Delhi High Court frowns upon use of ‘Hillxxx’ for Energy Drinks
The crux of the dispute between the parties is the brand name and packaging of the energy drink manufactured and marketed by Hell Energy Magyarorszag Kft (hereinafter Hell Energy) under the brand name HELL with distinctive packaging, depicted below.
The Defendant, Shri Brahm Shakti Prince Beverages Pvt. (hereinafter Prince Beverages) has allegedly copied the brand name and packaging of Hell Energy, depicted below
This is not the first round of litigation between the parties. Hell Energy, in June 2021, filed a suit, being, CS(COMM) 254/2021 titled Hell Energy Magyarorszag Kft. v. Shri Brahm Shakti Prince Beverages Pvt.Ltd., In the said suit, the Delhi High Court had granted an exparte ad interim order of injunction restraining Prince Beverages from a) manufacturing, marketing, selling, storing and advertising the beverages under the trade mark HELLxxx and HALL Energy drink b) infringing Hell Energy’s trade mark HELL and its variations thereof c) infringing copyright in its product packaging/trade dress d) using any trade mark, copyright, trade dress deceptively similar to the Hell Energy’s trademark, copyright, trade dress and/or passing off their goods. The product packaging of the parties from the earlier suit is depicted below
Pursuant to the suit being filed, the parties settled the matter and entered into a settlement agreement. As part of the settlement, Prince Beverages acknowledged
- Hell Energy rights in the mark ‘HELL’/‘HELL ENERGY’ and other variants
- confirmed and undertook that they will not manufacture, sell or advertise products under the impugned mark ‘HELLxxx’, ‘HELL ENERGY DRINK’, or any other confusingly or deceptively similar trademark.
- pay damages of Rs. 20,00,000 (INR 20 million approx. US $ 25000) to Hell Energy if they violate the terms and condition of the undertaking.
Hell Energy on coming to know that Prince Beverages have launched energy drink under the mark HILLXXX filed a fresh suit contending:
- They are a Hungarian company engaged in the manufacture and sale of energy drinks and adopted the mark ‘HELL’ in the year 2006 along with a unique logo, trade dress and artistic work.
- The marks ‘HELL’/‘HELL ENERGY’, and ‘HELL ENERGY DRINK’ are used in various logo forms/ variations.
- They registered the hellenergy.com domain in its favour on June 11, 2006 and promoted their business through the official website, i.e., www.hellenergy.com.
- Their mark / HELL is registered in several countries in class 32 including India.
- The Prince Beverages despite providing clear undertakings not to use a deceptively similar mark has wilfully violated the court order.
The court passed an immediate order restraining Prince Beverages from further sale of energy drink under the mark HILLXXX . Furthermore, court appointed local commissioner to seize the infringing goods. Prince Beverages appeared and pleaded
- they were wrongly advised by their counsel to adopt the mark and packaging of HILL product
- They have suffered huge loss and now intend to change the packaging to the one depicted below
The court passed a final order decreeing the suit against the Prince Beverages with following observations:
- The above-shown packaging violated the settlement agreement as per which there was a restriction on the use of the mark HILLxxx in any manner or any deceptively similar mark.
- The adoption of the mark ‘HILLxxx’ and the sale of the products under the said mark by Prince Beverages clearly indicate that they have scant regard for the orders passed by this Court.
- Even the proposed label , show that the Prince Beverages wish to continue the use of the mark ‘HILLxxx’. It is only upon this Court clearly expressing its disapproval of the conduct of the Prince Beverages that they have expressed remorse and have agreed to remove the word ‘HILL’ from the label.
- The earlier settlement agreement dated 21st September 2021, which imposes minimum damages of Rs.20,00,000/- ( approx. US $ 25000) in case of violation of the terms deserves must be given effect to.
- Prince Beverages s shall pay a sum of Rs.30,00,000/-( approx. Us $ 38000) to the Plaintiff, towards costs and damages for having violated the orders passed by this
A strong message from the Court that terms of settlement must be complied both in letter and spirit. And the clause binding the Defendants for their future conduct is a practical condition to be included.