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  • Writer's pictureVrinda Sehgal

Test of Unwary Consumer: Carlsberg Granted Interim Injunction Against Tensberg


Introduction


Recently in the case of CARLSBERG BREWERIES A/S v. TENSBERG BREWERIES INDUSTRIES PVT. LTD. & ORS.[1], the Delhi High Court granted an ad-interim injunction in favor of the Plaintiff, restraining the Defendants from using their mark “TENSBER” for selling beer in bottles deceptively similar to those of the Plaintiff sold under the mark “CARLSBERG”.


Background


The Plaintiff, a multinational brewery selling beer under the mark “CARLSBERG” claimed that the Defendants were manufacturing and selling beer under a deceptively similar mark “TENSBERG” with a deceptively similar bottle, shape, and color scheme so as to cause confusion in the minds of the consumers. Thus, they alleged trademark and trade dress infringement.


The Plaintiff stated that they have been using the mark “CARLSBERG” internationally since 1947 and also have been using the same in India since the year 2007. They also furnished trademark registrations for their mark as well as the shape of their bottle as evidence as well and provided vast evidence to show their goodwill and reputation garnered over the years.


On the other hand, the Defendants claimed that the Plaintiff had misrepresented their case and concealed facts from the Court. They claimed that the Plaintiff had falsely stated in their plaint that they had come across the Defendants’ mark only upon viewing their application for registration of the mark on a proposed to be used basis. In fact, the Defendants presented a copy of an order passed by the Excise Office of Dehradun, in the state of Uttarakhand on the 24th of April, 2019 when permission for selling the Plaintiff’s as well as the Defendants’ beer was granted. Thus, the Defendants claimed that the Plaintiff had knowledge of the Defendants beer since 2019.


The Defendants further stated that they had been marketing their beer since 2018 and advertising their products on social media platforms as well. However, the Plaintiff pointed out that these advertisements were made by Tiger Breweries Industries, an entity operating in Nepal and therefore there were no advertisements made in India.



Furthermore, the Defendants argued that there are various other marks registered with the suffix “BERG”. Since the prefixes of the marks “CARLSBERG” and “TENSBERG” are different, there can be no likelihood of confusion.


Decision


The Court found that prima facie, there was deceptive similarity between both the marks. In fact, the Court also found phonetic similarity between the two. The Court noted that the Plaintiff being the prior adopter and proprietor of the mark “CARLSBERG” has superior rights than the Defendants who do not yet have trademark registrations and have adopted the impugned mark only in 2018.


The Court stated that prima facie, it found the shape of the bottle and the can adopted by the Defendants to be deceptively similar to that of the Plaintiff’s. They also noted that the Defendants had adopted the same color scheme and the placement of the marks and appearance of the crown, which “reflects the intention of the defendants to come as close to the plaintiff’s mark as possible.” The Court stated that “beer bottles are not bought with minute scrutiny” in fact they are bought in a more casual manner. Therefore, applying the test of the unwary consumer, the Court found that there was a likelihood of confusion and deceptive similarity between the marks and trade dress of both the parties.


With regards to the order passed by the Excise department, the Court noted that, “giving the permission for sale of beer in the State of Uttarakhand, cannot be a proof of its actual use.” With regards to the advertisements of the Defendants, the Court stated that these alone cannot be sufficient to deny the Plaintiff their statutory rights.


Furthermore, with regards to other registered marks with the suffix “BERG” being on the register, the Court stated that, it is not only the use of the mark alone but also get-up of the product, that is, bottle and the Can which prima facie indicates the intent of the defendants to ride on the reputation and goodwill of the plaintiff, thereby, causing confusion and deception to the mind of unwary consumers.”

Granting an interim injunction in favor of the Plaintiff, the Court found that the balance of convenience lay in favor of the Plaintiff and they would suffer irreparable harm if the interim order was not granted.

The matter has now been listed for hearing before the Court on October 18th, 2022.

Conclusion

The Delhi High Court has clarified that at an interim stage, a prima facie viewing of the marks and trade dress in question is considered while deciding infringement. The Court’s finding of the unwary consumer test in this case emphasized on the fact that beer is bought in a “casual manner”. That being true, the decision also seems to rest on the fact that there was deceptive similarity between the trade dress, shape, color scheme and bottles of both the parties. This led the Court to believe the Defendants’ mala fide intentions. Perhaps the decision could have been different had there not been a deceptive similarity between the bottles of both the parties and the only question was to assess whether the Defendants' adoption of the mark “TENSBERG” is deceptively similar to the Plaintiff’s mark “CARLSBERG”, keeping in mind that there are other registered marks with the suffix “BERG” as well.



[1] CARLSBERG BREWERIES A/S v. TENSBERG BREWERIES INDUSTRIES PVT. LTD. & ORS. CS(COMM) 646/2022 https://www.livelaw.in/pdf_upload/1663408467810906392022-435573.pdf

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