Injunction can be sought not only in a case of actual use but also in a case of threatened use of a trademark.
December 29, 2011
SOUTH AFRICAN BREWERIES INTERNATIONAL (FINANCE) BV & ANR v.MOHAN GOLDWATER BREWERIES LTD. & ANR [DEL] C.S(OS).No. 1073/2002- Section 142 of Trademark Act, 1999 Decided on : 31/10/2011 Here the plaintiffs “South African Breweries International (Finance) BV claimed registration of the trademark CASTLE and CASTLE label in respect of beer in a large number of countries. According to the plaintiffs, the trademark CASTLE is a well-known mark in India and is well-recognized worldwide on account of its extensive availability in various countries and duty free shop of various airports. A notice was sent by the defendants (M/s Mohan Goldwater Breweries Ltd), a Company registered in India to the plaintiff claiming ownership of the trademark CASTLE PILSNER in respect of beer. They also claimed that the trademark OLD CASTLE and CASTLE were registered in their favour on 30th May,1972 and 22nd October, 1973 respectively and also claimed that the plaintiffs were passing off their goods as those originating from the defendants and, thereby infringing their registered trademark. On enquiry, the plaintiffs came to know that the trademark registrations in favour of the defendants had been removed from the record of Registrar of Trademarks on account of non payment of renewal fee, and in fact, the defendants never sold any product bearing the trademark CASTLE. The plaintiffs have sought an injunction, restraining the defendants from manufacturing, selling, offering for sale or advertising any beer or alcoholic beverages, using the trademark CASTLE. Here the High court of Delhi has held that, since it is the plaintiffs company which first used the trademark CASTLE in India and the registrations in favour of defendant No.1 have already been cancelled, defendant No.1 Company has no right to use this mark and thereby pass off its goods as that of the plaintiff, hence permanent injunction was granted. Further the Learned Court held that injunction can be sought not only in a case of actual use but also in a case of threatened use of a trademark. The owner of a trademark is well within his right in coming to the Court, for grant of an injunction, the moment he has a genuine apprehension that the defendant is likely to infringe his mark or to pass off his goods as those of the plaintiff. He need not necessarily wait till actual invasion of his rights and the law entitles him to take remedial action, well in time, whenever there is a reasonable threat of his right being invaded.