In the case of Radico Khaitan Ltd vs. M/s. Devans Modern Breweries Ltd., Radico Khaitan Ltd. (”Radico”) filed a suit seeking permanent injunction against Devans Modern Breweries Ltd. (“Devans”) at the Delhi High Court. It stated that Devans’s mark ‘ELECTRA’ was identical to and infringing upon Radico’s registered trademark ‘ELECTRA’ in class 33. Radico has also opposed the Devans’s application for trademark registration of the mark in class 32. It is noteworthy that Class 32 and Class 33 are classes with cognate/ related goods.

Devans contended that it was the honest and bonafide adopter of the marks ‘GODFATHER’ and ‘ELECTRA’ for its brand ‘GODFATHER ELECTRA’ in relation to Beer and other goods. It also contended to be the prior user as it was using the marks since 2014. It stated that though Radico had obtained registration for the mark in 2007, it actually started using the mark only in 2016, therefore Radico’s mark was liable to be removed from the records of the Trade Marks Registry.

Radico however established its prior use by way of evidence of its test launch in 2004 and placing on record invoices and agreements related to its various activities involving the brand ‘ELECTRA’ in the following years . The Court relied upon Hardie Trading Ltd. and Anr. Vs. Addisons Paint and Chemicals Ltd. to elaborate that the ‘use’ may not be limited to use on the goods or to sale of goods bearing the trade mark.

The Court observed that the trademark law permits registration of a second application for the same mark only if prior continuous use of the mark is proved by the applicant. Also, relying upon M/s Gujarat Bottling Co. Ltd. and others v. Coca Cola Company and others it observed that protection of a registered trade mark is not dependent on its use.

The Court therefore ruled in favour of Radico since it satisfied the primary grounds for granting of injunction, that is, it made out a prima facie case, the balance of convenience was in its favour and it successfully proved that irreparable injury would be caused to it if the permanent injunction is not granted. Devans was thus restrained from using the mark ‘ELECTRA’ or any mark deceptively similar to it.

Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan

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