MARS INCORPORATED 6885 ELM STREET MCLEAN VIRGINIA UNITED STATES OF AMERICA Vs. MARES CONFECTIONERIES P LIMITED MYLAPORE MADRAS

JUDGEMENT

(1.) THIS suit has been filed for a permanent injunction restraining the defendants from infringing the plaintiff's registered trade mark MARS by use of trade mark MARES or any other mark similar to the plaintiff's trade mark MARS, for a permanent injunction restraining the defendants from passing off the defendant's goods and business as and for the plaintiff's goods and business by use of MARES as a trade mark and/or as part of corporate name and trading style by the defendant or by use of any word similar to the plaintiff's trade mark MARS as a trade mark and/or as part of trading style by the defendant, for a preliminary decree directing the defendant to render an account of profits made by it by the use of MARES or any word similar to MARS as a trade mark and/or as part of trading style, for a final decree for the amount of profits found to have been thus made by the defendant, for a direction to the defendant to surrender to the plaintiff for destruction of all goods, cartons labels, containers, blocks, dyes, moulds bearing the word MARES or any word similar to MARS as a trade mark and/or part of trading style and corporate name by the defendant and for costs.

(2.) PLAINT averments are as follows : PLAINTiff is a renowned manufacturer and merchant of various types of foodstuff including non-medical confectionery, chocolates and snack foods. Its annual turnover in 1993 was in excess of US Dollars eleven billion. Its snack foods are enjoyed in over one hundred countries including India. It business is known today as Mares Confectionery which is a division of Mars U.K. Limited and which is ultimately owned and controlled by the plaintiff. It has registered trade marks viz., (1) MARS No. 3685, Class 30 for chocolates ; (2) MARS (Stylised) No. 405616 Class 30 for confectionery, biscuits and chocolates ; and (3) MARS (Stylised) No. 455616 Class 30 for confectionery, biscuits and chocolates, which are valid and subsisting. The word MARS also forms the most distinctive and significant portion of the plaintiff's corporate name and trading style. Goods under the trade mark are widely advertised in magazines and newspapers, many of which are sold and read in India on radio and on television. PLAINTiff was the official sponsor of the Barcelona Olympics in 1992 and MARS was the official snack food at the 1990 World Cup in Italy. Good bearing the said trade mark MARS are sold extensively in the Indian sub-continent countries as well as in other South East Asian Countries such as China, Hong Kong, Japan, Korea, Thailand, Indonesia, the Philippines, Singapore, Malaysia and Taiwan. The goods under the trade mark MARS are available in India in duty free shops at the international airports, in shops located in the Haryana State Tourist complexes and in shops in and along routes visited by the foreign tourists and in cities of tourist interest all over country. PLAINTiff has established a very wide reputation among the Indian Public. Each year a large number of Indians visit the countries where the plaintiff's goods are sold in large quantities and bring back with them the reputation and goodwill attached to the plaintiff's goods. On 11.1.1989, the defendant filed an application with the Registrar of Trade Marks for registration of the trade mark Joocy Burst in its name in respect of chewing gum, bubble gum and confectionery (non-medicated), which was numbered 503728 in Class 30. The said application was advertised in the Trade Mark Journal No. 1056 dated June 1, 1993. PLAINTiff filed a notice of opposition against the said application of the defendant on the ground that the trade mark Joocy Burst was deceptively similar to the plaintiff's registered trade mark Starburst. The said opposition was taken on record and numbered Mas-2924 in the office of the Registrar of Trade Marks at Madras. On 28.1.1994, the plaintiff by its attorneys M/s. Lall Lahiri and Salhotra sent a notice to the defendant calling upon them to cease and desist from using MARES as part of its trading style and to withdraw the application No. 503728 for the trade mark Joocy Burst. On 7.4.1994, the plaintiff's attorneys received a letter from the defendant's advocate, denying the plaintiff's allegations. The Assistant Registrar of Trade Marks passed an order dated 10.8.1994, that Application No. 503728 shall be treated as withdrawn and the opposition No. MAS 2924 therefore abates. The word MARES which forms the most prominent and distinctive portion of the defendants trading style and corporate name is deceptively similar to the plaintiff's trade mark and trading style of MARS. The defendant is trading in the same goods as those in which the plaintiff's trade mark and trading style MARS acquired a worldwide reputation. The use of the trade mark MARES by the defendant is likely to cause confusion and deception amongst the trade and the public that the defendant is in some manner connected with the plaintiff, and it would amount to infringement of the plaintiff's registered trade mark MARS. By using MARES as its trading style the defendant is seeking to pass off its goods as and for the goods of the plaintiff. As the defendant is carrying on business in Madras, this Court has the jurisdiction to try and entertain this suit. Hence this suit.

(3.) MR. C.K. Virmani, Power of Attorney for the plaintiff was examined as P.W. 1. His evidence is that Ex. P-1 is the xerox copy of the deed of power of attorney executed by the plaintiff in his favour. It has been revoked at any point of time. As per Clauses 1 and 2 of Ex. P-1, he is authorised to sign, verify and carry on any plaint or suit. The signature of the executant in Ex. P-1 is attested by a Notary Public. The signature in page 10 of the plaint is his signature and he signed and verified the same.