earned reputation of
the registered trademark. In order to have a successful claim against a person infringement of
trademark, what needs to be proved is that the infringing trademark is deceptively similar or
identical to the registered trademark.
When can a person be considered as infringing a trademark

A registered trademark is said to be infringed in case of the following situation:

1. If the mark in dispute is identical with or deceptively similar to the registered

trademark and is in relation to the same or similar goods or services;

2. If the identical or similar mark can cause confusion in the minds of general public
to have an association with the registered trademark

3. If the registered trademark is used as a part of trade name or business concern for
goods and services in respect of which the trademark is registered

4. If the trademark is advertised and as a result it takes unfair advantage or is contrary

to the honest practices or is detrimental to the distinctive character and reputation of
the registered trademark.

5. If the registered trademark is used in the material meant for packaging or labelling
of other goods or as a business paper without due authorization of the registered
user.

CASE ANALYSIS -
 V/S

Citation: 2009 SCC OnLine Del 3275

Facts
The present case established many principles of trademark along the principles constituting its
uses and infringement. The Coca Cola Company (Plaintiff), was the largest brand in soft drinks.
It had a presence in over 200 countries. It primarily functioned through appointing bottlers and
granting them license to use its trademarks for sale of beverages. It also appointed third parties
to make beverage bases for sale to the bottlers. The Defendant no.1 was part of Parle Group of
industries; it owned the trademark to various soft drinks such as Thums Up, Limca, Gold Spot,
Maaza. On September 18th, 1993, the owner, Ramesh and Prakash Chauhan, sold all the
trademarks, formulation rights and other intellectual property rights of to the plaintiffs. This
case was instituted over allegedly unauthorized use of the mark MAAZA, after the defendant
sold its rights.
On 12th November 1993, the defendants assigned the trademark and license agreement with
their affiliate Bisleri Sales, who made the beverage base for MAAZA. The defendants
continued to retain the use of trademark in respect for countries other than India, where the
mark was already registered. In March 2008, the defendant came to be aware of the plaintiff
filing for registration of the impugned mark in Turkey. The Defendant immediately sent a legal
notice claiming a breach of their agreement. The Defendant no. 1 argued that the assignment
deed only allowed the plaintiff’s to use the mark in India. The Defendants also spoke of an
intention of starting to use the trademark of MAAZA in India as well and repudiated the claims
licensing agreement between the both of them. The plaintiff thus approached the High Court
with a suit for temporary injunction under Order 39, Rule 1 and 2 of the Civil Procedure
Code (CPC). Additionally, the plaintiff also contended that according to the agreement, the
right of using the formulation of MAAZA was of the defendant alone, but in violation of the
agreement, the defendant had disclosed the information to third party named M/S Varma
International. The court allowed the injunction and appointed a local commissioner to look into
illegal disclosure of information.
The plaintiff accused defendant no. 1, Ramesh Chauhan, of disclosing sensitive information
about Maaza’s recipe to Mr. Vishal Varma, owner of Varma International. The plaintiff
therefore asked for impleadment of Mr. Ramesh Chauhan and Mr. Vishal Varma as necessary
parties to the case. The Court impleaded Mr. Vishal Varma as defendant in the case.

Issues:
1. Whether the Delhi High Court had jurisdiction in the instant case?
2. Whether the plaintiff was entitled to get permanent injunction? and
3. Whether it was necessary to implead Mr. R.B. Varma, who was the father of Mr. Vishal
Verma and also a former employee of Bisleri?

The instant case mainly revolved around provisions of three statues:

a) The Trademarks Act, 1999
b) The Civil Procedure Code, 1908 and
c) Specific Relied Act, 1963

Reasoning and Analysis

The defendant filed a suit under Order 39 Rule 4 of CPC, which allows a party to make an
application against an ex-parte order. The defendant prayed for vacating the court’s order made
on 15th October 2008 citing lack of jurisdiction of the Delhi High Court. The defendant
contended that since their registered office was in Mumbai, it was the Bombay High Court
which had the appropriate jurisdiction in the matter. The Court disagreed with the Defendant
and established its jurisdiction under Section 131 of the Trademarks Act and Section 20(c)
of CPC. Section 131 of the Trademarks Act allows a suit to be instituted at the place of
residence or business of the plaintiff. Section 20(c) allows suits to be instituted in jurisdictions
where the cause of action wholly or partly arise. Since the defendants had advertised their
intention of reusing the impugned mark, therefore the cause of action for the dispute arose in
Delhi bringing the case under the Delhi High Court’s Jurisdiction.
The Court decided in favour of plaintiff on the issue of permanent injunction as well. The Court
held that since the defendant made an advertisement establishing their intention of use of the
impugned mark, it came within the ambit of the definition of ‘use’ as postulated under section
2(2)(c)(ii) of the Trademark Act, 1999. The Section explicitly mentions any reference to the
use of mark as an example of ‘use’. The Court also reasoned that there were several precedents
establishing that interpretation: In Pfizer Products Inc v. Rajesh Chopra, The Delhi High Court
itself held that the defendant, who had threatened to sell the offending goods owned by the
plaintiff, was to be interpreted as use and conferred jurisdiction on the Court. The Court further
held in that case that while it was to be decided later on whether the threat perception was
justified, prima facie there was an established case of use. For the plaintiff to get a permanent
injunction the court had to see whether there was prima facie evidence of a dishonest use of
the mark. From the reports of local commissioners appointed to visit the factory of the M/s
Varma International, the court gathered that the company was exporting maaza bottles to one
Mr. Pars Ram Fruit and Spices in Australia. Mr. Pars Ram Fruit had a trademark registered for
“MAAZA” in the same class as plaintiff’s registration of “MAAZA”. This particular
registration was then transferred to defendant no. 1, Bisleri International. Furthermore, M/s
Maaza Beverages Inc., New York also issued documents which showed the defendants were
purchasing “MAAZA” drinks to the knowledge of the proprietor of Varma International. This
proved a nexus between the two parties. Eventually defendant no. 1 also admitted to purchasing
“MAAZA” drinks from Maaza Inc. and exporting it to Australia through Varma International.
The fact that the defendant exported the “MAAZA” drinks from India established that there
was sale within the country thereby infringing plaintiff’s trademark as established under Souza
Cruz v. N.K. Jain [PTC (Suppl) (2) 892 (Del)]. The court held that since there was a case of
dishonest case being laid out, therefore it is a well-settled provision in law, established by the
apex court in Midas Hygiene Industries Ltd. v. Sudhir Bhati [2004 (28) PTC 121 (SC)], that a
grant of injunction must follow.
The Defendant also attempted to dissuade the court from allowing the injunction through the
Specific Relief Act. The Defendant used section 41(h) of the Act to establish that since there
was an equally efficacious remedy available, therefore an injunction ought not to be granted.
The Court held that since it was an exclusive right of the plaintiff being impugned, there was
no efficacious remedy except an injunction. Furthermore, the court pointed out the remedy
available under Section 29 of the Trademarks Act and stated that remedy could be used
instead of Specific Relief Act.
Lastly, the court also allowed to implead Mr. R. B. Varma as defendant no. 4. The court took
the decision because Mr. R. B. Varma, being the father of Mr. Vishal Verma and also a former
employee of Mr. Ramesh Chauhan, was a key element in determining the real question of
controversy in the case.
 Judgment
The court held that because the defendant is substantially involved in the commercial
activities in Delhi, this gives the court the appropriate jurisdiction to decide the case that
concerns the violation of trademark rights and the provisions in the law that upholds this
reasoning are given in section 134 (2) of the Trade Marks Act of 1999 and section 20 (c) of
the Code of Civil Procedure of 1908. The court explained that from a criminal law point of
view, Indian Citizens are held accountable for the offences perpetrated outside the country as
provided by the Indian Penal Code. The defendant produces his goods from Delhi which
consequently gives the Delhi High Court the jurisdiction over this suit.
The assignment deed is a binding agreement between the parties as per the Specific Relief
Act of 1963 under section 41 (h) and (). This means that the party that is responsible for
breaching the contract is liable to the party that has been wronged when the breach of
contract occurred. The intellectual property rights and all the other associated rights of the
trademark of "Maaza" were explicitly and unconditionally specified and the defendant had
agreed to transfer the same. Therefore the defendant had no right to terminate the contract in
any way. The time of the transfer of all these rights from the defendant to the plaintiff can be
specifically pointed out as the date on which the contract was signed by the parties. This very
contract gave the plaintiff the power of being the rightful owner of the trademark and hence
has the proprietorial discretion, without the need to notify or seek permission from anyone
regarding its usage.
The court upheld that for trademark use, a sale made outside the country is equivalent to a
sale made within the country. As the plaintiff became entitled to use the trademark, after the
execution of the assignment deed, whether within India or outside India, the infringement of
the trademark rights has occurred. A temporary injunction is being issued against the
defendant that disallows the defendant from using the trademark of "Maaza" in India and
outside India, this is a necessary step to safeguard the rights of the plaintiff and save it from
irreversible damages.
The Court held in favour of the plaintiff on all three issues. The Court held that the Delhi High
Court had jurisdiction in the case. The Court also held that circumstances of the case mandated
the exercise of a permanent injunction to ensure that plaintiff doesn’t suffer more damage and
lastly the Court also impleaded R.B Verma since it believed that his joinder was necessary for
the court to find the truth in the case.
 Conclusion

The distinctive symbol or group of words that represents a business or its goods is called a
trademark of that company. If there is an active use of this symbol all the administrative
requirements are done and the costs of registration to the concerned authority are paid in time
then that company gains the exclusive right to use that trademark to propagate in the open
market.
The court decided in favour of the plaintiff as the defendant had used the trademark 'Maaza'
with the mere presumption, that the agreement signed was limited to India only.
This case also established that trademark is an international issue, and the protection of
trademark rights is practised beyond international boundaries.
This case was a landmark judgment in terms of the scope of protection that was allowed under
Trademark Law. This case first and foremost stands as a precedent on the interpretation of what
constitutes use under Trademark Law. The case stands as the reference case in questions of
court jurisdictions and what constitutes infringement of Trademark. Trademark is a territorial
right with global implications. Every owner of a trademark should their caution awareness of
their IP.
 Bibliography

Primary Sources:

Statutes –
1. The Trademarks Act, 1999
2. The Civil Procedure Code, 1908
3. Specific Relied Act, 1963

Secondary Sources:

Books –

1. Law Relating to Intellectual Property Rights by M.K. Bhandari

2. Intellectual Property Law by Meenu Paul

Websites -

1. https://lawessential.com/ip-case-laws/f/coca-cola-v-bisleri-international-pvt-ltd-ors-
case-study
2. https://www.pathtoip.com/blogs/case-study-coca-cola-company-v-s-bisleri-
international-pvt-ltd/
3. https://www.legalserviceindia.com/legal/article-3951-case-analysis-on-the-coca-
cola-company-vs-bisleri-international-pvt-ltd.html