Transborder Reputation Extends to Cognate Goods Also

Preface

Trans border reputation of a trademark is considered not only with respect to goods that are being sold under the mark in India but also with respect to the cognate goods. A case on the point is V&S Vin Spirit V. Kullu Valley Mineral Water Co.2005 (30) PTC 47 (Del)

V&S Vin markets Vodka worldwide under the trademark "ABSOLUT" since year 1979. The Trademark was invented in the year 1879. "ABSOLUT" obtained registration in India in the year 1986 in respect of goods falling in class 33 of the trademarks Act. V&S has been selling Vodka under the Trademark "ABSOLUT" in the duty free shops since the year 1998 and in the open market since the year 2003.

Though in India "ABSOLUT" is registered and used with respect to the alcoholic beverages, in may other countries the mark with respect to mineral water and aerated water also. It came to the knowledge of V&S that one Kullu Valley Mineral Company (hereinafter referred to as KVMW) is manufacturing and selling mineral water and club soda under the trademark "KVMW ABSOLUTE". V&S filed a suit before the Delhi High Court praying for the relief of ad interim ex parte injunction against KVMW from marketing club soda and the packaged drinking water bearing the trademark "ABSOLUT".

KVMW defended the use of the word " ABSOLUT’ in his trademark interalia on the ground that the its trademark is "Kullu Valley Mineral water Absolute" of which the term ‘absolute’ is a very small part. The mark as appearing on the product is "KVMW ABSOLUT". Further, their trademark is being used with respect to the mineral water whereas the mark of the V&S is being used with respect to the beverages. The product of V&S is alcoholic in nature whereas their product is non-alcoholic.

The V&S claimed trans border reputation with respect to the trademark "ABSOLUT". The main contention of V&S was that "ABSOLUT" has acquired global reputation and therefore its use with respect to even the cognate goods would also amount to infringement of their rights and dilution of the mark.

On examination of the impugned mark, the Court found that term KVMW was one-fourth the size of the word ABSOLUTE. Therefore the word absolute was the prominent part of the KVMW’s trademark. The visual appearance of the mark establishes lack of bonafide intention on the part of KVMW in adopting the impugned mark. As the regards the difference in the goods, the court held that the alcoholic beverages are consumed not only on their own but also consumed along with soda and /or water. As the mark of V&S has acquired trans border reputation, there is likelihood of confusion as to the origin or source of the KVNW’s products when sold under the impugned mark. The Court cited with approval the following extract from the judgment in N.R. Dongre V. Whirlpool Corp. 1996 PTC (16) 476:

" the knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been marketed"

The Court took serious note of the fact that V&S had offered monetary compensation and time to the KVMW to change the label, which was turned down by the latter. The Court passed an injunction against KVMW restraining it from using the word ABSOLUTE or ABSOLUT or any other deceptively similar mark with respect to mineral water or club soda.

The Court however adopted a lenient attitude and gave KVMW three months time to dispose off its inventory of infringing products.

The concept of the well-known trademark acquired statutory recognition after amendment in Trademarks Act in the year 1999. Consequently a mark cannot be registered if it is deceptively similar to a well-known mark in India and the use of that would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark. The Courts in India are increasingly recognizing trans border reputation of the trademarks. However it is important to show that the Indian consumers have knowledge of the trademark claming global reputation. Once awareness of the mark among the Indian consumers is established, the Courts will be willingly to extend it to even the cognate products.

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