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UNDERSTANDING WITH CASES

PEPSICO, INC & ANR..... PLAINTIFFS


VERSUS
PSI GANESH MARKETING & ANR..... DEFENDANTS

DEFINING THE CASE

The plaintiffs have filed the present suit for


permanent injunction restraining violation
and infringement of rights in the trade
mark,

trade

name,

label

AQUAFINA,

infringement of copyright, rendition of


accounts,

dilution,

and

delivery

up.

Summons were issued in the suit on


29.01.2013

and

on

21.08.2013.

The

present case relates to the trademark


AQUAFINA and the illegal adoption and use
by

the

Defendant

of

an

identical

trademark/name/logo/label AQUA FIES for


packaged

drinking

water.

the

mark

AQUAFINA is a unique word coined and


adopted by the Plaintiffs and has been
exclusively used by Plaintiffs since 1994.
The adoption of the mark/logo/label AQUA
FIES by the Defendants is completely
illegal

and

unlawful

and

further

the

impugned mark/logo/label AQUA FIES of

LITERATURE REVIEW

the Defendants is identical to Plaintiffs


well-known and registered mark/logo/label
AQUAFINA.

Indias

obligations

under

the

TRIPS

Agreement for protection of trademarks,


inter

alia,

include

protection

to

distinguishing marks, recognition of service


marks, indefinite periodical renewal of
registration,

abolition

of

compulsory

licensing of trademarks, etc. With the


globalization of trade, brand names, trade
names,

marks,

etc.

immense

value

minimum

standards

have attained

that
of

require

an

uniform

protection

and

efficient procedures for enforcement as


were recognized under the TRIPS. In view
of

the

same,

consequential

extensive
amendment

review
of

the

and
old

Indian Trade and Merchandise Marks Act,


1958 was carried out and the new Trade
Marks Act, 1999 was enacted. The said Act
of 1999, with subsequent amendments,
conforms to the TRIPS and is in accordance
with

the

international

systems

and

practices.
Under the Trade Marks Act, both civil and

criminal

remedies

are

simultaneously

available against infringement and passing


off.
Infringement of trademark is violation of
the

exclusive

rights

granted

to

the

registered proprietor of the trademark to


use the same.

Passing of is a common law tort used to


enforce

unregistered

trademark

rights.

Passing off essentially occurs where the


reputation in the trademark of party A is
misappropriated by party B, such that
party B misrepresents as being the owner
of

the

trademark

affiliation/nexus

with

or

having

party

A,

some
thereby

damaging the goodwill of party A.


Registration of a trademark is not a prerequisite in order to sustain a civil or
criminal

action

against

violation

of

trademarks in India. In India, a combined


civil action for infringement of trademark
and passing off can be initiated.
The trademark is initially registered for a
period of 10 years, which is calculated

from the date of filing of the application


and in case of convention application, from
the date of priority. The registration is
required to be renewed within 6 months
before

the

date

of

expiry

of

the

registration, i.e., 10 years from the date of


the application or subsequent renewals.
The failure in renewing the trademark
within the stipulated period of time and a
grace period of maximum 1 year granted
for

restoration

of

the

trademark,

automatically leads to removal of the


trademark

from

the

Register

of

Trademarks.

An

aggrieved

application

person

before

the

may

file

an

Registrar

of

Trademarks or to the Intellectual Property


Appellate Board (IPAB) for cancellation or
varying the registration of the trademark
on the ground of any contravention or
failure to observe a condition entered on
the Register in relation thereto.
QUALITATIVE AND

The application for rectification can also be

QUANTITATIVE DATA

filed for removal of an entry made in


Register,

without

sufficient

cause

or

wrongly remaining on the Register and for

correction of any error or defect in any


entry in the Register.

QUALITATIVE :
On the basis of the documents placed on
record, the plaintiffs have established that
plaintiff

no.

is

the

owner

of

the

trademark, trade name, logo and label


AQUAFINA and the plaintiffs have the
exclusive right to use the same. Plaintiffs
have also established that they are using a
particular label in respect of their product
and said label was created for and on
behalf of the plaintiffs and that the said

label of plaintiffs is an original artistic work


that falls within the meaning of Section
2(c)

of

the

Copyrights

Act,

1957.

Plaintiffs have also established that on


account of enormous amount spent on
advertisement

of

AQUAFINA

packaged

drinking water in India, plaintiffs have been


able to generate vast turnover for years
and that during the past many years, the
plaintiffs have built up an unparalleled
reputation and goodwill with respect to
their trademark, trade name, label and
logo

AQUAFINA.

Plaintiffs

have

also

established that the trade mark AQUAFINA


used for packaged drinking water is highly
distinctive and is identified with plaintiffs
only. Plaintiffs have also established that
the defendants by using the trademark
AQUA

FIES,

deceptively

which

is

identical

and/or

similar

to

plaintiffs

mark

AQUAFINA, in respect of packaged drinking


water, are causing infringement of rights in
the

trademark

and

copyright

of

the

plaintiffs.
QUANTITATIVE :
A bench of Justice G S Sistani restrained
PSI

Ganesh

Marketing

from

using

"deceptively

similar"

trademark

'Aqua

Fies', causing infringement of rights in the


trademark and copyright. The court also
awarded damages to the tune of Rs 5
lakh to Pepsico India on account of
illegal

activities

of

PSI

Ganesh

Marketing and ordered destruction of all


the infringing goods within 4 weeks.

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