United Distillers And Vintners ... vs Khoday Breweries Limited
2005 Latest Caselaw 1309 Del

JUDGMENT

Anil Kumar, J.

Page 1253

1. This judgment will dispose of plaintiffs' suit for injunction and accounts for infringement of trademark and passing of their registered trademark `Johnnie Walker'.

2. Concisely the case of the plaintiff is that plaintiff No. 1 was incorporated under the laws of The Netherlands and Ms.Geraldine Downey is the constituted attorney and plaintiff No. 2 is a company incorporated under the laws of India and Mr. S.Sridhar is the constituted attorney who has signed and verified and instituted the suit on behalf of respective companies.

3. Plaintiff No. 1 contended that by virtue of an assignment in August, 2000 it became the owner of `Johnnie Walker' brand and trademark. The plaintiffs gave the details as to how plaintiff No. 2 derived its title. They contended that they are the renowned distillers, bottles, blenders, exporters and distributors of alcoholic beverages and some of their popular brands are like Johnnie Page 1254 Walker (Red Label, Black Label, Blue Label, Gold Label) Haig, Dimple, Vat 69, Black and White and White Horse. It was pleaded that the brand was adopted as back as 1909, however, the history goes back to 1820.

4. The plaintiff gave the details of its registration under the name Johnnie Walker Swing (Label) for the whiskies and Johnnie Walker Red Label for scotch whiskies which registrations have been renewed from time to time and are valid. The plaintiff also gave the details of the applications for registrations of Johnnie Walker which are pending with the Registrar of Trade Marks. The details of expenditure on advertisements and promotion of Johnnie Walker products and the sales figure from 1994-95 to 1999-0 were given in paragraphs 13 and 14 of the plaint.

5. The goods of the plaintiffs bearing trademark Johnnie Walker, according to plaintiffs, are extremely well known in India and are sold at duty free shops and also brought into the country by tourists and Indian nationals returning home and world wide sales turnover of Johnnie Walker, different whiskies of different labels, is in excess of 11 crores cases each containing 12 bottles of 750 ml or equivalent thereof and there is no doubt about the product of the plaintiffs acquiring a status of a well know famous trademark.

6. The plaintiff contended that a recent search for the trademark Johnnie Walker in Class 33 revealed deceptively and confusingly similar applications for the trademark, Johnnie Walker. It transpired that the defendant besides claiming trademark of these marks was also claiming use of mark UNCLS WALKER since September 28, 1998. On coming to know the use of deceptively and confusingly similar trademarks, a communication dated 17th June, 2000 was sent to the Registrar of Trademarks on behalf of plaintiffs or withdrawal of confusingly and deceptively similar trademarks, however, nothing was done. Subsequently a reply dated 27th September, 2000 was received from the defendant whereby he not only refused to comply with the direction of the plaintiffs to with raw the confusingly and deceptively similar trademark but he also claimed proprietorship to the mark 'WALKERG'.

7. The plaintiffs categorically contended that earlier also defendant had adopted the trademark VAT 999 which was deceptively and confusingly similar to plaintiffs well known trademark VAT-69, necessitating filing of a suit being Suit No. 866/96 where an Interim order dated 23rd April, 1996 was passed against the defendant.

8. As the defendant persisted with using confusingly and deceptively similar trademarks JOL-E-WALKER, BON-E-WALKER, UNCLS WALKER and WALKER'S CHOICE the plaintiffs have filed the suit for injunction claiming permanent injunction and a decree of mandatory injunction directing the defendant to hand over the deceptively and confusingly similar goods, packaging, cartons, unfinished products or any other material whatsoever bearing the trademark JOL-E-WALKER, BON-E-WALKER, UNCLS WALKER and WALKER'S CHOICE an also prayed for the rendition of accounts.

9. Pursuant to the summons issued to the defendant, Mr. R.P.Anand advocate appeared on his behalf on 22nd March, 2001 and sought time to file the written statement. Neither the written statement was filed nor anyone appeared on behalf of defendant thereafter resulting into ex-parte proceedings against the defendant on 18.9.2001. There after evidence on affidavit was filed by the plaintiffs and documents were proved.

Page 1255

10. The plaintiff filed the affidavit of evidence of Sh.S.Sridhar who deposed that he is the constituted attorney of plaintiff No. 2 and who proved the power of attorney in his favor as exhibit PW1/1. He also proved the signatures of Ms.Geraldine Mary Patricia Downey, deposing that she was the constituted attorney of plaintiff No. 1 and she has signed the plaint and verified the pleadings. The said witness also deposed about assignment in their favor. The witness specifically deposed about the assignment from UDV (SJ) Limited in August, 2000 in favor of United Distillers and Vintners (ER) Limited. The specific deposition of the plaintiffs witness was about popular brands of the plaintiff namely Johnnie Walker Red Label, Johnnie Walker Black Label, Johnnie Walker Blue Label, Johnnie Walker Gold Label, Haig, Dimple, Vat 69, Black and White and White Horse. The witness gave the history of acquisition of the trademark and also gave the details of the registration of the trademark Johnnie Walker and that the registration stood renewed till December 21, 2006. The witness also deposed about the copy of the last renewal certificate and marked it as Mark PW1/1. He also deposed about registration of Johnnie Walker Swing (Label) goods whisky and Johnnie Walker Red Label for the goods Scotch Whisky and also gave the details. The witness also deposed about the applications for registration of trademark which are pending being that of Johnnie Walker Blue Label and Johnnie Walker Gold Label for the alcoholic beverages. The copies of the trademark journal showing the labels of Johnnie Walker were also marked as Mark PW1/2 and PW1/3 . The photocopies of the representation sheets of the trademark were marked as PW1/4 and PW1/5. Some of the advertisements given in the Times of India were marked as Mark PW1/6 and PW1/7 and number of other advertisements were collectively marked as Mark PW1/8. The plaintiffs attorney also gave the details of expenditure incurred on advertisement and promotion from the year 1997-98 in the pound serling and the sales figure of Johnnie Walker Whisky from 1994-95 till 1999. Photocopies of some of the advertisements were marked as Mark PW 1/9 and other advertisements of the plaintiffs were marked as Mark PW1/10 and advertisements in various sponsore events were marked as Mark PW1/11.

11. The plaintiffs contend that adoption of deceptively and confusingly similar trademarks by defendant namely JOL-E-WALKER, BON-E-WALKER, UNCLS WALKER and WALKER'S CHOICE is illegal and the defendant has no right to continue with the same. A copy of the representation sent to the Registrar of Trademark was exhibited as exhibit PW1/2 and the letter dated 23rd June, 2000 to the defendant as exhibit PW1/3 and the reminder dated 20th July, 2000 as exhibit PW1/4. A reply dated 18th August, 2000 received from the defendant was exhibited as Exhibit PW1/5 and a reply received by the attorney of the plaintiffs from the defendant dated 27th September, 2000 was exhibited as exhibit PW1/6. The witness categorically deposed that the defendant has no right to use deeptively and confusingly similar trademark which are phonetically similar and an ordinary person shall be mislead and adoption of these offending marks is an attempt to wrongfully appropriate the plaintiffs personality which are causing irreparable loss and injury to the plaintiffs business and reputation and are further likely to dilute the distinctive character of the plaintiffs trademarks and the name and distinctiveness is likely to be debased and eroded.

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12. The contentions of the plaintiffs have remained un-rebutted and the evidence lead and the facts deposed have also been not disputed on behalf of defendant as no evidence has been produced. Consequently, an inevitable inference in the facts and circumstances is that the plaintiffs are the owner of the trademarks Johnnie Walker Swing (label) and Johnnie Walker Red Label and are also entitled to sell their goods under the trademark Johnnie Walker Blue Label and Johnnie Walker Gold Label and the defendant is passing off goods as that of plaintiffs under the said brand names.

13. On the basis of evidence produced by the plaintiff and on the preponderance of probabilities, the inevitable inference is that the trademark JOL-E-WALKER, BON-E-WALKER, UNCLS WALKER and WALKER'S CHOICE are confusingly and deceptively similar to that of plaintiffs trademark and the defendant is not entitled to pass off his goods under the said trade names and sell his goods.

14. The defendant had also copied the trade name of the plaintiffs in respect of VAT-69 by adopting confusingly and deceptively similar VAT-999 against which an interim order dated 23rd April, 1996 in Suit No. 866/96 was also passed.

15. It is also inevitable to infer in the facts and circumstances that the plaintiffs who have an established trademark for almost a century shall suffer adversely if defendant is allowed to continue using the deceptively and confusingly similar trademark resulting into irreparable loss to the plaintiffs and dilution and erosion of plaintiffs' reputation and goodwill.

16. During the submissions made by the Learned Counsel for the plaintiffs Mr. Lall gave up the relief of the plaintiffs for rendition of accounts against the defendants. Since the plaintiffs have been able to establish that the defendant marks are deceptively and confusing similar to the plaintiffs' trade mark and the defendant are not entitled to use such marks, the plaintiffs shall be entitled to take such action against the defendant as permissible under law against the applications of the defendant for the registration of his trade mark which are confusingly and deceptively similar to the mark of the plaintiff.

17. Consequently in the facts and in totality of circumstances the plaintiffs has been able to make out a case for grant of perpetual injunction against the defendant. Therefore, the suit for perpetual injunction of the plaintiffs against the defendant is decreed restraining the defendant from using the trademark JOL-E-WALKER, BON-E-WALKER, UNCLS WALKER and WALKER'S CHOICE which are confusingly similar to the trade mark of the plaintiff JOHNNIE WALKER in respect of their goods or in advertisement and pre motional material and he is also restrained from passing off his goods under the said trademarks which are deceptively similar to the trade mark of the plaintiff JOHNNIE WALKER. The suit for mandatory injunction directing the defendant to hand over the goods, packaging, cartons, unfinished products bearing the trademark JOL-E-WALKER, BON-E-WALKER, UNCLS WALKER and WALKER'S CHOICE is also passed in favor of plaintiffs directing the defendant to hand over these products to the plaintiffs for their destrction. Cost of the suit is also allowed to the plaintiffs against the defendant. Decree sheet be accordingly drawn.