India: "TIGER HILL"; Beer Free of Charges of Deception

Last Updated: 14 June 2006
Article by Manisha Singh

Asia Pacific Breweries Ltd, an incorporation in Singapore manufactures beer under the trademark ‘TIGER Beer’. Asia Pacific Breweries claims to be the owner and user of the mark since 1932. The company owns 14 Breweries in eight countries round the world.

Superior Industries Ltd, a Company under the Indian Companies Act, 1956 is also a user of the mark TIGER beer. In this event, Asia Pacific Breweries filed a suit for permanent injunction restraining Superior Industries from using the mark.

In the course of their pleadings, Asia Pacific Breweries presented a certified extract from the Register of Trade Marks in respect of their registration. They further stated that their labels had been registered in 58 countries from Europe, Asia, America and Africa but no certificate in relation to any such registration was presented. Asia Pacific Breweries stated that their product was brewed by a highly automated process to ensure high standards and to maintain consistency in quality in all of its markets round the world. TIGER beer claims to have been acknowledged as the WORLD’S BEST BEER and has the distinction of "gold medal beer". Further, the brand TIGER was said to have become synonymous with TIGER BEER and the recipient of accolades from some of the leading newspapers and journals. Several such acclaims were stated for Asia Pacific Breweries to substantiate that it enjoyed tremendous goodwill and reputation all around the world. It was further pleaded that they were already making sales to importers, Indian Airlines, ITDC, embassies and hotels and planned to develop its market in India, through other channels post the lift of the Govt. ban on sales of beer by overseas companies.

In June 2001, on learning of Superior Industries’ brand TIGER HILL, Asia Pacific Breweries communicated with them and negotiations were made for an agreeable settlement, though the deal fell out. Asia Pacific Breweries alleged Superior Industries of an infringement of its mark and an attempt to pass-off its goods to an unwary purchaser of average intelligence, as that sold by Asia Pacific Breweries.

Superior Industries contesting the suit, denied averments regarding the claimed trans-border reputation held by Asia Pacific Breweries. They contended that Asia Pacific Breweries hadn’t entered the Indian markets and supply to certain dealers or select customers in a clandestine manner did not prove their popularity amongst ordinary customers in the country. Further, averments regarding the registration of the trademark in India and abroad were also denied. They claimed to be users of the mark TIGER HILL since the capture of the post during the Kargil war. They further asserted that the trademark and device of both the brands being materially different with no phonetic or visual similarity, having different packaging and a stark difference existent in pricing (that of Asia Pacific Breweries about six times higher), there subsisted no likelihood or confusion in the minds of the consumers. It was further contended that TIGER was a common language word and Asia Pacific Breweries cannot claim that monopoly over it.

Asia Pacific Breweries also filed an application for interim injunction, which was contested on similar grounds. It was also pointed out that when the case was taken up for the first time in May 2002, summons were ordered but no ex parte injunction was granted.

The Court taking note of various contentions placed forth it stated that Asia Pacific Breweries was not in a position to seek a grant for injunction on the basis of trans-border reputation. The fact that they had not placed on record any evidence to show worldwide registrations or to prove voluminous sales in or outside India or even extensive advertisements in India /foreign countries.

Turning its attention to the contention regarding deception of an unwary customer of average intelligence and imperfect memory, the Court stated that a prima facie case for grant of injunction was made out in a passing off action.

Taking note of Asia Pacific Breweries’ non-submission of registration certificates in respect of labels, the Court reiterated that mere registration was insufficient to prove the actual user of the Trademark. They further said that unless the two competing labels were available for comparison, it would not be possible for the Court to return a finding even prima facie that a case of infringement or copyright was made out. The Court held that unless the essential features such as get-up, packing and other marks show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial whereas in a case of passing off, the alleged party may escape liability even if it is shown that the added matter is sufficient to distinguish his goods from the other.

The Court further held that the two companies supplying beer to two different segments of society, (i.e. Asia Pacific only to select hotels, airlines etc. while Superior Industries were suppliers at a retail level), there arose no possibility of an average person mistaking one brand to be the other. A visual comparison of the two was stated not to be indicatory of deceptive similarity except in the use of the word TIGER. Examining the layout on the can of Asia Pacific Breweries and the bottle marketed by Superior Industries, further substantiated the Court’s conclusion.

The Court stated that taking prima facie record of what was placed forth, Asia Pacific Breweries had failed in establishing a case in their favour. This reiterates that to establish trans-border reputation the evidence of foreign registration and sale in foreign countries need to proven beyond doubt. In this case it was found that Asia Pacific’s word TIGER had not assumed secondary significance to the extent that it denoted its products. However, the conclusion held is that though Asia Pacific has not been able to make out a prima facie case for interim injunction it may by way of evidence , during the trial, make out a good case of infringement and passing off.

© Lex Orbis 2006

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions