To briefly recount the facts for our newer readers, in this case, Bisleri Sales Ltd. previously Golden Agro Products, was the registered proprietor of the TM Maaza as well as the owner of the secret base etc. used to manufacture the product. The company then amalgamated with Bisleri International. As far back as 1993, Coca Cola and Bisleri Intl. entered into an agreement to "irrevocably" transfer all the rights as to technical know how and a general as well as specific assignment as to goodwill, etc. The agreement also, importantly, contained a negative covenant that allowed Coca Cola to use the MAAZA trademark in India, but nowhere else. Thus, when Coca Cola company confronted Bisleri with information received as to the sale of beverages under the MAAZA mark in Turkey, they were answered with a legal notice stating that not only were they allowed to sell in Turkey without infringing the mark, and that they planned to sell in India as well.
As it turns out that was a bad move.
As per this order delivered by Justice Manmohan Singh of the Delhi High Court sometime this month following the judgment of Products v. Rajesh Chopra [2006 (32) PTC 301(Delhi)], (apart from other well articulated reasons), a "groundless threat" such as the one contained in the notice by Bisleri as well as newspaper reports would in fact confer upon a Court the necessary jurisdiction to try and entertain the suit. The threat would amount to an intention to "use" the said mark; this with conjunction of the assignment of a registered mark MAAZA in favour of Bisleri International was held to be within the meaning of Section 2 (2)(c) (i) of the Trademarks Act and therefore mean that a part of the cause of action would lie within the jurisdiction of the Court in Delhi.
For all the IP Practitioners interested in the boring jurisdictional bit, and not just the juicy gossip -no pun intended- Justice Singh after a thorough examination of Section 134 of the Trademarks Act and Section 20 of the CPC, also held that the Delhi High Court could try and entertain the suit since:
- Maaza was sold extensively in Delhi: Meaning that business was carried out within the territorial jurisdiction of the Court; and,
- The Defendant had a plant (the same being used to bottle drinking water being of no major consequence): Meaning that the Defendant carried out business within the jurisdiction of the Court at Delhi; and,
- Export of beverages under the mark MAAZA by the sister concern of Bisleri: If the infringing activity is conducted within the territory of the Court- even if the same is for export purposes, the Court would have the necessary jurisdiction to try the matter. Justice Singh used the cases of Janinder Jain v. Arihant Jain, 2007 (34) PTC 128 (Del).
Thus, upholding the jurisdiction of the Delhi High Court, Justice Manmohan Singh then went on to dispose quickly of other issues- holding that there was no bar against seeking a Specific Relief of an injunction under the Specific Relief Act since there was a determinable contract in this case and further that the once a prima facie case of infringement had been proven, the relief of an interim injunction will follow.
So the woes of Bisleri continue, while it seems that for now at least Coca Cola will have quite a Maazedar time (pun intended time around!)