sabmiller v/s som distilleries

04/10/2023Indian Institute of Management Raipur

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SABMiller v/s Som distilleries

Presented by:Samkit Jain (12PGP112)Sushant Singh (13PGP115)Trisha Gajbhiye (13PGP116)Yogesh Gupta (13PGP117)Bhavana Ziradkar (13PGP118)Sai Shilpa (13PGP124)


2 Agenda

Companies overview Facts Issues Case Facts Verdict Legal Provisions and Violation Analysis


3 PLAINTIFF OVERVIEW: SABMiller India Ltd. One of the world’s largest brewers, SABMiller has

brewing interests and distribution agreements across six continents.

Major brands include Haywards5000, Foster’s, Knockout, Royal Challenge & Miller high life etc.

SABMiller entered the Indian market in the year 2000 by acquiring Narang breweries and has since acquired several breweries and brands.


4 DEFENDANT OVERVIEW: Som Distilleries & Breweries Ltd.

Som Distilleries and Breweries Limited (SDBL) was set up in 1994 by Mr. J.K Arora and Som Distilleries Private Limited (SDL).

The beer is being sold under the brand names of Hunter, Woodpecker, Black Fort, Power, Legend.

The company also supplies draught beer to all the major hotels in Madhya Pradesh and Chhattisgarh under the brand names of Hunter and Woodpecker.


5 FACTS

On February 19, 2009, the plaintiff applied for registration of its series trade mark "SABMiller India - SABMILLER INDIA" under the Trademarks Act, 1999.

They obtained registration for a design to be applied on its beer bottles under the Design Act, 2000 on 15th January 2010.


6 ISSUES

In January 2012, prior to its trademark being registered, the plaintiff found that the defendant was selling and distributing beer in bottles having the plaintiff’s registered design as well as name

This lead the plaintiff to sue the defendant for design infringement and passing off.


7 CASE FACTS

The Plaintiff on 3rd February 2012 instituted a suit against the Defendant before the District Court of Raisen, Madhya Pradesh for permanent injunction.

The District Court, Raisen by its order restrained the Defendant from removing from its factory, its bottles bearing the trade mark SABMiller India.


8 CASE FACTS

The said Suit was transferred to the Additional District Judge, who by his order dismissed the Plaintiff's application for interim reliefs in the wake of invalidity of registration of its design.

The Plaintiff thereafter filed an Appeal against the said order before the Hon'ble High Court of Madhya Pradesh at Jabalpur which was again dismissed on the same grounds.


9 CASE FACTS

On 5th December 2012, the Plaintiff's series trade mark application was registered.

The Plaintiff thereafter filed the suit for infringement of its registered trademarks against the defendant in the Bombay High Court.

Urgent interim relief was provided restraining the defendant from using bottles embossed with the plaintiff’s trademark


10 CASE FACTS

Defendant had submitted that while filling its beer it has used recycled bottles of the Plaintiff bearing the Plaintiff's mark and the same was done inadvertently or as an error since the recycled bottles are used in this trade.

Defendant also submitted that in fact the Plaintiff has used recycled bottles and has sold in bottles bearing the trade mark "Kingfisher".

The Defendant has further submitted that the suit is barred by the principles of res judicata.


11 VERDICT

The defendant is guilty of infringing the plaintiff’s trademark

Defendant should not infringe upon its trademark by using beer bottles for sale of beer on which the plaintiff’s trademark is embossed

The court held that res judicata will not apply Ad-interim order was passed until the final disposal of

the suit.


12LEGAL PROVISIONS & VIOLATIONS

Section 29(2) under the Trademarks Act 1999

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

In any case falling under clause (c) of sub-section H(2) the Court shall presume that it is likely to cause confusion on the part of the public



Section 30(1) in The Trade Marks Act, 1999

Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use-

(a) is in accordance with honest practices in industrial or commercial matters, and

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.

http://indiankanoon.org/doc/1880720/

http://indiankanoon.org/doc/840618/



Section 30 (2) under the Trademarks Act 1999 Infringement does not apply when the Defendant

uses the Plaintiff's registered trade mark not as a trade mark but to show the character, kind or quality of the Defendant's goods.


15 ANALYSIS

Initially when the case was filed in the MP court, the defendants were justified in using the recycled bottles as SABMiller India did not register its trademark.

The defendants were trying to pass off their goods as the goods of plaintiff as their attorney refused to give a written statement that this practice will not happen in future.


16 ANALYSIS (contd…)

Registered trademarks cannot be infringed in the name of trade practices.

Rules and regulations for the use of recycled bottles requires more clarity.


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Thank You!

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sabmiller v/s som distilleries