IN THE COURT OF THE X ADDL. CHIEF JUDGE: CITY CIVIL COURT

IN THE COURT OF THE X ADDL. CHIEF JUDGE: CITY CIVIL COURT:HYDERABAD.

Dated this the 31st day of December, 2019.

PRESENT: Sri.A. JAYA RAJU, X ADDL. CHIEF JUDGE.

OS No.19 of 2004

Between:1. Sri Syed Ghaziuddin2. M/s Magfast Beverages .. Plaintiffs.

A n d

1. Pepsi Co Inc2. Pepsi Co India Holding P Ltd.3. Times of India Group of Publications Bennett Coalman India P Limited4. The Vartha Telugu News Paper .. Defendants

These suits coming before me for final disposal, in presence ofM/s M Papa Reddy, Advocate for the plaintiffs and of Sri A Venkatesh.Advocate for the defendants and the matter having been heard and stoodover for consideration till this date, this court delivered the following:

J U D G M E N T

This is suit for recovery of damages and for permanent injunction.

2.. A brief case of the plaintiffs is as under:

The plaintiff No 1 is a qualified engineer. The plaintiff No 1 in the

year 199798, wanting to start a packaged drinking water plant had a

discussion with V Kishore Gupta of M/s S K Graphics, Artist on the

>> 2 << OS No 19/2004

preparation of label/trade name. He wanted the name to be suggesting

in such a way that it is emanating from natural source and it is pure

and cool. In accordance with the idea of the plaintiff No 1, V Kishore

Gupta made a label of Mountain Dew. Before deciding the trade mark

the plaintiff made thorough search in websites and examined 400 listed

brand names and ensured that no company is manufacturing bottled

packaged drinking water under the name of Mountain Dew.

3.. Further it is the case of the plaintiff that Central Bank of India

came forward for providing loan to setup water plant having satisfied

with the project report prepared by the plaintiff. The plaintiff got the

unit registered in 2001 as a small scale unit with the directors of

Industries of Government of Andhra Pradesh. Before launching the

packaged drinking water (for short PDW) under the name of Mountain

Dew, he gave wide publicity on 08.11.2000 in a Urdu news paper that

is called “Siasat daily” which is circulated not only in India, but also in

countries like USA, UK, Qutar, UAE, Germany, Japan etc. The water

being manufactured by the plaintiff is available in 1 liter, 5 liters and in

20 liters bottles. The plaintiffs unit was registered with the sales tax

authorities and a certificate was issued in that regard. The plaintiff also

obtained license from MCH. The plaintiff was granted ISI mark for his

PDW and it was certified that it was conform to the Bureau of India

>> 3 << OS No 19/2004

Standards and IBSO standards. The plaintiff went on manufacturing

PDW in conformity with the required specifications and quality

controls.

4.. Further, it is submitted that the business of the plaintiff reached a

height of development and also reached to the level of supplying PDW

to the national games held at Hyderabad and also to the star hotels. In

February 2003, the authorities of pollution monitoring laboratory “

Centre for sciences and Environment” conducted tests and found the

PDW being manufactured by the plaintiff is absolutely pure and

conforming to the required standards. The PDW being manufactured

by the plaintiff Mountain Dew became popular because of its high

standards of quality.

5.. Further, it is contended that as time went by, the trade mark

Mountain Dew has become closely associated to with the product of the

plaintiff and has acquired a secondary meaning. While the matter

stood thus, the plaintiffs were surprised to receive a notice from a

person who is claiming to be a court commissioner said to have been

appointed as per the orders passed by the Hon’ble High Court at New

Delhi in the suit filed by the defendant Nos 1 & 2 in OS No 1332/2003

on 19.07.2003. The said court commissioner along with the

representatives of the defendant Nos 1 & 2 went to the water plant of

>> 4 << OS No 19/2004

the plaintiff and made a scene and tried to seize the stock available in

the premises of the plaintiff under cover of panchanama. The plaintiff

tried to make a protest against the act of the commissioner. However,

on being informed that what was being done by the commissioner was

as per the orders of the court, the plaintiffs decided to seek redressal

from the concerned court. The officials of the defendant Nos 1 & 2

threatened the plaintiff that he should stop his business as it was

affecting their sales.

6.. Further, it is contended that though the defendant Nos 1 & 2 are

claiming to have registration for their trade mark Mountain Dew for

manufacturing citrus soda, the citrus soda has never been

manufactured in India till January 2003. Further it is submitted that

packaged drinking water is not being manufactured by the defendant

Nos 1 & 2 anywhere in the world till this day under the name of

Mountain Dew. The packaged drinking water that is being

manufactured by the defendant Nos 1 & 2 is under the name of

Aquafina, but not with the name of Mountain Dew. The name

Mountain Dew and the Aquafina by which names the plaintiff and

defendants are manufacturing PDW are two different names and they

have nothing to do with each other. Moreover, mere registration of the

trade mark of the defendant Nos 1 & 2 under the name of Mountain

>> 5 << OS No 19/2004

Dew for manufacturing citrus soda does not create any rights to the

defendant Nos 1 & 2 in respect of the said label because citrus soda is

not produced till January 2003.

It is further submitted that the plaintiff is prior user of the trade

mark Mountain Dew. Therefore, the defendant Nos 1 & 2 do not have

any right to use the label of Mountain Dew. Further, it is pleaded that

the Pepsi product was tested and it was found to be containing

pesticides. Therefore, further use of label of Mountain Dew brings

disrepute to the plaintiff’s business. Further, it is submitted that the

plaintiff learned that the defendant Nos 1 & 2 made a separate

application for separate registration of Mountain Dew for mineral and

aerated water and the same is in the process of being introduced in the

market. Further, it is submitted that the defendant Nos 1 & 2 are trying

to pass of their product as that of plaintiff.

7.. Further, it is the case of the plaintiffs that to the knowledge of

one and all the plaintiffs started PDW in the year 2000, but defendant

Nos 1 & 2 had been raising no objection since 2000. For the first time,

the defendants introduced their product citrus soda in Indian market in

the year 2003. Therefore, the plaintiffs become prior users of the name

Mountain Dew.

>> 6 << OS No 19/2004

8.. Further it is contended that the order of the Hon’ble Delhi High

Court was not to dispose of the stock seized by the local commissioner.

But the defendant Nos 1 and 2 in collusion with defendant Nos 3 and 4

got the news published in Times of India, Hyderabad edition and in

Vartha Telugu daily News Paper giving distorted view of what Delhi

High Court actually ordered.

It was published in the said news paper as if the Hon’ble Delhi High

Court ordered the plaintiff not to sell it’s PDW under the name of

Mountain Dew and the Pepsico bottles were seized in the premises of

the plaintiff by the local commissioner which is totally incorrect and

against to the orders of Hon’ble Delhi High Court.

9.. Further, it is submitted that in view of the false news published by

the defendant Nos 1 & 2 in collusion with defendant No 3 and 4,

damaged the reputation of the plaintiffs product which they acquired in

twin cities of Hyderabad. Moreover, the plaintiffs were sought to be

branded as manufacturers of spurious goods using Pepsi bottles which

caused mental agony and tension to the plaintiff and to his family.

Moreover, due to the irresponsible acts of the defendant Nos 3 & 4 in

publishing the false news the name and fame of the plaintiff effected.

The defendant No 3 and 4 without making sure that the alleged news

>> 7 << OS No 19/2004

are definite, published and caused damage to the reputation of the

plaintiff.

10.. The plaintiff were constrained to issue legal notice to the

defendants Nos 1 to 4 on 14.03.2003, but they gave no reply. The

defendants by publishing false news defamed the plaintiff. Therefore,

the plaintiffs are entitled to be compensated. It is submitted that the

plaintiffs are claiming damages of Rs.25,00,000/as follows:

SlNo

Particulars Amount in Rs.

1 Loss of reputation 7,50,00000

2 Loss of business 4,50,00000

3 Mental agony 7,50,00000

4 Cost of fighting litigation 5,00,00000

5 Approximate cost of seizedmaterial which has since crossedexpiry date and become unusable

50,00000

Total 25,00,00000

11.. With respect to cause of action and jurisdiction, it is submitted

that the news reports published by the defendants Nos 3 and 4 are

within the jurisdiction of this court and cause of action arose on

19.07.2003 when the court commissioner visited the plant premises of

the plaintiff and on 31.07.2003, when the defamatory publications

were made and also on 14.08.2003, when plaintiffs got issued legal

>> 8 << OS No 19/2004

notice.

12.. For the recovery of damages suit is valued at Rs.25,00,000/ and

Rs.27,426/ paid thereon and for the relief of injunction suit is valued

at Rs.1,00,000/ and an amount of Rs.3426/ paid thereon. The total

court fee paid is Rs.30,852/.

With the above submissions, it is prayed to award damages of

Rs.25,00,000/ with interest at 18% p.a and permanent injunction

restraining the defendant Nos 1 & 2 from passing of their products by

using the trade mark/label Mountain Dew.

13.. Defendants Nos 1 & 2 and also defendants Nos 3 & 4 filed written

statements.

14.. It is submitted in the written statements that the plaintiff by mis

representing and suppressing material facts filed this suit as a counter

blast to the suit instituted by the defendant Nos 1 & 2 before the

Hon’ble Delhi High Court.

15.. In respect of the allegation that the defendants are trying to pass

off their product as that of the plaintiff, the defendants denied stating

that plaintiff has no registered trade mark in India and in any case no

proprietary rights. It is the defendant Nos 1 & 2 who are the

proprietors. Therefore, suit for passing off is not maintainable by any

>> 9 << OS No 19/2004

person who is not the proprietor of the trade mark. Further, in

response to the plea of the plaintiff that he made a search in internet

before adopting the name Mountain Dew and ensured that no company

is manufacturing packaged drinking water under the name of Mountain

Dew, it is submitted that it is false because had the search been made

by the plaintiff in internet, he would have come to know the

prominence of the name Mountain dew because it is not something

which goes unnoticed.

16.. In reply to the allegations in para No 2 that plaintiff launched his

product PDW on 08.11.2000 having given vide publicity in Urdu News

paper called Siasat which is circulated not only in India, but also

countries like USA, UK, Japan, Germany, UAE etc., the defendants

denied and it is stated that plaintiff be put to strict proof of it.

17.. With reference to the averments made in para No 3 of the plaint

that plaintiff reached to the level of supplying PDW to the National

games held at Hyderabad, the reply is that the plaintiff by adopting the

trade mark of the defendant mountain dew and design and colour

scheme identical to the defendants mark of “AQUFINA” attempting to

encash upon the reputation and good will of the defendant Nos 1 & 2

mark.

>> 10 << OS No 19/2004

18.. There is no denial of OS No 1332/2003 being filed by the

defendants before the Hon’ble Delhi High Court which passed interim

injunction. However, the allegation of the plaintiff in para No 3 of the

plaint that the representatives of the defendants made a scene at the

water plant of the plaintiff is denied.

19.. In reply to para 6 of the plaint that the defendant Nos 1 & 2 in

collusion with the defendant No 3 & 4 got published distorted news, it

is submitted that defendant Nos 1 & 2 have nothing to do with the

business of defendant Nos 3 & 4 and they cannot be controlled for they

are independent of defendant Nos 1 & 2, therefore, the defendant Nos 1

& 2 cannot be held to be responsible for publishing news by defendant

No 3 and 4.

20.. The averments made in para No 8 of the plaint where in it is

alleged that defendants willfully and intentionally indulged into

exercise so as to defame the plaintiffs and cause unrest with an

intention to affect the business of the plaintiff by misrepresentation and

suppression of material facts, are denied and it is submitted that the

plaintiffs be put to strict proof of the same.

21.. Further, in their defence defendant No 1 & 2 have stated as

follows:

>> 11 << OS No 19/2004

The defendant No 1 Pepsico, Inc is a corporation existing under

the Laws of north Carolina, United States of America, having it’s

principal office at 700, Anderson Hill Road, Purchase, New York, USA.

Plaintiff No 2, Pepsico India Holdings Private Limited, is a company

incorporated under the Companies Act 1956 having it’s registered office

at JB, DLF Corporate Park, SBlock, Qutab Enclave, PhaseIII, Gurgaon,

Haryana and also at 13, Mohan Dev Building,13 Tolstoy Marg, New

Delhi is controlled by defendant No 1. The defendant No 2 is duly

authorized to take all actions to protect the various trade marks of the

defendant No 1. The defendants are renowned for their manufactures

and selling of beverages under the trade marks of PEPSI, MIRINDA,

7UP and AQUAFINA etc. Besides the above said products, the

defendants are renowned as one of the leading manufacturers and

sellers of carbonated citrus flavoured soda under the name of

MOUNTAIN DEW.

Further plea of the defendants is that the drink of MOUNTAIN DEW

is well known by the people throughout the world and the people are

well aware of the fact that the trade mark “MOUNTAIN DEW” belongs

to the defendants. The defendants have customers consuming

Mountain Dew soda all over the world.

Next pleas of the defendants is that the trade mark Mountain Dew

was adopted by the defendants in the year 1940 and from that time it is

>> 12 << OS No 19/2004

being used by the defendants continuously. The Mountain Dew is

traded world wide and it has excellent trading.

Furthermore, the plea of the defendants is that in India Mountain

Dew soda was introduced on 17.01.2003 and there was tremendous

response in the Indian market as well. Approximately, the turn over of

Mountain Dew soda in India from January to April was 36 crores.

Mountain Dew soda has been advertised widely in electronic and print

media which costed Rs.5 Crores approximately. The trade mark

mountain Dew is registered in More than 100 countries including India.

The trade mark Mountain Dew is registered trade mark of the plaintiffs

in India. The plaintiffs have trade marked the name Mountain Dew in

India in 1985. The details of the registration with reference to the trade

mark Mountain dew are as follows:

Trade Mark ApplicationNo.

Date Goods

Mountain Dew 436257 09.04.1985 Soft drink beverages andsyrups and concentrates

Mountain Dew(logo)

444078 08.10.1985 Non Alcoholic beveragesand syrups, concentratesand bases used in thepreparations of suchbeverages

Mountain Dew(logo)

766225 11.08.1987 Mineral and aeratedwaters and other nonalcoholic drinks

Mountain Dew(logo)

771568 14.08.1997 Mineral and aeratedwaters and other nonalcoholic drinks; fruit

>> 13 << OS No 19/2004

juices; syrups and otherpreparations for makingbeverages

Mountain Dew(logo)

1236129 12.09.2003 Mineral and aeratedwaters and other nonalcoholic drinks; fruitdrinks and fruit juices;syrups and otherpreparations for makingbeverages

The above said trade marks have been renewed from time to time and

valid under the trade and Merchandise Act 1958.

22.. What is next pleaded by the defendants is, defendants also sell

bottled purified water in India and Abroad under the trade mark

AQUAFINA. The defendants hold copy right on Mountain Dew as well

as on Aquafina being owners of the trade marks Mountain Dew and

Aquafina. However, despite being aware of the fact that the defendants

hold trade mark on Mountain Dew, the plaintiff is manufacturing and

selling packaged drinking water under the name of “MOUNTAIN DEW”

which is almost identical to the plaintiffs trade mark mountain dew.

Besides adopting the trade mark of the defendants, the plaintiff copied

Aquafina, The fact of the plaintiff manufacturing packaged drinking

water under the name of Mountain dew became known to the

marketing department of the defendants in the month of June 2003.

The plaintiff has resorted to this illegal act deliberately to have

>> 14 << OS No 19/2004

monetary benefit. Since the products of plaintiffs and the defendant

are being manufactured under the same names of Mountain dew there

is every likely hood of causing confusion among the consumers and

making mistaken impression that the plaintiff is having connections

with the defendants company and the packaged drinking water being

manufactured by the plaintiff is another product of the defendants. The

act of manufacturing packaged drinking water by the plaintiff in the

name of Mountain Dew which is identical to the trade mark of the

defendants Mountain Dew is illegal, unlawful and amounts to

infringement of trade mark.

23.. Furthermore, it is the plea of the defendants that the packaged

drinking water being manufactured by the plaintiff is not up to the

standards, where as the bottled purified water being manufactured by

the defendants under the name of “AQUAFINA” is high standards of

quality and they maintain high standards of customer care. In addition

to what has been pleaded, the defendants plead that the citrus

flavoured carbonated soda and packaged drinking water being

manufactured by the defendants under the name of Mountain dew and

Aquafina respectively, and the packaged drinking water being

manufactured by the plaintiff under the name of Mountain Dew fall

under the same class 32 of the Act, 1958 and 1999 Act and the rules

>> 15 << OS No 19/2004

framed there under. Therefore, the possible scenario would be that the

consumers get confused a lot. Therefore, if the plaintiff is allowed to

continue to manufacture the packaged drinking water under the name

of mountain dew, it not only amounts to violative of defendant’s right,

but harmful to the public whereby the good will having by the

defendants all over the world gets damaged. The illegal and unlawful

act of the plaintiff amounts to infringement of trade mark of the

defendants, infringement of copy right and passing off and leads to

unfair competition.

24.. Further, the defendant Nos 1 & 2 has stated in their defence that

the Hon’ble Delhi Court was pleased to appoint local commissioner in

OS No 1332/2003 (which was subsequently transferred to this court

and renumbered as OS No 95/2004) for inspecting premises of the

plaintiff. The local commissioner was further directed to take inventory

of the stock and submit the same to the court. Further, it is submitted

in written statement of defendant Nos 1 & 2 that at the time of

appointing local commissioner the Hon’ble Delhi High Court observed

that in case immediate steps are not taken for seizure of the stock of the

plaintiff herein not only the defendant (i.e., plaintiff herein) may

continue to violate and infringe plaintiffs trade mark (i.e. defendant

Nos 1 & 2 herein), but may also destroy/cancel the evidence connected

>> 16 << OS No 19/2004

with the manufacture and sale thereof. Further, it is submitted that the

Hon’ble Delhi High Court observed that prima facie the defendants i.e.,

plaintiff No 1 and 2 here in are infringing the rights of the defendants.

The gist of the averments made in the written statement of

defendant Nos 1 & 2 is that the plaintiffs are not entitled for either

injunction or for damages as claimed.

25.. Defendant Nos 3 filed written statement contending that the

defendant No 3 just printed a report of press trust of India (PTI) in

executive digest in a very small column, but the PTI is not made as

party, therefore, the suit is liable to be dismissed for non joinder of

necessary parties. Further, it is submitted that names of the plaintiffs

were never mentioned in the report appearing on 31.07.2003 in the

news paper Times of India. With reference to the other allegation such

as the defendant Nos 1 & 2 in collusion with the defendant No 3

published defamatory news whereby the reputation of the plaintiff got

damaged and sustained loss and suffered mental agony, defendant No 3

denies. Defendant No 3 denied having made irresponsible publication

in Times of India. Defendant No 3 pleads to be ignorant of the

reputation of the plaintiffs product and their interdisputes with

defendant Nos 1 & 2 and about their having filed case before Hon’ble

Delhi High Court. The gist of the written statement of the defendant

>> 17 << OS No 19/2004

No 3 is total denial of what was alleged in the plaint against defendant

No 3.

26.. Written statement of defendant No 4:

It is submitted by the defendant No 4 in his written statement that

there is no cause of action for the plaintiff against the defendant No 4

and the defendant No 4 was unnecessarily made as party. Further, it is

submitted that the publication made in Vartha daily dt 30.07.2003 is

purely reporting of the case proceedings before the Hon’ble High Court

of Delhi without any comment. The allegation of distorted news being

published in collusion with defendant No 1 and 2 is denied. Further, it

is submitted that defendant No 4 did not publish any defamatory

statement. Therefore, plaintiffs are not entitled to claim any damages.

27.. Basing on the above said pleadings the following issues are

settled:

1. Whether the plaintiffs are the holders of trade mark rights

regarding disputed trade mark?

2. Whether the defendant Nos 1 & 2 violated the trade mark rights

of the plaintiffs?

3. Whether the defendant No 4 committed defamation against the

plaintiffs?

4. Whether the plaintiffs are entitled to the decree as prayed for?

>> 18 << OS No 19/2004

5. To what relief?

28.. Filing OS No 1332/2003 by the defendant Nos 1 & 2 herein

against the plaintiffs herein before the Hon’ble Delhi High Court and it’s

subsequent transfer to this court and it’s having been renumbered as OS

No 95/2004 is not in dispute. OS No 95/2004 and OS No 19/2004 are

connected to each other and plaintiff Nos 1 & 2 and defendant Nos 1 &

2 in both the suits are same. OS No 95/2004 and this OS No 19/2004

are tried together and evidence is taken in OS No 95/2004. However,

R Satyanarayana examined as DW1 in OS No 19/2004 for defendant

No 3.

29.. On behalf of the plaintiffs two witnesses namely Syed Ghaziuddin

(Plaintiff No 1) examined in OS No 95/2004 as DW1. On behalf of the

defendants Nos 1 & 2 U R Shankar and Elizabeth N bilus Examined as

PW1 and PW2 in OS No 95/2004. On behalf of defendant No 3 R

Satyanarayana examined as DW1 in this OS No 19/2004. On behalf of

the plaintiffs herein 145 documents marked in OS No 95/2004 as

exhibits B1 to B145. On behalf of the defendants Nos 1 & 2 herein 57

documents marked as exhibits A1 to A57. Since OS No 95/2004 and

this OS No 19/2004 are tried together and evidence taken in OS No

95/2004 and exhibits marked in OS No 95/2004, the nomenclature of

>> 19 << OS No 19/2004

the exhibits in this case also will be referred as it is referred in OS No

95/2004.

30.. Heard both and perused records.

31.. Instead of reproducing the evidence of both side witnesses whose

evidence runs into several number of pages, I would like to refer their

evidence wherever their evidence is necessary for understanding the

facts of the case.

32.. Issue No 1:

Admittedly, the defendants Nos 1 & 2 got their trade mark Mountain

Dew registered in India in the year 1985 for manufacturing soft drinks,

but did not manufacture their product until 2003, when they

introduced citrus carbonated soda under the name of Mountain Dew.

Plaintiff contended that he started manufacturing PDW under the name

of Mountain Dew from the year 2000, therefore, he becomes prior user.

33.. Now let us see the evidence in that regard. In order to establish

that the plaintiff is the prior user, the plaintiff exhibited Ex.B1, paper

publication dt.08.11.2000 given in Urdu daily news paper called

“Siasat”. In Ex.B1 translated copy. It was published as follows:

SIASAT URDU DAILY DATE: 08.11.2000 MOUNTAIN DEW PURE

>> 20 << OS No 19/2004

DRINKING WATER MARKETED BY MAGFAST BEVERAGES.

Hyderabad Nov.7 (press note) Ozonised Hygienic water Mountain

Dew is marketed by Magfast. The old city distribution office shop No 2

Quli Qutab Shah Stadium will be inaugurated by Mohd Abdul Nayeem

(presently residing in USA) on 8th November at 5.00 p.m. Apart from

Mr Syed Ghaziuddin Managing Directo Magfast Mr Sayed Shah Mazhar

Hussaini Sabir will participate as Chief Guest. This water is available

in the bottles and containers of 1, 2 , 12 and 20 liters. According to

Ex B1 it can be said that the plaintiff gave advertisement in news paper

called “Siasat” about launching of mountain dew on 08.11.2000. Ex.B2

is certificate given by the Manager central bank of India, Chatta Bazar

branch dt 29.07.2003 stating that the Manufacturers of MOUNTAIN

DEW packaged drinking water have been enjoying credit facilities with

their bank with the following details:

Tern Loan 11.07.2000 Rs.4,20,000/ Cash Credit Limit 11.07.2000 Rs.5,80,000/ Cash credit Limit Rs.10,00,000/

Ex.B3 is the certificate of permanent SSI registration issued by General

Manager District Industries centre, Hyderabad dt 14.06.2001.

According to Ex.B3 the date of commencement of production of PDW

by M/s Magfast Beverages (i.e. plaintiff) was 13.08.2000. Ex.B4 is

acknowledgment cum demand notice/refund order issued by

commercial Tax officer, Chatta Bazar, Hyderabad dt 03.07.2003 issued

>> 21 << OS No 19/2004

to Magfast Beverages. According to Ex.B4 the turnover of the Mountain

Dew PDW was Rs.3,75,800/. From exhibits B1 to B4 what is being

understood is the plaintiff, M/s Magfast Beverages started

manufacturing PDW under the name of mountain dew in the year 2000

itself. Referring to Ex.B2 the learned counsel appearing for the

defendant contended that Ex.B2 was issued on 29.07.2003 i.e. after the

defendants Nos 1 & 2 had started manufacturing citrus flavoured

carbonated soda under the name of Mountain Dew. Therefore, basing

on the Ex.B2 the plaintiff cannot be said to have started manufacturing

PDW in the year. It is no doubt true that Ex.B2 is dt 29.07.2003.

However, just because the Ex.B2 bore the date being 29.07.2003 it

cannot be said that the plaintiff did not start manufacturing PDW in the

year 2000. The reason is, in Ex.B2 it has been referred that Mountain

dew PDW have been enjoying credit facility. The tense used in Ex.B2 is

present perfect i.e., have been enjoying, which indicates that the time of

action started in the past and going on at the time of speaking i.e.,

issuing Ex.B3. Therefore, though Ex.B2 bore the date of 29.07.2003, it

refers to past act done by the plaintiff. Therefore, with the help of Ex.B1

to B4 the plaintiff can be said to have started PDW under the name of

Mountain Dew in the year 2000. Though the plaintiff filed several

other documents they are not necessary to be looked into since Ex.B1 to

B4 are sufficient to say that plaintiff started manufacturing PDW in the

>> 22 << OS No 19/2004

year 2000.

34.. From the above said evidence, it can be said that the plaintiffs

are the prior users. In S.Syed Monideen vs. P Sulochana Bai (2016) 2

Supreme Court cases 683, the Hon’ble Supreme Court held that rights

in common law can be acquire by way of use and the registration rights

were introduced later which made the rights granted under the law

equivalent to the public use of such mark. Further, it is held that

registration is merely a recognition of the rights preexisting in common

law and in case of conflict between the two registered proprietors, the

evaluation of the better rights in common law is essential as the

common law rights enable the court to determine whose rights between

the two registered proprietors are better.

Further, it is held that rights conferred by registration are subject to

the rights of prior user of the trade mark. In the light of the

observation of the Hon’ble Supreme Court, the plaintiff becomes prior

user as he had started PDW long before the defendants launched their

product. From the above said discussion, issue No 1 is answered in

favour of the plaintiffs.

35.. Issue No 2:

In OS No 95/2004 the defendant (Plaintiff herein) in response to

>> 23 << OS No 19/2004

the stand taken by the pepsico (i.e. defendants Nos 1 & 2 herein) that

goods being manufactured by the plaintiff and defendants i.e. citrus

soda and packaged drinking water under the name Mountain Dew fall

under the same class 32, therefore, it causes confusion, hence, the

defendant shall not be permitted to use the name Mountain Dew, the

defence taken by the defendant(plaintiff herein)is that citrus soda and

PDW being manufactured by the plaintiff and defendant are two

different products therefore, the question of consumers getting

confused does not arise. But the very defendant (plaintiff herein)

pleads in this case that the defendants are committing wrong of passing

off therefore, they shall be restrained. Where the plaintiff herein took

the stand in OS No 95/2004 that the products being manufactured by

the plaintiff and defendant do not fall under the same class again he

cannot take stand in this case that the products being manufactured by

the plaintiff and the defendant fall under the same class and leads to

confusion. The plaintiff by taking two different stands blowing hot and

clod simultaneously which is not permissible in Law. Moreover, the

plaintiff admitted in his cross examination dt 25.08.2015 that the

defendant have in is prior user and adopter of trade mark. Therefore,

the defendant Nos 1 & 2 cannot be held to have violated the trade mark

rights of the plaintiff. Accordingly, issue No 2 answered against the

plaintiff.

>> 24 << OS No 19/2004

36.. Issue No 3:

As contended by the defendant Nos 3 and 4, defendant No 3 filed just

press report of (PTI) Press Trust of India for which defendant No 3

cannot be held to have published defamatory news. Though R

Satyanarayana DW1 stated in his cross examination dt 27.11.2014 that

he did not file any material before the court to say that basing on PTI

he published the news the said news item Ex. B134 does not suggest

that defendant No 3 published that news intentionally to defame the

plaintiff. Moreover, Ex.B 134 is digest. So also the defendant No 4

published the proceedings of the Hon’ble Delhi High Court. I have

perused Ex.B 17 varta Telugu daily news paper. But what it has got in

it is only with respect to court proceedings and nothing morethan that.

Therefore, the defendant No 4 cannot be held to have published

defamatory and false news against the plaintiff. Accordingly issue No 3

is answered against the plaintiffs.

37.. Issue No 4:

Findings given on issue No 2 & 3 are sufficient to say that plaintiffs are

not entitled to decree as prayed for. Hence, issue Nos 4 is answered

against the plaintiffs.

>> 25 << OS No 19/2004

38.. Issue No 5:

In the result the suit is dismissed without costs.

Dictated to the Personal Assistant, transcribed and typed by her,corrected and pronounced by me in the Open Court this the 31st day ofDecember 2019.

X ADDITIONAL CHIEF JUDGE,CITY CIVIL COURT: HYDERABAD.

APPENDIX OF EVIDENCE:Witnesses examined:

For Plaintiff: For Defendant:

PW1: Syed Ghazuddin DW1: V R Shankar

PW2: R Sathyanarayana DW2:Elizabeth N Bilus

Documents marked for the defendants Nos 1 & 2

Ex.A1 22.12.2005 Certified True copy resolution passed by the Board of Directors in its meeting

Ex.A2 31.05.2000 Original Letter issued by the Plaintiff no.1authorising petitioner no.2

ExA3 21.6.2004 Legal Proceedings of the Plaintiff

ExA4 21.6.2004 Legal Proceeding of the Plaintiff

ExA5 Bunch of Renewal Certificates of trade marksof registry in respect of plaintiff’s one of the

product (No.6)

ExA6 Proceeding of the plaintiff’s brand internetprintouts (No.4) (subject to objection)

ExA7 List of Registration of the Plaintiff brand invarious countries (Bunch)

>> 26 << OS No 19/2004

ExA8 Banner of Plaintiff’s brand

ExA9 The newspaper showing the plaintiff’sadvertisement brand

ExA10 The newspaper showing the plaintiff’sadvertisement brand

ExA11 The label of Acqua Fina one of the plaintiff’sbrand

ExA12 The label of Mountain Dew one of theplaintiff’s brand

ExA13 The internet print for Mountain Dew TradeMark,containing 17 sheets

ExA14 The certificate of registration (Xerox copy)

ExA15 Litigation costs incurred by the PIH againstMAGAFAST (Exs.A13, A14 and A15 are

marked subject to objection)

ExA16 19.6.2004 Mountain Dew Trade Mark print out

ExA17 11.2.2010 Acknowledgement before the notary

ExA18 11.2.2010 Notarial Certificate

ExA19 2472009 Original of delegation authority

ExA20. Original of Meeting of the Board of Directorsdated 5.6.2009(page No’s 3 to 12 )

ExA21 2.1.2010 Trade Mark Assignment abstract of title (internet print out of 5 pages)

Ex.A22 Statement of World Wide Registration of the Trade Mark . Mountain Dew ( Page No.15 to45)

Ex.A23 The Statement giving the details of the registration of Mountain Dew Trade Mark in countries like 1) Australia 2.Ohim 3.Canada, 4.Newzeland 5. UK, 6. Hongkong, 7.Singapore, 8.Turkey, 9.Switzerland 10.Estonia 11.Finland 12) Germany 13) Ire Land 14) Hungary 15) Japan and 16) Philippines with Internet printouts of

>> 27 << OS No 19/2004

registrations ( subject to objection as to verification of the Website)

Ex.A24 Original Certified Trade Mark Registration for the Trade Mark Mountain Dew from Canada, Singapoor, Lebanon, Finland and Germany(6)

Ex.A25 The Original Australian Trade Mark Certificate of registration consisting of 3 sheets).

Ex.A26 Original European Union Trade Mark Certificate Registration Consisting of 8 sheets)



Ex.A29 Original Newzealand Trade Mark Certificate Registration Consisting of 4 sheets)

Ex.A30 Original Newzealand Trade Mark Certificate Registration Consisting of 6 sheets)

Ex.A31 Original UK Trade Mark Certificate Registration along with renewal Consisting of 7 sheets)

Ex.A32 Original UKTrade Mark Certificate Registration Consisting of 7 sheets)

Ex.A33 The bunch of internet printouts of the Trade Mark Registration Certificate in the USA for the Mark Mountain Dew (Pages with Sl.No.333 to 394 are marked subject to objection as to verification of the Web Site)

Ex.A34 30.5.1995 The internet printout of the Article in New York Times dated 30.5.1995 ( pages with Sl.No.395 ot 400 are marked subject to objection as to verification of the Web Site).

>> 28 << OS No 19/2004

Ex.A35 29.7.2004 The Business Standard Daily Newspaper

Ex.A36 Cash Memo showing the purchase of Ex.A35

Ex.A37 1.8.2004 Financial Times Daily newspaper

Ex.A38 2.8.2004 Original Time Magzine Weekly

Ex.A39 9.8.200416.8.2004

Original Business Week,dt.09.08.2004

Ex.A40 31.7.2004to 6.8.2004

The Economist Weekly

Ex.A41 3.8.2004 Original Cash Memo showing the purchase Ex.A37 to A40

Ex.A42 22.7.2004 Original USA today daily newspaper

Ex.A43 22.7.2004 The Financial Times Daily Newspaper

Ex.A44 23.07.2004 The Original Cash Memo showing the purchase Ex.A42 and Ex.A.43 (the plaintiff represented to the court that the News Papers and Magazines are filed to show the circulation in India but not to prove the contents)

Ex.A45 The Google internet printout of the Mountain Dew Soft drink ( Pages with Sl.no.411, 416 are marked subject to objection as to verification of the Web Site)

Ex.A46 22.7.1981 The internet printout of the New York times dated 22.7.1981 (pages with sl.No.422 and 423 are marked subject to objection as to verification of the Website)

Ex.A47 14.6.1983 The internet printout of the New York times dated 14.6.1983 (pages with sl.No.178 to 180 (Vol.No.5) are marked subject to objection as to verification of the Website)

Ex.A49 The internet printout of the New York times dated 051984 (pages with Sl.No. 180 to 184 (Vol.No.5) are marked subject to objection as to verification of the Website)

>> 29 << OS No 19/2004

Ex.A49 051984 The internet printout of the New York times dated 051984 (pages with Sl.No. 431 to 434 (Vol.No.2) are marked subject to objection as to verification of the Website)

Ex.A50 The internet printouts of various media reports in the magazines in New York Times,Business Week, News Buyers, USA Today from the years 1992 to 1997. (are marked subject to objection as to admissibility as some of them are not taken from original source Sl.No.135 to 478 Vol.No.2)

Ex.A51 The internet printouts of various media reports in the magazines in New York times, Business Week, News Buyers, USA Today, Time Magazine. Advertising Age, Africa News and Chicago Times from the years 1997 to 2000 ( are marked subject to objection as to admissibility as some of them are not taken from original source Sl.no.489 to 584, Vol.No.2).

Ex.A52 CC of Order in OCJ No.01 of 1997 on the fileof Hon’ble High Court of Delhi Sl.No.602 to 619 , vol.no.2)

Ex.A53 CC or Order in CS (OS) No.1140 of 2008 on the file of Hon’ble High Court of Delhi (Sl.No.620 to 625) , vol.No.2)

Ex.A54 CC or Order in CS (OS) No.1141 of 2009 on the file of Hon’ble High Court of Delhi (Sl.No.626 to 632) , vol.No.2)

Ex.A55 Original Copyright Registration Certificate ofAqua Fina

Ex.A56 Legal proceedings Certificate for trade markRegistration No.1129381 in clause 32 of Aqua Fina Logo mark (Sl.No.643 & 644, vol.no.2)

Ex.A57 26.03.2003 New Application Examination Report

>> 30 << OS No 19/2004

Documents marked for the plaintiffs:

Ex. B1 Translation of Siasat Publication dated 8112000.Ex.B2 Certified copy issued by Central Bank of India dt. 2972003.Ex.B3 Certified copy of SSI Registration issued by government of AP dt. 1962001.Ex.B4 Refund order by commercial tax officer Chatta Bazar dt. 30.07.0Ex.B5 Return of Turnover to CTO by Plaintiff. Ex.B6 Income Tax returns for assessment year 0304 dt. 1.8.03.Ex.B7 Income Tax Challan Computation of Income, income and

expenditure and balance sheet statements 0304, dt. 1803Ex.B8 Proceedings of the Asst. Medical Officer, Circle No.1, MCH

dt. 7901.Ex.B9 Grant of license by Bureau of Indian Standards dt. 8402Ex.B10 Renewal of license by Bureau of Indian Standards dt. 8403Ex.B11 Intimation by Trademark attorney regarding trade mark

application acknowledged representation dt. 24.1.2003.Ex.B12 Letter of appreciation from ITI Ltd. dt. 2.4.03 Ex.B13 Letter of appreciation from Chirran Fort Club . dt. 5504Ex.B14 Letter of appreciation from Country Club dt. 2.5.03Ex.B15 Letter of appreciation from District Educational officer, RR Dist. 10.02.03.Ex.B16 Test Reports from vimla Labs dt. 27.2.03Ex.B17 Original extract of publication in eenadu newspaper dt. 31.7.03Ex.B18 License issued by Asst. Medical Officer of Health dt. 11.6.02Ex.B19 Original extract of publication in Indian express Newspaper

dt. 6803.Ex.B20 Original letter issued by siasat Daily dt. 20.8.03Ex.B21 Audit Bureau of Circulation Report dt. 18.2.03Ex.B22 Electronic Record attributable to originator Ex.B23 Electronic Record attributable to originator Ex.B24 Electronic record attributable to originator Ex.B25 Electronic record attributable to originator Ex.B26. Electronic record attributable to originator Ex.B27 Electronic record attributable to originator Ex.B28 Electronic record attributable to originator Ex.B29 Electronic record attributable to originator Ex.B30 Electronic record attributable to originator Exc.B31 Electronic record attributable to originator

>> 31 << OS No 19/2004

Ex.B32. Electronic record attributable to originatorEx.B33 Electronic record attributable to originator Ex.B34. Electronic record attributable to originator Ex.B35 Electronic record attributable to originatorEx.B36 Electronic record attributable to originator Ex.B37 Electronic record attributable dt. 5803Ex.B38 Electronic record attributable to originator dt. 17803Ex.B39 Electronic record attributable to originator dt.21.08.03Ex.B40 Electronic record attributable to originator dt.22903Ex.B41 Electronic record attributable to originator dt.16.12.03Ex.B42 Electronic record attributable to originator dt.5204Exc.B43 Original invoice dt. 25.4.04Ex.B44 Search report of United States PaTENT AND Trademark

Office [USPTO] Electronic record attributable to originator Ex.B45 Electronic record attributable to originator Ex.B46 Search report of United States Patent and Trademark Office

[USPTO] Electronic record attributable to originator dt.17404Ex.B47 Bunch of photographs 25 in number along with negativesEx.B48 Greeting Card of defendant firmEx.B49 Notarized copy of appreciation letter to defendant from Asia

engineering dt.181003Ex.B50 Pamphlet of defendant firmEx.B51 Advertisement sticker of defendant firmEx.B52 Company letter head of defendant firmEx.B53 Electronic record attributable to originator Ex.B54. Electronic record attributable to originator Ex.B55 Electronic record attributable to originator Ex.B56 Electronic record attributable to originator Ex.B57 Electronic record attributable to originator Ex.B58 Electronic record attributable to originatorEx.B59 Electronic record attributable to originator Ex.B60 Electronic record attributable to originator Ex.B61 Words to transitional Irish songsEx.B62 Letter from Joint Registrar of Trade marks dt. 10.6.04Ex.B63 Original extract of publication in Deccan Chronicle

newspaper dt.22.7.04Ex.B64 Mountain dew label of respondentEx.B65 Mountain dew lable of respondentEx.B66 Mountain dew lable of respondentEx.B67 Mountain dew lable of respondentEx.B68 Mountain dew lable of respondentEx.B69 Bottle of Mountain dew drinking water [Magfast]

>> 32 << OS No 19/2004

Ex.B70 Bottle of Oxyrich drinking waterEx.B71 Bottle of Kinlery drinking waterEx.B72 Bottle of Mounta dew [Pepsico]Ex.B73 Bottle of Aquafina [Pepsco]Ex.B74 Bottle of Bislery drinking water Ex.B75 Bottle of Kinley drinking water Ex.B76 Electronic record attributable to originator dt.26704Ex.B77 Electronic record attributable to originator dt.26704Ex.B78 Electronic record attributable to originator dt. 26704Ex.B79 Electronic record attributable to originator Dt.26704Ex.B80 Electronic record attributable to originator dt.26704Ex.B81 Electronic record attributable to originator dt.26704Ex.B82 Electronic record attributable to originator dt.26704Ex.B83 Electronic record attributable to originator dt.1804Ex.B84 Electronic record attributable to originator dt.26704Ex.B85 Electronic record attributable to originator dt.26704Ex.B86 Electronic record attributable to originator dt.26704Ex.B87 Electronic record attributable to originator dt.26704Ex.B88 Electronic record attributable to originator dt.26704Ex.B89 Bunch of sales invoices from May 2000 to May 2004. Ex.B90 Electronic record attributable to originator 1804Ex.B91 Electronic record attributable to originator dt.1804Ex.B92 Electronic record attributable to originator dt.1804Ex.B93 Electronic record attributable to originator dt.1804Ex.B94 Electronic record attributable to originator dt.1804Ex.B95 Electronic record attributable to originator dt. 1804Ex.B96 Electronic record attributable to originator dt. 1804Ex.B97 Electronic record attributable to originator United states

patent and trademark office dt.1804Ex.B98 Electronic record attributable to originator United states

patent and trademark office dt.1804Ex.B99 Electronic record attributable to originator United states

patent and trademark office dt.1804Ex.B100 Search report of United States Patent and Trademark office

[USPTO] Electronic record attributable to originator [Mountainpure] dt. 1804

Ex.B101 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainpure] dt. 1804

Ex.B102 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainvalleyspring] dt. 1804

Ex.B103 Search report of United States Patent and Trademark office

http://www.icemountaincom/natural%201-8-04

http://www.icemountaincom/natural%20dt.1-8-04

>> 33 << OS No 19/2004

[USPTO] Electronic record attributable to originator [Northern Mountain springs] dt. 1804

Ex.B 104 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Coldwater Mountainspringwater ] dt. 1804

Ex. B105 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [kabbalah Mountainspringwater] dt. 1804

Ex.B106 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [kabbalahmountainspringwater] dt. 1804

Ex.B107 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainfizz] dt. 1804

Ex.B108 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainlion] dt. 1804

Ex.B109 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainhighice] dt. 1804

Ex.B110 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountaintownspring] dt. 1804

Ex.B111 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountaincharge] dt. 1804

Ex.B112 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainedge] dt. 1804

Ex.B113 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainfizz] dt. 1804

Ex.B114 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainfrost] dt. 1804

Ex.B115 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainforestspringwater] dt. 1804

Ex.B116 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [sundew] dt. 1804

Ex.B117 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator

>> 34 << OS No 19/2004

[honeydew] dt. 1804Ex.B118 Search report of United States Patent and Trademark office

[USPTO] Electronic record attributable to originator [mountainmist] dt. 1804

Ex.B119 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [isledew] dt. 1804

Ex.B120 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainmist] dt. 1804

Ex.B121 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [duggalsdew] dt. 1804

Ex.B122 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [scottishdew] dt. 1804

Ex.B123 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [tullamoredew] dt. 1804

Ex.B124 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainblue] dt. 1804

Ex.B125 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [oceandew] dt. 1804

Ex.B126 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [bodydew] dt. 1804

Ex.B127 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [honeydew] dt. 1804

Ex.B128 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Melondew] dt. 1804

Ex.B129 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [acquadew] dt. 1804

Ex.B130 Search report of United States Patent and Trademark office [USPTO] Electronic record attributable to originator [Mountainviewfarmf] dt. 1804

Ex.B131 Original Internet printout dt. 15211Ex.B132 Original Internet printout dt.15211Ex.B133 Original Internet printout dt. 15211

>> 35 << OS No 19/2004

Ex.B134 Original extract of publication in times of India Newspaper dt.31.7.2003Ex.B135 Certified copy of Newspaper Deccan Chronicle dated 522004 along with receiptEx.B136 Original Siasat Daily Urdu paper dated 8112000Ex.B137 Original receipt dated 23.3.2004 (Bureau of India

Standard).Ex.B138 Original letter from Bureau of India Standard dt. 29404 along with endorsementEx.B139 Original letter from Bureau of India Standard dt. 15404 along with endorsementEx.B140 Original Memo by the government of A.P., Police

Department Ex.B141 Original for registration of Trade Marks, Mumbai [Mountain

Dew] dt. 1612003Ex.B142 Original form TM 16 issued by Registrar of Trade Marks,

Mumbai along with enclosures. Ex.B143 Original Form “C” issued by Intellectual Property Appellate

Board.Ex.B144 Original form 1 application for removal /rectification of

trademark along with statement of CSE and Affidavit dt. 1842004(Ex.A134 to Ex.A144 are marked subject to

proof relevancy and admissibility and further subject to Section 87 of Evidence Act)

Ex.B145 Attested copy of Deccan Chronicle English News Daily ofHyderabad Special dt. 30.9.03 attested by representative ofNewspaper [the said document marked subject to objectionas to admissibility and relevancy of the document andobjection will be considered at the appropriate stage.

X ADDITIONAL CHIEF JUDGECITY CIVIL COURT: HYDERABAD.