Pepsico objects to the use of MIRINDA for country-made liquor.
The use of the mark (Hindi transliteration for the word MIRINDA) in relation to country-made liquor is a cause of concern for Pepsico. Pepsico Inc. and Ors (Pepsico) filed the suit against the Defendant, Jagpin Breweries Limited and Ors (Jagpin), at the Delhi High Court alleging trademark infringement, passing off its mark MIRINDA. The High Court granted an ex-parte interim injunction at the admission stage. Jagpin, on being served, filed an application to set aside the injunction order. This note discusses the contentions raised by the parties and the order passed by the High Court in deciding the interim injunction application.
Pepsico, in support of its case, stated:
- It is one of the world’s premier consumer products companies and one of the world’s best-known manufacturers and distributors of soft drink beverages and snack food products. The products include refreshment beverages, packaged drinking water, sports drinks, fruit juices, and salted snacks and foods, under its several famous and reputed marks such as MIRINDA, PEPSI, 7UP, MOUNTAIN DEW, AQUAFINA, LAY’S, etc.
- The mark MIRINDA was first adopted in the year 1959, and the mark has been used for over 60 years in relation to fruit-flavoured, non-carbonated beverages. In India, MIRINDA has been available since 1996, and the mark is registered with the earliest registration dating back to 1997.
- The mark MIRINDA has been consistently ranked as a leading brand for several years both globally and in India, and they have diligently enforced their statutory and common law rights in the MIRINDA marks over the years.
- In December 2021, they became aware of Jagpin’s application to register the mark ‘CONTINENTAL MIRINDA BEER’ in Class 32. Further inquiries revealed that they were using Hindi transliteration of the mark MIRINDA for country-made liquor and had also applied for registration of the mark in Class 33, which was later abandoned.
- The unauthorized adoption and use of the impugned marks is bound to cause confusion and deception. Use of the transliteration of the registered MIRINDA mark is not permissible in law and amounts to infringement and passing off.
Jagpin to set aside the injunction raised the following contentions:
- In 2007, their predecessor, Cox India Limited, adopted the word for its range of products and sought registration of Cox whisky with the office of the Excise Commissioner.
- Adoption of the mark is honest and inspired by the meaning of the word ‘Mirinda,’ which in Latin means wonderful and signifies the quality of liquor/whisky.
- They have been continuously using the mark since 2007, and the intended purposes, trade channels, and target customers differ, and there is no chance of confusion.
- The product is sold only in seven districts of Madhya Pradesh, and as per the Government Rules and Regulations, liquor cannot be advertised, and the product will be sold only through Government outlets; thus, no confusion would arise between the rival products.
- When their predecessors adopted the mark in the year 2007, Pepsico did not have any reputation in India for the MIRINDA mark.
- There is delay and acquiescence.
In rejoinder, PepsiCo stated the following:
- Jagpin is not entitled to setting aside the injunction order as they have continued their infringing activities despite the Court’s restraint order.
- There is no delay as Pepsico became aware of Jagpin’s mark in December 2021, when it was advertised in the Trademarks Journal for opposition purposes.
- The contention that Jagpin has been using the mark since 2007 is false. Their application for the mark was abandoned, and the application filed in 2017 was on a ‘proposed to be used’ basis.
- With regard to delay and acquiescence, it is relevant to note that Pepsico has pleaded that in December 2021, they became aware that Jagpin had applied for registration of the mark ‘CONTINENTAL MIRINDA BEER’ in Class 32. Further inquiries revealed the use of the mark in relation to the country-made liquor. Thereafter, the suit was filed in April 2022. Considering Pepsico had no knowledge of the infringing activities of Jagpin, there was no occasion to allow them to grow. Thus, there is no delay and acquiescence as alleged.
- Section 29(4) of the Trademarks Act, 1999, provides infringement in case of identity or similarity of the registered mark when used in relation to dissimilar goods. Jagpin has adopted the mark , which is a transliteration of Pepsico’s mark MIRINDA which is registered both as a word and device mark in class 32. Documents on record evidence that PepsiCo is the prior user of the mark MIRINDA and has been selling products under the brand since 1998.
- PepsiCo’s case falls within the scope and ambit of Section 29(4) of the Act, considering the strength and repute of the MIRINDA mark and the degree of similarity among the rival marks.
- Jagpin’s claim of use of the mark since the year 2007 does not seem to be true, and there is no document on record to substantiate such use.
- Pepsico has made out a prima facie case, and the balance of convenience is also in their favor.
In light of the above, the High Court confirmed the injunction in favor of Pepsico restraining Jagpin from using the mark , MIRINDA or any other mark deceptively similar thereto in relation to their business till the disposal of the suit.