1. SABMiller v/s Som distilleries
Presented by:
Samkit Jain (12PGP112)
Sushant Singh (13PGP115)
Trisha Gajbhiye (13PGP116)
Yogesh Gupta (13PGP117)
Bhavana Ziradkar (13PGP118)
Sai Shilpa (13PGP124)
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2. Agenda
 Companies overview
 Facts
 Issues
 Case Facts
 Verdict
 Legal Provisions and Violation
 Analysis
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3. PLAINTIFF OVERVIEW: SABMiller
India Ltd.
 One of the world’s largest brewers, SABMiller has
brewing interests and distribution agreements across six
continents.
 Major brands include Haywards5000, Foster’s, Knockout,
Royal Challenge & Miller high life etc.
 SABMiller entered the Indian market in the year 2000 by
acquiring Narang breweries and has since acquired
several breweries and brands.
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4. DEFENDANT OVERVIEW: Som
Distilleries & Breweries Ltd.
 Som Distilleries and Breweries Limited (SDBL) was set up
in 1994 by Mr. J.K Arora and Som Distilleries Private
Limited (SDL).
 The beer is being sold under the brand names of Hunter,
Woodpecker, Black Fort, Power, Legend.
 The company also supplies draught beer to all the major
hotels in Madhya Pradesh and Chhattisgarh under the
brand names of Hunter and Woodpecker.
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5. FACTS
 On February 19, 2009, the plaintiff applied for
registration of its series trade mark "SABMiller India -
SABMILLER INDIA" under the Trademarks Act, 1999.
 They obtained registration for a design to be applied on
its beer bottles under the Design Act, 2000 on 15th
January 2010.
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6. ISSUES
 In January 2012, prior to its trademark being registered,
the plaintiff found that the defendant was selling and
distributing beer in bottles having the plaintiff’s
registered design as well as name
 This lead the plaintiff to sue the defendant for design
infringement and passing off.
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7. CASE FACTS
 The Plaintiff on 3rd February 2012 instituted a suit against
the Defendant before the District Court of Raisen,
Madhya Pradesh for permanent injunction.
 The District Court, Raisen by its order restrained the
Defendant from removing from its factory, its bottles
bearing the trade mark SABMiller India.
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8. CASE FACTS
 The said Suit was transferred to the Additional District
Judge, who by his order dismissed the Plaintiff's
application for interim reliefs in the wake of invalidity of
registration of its design.
 The Plaintiff thereafter filed an Appeal against the said
order before the Hon'ble High Court of Madhya Pradesh
at Jabalpur which was again dismissed on the same
grounds.
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9. CASE FACTS
 On 5th December 2012, the Plaintiff's series trade mark
application was registered.
 The Plaintiff thereafter filed the suit for infringement of its
registered trademarks against the defendant in the
Bombay High Court.
 Urgent interim relief was provided restraining the
defendant from using bottles embossed with the
plaintiff’s trademark
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10. CASE FACTS
 Defendant had submitted that while filling its beer it has
used recycled bottles of the Plaintiff bearing the
Plaintiff's mark and the same was done inadvertently or
as an error since the recycled bottles are used in this
trade.
 Defendant also submitted that in fact the Plaintiff has
used recycled bottles and has sold in bottles bearing
the trade mark "Kingfisher".
 The Defendant has further submitted that the suit is
barred by the principles of res judicata.
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11. VERDICT
 The defendant is guilty of infringing the plaintiff’s
trademark
 Defendant should not infringe upon its trademark by
using beer bottles for sale of beer on which the plaintiff’s
trademark is embossed
 The court held that res judicata will not apply
 Ad-interim order was passed until the final disposal of
the suit.
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12. LEGAL PROVISIONS & VIOLATIONS
Section 29(2) under the Trademarks Act 1999
 A registered trade mark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted
use, uses in the course of trade, a mark which because of its
identity with the registered trade mark and the identity of the
goods or services covered by such registered trade mark, is
likely to cause confusion on the part of the public, or which is
likely to have an association with the registered trade mark.
 In any case falling under clause (c) of sub-section H(2) the
Court shall presume that it is likely to cause confusion on the
part of the public
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13. LEGAL PROVISIONS & VIOLATIONS
Section 30(1) in The Trade Marks Act, 1999
 Nothing in section 29 shall be construed as preventing the
use of a registered trade mark by any person for the
purposes of identifying goods or services as those of the
proprietor provided the use-
 (a) is in accordance with honest practices in industrial or
commercial matters, and
 (b) is not such as to take unfair advantage of or be
detrimental to the distinctive character or repute of the
trade mark.
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14. LEGAL PROVISIONS & VIOLATIONS
Section 30 (2) under the Trademarks Act 1999
 Infringement does not apply when the Defendant uses
the Plaintiff's registered trade mark not as a trade mark
but to show the character, kind or quality of the
Defendant's goods.
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15. ANALYSIS
 Initially when the case was filed in the MP court, the
defendants were justified in using the recycled bottles
as SABMiller India did not register its trademark.
 The defendants were trying to pass off their goods as
the goods of plaintiff as their attorney refused to give a
written statement that this practice will not happen in
future.
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16. ANALYSIS (contd…)
 Registered trademarks cannot be infringed in the name
of trade practices.
 Rules and regulations for the use of recycled bottles
requires more clarity.
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