19 Nov 2021

BACARDI AND COMPANY LIMITED v BAHETY OVERSEAS PRIVATE LIMITED & ORS.

FACTS:

An interim application was filed in the High Court of Delhi by the plaintiff (BACARDI AND COMPANY LIMITED) a renowned manufacturer of alcoholic beverages, one of them under the name of “BREEZER” seeking injunction to restrain the defendants (BAHETY OVERSEAS PRIVATE LIMITED & ORS.) from using the alleged infringing mark “FREEZ mix” to manufacture and sell its beverages.

CONTENTIONS OF THE PLAINTIFF:

The present suit is filed seeking a decree of injunction against the defendants under its brand name/trademark “FREEZEMIX”, a non-alcoholic fruit-based beverage manufacturer. The plaintiff possesses registrations for the word mark “BREEZER” along with the shape of bottle registered under Class 32 and 33 of the Trademarks Act.

The plaintiff alleges that the defendants have used the mark ”FREEZEMIX” in a manner which clearly infringes the plaintiff’s registered word mark “BREEZER” as well as the registered shape mark of the bottle in which the plaintiff manufactures and sells its product. Defendants failed to secure registration of their “FREEZ” device mark from the Registrar of Trademarks, Delhi but continued to use the infringing mark, a month after receipt of the cease and desist notice from the plaintiff. Then they applied to the Registrar of Trademarks, Ahmedabad for registration of its “FREEZMIX” word depicting malafide intentions. The plaintiff demonstrated similarity between shapes of the bottles that had distinctive ridges on the cap and “champagne styled base”, aspect in colour, phonetic as well as visual similarity.

CONTENTIONS OF THE DEFENDANT:

It is in the case of defendants that both of the word marks were not phonetically similar since the word “BREEZER” involves two syllables, “Bree” and “zer”, whereas the word “FREEZ” consists of only one syllable. The plaintiff could not claim any monopoly on the colours of its bottles because all the seven primary colours were used by them and no one could claim exclusivity over primary colours. Refuting the plaintiff’s argument they further stated that Section 9(3)4 of the Trademarks Act envisages registration of the shape of the plaintiff’s bottle as a trademark which was common to the trade.

FINDINGS OF THE CASE:

The court is of the prima facie opinion that Section 28(1) grants exclusivity to the registered proprietor of a trademark including the “shape mark” relating to the plaintiff’s bottle, as well as its “BREEZER” word mark. The word “FREEZMIX” may not be phonetically similar to “BREEZER” but as the former label is clearly written in a manner that the suffix “mix” is in disproportionally small letters as compared to “FREEZ” what strikes the eye is the word “FREEZ” and not the suffix. Henceforth, the defendants are restrained from using the impugned marks, inter alia, “FREEZ” or any mark/label/sign/device/name or domain name, which is identical with and/or deceptively or confusingly similar to the plaintiff’s “BREEZER”.