Using Recycled Bottles Of Another Manufacturer Results In Infringement & Passing Off: Delhi High Court Rules In Favour Of 'BUDWEISER'

The Delhi High Court has restrained the owner of trademark 'BLACK FORT' and 'POWER COOL' from manufacturing or selling under the trademark 'BUDWEISER' in recycled bottles, or in any other manner, in respect of beer manufactured and sold by it.

Ruling in favour of Anheuser-Busch LLC, owner of trademark 'BUDWEISER', Justice Pratibha M Singh was of the view that the use of recycled 'BUDWEISER' beer bottles for the products being sold under the mark 'BLACK FORT' and 'POWER COOL' by the Defendant Company would clearly constitute `use in the course of trade'.

It added that the fact that the same were recycled bottles would not make a difference insofar as the question of infringement or passing off was concerned.

"Thus, the sale of any product with the recycled bottles of another manufacturer would result in infringement and passing off. Though the bottle itself may be a genuine bottle which may have been put by the Plaintiff originally in the market, after the contents are consumed and the bottle reaches the recycling cycle, the Defendant's use of such bottles which have the Plaintiff's trade mark embossed on them would cause confusion as to its source," the Court noted.

The Court accordingly directed that the Defendants shall ensure that the recycled 'BUDWEISER' bottles are not used for the beer, manufactured and sold by them, under the marks 'BLACK FORT' and 'POWER COOL', or under any other mark.

The Court added that a greater degree of supervision shall be exercised at the manufacturing plant of the Defendant Company and random checks and inspections shall also be conducted to ensure that the bottles used in its manufacturing plant do not, in any manner, bear the mark 'BUDWEISER'.

"With the acceptance of undertakings and the statements given by the Defendants, it is directed that the Defendants shall, henceforth, stand restrained from using, manufacturing or selling the mark 'BUDWEISER', even in recycled bottles, or in any manner whatsoever, in respect of beer manufactured and sold by the Defendants," the Court ordered.

The Court was dealing with a suit filed by the Plaintiff seeking permanent injunction restraining the Defendants from using any glass bottles with the embossed word 'Budweiser'.

It was the case of the Plaintiff that the bottles of beer manufactured by it with the embossed word 'BUDWEISER' were being used by the Defendants by re-labelling them as 'BLACK FORT' and 'POWER COOL'. Images of the bottles, as also physical bottles were also produced before the Court.

The explanation given by the Defendants was that the bottles had come into their system through kabadiwalas and that in view of the large volume of the bottles that were cleaned, filled and bottled, there may have been stray bottles of 'BUDWEISER' which may have been accidentally used by the Defendants.

However, the Defendants were willing to give an undertaking to the effect that the bottles of 'BUDWEISER' shall not be used by it for manufacture and sale of their own beer.

Accordingly, in view of the undertakings given by the Defendants, the Plaintiff agreed not to press the relief of damages, rendition of accounts of profits and delivery up.

However, the Court said that in the future if any 'BUDWEISER' bottles are found by the Plaintiff to be emanating from the Defendants' factory, the Plaintiff shall immediately give notice of the same to the Defendants who shall take remedial measures immediately, failing which, the Plaintiff would be entitled to avail of its remedies, in accordance with law, including the claim of damages.

"Accordingly, the suit is decreed in terms of paragraph 47 (i) to (iii) of the plaint. Decree sheet be drawn. The contents of the affidavit set out above, shall form part and parcel of the decree," the Court ordered.

Case Title: ANHEUSER-BUSCH LLC v. MR. SURJEET LAL & ANR.

Citation: 2022 LiveLaw (Del) 226

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