CASE STUDIES ON IPR DISPUTES: 1. COCO COLA Vs BISLERI 2. WALMART AND HEALTH PARTNERS 3. COCO COLA Vs PEPSI 4. ‘Zandu Balm’ sues ‘Dabangg’ producers 5. Malteser or Maltesers? Mars takes Hershey trademark dispute to court

2. In the High Court of Delhi
(1)

3. • Plaintiff ( Coca Cola) was the largest
brand of soft drinks operating in 200
countries.
• Defendant No.1, which was earlier
known as Aqua Minerals Pvt. Ltd., was a
part of Parle group of Industries.
• The owners of defendant, Mr. Ramesh
Chauhan and Mr. Prakash Chauhan, on
September 18, 1993, sold the
trademarks , formulation rights, know-
how, intellectual property rights,
goodwill etc. of their products THUMBS
UP, LIMCA, GOLD SPOT, MAAZA to the
plaintiff.
FACTS

4. • The company Bisleri Sales Ltd, had the secret beverage
base for manufacturing maaza and was an affiliated
company of Defendant no. 1.
• On September 12, 1993, several agreements were
signed between both the parties, such as, deed of
assignment, goodwill assignment, know-how,
confidentiality and non- use agreement, non- compete
agreement, general assignment, etc. to give effect to the
sale for a considerable money value.
• Then, the plaintiff was envisaged with the right to sell
the product Maaza within the territory of India.

5. • The defendant no. 1 retained the trademark rights of
MAAZA in respect of other countries where it had been
registered.
• In March 2008, the defendant no. 1 got aware of the fact
that the plaintiff had filed for registration of MAAZA in
turkey.
• As a result of this, it sent plaintiff a legal notice
repudiating the Licensing Agreement and made it devoid
of all other selling rights.
• The plaintiff filed the suit for permanent injunction and
damages for infringement of trademark and passing off, as
the defendant had completely ignored many irrevocable
and absolute rights embarked upon the plaintiff.

6. The court had the territorial
jurisdiction over the matter, because
the defendant had issued a news article
in Delhi edition of Times of India, and
the reports itself created the
jurisdiction of the court as they showed
his intention to use the mark by way of
groundless threat. Also, the defendant
had a factory at Shivaji Marg in New
Delhi and the threat was also given as
notice from New Delhi itself.

7. • The suit is not barred under Section 41 (h) and (1)
of the Specific Relief Act 1963, as the agreement
between both the parties was a determinable
contract and plaintiff is entitled to an injunction for
enforcement of its exclusive rights.
• In view of negative covenant under Section 42 of
the Specific Relief Act, the defendant no. 1 is not
entitled to use the mark MAAZA in India. Hence,
the interim order of injunction was granted to
prevent the plaintiff from irreparable loss and
injury.

8. On an appeal filed by the defendant
against the order, the Delhi HC
expressly barred Bisleri from selling
Maaza products, however, it is
specified that the company may
continue to manufacture Maaza on
Indian soil, provided the stock is
exported.
SOURCE : www.lexquest.com

9. • Health Partners Inc. filed a
lawsuit against Wal-Mart
Stores Inc. to resolve a logo
design dispute between the
organisations.
• The Trademark case centers
around a logo unveiled by
Health Partners in 2014 and
another used by Walmart’s
Sam’s Club business.
• Both groups have logos that
feature overlapping tilted
squares.

10. • Between 2011 and 2013,Health
Partners combined with two other
Minnesota organizations-Park Nicollet
Health Services in St.Louis Park and
Lakeview Hospital in Stillwater.
• After the transactions were
completed,Health Partners enlisted a
brand design firm to develop a new
logo for the combined system.
• The new logo features three
interlocking squares and incorporates
elements and colours from each
organization’s old logo.
• Health Partners began using the new
logo in April 2014.

11. • Health Partners filed a federal complaint to resolve
uncertainty surrounding its logo.
• According to lawsuit, Wal-Mart and Sam’s began
demanding Health Partners stop using the new logo
in 2014,saying the new design constitutes
trademark infringement, as it closely resembles the
logo they use and further use of HealthPartners logo
would cause trademark dilution and constitute
unfair competition.

12. Over the past two years, the parties have
exchanged emails and letters and met in person to
try to resolve the dispute, but Wal-Mart and Sam’s
continue to object to Health Partners registration
and use of its new logo.
SOURCE : www.bizjournals.com
www.startribune.com

13. (3) Coca-Cola vs. Pepsi-
Cola
• Trade-mark violations occur only when
the “distinguishing feature ” of the
original product has been borrowed
without consent.
• The most famous example of this came
in Canada in 1942 in the case of
Coca-Cola Co. Vs. Pepsi-Cola Co. In
1942, D.L.R. 657 (P.C.) where Coke
sued Pepsi for violating its trade-mark.

14. • Coca-Cola has a registered trademark
for their famous glass bottle, which
means that no brand, including Pepsi,
can use the glass bottle in any of their
products.
• In the Statement of Claim dated 14
October 2010, Coca-Cola has filed a
$1 billion action against Pepsi for using
a glass bottle, which is allegedly
confusing because it is so similar to
Coca-Cola’s iconic glass bottle’,
interfering their intellectual property
rights.
• The court would likely to compare the
two bottles, without their respective
logos, and decide whether there is a
strong likelihood that consumers will
confuse the Coca-Cola bottle with the
Pepsi bottle.

15. • Coca-Cola is the registered owner of a
number of Australian trade marks that
depict its famous Contour Bottle, which
were included in the Statement of
Claim and shown in the figure.
• The Contour Bottle is a hallmark of
Coca Cola’s branding – with its pinched
in waist shape and silhouette
distinguishing Coca Cola’s products
from other sodas on the market.
• Coca Cola has built a strong reputation
in the Contour Bottle through
significant promotion and marketing
and claims that it has sold its Coke and
Coca Cola products in the Contour
Bottle since 1916 in the United States
and since 1938 in Australia.
Facts

16. • In May 2010, Coca Cola became aware that the
Respondents were selling Pepsi and Pepsi Max in
glass bottles similar to their Contour Bottle.
• Images of those glass bottles, as featured in the
Statement of Claim are depicted in the Figure.
• Coca Cola demanded that the Respondents refrain
from what it said was unlawful conduct. The
Respondents refused. In response, Coca Cola
initiated the Federal Court proceedings.
Figure 2: Alleged Infringing Pepsi and Pepsi
Max Glass Bottles

17. We all know Coca-Cola’s glass bottles gained its
fame because it was associated with the soft
drink. The shape of the bottle is famous
because Coca-Cola made it famous. So when
you look at the bottles without their logos,
consumers will definitely be more confused
than if you look at the bottles with their logos.
This is exactly why Coca-Cola is protecting its
trademark.

18. With respect to the trade mark infringement
claim, there are two issues that will likely to
dominate proceedings.
1. The first is the issue of use as a trade mark,
which is likely to be raised in the Respondents’
defence, which is yet to be filed.
2. The other issue which will obviously present
itself is the question of deceptive similarity.

19. • As a result of this conduct, Coca Cola claims it has
suffered unspecified loss and damage and seeks to
have the Court restrain the Respondents from
continuing to sell its products in the said glass
bottles.
• Coca-Cola made the average glass bottle famous.
Now, Pepsi just wants to take advantage of Coca-
Cola’s goodwill and reputation just to boost its own
sales.
• Although Pepsi makes a strong case, this fact alone
could destroy Pepsi’s chances of a victory.
• It’s going to be a close call. Pepsi can argue the bottle
is generic and there’s no way the two bottles can
confuse the public, while Coca-Cola can argue that
Pepsi is merely trying to free-ride on their goodwill
and reputation.

20. SOURCE : www.opinionoutpost.com
www.businessinsider.com.au

21. • On September 17, Emami Ltd served a
legal notice to Arbaaz Khan Productions
for using the phrase "zandu balm" in the
"Munni badnaam hui" song of the
Salman Khan blockbuster Dabangg citing
copyright violation.
• By using the brand name in the song,
you have not only violated the copyright
of my clients, but you have also made an
attempt to defame the reputation of my
clients and the product manufactured
by them, said ZANDU BALM OFFICIALS.
VS.

22. • The company asked the producer to
remove the phrase "Zandu Balm" or
delete the song from the film
altogether. Emami, which acquired
Zandu Pharmaceuticals in 2008 for
Rs 700 crore, is a Rs 1,000 crore
entity today.
• Some inside news on September 19,
"The issue is not as serious as it is being
made out to be. They have sent a
notice. The company is unlikely to take
the matter to court. In fact, they are
considering an out of court settlement,
and then using the song to promote
the product." And Arbaaz Khan said,
"Now that our film is a big success,
such things are bound to happen.
Everyone wants a share of the pie."

23. • When the song’s promos
went on air, Emami decided
to strike a barter deal—
allowing the film’s producers
the use of Zandu Balm in
return for rights to the song
for its own advertisement.
• Also, Mallaika Arora Khan,
had to do an advertisement
for the brand free of cost as
the compensation.
SOURCE : www.pinkvilla.com
economictimes.indiatimes.com

24. Mars has filed a lawsuit against US confectionery
firm Hershey over its Malteser product, which it
claims is "passing off" as Mars' own popular Maltesers
brand.

25. • Hershey sells its Malteser chocolate-covered malt
ball product in red packaging, having owned the
trademark for ‘Malteser’ – without the "s" – since
1998, while Mars has sold its 75-year-old
Maltesers brand in red packaging since 1978.
• Mars, which never registered a trademark, claims
the move is simply designed to prevent it from
selling Maltesers in the US in competition with
Hershey’s Whoppers brand, which are also milk
chocolate-covered malt balls.
• As a result, Mars has filed a complaint at the US
District Court for the Eastern District of Virginia,
Alexandria Division, seeking a "permanent
injunction" against Hershey’s use of the Malteser
mark, along with damages for lost profits.

26. • Mars said in the lawsuit: "Hershey did not actually
develop a unique product under the Malteser mark.
Hershey sporadically passes off Whoppers candy as
Malteser candy — selling Whoppers under the
Malteser mark, without disclosing the switch to
consumers — merely to reserve rights to the
Malteser name.”

27. • A Hershey spokesman dismissed Mars’
claims as "without merit". He added: "The
Hershey Co. has owned the Malteser
trademark in the United States for more
than 15 years. We intend to vigorously
defend against this groundless litigation.
• Mars declined to comment beyond the
complaint.
SOURCE : www.law360.com
www.candyindustry.com