Lowenbrau Buttenheim, Germany v Lowenbrau Munchen, Germany

Intellectual Property Appellate Board DELHI BENCH 6 May 2013 ORA/212 to 215/2008/TM/DEL and M. P. Nos. 173 to 176 of 2008 and M. P. Nos. 41 to 44 of 2009 in ORA/212 to 215/2008/TM/DEL The Order of the Court was as follows : ORA/212-215/2008/TM/DEL 1. The four original rectification applications are for removal of the trade mark from the register of trade marks under the provisions of the Trade Marks Act, 1999. 1. ORA/212/2008/TM/DEL - Label Mark Application No.280783 in Class 32 in respect of beer of export quality. The application was filed on 12.06.1972. The registration certificate was issued on 15.03.1999. 2. ORA/213/2008/TM/DEL - Label Mark - Application No.196881 in Class 32 in respect of beer. The application was filed on 08.07.1960. The registration certificate was issued on 15.11.1962. 3. ORA/214/2008/TM/DEL - Word Mark - Application No.643275 in Class 32 in respect of beer. The application was filed on 18.10.1994. The registration certificate was issued on 23.03.2005. 4. ORA/215/2008/TM/DEL - Label Mark - Application No.258875 in Class 32 in respect of beer. The application was filed on 19.08.1969. The registration certificate was granted on 20.08.1988. 2. The applicant company is a German company established in the year 1980 by Modschiedler family. They adopted the trade mark LOWENBRAU. The family is the famous German brewers popular for their product. The family adopted the trade mark Lowenbrau. The generation of family members branched out and derived their own label for the product beer. The goods beer associated with the Modscheldler family is available in Germany under the following trade mark. a. Lowenbrau Original b. Lowenbrau Buttenheim c. Lowenbrau Alkobolfrei d. Lowenbrau Bockbier e. Lowenbrau Hugespundered 3. The family members have derived their own labels for the Lowenbrau trade mark for separate territories for themselves. The applicant is the registered proprietor of the Lowenbrau trade mark Lowenbrau Buttenheim in Germany in class 32, 21 and 25 under No.39844134 as of 05.08.1988. 4. The applicant had the company incorporated in India under the name Lowenbrau Buttenheim India Pvt. Ltd. as early as 14.04.1999. After the incorporation Lowenbrau Buttenheim and Lowenbrau Buttenheim India Pvt. Ltd. entered into an agreement titled Joint Venture Agreement. Cl. 12 of the agreement reads as. 12. That the 1st party which is the owner of the trade mark "Lowenbrau Buttenheim" ensures the 2nd party that it shall be exclusive and only user of the Lowenbrau trade mark, Lowenbrau Buttenheim for the whole of India and neighbouring countries and that the trade mark shall not be withdrawn from the company LBI and the 1st party shall not enter into any agreement with any party or parties to compete with the existing brand of Lowenbrau Buttenheim nor they will directly or indirectly form any company/firm to compete with the existing business of the 2nd party. 5. Thereafter, M/s. Lowenbrau Buttenheim India Pvt. Ltd. has licensed the Lowenbrau Buttenheim trade mark ,Lowenbrau Buttenheim and the goods been under license of applicant is available in India under the trade mark Lowenbrau Buttenheim. The goods are an excisable commodity and the excise records reveal that the applicants goods under the said Lowenbrau Buttenheim trade mark are available in India since 1999. 6. In the year 2003, the applicant gave a license to M/s. Jagpin Breweries Ltd. to use the trade mark Lowenbrau Buttenheim and sell the Beer in Madhya Pradesh, Orissa and NCR of Delhi. The applicant through its licensee had made extensive sale of the goods under the (Lowenbrau Buttenheim) trade mark Lowenbrau Buttenheim in India. 7. The respondent herein Lowenbrau acting as Lowenbrau AG has filed a Civil Suit against the applicant herein for permanent injunction in C.S. (O.S.) No.1810 of 2007 based on the impugned registration out of jealousy and business rivalry. The applicant has filed the written statement. 8. Aggrieved by the impugned registration, the present applications are filed by the applicant for rectification on the grounds that the registration has been obtained based on concealments and untruths of facts. The registration is disentitled to protection in a Court of Law. 9. The respondent has concealed the fact about the coexistence of M/s. Lowenbrau Buttenheim, Germany. The CEO of the applicant company is Mr. Johann Modschudler who is one of the members of the Modschiedler family. It has nearly 150 restaurants in Germany licensed by it. These restaurants exclusively sell beer under the Lowenbrau Buttenheim trade mark (Lowenbrau Buttenheim). The applicant in the year 1998 formed a subsidiary company Lowenbrau International GmbH. A company Lowenbrau Buttenheim USA Inc. was incorporated in Las Vegas Nevada. A company Lowenbrau Buttenheim Korea Ltd. is also incorporated in Korea by the applicant. It is shocking that the respondents being a German Company has feigned ignorance of the aforementioned facts. The impugned registration has been obtained by fraud. 10. The applicant has been selling beer under the Lowenbrau Buttenheim trade mark (Lowenbrau Buttenheim) since 1880. The applicant is thus first in the world. The respondent cannot claim proprietorship and therefore prohibited under Sect.11 & 18 of the Act. The applicants goods bearing the trade mark are very much available in the market and the respondents are aware of the sale. In fact the applicant and the respondents are co-existing in Germany for last several years. 11. The respondent cannot claim exclusive right over the trade mark Lowenbrau Buttenheim. The impugned trade mark was not distinctive on the date of registration nor at any time after registration. The entry was made without sufficient cause and/or entry is wrongly remaining on the register. The impugned registration is violative of Sec. 32(b) of the Act. The registered proprietor has obtained registration without any bonafide intention to use it in relation to those goods for which it is registered. The respondent has in fact admitted in the Civil Suit that it has not used the trade mark Lowenbrau Buttenheim. The mark has not been used for a continuous period of five years and longer prior to the date of filing of the application for rectification. The impugned registration is liable to be rectified under Sec. 47(1)(a) & 47(1)(b) of the Act. 12. The respondent was aware of the applicants use since 1880 and has deliberately concealed these facts before the Registrar. In fact, in the year 1964 there were several letters exchanged between the applicant and the respondent which has also not been placed before the Registrar at the time of registration. The parties have arrived at an agreement. The impugned trade mark may be rectified or a disclaimer be imposed on the words Lowenbrau. 13. The respondents filed their counter statement stating that they are a subsidiary and part of the InBev Group. In 1987, the two largest breweries of Belgium, namely Artois of Leuven and Piedboeuf of Jupille merged with Den Horen and formed a company under the name of "Interbrew". In 2004, Interbrew combined with Ambev, a Brazilian Company to create "InBev", the ultimate holding company of the respondent. 14. The respondent was earlier known as Lowenbrau Munchen and once it became a private limited company its name changed to Lowenbrau AG under German Laws. InBev is marketing its products under more than 200 brands namely Stella, Artis, Brahme Beck's, Leffe, Hoegaarden, Tinkoff, Lowenbrau etc. 15. Lowenbrau is one of the most popular beer brands worldwide. The trade mark Lowenbrau was registered in Germany in 1894 and in United States in 1897. It has sold the beer under the trade mark Lowenbrau in various countries of the world. It is also available in India through import and in duty free shops in international airports. The goods beer bearing the trade mark Lowenbrau has obtained goodwill and reputation in the Indian market since early 1960s. The trade mark Lowenbrau with the device of lion in a label mark is registered in India since the year 1960. The various registrations are :- (1) Lowenbrau - Expert Bier - lion deer under No.196881 (2) Black Stylised Lion - under No.258875 (3) Lowenbrau Munchen Expert Sl. w/Lion dv in oval frame -No.280783 (4) Lowenbrau - No.643275 16. The Lowenbrau trade mark has acquired distinctiveness by long and continuous use. Lowenbrau is an internationally famous and a well known trade mark. The respondents are the registered proprietors of the Lowenbrau trade mark. The use of the deceptively Lowenbrau Buttenheim trade mark by the appellant would lead to confusion and deception. 17. In September 2007, when the respondent decided to market and sell the beer products in India, came across the applicants products bearing the trade mark Lowenbrua Buttenheim. Immediately the respondents field a Civil Suit before the Hon'ble High Court of Delhi. Initially, the exparte injunction was granted which came to be later vacated. The rest of the averments were denied by the respondent. 18. We heard Mr. Shailen Bhatia counsel for the applicant. The respondents were represented by M/s. Inttel Advocare initially and they filed the counter statement. They subsequently withdrew their appearance. As per the directions of this Board, the hearing notice was sent directly to the parties. M/s. Depenning & Depenning thereafter entered appearance. When the matter was listed for final hearing M/s. Depenning & Depenning (Dr. Sheetal Vohra) withdrew their Vakalathnama as they had no instructions from their party. We therefore heard the applicants and set the respondents exparte. 19. The learned counsel for the applicants submitted that the respondents filed their counter statement after the 2 months time as prescribed under the Intellectual Property Appellate Board (Procedure) Rules and the counter statement ought not to be taken a record. The counsel submitted that the prayer in the applications were that the mark be cancelled or removed or a disclaimer be imposed on the word Lowenbrau. The word Lowenbrau is descriptive and registration ought not to have been granted. The respondents have not used the trade mark though have obtained registration as early as 1960's otherwise. 20. We have considered the arguments of the counsel for the applicant. It is clear from the reading of the application that the application for rectification has been filed after the respondent had preferred a suit for permanent injunction. The applicant is no doubt therefore an aggrieved person. 21. The main issue is that the respondent has not used the Lowenbrau trade mark. As the respondents were not before us, we perused the counter statement. From the counter statement, it is clear that the respondent had decided to manufacture and sell beer only in September 2007. In October 2007, the suit was filed on exparte order of injunction was granted which subsequently came to be vacated in 2009. Except for two bills of the year September 2007, there is nothing to prove their use. These bills too are not clear. 22. We are of the view that the respondents though have obtained registrations as early as 1999, 1962, 2005 & 1988 respectively have not used it in trade. The respondents are only preventing others from using which is not a good practice. We therefore think it fit to cancel the trade mark from the register. 23. The Registrar of Lowenbrau  ButtenheimTrade Marks is directed to cancel/rectify the four marks ie. registered under Nos. 280783, 196881, 643275 and 258875 from the register. There shall be no order as to costs. Order accordingly