Reusing Another Brand's Embossed Beer Bottles To Sell One's Own Beer Product Is Trademark Infringement: Madhya Pradesh High Court

The Madhya Pradesh High Court has made it clear that reusing old beer bottles, which are embossed with the brand name/ logo of another company, to sell one's own beer product- constitutes trademark infringement.

A division bench of Justices Sanjeev Sachdeva and Pranay Verma thus restrained the sale of two beer companies in old bottles of Mount Everest Breweries Ltd., which are embossed with their beer brand 'STOK' and their logo, the face of a panda. It observed,

“Even though, Private Respondents are pasting their own labels on the bottles manufactured by the Appellants, the brand of the Appellants “STOK” and the “Panda device” is clearly and prominently visible thereby contravening various provisions of the MP Foreign Liquor Rules.”

The bench however left open the issue whether such bottles could be re-used after scratching out the brand emboss.

The development comes after Mount Everest Breweries preferred an appeal against a single judge order asking the Commissioner of Excise to decide the dispute afresh. The Commissioner had earlier prohibited all liquor/ beer bottling units from using old glass bottles which carry an embossment on them, for the purposes of refilling and sale of liquor. The Commissioner had also prohibited the reuse of old bottles after removing or scratching the embossed logo.

The Appellant contended that their (embossed) beer bottles were being affixed with Respondent's label, constituting trademark infringement and passing off. It also alleged violation of the Madhya Pradesh Beer and Wine Rules, 2000.

The Respondents contended that they procure empty beer from scrap dealers and then use them for bottling their own manufactured beer, for cost-effectiveness and environmental sustainability. They are argued that existing labels of the brand are removed and big sized labels of their own brand are affixed, so that the end-consumer is not confused.

It was further contended that the Excise Act or the Rules and the MP Beer and Wine Rules have no such prohibition that the beer bottle of any other manufacturer cannot be used by any other company. Thus, they said the Commissioner's order restraining them from re-suing old bottles violated their right to trade under Article 19(1)(g).

At the outset, the Court considered pictures of the bottles and found that the Respondents had been merely pasting their registered label on the embossed bottles of Appellant.

The brand of the Appellants “STOK” and the “Panda device” continue to remain prominently visible on the bottles. Such bottles contain not one but two brands, which clearly contravenes the MP Foreign Liquor Rules and cannot be permitted, it observed.

"The Commissioner of Excise has not prohibited reuse of beer bottles, he has only directed that the bottles that have embossed logo or brand cannot be used. Article 19(1)(g) and Article 301 do not guarantee absolute freedom. They empower the state to impose reasonable restrictions on the said freedom. Order passed by the Commissioner of Excise clearly falls within the ambit of reasonable restriction."

With regard to the contention of the Respondents that it is not financially viable for them to manufacture beer bottles and therefore, they have adopted the method of reusing bottles of other manufactures, the court observed, “Private Respondents for the sake of making their venture financially viable cannot be permitted to contravene the mandatory provisions of the MP Foreign Liquor Rules or violate the intellectual property rights of the Appellants. Private Respondents are free to reuse generic beer bottles manufactured by third parties which do not violate the label, trademark/brand/logo of another entity.”

Accordingly, the appeals were allowed and prohibition on use of old glass bottles which carry an embossment on them, for the purposes of refilling and sale of liquor, was upheld.

"The direction prohibiting the reuse of the old bottles after removing or scratching the embossed logo is set aside and said issue is left open to be decided by an appropriate authority in appropriate proceedings," Court added.

Case Title: Mount Everest Breweries Limited versus MP Beer Products Limited, WRIT APPEAL No. 683 of 2024

Click Here To Read/Download Order

Citation: 2024 LiveLaw (MP) 297