Delhi High Court
M/S Radico Khaitan Limited vs M/S Brima Sagar Maharashtra ... on 15 October, 2014
IN THE HIGH COURT OF DELHI AT NE W DELHI
Order Reserved on: 17 th July, 2014
Order Pronounced on: 15 th October, 2014
CS(OS) 1572/2013
M/ S RADICO KHAITAN L IMITED .... PLAINTIFF
Through: Mr. Sandeep Sethi, Senior
Advocate with Ms. Ishani
Chandra, Mr. Sagar Chandra and
Ms. Harini Niveda, Advocates.
versus
M/ S B RIMA SAGAR MAHARASHTRA DISTILLERIES L TD
...D EFENDANT
Through: Mr. A.S. Chandhiok, Senior
Advocate with Ms. Amita Sehgal
and Mr. Satinder Singh,
Advocates.
CORA M:
HON'BLE MR. JUSTICE SANJEEV SACHDEVA
SANJEEV SACHDEVA, J.
IA 12712/2013 (On behalf of the Plaintiff Under Order 2
Rule 2 Code of Civil Procedure)
The present application has been filed by the Plaintiff
seeking liberty under Order 2 rule 2 to sue the Defendant for
similar reliefs as prayed for in the suit in respect of other
trademarks of the Plaintiff which are being infringed by the
Defendant and of which the Plaintiff does not have
knowledge at present but may become aware in the future.
The Plaintiff has contended that the Plaintiff has filed
the present suit in respect of only five trademarks of the
Plaintiff which are being infringed by the Defendant. It is
contended that the Plaintiff is not aware if the Defendant is
infringing any other trademark of the Plaintiff. Liberty is
sought to sue the Defendant in future in respect of
trademarks that are not subject matter of the present suit and
in respect of which the Plaintiff is not aware if the Defendant
is infringing the same.
The present suit is restricted to the trademarks that are
subject matter of the present suit. The Plaintiff has contended
that the Plaintiff is not aware if any other trademark is being
infringed by the Defendant. In case the Plaintiff becomes
aware subsequently that the Defendant is infringing any
other trademark of the Plaintiff, cause of action would accrue
to the Plaintiff from the date of such knowledge. In the said
circumstances the application is allowed and the liberty is
granted to the Plaintiff under Order 2 rule 2.
IA 16926/2013 (On behalf of the Plaintiff under Section
148 Code of Civil Procedure for enlargement of time to
file rejoinder to reply filed by Defendant in IA
12719/2013)
The Plaintiff has sought for enlargement of time to file
the rejoinder to the reply filed by the Defendant to the
application filed by the Plaintiff under Order 39 rules 1 & 2.
The Rejoinder has since been filed and the arguments
of the parties have been made on the said application under
Order 39 rules 1 & 2. Parties have addressed detailed
submissions. The respective pleadings of the parties have
been taken into consideration.
In view of the above, the application is allowed and the
time to file the rejoinder is enlarged. The rejoinder is
directed to be taken on record.
IA 12710/2013 (On behalf of the Plaintiff under Order 39
rules 1 & 2 Code of Civil Procedure)
1. The Plaintiff has filed the present suit for permanent
injunction, restraining infringement of trademark,
infringement of copyright, passing off etc. against the
Defendant thereby restraining the Defendant from
selling, manufacturing, offering for sale or in any
manner dealing in any alcoholic beverage bearing the
mark/label "BRIHAN'S DANZ NO. 1 WHISKY,
BRIHAN'S PREMIUM BLU E WHISKY, GOA,
NOVA GOA, BRIHAN'S ORIGINAL DOCTOR
BRANDY" or from adopting/using any other identical
or deceptively similar trademark/label.
2. The case of the Plaintiff is that the Plaintiff was
formerly known as Rampur Distillery and was
established in the year 1943. In the year 1999, the
Plaintiff launched its brand under the house
mark/trademark Radico.
3. As per the Plaintiff, the Plaintiff has state-of-the-art
bottling lines and had set up some well -know n
trademarks. The Plaintiff is stated to have set up
bottling plants in various states. The Plaintiff claims to
have strong presence in the market.
4. In the year 2005 the Plaintiff acquired several
trademarks including GOA DRY GIN AND LIME,
BRIHAN'S GOA, BRIHAN'S NO. 1 WHISKY,
BRIHAN'S PREMIUM BLUE WHISKY, BRIHAN'S
DOCTOR BRANDY etc.. along with their goodwill
from Brihans Maharashtra Sugar Syndicates Ltd
(hereinafter referred to as BMSS). Deed of assignment
dated 5.10.2005 was executed in favour of the Plaintiff.
The assignment is stated to cover all the intellectual
property residing in the said trademarks including
copyrights in the Logos/legends of the trademarks and
the packaging material being used with those
trademarks. The Plaintiff also has registrations in its
favour in respect of some of the trademarks.
5. As per the Plaintiff, the trademarks were first adopted
by the Plaintiff's predecessor in interest since the year
1994 or thereabouts and were used by them
continuously and uninterruptedly before the trademarks
were assigned to the Plaintiff in 2005. Thereafter the
Plaintiff claims to have used the said trademarks and
labels in respect of alcoholic beverages continuously
since then and has been using the marks
uninterruptedly to date.
6. It is the case of the Plaintiff that though the
advertisement of alcoholic beverages is not allowed ,
the Plaintiff has promoted the alcoholic beverages
under the mark and their labels throughout the country.
As per the Plaintiff by virtue of such long, continuous
and uninterrupted use, excellent quality and extensive
promotion of the said trademarks, they have come to be
associated exclusively with the Plaintiff in respect of
alcoholic beverages. It is contended that the t rademarks
being arbitrary marks for alcoholic beverages are thus
liable to be afforded the highest degree of protection
under the Trademarks Act, 1999.
7. As per the Plaintiff, the Plaintiff became aware in the
month of April 2012 that the Defendant was
manufacturing and marketing BRIHAN'S DANZ NO. 1
WHISKY in bottles that had an identical trademark to
the Plaintiff's trademark for an identical product being
an alcoholic beverage.
8. The Plaintiff issued a legal notice dated 26.04.2012 to
the Defendant calling upon them to cease and desist
from using the bottles bearing the Plaintiff's registered
trademarks. It is contended that the Defendant failed to
respond to the said notice. The Plaintiff again came
across products manufactured and marketed by
Defendant under the trademark BRIHMA'S GOA
imprinted on their labels for their alcoholi c beverage. It
is contended that upon performing due diligence it was
found that Defendant were also advertising other
products identical to that of the Plaintiff's products. By
notice dated 30.07.2013, the Plaintiff called upon the
Defendant to immediately cease and desist from using
infringing trademarks. The Plaintiff thereafter has filed
the present suit
9. The Defendant has in its defence contended that the
suit of the Plaintiff's is barred by delay, laches and
acquiescence. It is contended that the Plaintiff knew
about the use of the disputed marks by BMSS and the
use by the Defendant since the year 2008. It is
contended that BMSS by deed of assignment dated
16.12.2010 assigned certain trademarks to the
Defendant. It is contended that the Defendant had
acquired the said trademarks along with their goodwill
and as such was entitled to use the said trademarks.
10. The Defendant apart from specific defences raised to
the 5 trademarks in issue have raised the common
defence in respect of all five marks i.e. (i) that the
excise authorities have approved the mark and label of
the Defendant and as such Defendant is entitled to use
the same, (ii) further that BMSS was using the
trademarks since the year 2008 and the Defendant has
been using them since 2011 and as such the Plaintiff
being aware of the user is not entitled to the relief of
injunction (iii) the Defendant has also applied for
registration and/or is the registered proprietor of some
of the marks.
11. Apart from the general pleas applicable to all the
impugned trademarks, the Defendant has also raised
trademark specific pleas.
Plaintiff's BRIHAN'S NO. 1 WHISKY V/S Defendant's
BRIHAN'S DANZ NO. 1 WHISKY
Plaintiff's Defendant's
12. It is contended by the Defendant that the said
"BRIHAN‟S DANZ NO. 1 WHISKY" trademark was
assigned to the Defendant under a deed of assignment
dated 16.12.2010 for valuable consideration. It is
contended that by virtue of the said deed of assignment
the Defendant is exclusively entitled to use the said
trademark. It is contended that the Defendant has
already filed an application for registration of the
trademark, which is in process. It is contended that
BMSS since 02.12.2008 and thereafter the Defendant
since 21.9.2011 is continuously using the said Mark
and as such is entitled to use the same.
13. The case of the Plaintiff on the contra is that BMSS by
deed of assignment dated 05.10.2005 assigned various
trademarks along with their goodwill for a sale
consideration of Rupees 17.5 Crores. The trademark
BRIHAN'S NO. 1 WHISKY was one such trademark.
It is contended that the Defendant has adopted a
deceptively similar trademark BRIHAN'S DANZ NO.
1 WHISKY, the only distinction being the word 'Danz'.
It is submitted that the Plaintiff acquired the entire right,
title and interest in the said Mark through deed of
assignment dated 05.10.2005.
14. It is contended that the assignment of trademark
BRIHAN'S DANZ NO. 1 WHISKY by BMSS to the
Defendant is patently wrong and illegal and BMSS
could not have assigned the said trademark to the
Defendant in the year 2010 in view of the earlier
assignment of BRIHAN'S NO. 1 WHISKY AND
BRIHAN'S NO. 1 in favour of the Plaintiff along with
all goodwill, common law rights, labels, logo etc.
15. It is contended that the two marks BRIHAN'S DANZ
NO. 1 WHISKY and BRIHAN'S NO. 1 WHISKY are
deceptively similar and since the Plaintiff is the sole
and exclusive proprietor through prior assignment and
has continuous and uninterrupted use r since 2005, the
Defendant cannot use a deceptively similar mark. It is
further contended that the Defendant's label clearly
shows the mala fide intention in adoption of the said
Mark as the word DANZ is written in small and
inconsequential lettering as compared to the w ords NO.
1 WHISKY AND BRIHAN'S.
Plaintiff's BRIHAN'S PREMIUM WHISKY, BRIHAN'S
PREMIUM BLUE WHISKY V/S Defendant's BRIHAN' S
PREMIUM BLUE WHISKY
Plaintiff's Defendant's
16. The Defendant in the Written Statement has contended
that the impugned trademark was initially assigned by
BMSS to the Plaintiff under the Assignment Deed
dated 25.10.2005. It is contended that thereafter as the
Plaintiff was not interested in acquiring the said
trademark, therefore the Plaintiff agreed to reassign the
said trademark in favour of BMSS vide letter dated
July 2006. It is contended that the reassignment of
trademark in favour of BMSS was further confirmed
through the emails exchanged between the Plaintiff and
BMSS. It is contended that after the assignment of the
same in favour of BMSS on 03.07.2006, the Plaintiff
never used the trademark either in the form of label or
word per se.
17. It is contended that after getting the reassignment of the
said Mark, BMSS assigned the same in favour of the
Defendant under the Deed of Assignment of 2010 and
as such the Defendant claims to have become the
owner of the said trademark.
18. The Plaintiff has contended that though there were
some discussions in the year 2006 between the Plaintiff
and BMSS for the reassignment of the said Mark,
however these never fructified and the mark was never
reassigned to BMSS. It is contended that the Defendant
has failed to show any Re-assignment Deed, assigning
the mark back to B MSS. It is contended that the letter
dated 03.07.2006 was a communication between the
Plaintiff and BMSS which further stipulated that the
parties would be entering into a Re-assignment Deed. It
is contended that the email exchanged in 2011 rather
confirmed the fact that the reassignment did not take
place.
19. It is submitted by the Plaintiff that since there is an
admission that the Plaintiff was assigned the Mark by
BMSS in 2005 and thereafter there was no
reassignment back to BMSS, the 2010 Assignment
Deed under which the Defendant claims to have
acquired rights is illegal and cannot be enforced. It is
thus contended that the very adoption by BMSS and the
subsequent assignment to the Defendant and the
adoption by the Defendant is dishonest and in violation
of the rights of the Plaintiff.
Plaintiff's BRIHAN'S GOA V/S Defendant's BRIHM A'S
GOA & NO VA GO A
Plaintiff‟s Defendant‟s
20. It is contended by the Defendant that on 19.05.1994,
BMSS applied for registration of the trademark
BRIHAN'S GOA. On 20.07.2005 the said trademark
was registered in favour of BMSS. On 29.05.2006, the
Plaintiff became the subsequent proprietor. It is
contended that on 26.11.2009 rectification was filed in
respect of the said trademark.
21. It is contended that the Plaintiff was not using the label
registered but was using a different label. It is
contended that the Defendant was using a different
trademark and a completely different label it is
contended that the Defendant was using the mark
BRIHMA'S GOA and not BRIHAN'S GOA in a
different style. It is contended that the two marks are
not deceptively similar, further it is contended that the
word GOA is a geographical name and nobody
including the Plaintiff has the exclusive right over the
word GOA.
22. The Plaintiff has contended that mere pendency of the
rectification proceedings filed by a 3 rd party does not
disentitled the Plaintiff from enforcing its rights against
the Defendant. It is contended that the two marks and
labels are deceptively similar and likely to cause
confusion. It is contended that even geographical marks
are entitled to protection. It is contended that the mark
and the label used by the Defendant is identical to that
of the Plaintiff and has been adopted to mislead the
public. It is submitted by the Plaintiff that there are
certain disputes that arose with BMSS in the year 2009
for the use of the mark GOA by BMS S and some
settlement terms were proposed but they were never
finalized. It is contended that the emails relied upon by
the Defendant further go on to show that BMSS was
seeking permission of the Plaintiff to do certain acts for
a limited purpose thereby acknowledging the Plaintiff
to be the owner of the GOA trademarks. It is submitted
that the said permission was never granted to BM SS. It
is submitted that since BMSS and the Plaintiff shared a
unique relationship, the discussion was being carried
on but that would not entitle the Defendant to claim
any benefit of the said discussion.
23. It is contended by the Plaintiff, that the Plaintiff
through its Assignor BMSS had been continuously
using the mark GOA since 1994 and because of long
extensive and continuous use of the said trademark , the
consuming public associated the product of the Plaintiff
bearing the trademark BRIHAN‟S GOA and the GOA
LABEL with the Plaintiff. It is contended that the label
of the Defendant is deceptively similar.
24. It is contended by the Defendant, that the Defendant
was the owner of the said trademark by virtue of the
assignment by BMSS in the year 2010. It is submitted
that the label NOVA GOA was approved by the excise
authorities on 15.06.2009 and the Defendant was using
the said label since 21.09.2011. It is submitted that the
Plaintiff was aware of the use of the said Mark.
25. It is contended by the Plaintiff that the Defendant's
label was a colorable imitation of the Plaintiff's label
amounting to infringement of copyright and is also
likely to mislead the consuming public. It is submitted
by the Plaintiff that the Defendant was relying on
unsigned Minutes of Meeting and one-sided emails to
try to mislead the Court. It is submitted that from the
documents filed by the Defendant, it was clear that
BMSS was seeking the Plaintiff's permission to do
certain acts for a limited purpose. Further, it is
contended that the said documents prima facie show
that BMSS was acknowledging that the Plaintiff was
the owner of the GOA trademark.
26. It is submitted by the Plaintiff that the mark GOA was
an essential feature of the mark NOVA GOA and
therefore violates the rights of the Plaintiff.
.....Contd
Plaintiff's BRIHAN'S DOCTOR (WORD PER SE) &
BRIHAN'S DOCTOR BRANDY (LABEL) V/S Defendant's
BRIHMA'S O RIG INAL DOCTOR BRANDY
Plaintiff's Defendant's
27. It is submitted by the Defendant in the Written
Statement that on 04.06.1976 BMSS applied for
registration of the said trademark BRIHAN‟S
DOCTOR BRANDY and claimed users since
01.06.1972. O n 01.02.1978, the Mark was advertised in
the trademark journal with the disclaimer that the
registration shall give no right to the exclusive use of
the word DOCTOR. On 29.07.1978 the mark was
registered in favour of BMSS. On 29.05.2006, the
Plaintiff became the subsequent proprietor. It is further
contended by the Defendant that the registration of the
Mark is subject to the disclaimer of the word DOCTOR
and the Plaintiff does not have the exclusive right to
use the word DOCTOR.
28. It is contended that the Defendant was using a different
mark i.e. BRIHMA‟S ORIGINAL DOCTOR
BRANDY. It is contended that the use of the said label
by the Defendant with the registered trademark
BRIHMA‟S in no way amounts to infringement of the
registered trademark BRIHAN'S DOCTOR (word per
se) of the Plaintiff. It is contended that the trademarks
BRIHAN'S AND BRIHMA‟S are distinct and different.
29. It is contended that the label used by the Defendant is
distinct from the label used by the Plaintiff. It is
contended that in the year 2009 some disputes arose
between BMSS and the Plaintiff with regard to the use
of the labels BRIHMA‟S ORIGINAL DOCTOR
BRANDY. It is contended that the disputes were
resolved in the meeting held on 20.09.2009 and
recorded in the Minutes of Meeting and according to
the said Minutes of Meeting the labels were amended
by BMSS to the satisfaction of the Plaintiff.
30. It is submitted that the Plaintiff agreed not to take any
objection or legal action against BMSS on the sale of
the two brands BRIHMA‟S GOA and BRIHMA‟S
ORIGINAL DOCTOR BRANDY . It is contended that
BMSS has been continuously, with the knowledge and
consent of the Plaintiff, used the said amended/agreed
labels till the same were assigned to the Defendant and
as such the Defendant has the right to use the said
labels.
31. Before dealing with the factual averments of the
respective parties, it would be appropriate to have a
look at the legal position governing the principles of
grant of injunction in cases of infringement of
trademarks or passing off of trade names.
32. In the case of INDIAN HOTELS COM PANY L IM ITED
VERSUS ASHWAJEET GARG & OTHERS 2014 (210)
D.L.T. 421 this court had the occasion of considering
various judicial pronouncements and culling out the
following legal principles for determining the deceptive
similarity of marks:
i. Action for infringement is a statutory
remedy conferred on the registered
proprietor of a registered trademark. 1
ii. Registration of trademark gives the
proprietor the exclusive right to the use of
the trademark in connection with the goods
in respect of which it is registered. 2
iii. If the essential features of the trademark of
the Plaintiff have been adopted by the
Defendant, the fact that the get-up, packing
and other writing or marks on the goods or
on the packets shows marked differences, or
indicate clearly a trade origin different from
that of the registered proprietor of the mark
would be immaterial.2
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories; AIR 1965 SC
American Home Products v. Mac Laboratories; AIR 1986 SC 137
iv. Mere delay in filing of a suit for
infringement is not fatal. 3
v. Phonetic similarity constitutes an important
index of whether a mark bears a deceptive
or misleading similarity to another. 4
vi. The Court must consider the usage of words
in India, the manner in which a w ord w ould
be written in Indian languages and the
similarity of pronunciation if the rival marks
are used.5
vii. Resemblance between the two marks must
be considered with reference to the ear as
well as the eye. 5
viii. The rival marks have to be compared as a
whole. The two competing marks must be
judged both by their look and by their sound.
All the surrounding circumstances must be
considered.7
ix. Where the similarity between the Plaintiff's
and the Defendant's mark is so close either
visually, phonetically or otherwise and the
court reaches the conclusion that there is an
imitation, no further evidence is required to
establish that the Plaintiff's rights are
violated. 6
Tata Oil Mills Co. Ltd. v. Wipro Ltd., AIR 1986 Delhi 345, Midas Hygiene v. Sudhir Bhatia and
Ors.; 2004 (28) PTC 121 (SC)
Encore Electronics Ltd. v Anchor Electronics and Electricals Pvt. Ltd. 2007 (35) PTC 714
K. R. Chinna Krishna Chettiar v. Sri Ambal & Co. and Anr. AIR 1970 SC 146
Kehsav Kumar Aggarwal Versus M/s NIIT Ltd 2013 (199) DLT 242
x. Competing marks have to be compared
keeping in mind an unwary purchaser of
average intelligence and imperfect
recollection.
xi. Broad and essential features of the two are
to be considered. They should not be placed
side by side to find out if there are any
marked differences in the design and get up.
xii. A single actual use with intent to continue
such use eo instanti confers a right to such
mark as a trademark. 8
xiii. The applicant has to establish user of the
aforesaid mark prior in point of time than
the impugned user by the non-applicant.9
xiv. A suit for infringement is maintainable by a
registered proprietor against another
registered proprietor. 9
xv. While staying the further proceedings
pending decision of the registrar on
rectification, an interim order including of
injunction restraining the use of the
registered trademark by the Defendant can
be made by the court. 10
Amritdhara Pharmacy versus Satyadeo Gupta AIR 1963 SC 449
Century Traders v. Roshan Lal Duggar Co., AIR 1978 (Del) 250
Clinique Laboratories LLC and Anr. Versus Gufic Limited and Anr. 2009 (41) PTC 41(Del),
Siyaram Silk Mills Ltd. v. Shree Siyaram Fab Pvt. Ltd., (2012) 2 Mah LJ 49, The Singer
Company Limited & Anr. Versus Ms. Chetan Machine Tools & Ors ILR (2009) 3 Del 802 :
(2009) 159 DLT 135, Chorion Rights Limited Versus Ishan Apparel, ILR (2010) 5 Del 481
Rajnish Aggarwal Versus Anantam 2010 (43) PTC 442 (Del)
xvi. A trademark shall not be registered if it is
identical or similar to an earlier trademark
in respect of goods or services covered by
the trademark and is likely to cause
confusion amongst the public. 11
xvii. Registration of an identical or a similar
trademark shall also be refused for goods
and services not covered by the earlier
trademark if it is shown that the earlier
trademark is a well known trademark. 12
xviii. The mere fact that the Plaintiff has not
chosen to take any action against other
parties cannot disentitle the Plaintiff from
taking the present action 13
33. Further, this Court in the case of CLASSIC
E QUIPMENTS PVT . L TD . VS J OHNSON E NTERPRISES
(2009 (41) PTC 385 (DEL .)) held that:
Once an Assignment Deed has been
executed, the Assignor ceases to have any
right, title or interest in the property
assigned. It is not open to the Assignor to
cancel the assignment by means of a
communication.
Section 11 of the Trademarks Act, 1999
Section 11 of the Trademarks Act, 1999
Prakash Roadline Ltd. Vs. Prakash Parcel Service (P) Ltd. 48 (1992) DLT 390 : 1992 (22) DRJ
34. The Supreme Court of India in the case of POWER
CONTROL APPLIANCES VS . SUMEET MACHINES PVT
L TD 1994 (2) SC 448 laid down that:
It is a settled principle of law relating to
trade mark that there can be only one mark,
one source and one proprietor. It cannot
have two origins.
35. This court in the case of CADBURY INDIA L IM ITED
&ORS VS . NEERAJ FOOD PRODUCTS 2007 (35) PTC
95 has laid down that:
The impact of the disclaimer on a
registration certificate is that a person is
precluded from bringing an infringement
action in respect of the trade mark
registration. The statute did not prohibit in
any manner the right given to a person to
bring a passing off action in respect of a
trade mark which though registered, but
contains a disclaimer with regard to any
portion thereof.
36. The Bombay High Court in the case of SKOL
B REWERIES L TD . VS . SOM DISTILLERIES &
B REWERIES L TD . 2012 (49) PTC 231 (B OM ) referred
to the following paragraph from the decision of the
Supreme Court of India in REGISTRAR OF T RADE
MARKS VERSUS ASHOK CHANDRA RAKHIT L TD . 1955
(2) SCR 252, wherein it was held that:
....The disclaimer is only for the purposes of
the Act. It does not affect the rights of the
proprietor except such as arise out of
registration. That is to say, the special
advantages which the Act gives to the
proprietor by reason of the registration of
his trade mark do not extend to the parts or
matters which he disclaims. In short, the
disclaimed parts or matters are not within
the protection of the statute. That
circumstance, however, does not mean that
the proprietor's rights, if any, with respect to
those parts or matters would not be
protected otherwise than under the Act. If
the proprietor has acquired any right by long
user of those parts or matters in connection
with goods manufactured or sold by him or
otherwise in relation to his trade he may, on
proof of the necessary facts, prevent an
infringement of his rights by a passing off
action or a prosecution under the Indian
Penal Code. Disclaimer does not affect
those rights in any way.
37. Rejecting the plea of abandonment of a mark because
of addition and alteration to the original mark, the
Bombay High Court in the case of SKOL B REWERIES
(SUPRA ) laid down as under:
19. Mr. Bookwala contended that the Plaintiff
had abandoned the registered label mark.
Relying upon paragraph 8 of the plaint read
with Exhibit "E" thereto he submitted that
the mark actually used by the Plaintiff was
entirely different from the registered mark.
The registered mark he submitted had never
been used and must therefore be deemed to
have been abandoned. Exhibit "E" to the
plaint is a photograph of a bottle with the
label affixed thereon. The words
"HAYWARDS 5000" form not only an
important but a predominant part of the
label. These letters and numerals are in the
centre of the label and are about four times
the size of the letters and numerals of the
other material on the label. Reliance
however is placed on the fact that the label
in addition thereto contains considerable
other material. Firstly the word PREMIUM
is added to the registered mark. Below the
mark "HAYWARDS 5000" are the words
"PREMIU M SUPER STRONG BEER".
Below these words is the device of a star
within a circle and below the same the
quantity is mentioned as 650 ml. Above the
mark are the words "THE ORIGINAL". The
use of this additional material,
Mr.Bookwalla contended, established that it
is not the registered trademark that has been
used by the Plaintiff but another trademark
altogether.
20. The added material in the present case does
not indicate that the Plaintiff has abandoned
the registered mark or the word mark
"HAYWARDS 5000". Nor does it indicate
that the label on the bottle containing the
Plaintiffs product does not constitute the use
of the registered label mark. The submission
that any variation or deviation from the
registered mark does not constitute use of
the registered mark is not well founded.
Indeed in most cases the label affixed on the
products or packages containing the
products would contain in addition to the
trademark, registered or unregistered, other
material. The added material may be of the
proprietors volition as well as on account of
statutory compulsion. For instance the
labels may contain the name of the entity
packing/bottling the goods, the name and
address of the manufacturer and the quantity
of the contents of the package upon which
the label is affixed. The label may also
contain certification obtained by the
manufacturer and the proprietors
compliance with statutory requirements
whether compulsorily required to be stated
or not. If Mr. Bookwalla's submission is
accepted it would lead to the absurd result
that the mere introduction/mention of such
material would lead to the conclusion that
the registered mark has not been used and
consequently must be deemed to have been
abandoned by the proprietor thereof. So
long as the registered mark is used in
substantially the same manner in w hich it is
registered it must be deemed/considered to
constitute the use of the registered mark
itself. Where the use of a mark, registered or
unregistered, is apparent the mere addition
of material on the label or other material on
which it appears would not lead to the
conclusion that the mark has not thereby
been used. In either case the use of the mark
must be apparent to wit, the Court must be
satisfied that despite the added material the
trademark has been used. The use of the
mark must be as a trademark and must be
obvious/perceptible. The mark must not be
lost as a result of the added material for then
it is not to the use of the mark for the
purpose of an infringement or a passing of
action.
38. This High Court in the case of HI - T ECH PIPES L TD .
VS . ASIAN MILLS PVT . L TD. 2006 (32) PTC 192 (DEL )
laid down as under:
The important aspect to be considered is
whether the word „Gujarat‟ has acquired
secondary significance and has
distinctiveness in respect of the steel pipes
produced by the Plaintiff. This principle
finds support from the judgment of the
learned Single Judge of the Gujarat High
Court in Bharat Tiles and Marble Private
Ltd Case (1978 Gujarat Law Reporter 518)
as it was held that merely because a trade
name is geographically descriptive, it does
not imply that an action for passing off
cannot be maintained provided the Plaintiff
is able to establish the requisite grounds of
deceit by use of similar name.
39. This High Court in the case of SUNDAR NAGAR
ASSOCIATION REGD . ANR VS . WELFARE CULTURAL
CLUB (REGD ) &ANR . 1995 (PTC) 270 held that:
Even though it might be possible for a
geographical name to be used with adequate
distinction in a way which is not deceptive,
a name originally purely geographical in its
significance may become so associated with
the Plaintiff‟s goods or services that its use
on its own as a trade mark or name without
adequate distinction will amount to passing
off, especially if it is used in conjunction
with get-up or other indicia similar to that
used by the Plaintiff.
40. Section 40 of the Trade Marks Act, 1999 lays down as
under:
40. Restriction on assignment or transmission
where multiple exclusive rights would be
created.--
(1) Notwithstanding anything in sections
38 and 39, a trade mark shall not be
assignable or transmissible in a case in
which as a result of the assignment or
transmission there would in the
circumstances subsist, whether under
this Act or any other law, exclusive
rights in more than one of the persons
concerned to the use, in relation to--
(a) same goods or services;
(b) same description of goods or
services;
(c) goods or services or description
of goods or services which are
associated with each other, of
trade marks nearly resembling
each other or of identical trade
mark, if having regard to the
similarity of the goods and
services and to the similarity of
the trade marks, the use of the
trade marks in exercise of those
rights would be likely to deceive
or cause confusion:
Provided that an assignment or
transmission shall not be deemed to be
invalid under this sub-section if the
exclusive rights subsisting as a result
thereof in the persons concerned
respectively are, having regard to
limitations imposed thereon, such as
not to be exercisable by two or more
of those persons in relation to goods to
be sold, or otherwise traded in, within
India otherwise than for export
therefrom, or in relation to goods to be
exported to the same market outside
India or in relation to services for use
at any place in India or any place
outside India in relation to services
available for acceptance in India.
41. It is thus clear that there cannot be two assignments of
a mark. If two assignments of a mark were permissible,
then there would be confusion with regard to the origin
of the goods or services. The basic principle underlying
protection of intellectual property rights is that the
purchaser of the goods should be clear as to the source
of the goods. If the source of the goods is unclear or
there is confusion as to the origin/source of the goods
in the mind of the ultimate user than the very concept
of protection of intellectual property right would be
defeated.
42. It is more in the interest of the general public than in
the interest of the proprietors of the mark that the re
should be no confusion as to the origin/source of the
goods. If two assignments of a mark were permissible
then there would be confusion in the mind of the
ultimate user as to who is the proprietor of the goods.
The consumer would never be certain about the quality
of the goods sought to be purchased.
43. Keeping in view the interest of ultimate consumers, the
courts have laid down the principle of one mark one
proprietor. However there may be situations where a
proprietor of a mark being unaware of the prior mark
honestly adopts a mark which is identical or similar to
the earlier mark and puts the same to use, he may, in a
passing of action, be entitled, in the facts and
circumstances of the case, to set up the defence of
honest concurrent use. Though in an infringement
action of a registered mark, this defence may not be
available.
44. Where there is a dishonest adoption in the first instance,
the period of use is of no consequence. If it prima facie
appears that the adoption of a mark was dishonest then
even if the Defendant has been using the mark for a
considerably long period of time it would be of no
consequence even in a passing off action. What is
relevant is whether the adoption was honest or not.
Only where the adoption of the mark is honest that the
Defendant would be entitled, subject to other
conditions being satisfied, to set up the defence of
honest and concurrent user. Where the adoption of the
mark is not honest then the defence of honest and
concurrent user would not be permitted to be set up.
45. Coming to the facts of the present case, it would be
necessary to examine the terms and conditions of the
two Assignment Deeds to ascertain the rights that have
accrued to the two rival parties.
46. Both the Plaintiff and Defendant have set up their
respective Assignment Deeds from a common
predecessor BMSS. The Plaintiff has relied upon the
Assignment Deed dated 05.10.2005 (hereinafter
referred to as the 2005 Assignment Deed) and the
Defendant has relied upon the Assignment Deed dated
16.12.2010 (hereinafter referred to as the 2010
Assignment Deed).
47. With regard to the 2005 Assignment Deed in favour of
the Plaintiff, there is no dispute by the Defendant that
the 2005 Assignment Deed has been executed. The
Defendant has categorically admitted in the written
statement that 2005 Assignment Deed has been
executed by the Assignor BMSS.
48. The Plaintiff has disputed the execution and validity of
the 2010 Assignment Deed but for the purposes of
decision of the application, since only a prima facie
view is to be taken, it is assumed that the 2010
Assignment Deed has been duly executed.
49. Prima facie what is to be considered is the effect of the
2005 Assignment Deed vis-à-vis the 2010 Assignment
Deed.
50. The Defendant has admitted that the 2005 Assignment
Deed was duly executed and that it did create rights
and interest in favour of the Plaintiff with regard to the
trademarks that are subject matter of the said deed .
51. If the rights and interests created by the 2005
Assignment Deed in favour of the Plaintiff were
absolute then one has to determine whether there was
any residuary rights in the said marks left for BMS S to
subsequently assign to the Defendant by way of the
2010 Assignment Deed.
2005 ASSIGN MENT DEED
52. The sale consideration of the said 2005 Assignment
Deed is Rs. 17.50 Crores.
53. Some of the relevant clauses and recitals of the 2005
Assignment Deed record as under:
B. the Assignor is the sole proprietor and
owner of the trademarks listed at Annexure
A [hereinafter all such trademarks re ferred
to as the "trademarks"]
D. The Assignor has agreed to sell, transfer and
assign to the Assignee its rights, interests
and title in the trademarks and the
formulation and accordingly the parties
have agreed to execute the said deed on the
terms and conditions contained therein
1.1 The Assignor as the sole and exclusive
proprietor and owner of trademarks, hereby
irrevocably assigns, conveys and transfers
unto the Assignee, all the property, right,
title and interests in the trademarks,
including those available at common law, in
perpetuity, together with all rights
connected with the goodwill of the business
in respect of the trademarks, for all
territories of the world, including India.
This assignment shall be free and clear of
any and all charges, lien, security, interests,
liabilities, claims and any other form of
third-party rights, both actual and potential.
1.2 The Assignor further transfers and assigns
all rights and entitlements to extend, renew
and secure extensions, renewals of the
trademarks on worldwide basis and future
rights, title and interest to any modification
and, or, alteration of the trademarks. The
Assignor covenants that the trademarks
shall become the absolute and exclusive
property of the Assignee and the Assignor
shall thereafter have no right, title, claim or
interest in or in relation to the trademarks.
1.3 The assignment herein shall include
assignment, transfer and conveyance in all
the intellectual property rights, including
copyright, design and patent in (i) trade
dress, the labels and variations of the
trademarks, logos/legends in the trademarks
detailed at Annexure C hereof; and (ii)
bottles, caps and other packaging material
that is being used with the trademarks.
3.1.5 The Assignor shall not dispute that impugn
the validity of the rights granted to the
Assignee under this deed, nor shall the
Assignor act or permit action in any manner,
that shall impair his right to such trademarks
and including, among other things,
jeopardizing the distinctiveness or
significance of the trademarks or altering
the trademarks in any manner whatsoever.
3.1.6 The Assignee shall be entitled to use the
trademarks and be entitled to the goodwill
of the business related to the trademarks of
the Assignor in connection therewith
without any objection or interruption by the
Assignor or on any person claiming under it.
3.1.7 The Assignor shall henceforth never adopt,
use, register or seek to register any mark
which would be identical with or similar to
or deceptively similar to the trademarks and
4.3 The Assignee hereby undertakes and
confirms that the words BRIHANS and
BRIHANS logo will be used exclusively by
Assignee strictly for the assigned
trademarks only w hich are covered under
this deed.
4.4 The Assignee hereby further agrees and
confirms that the Assignor has full right to
assign any other word and label of the
Assignor other than those covered under this
deed.
4.5 The Assignee also hereby agrees and
confirms that the ownership of the word
BRIHANS and the BRIHANS logo shall
remain with the Assignor exclusively
forever as before and the Assignee shall not
use the word BRIHANS or BRIHANS logo
for any other products manufactured or
marketed by Assignee, without the prior
written consent of the Assignor.
4.6 The Assignee of also hereby agrees and
confirms that the Assignor shall be free to
manufacture/bottle its own products under
other brands/trademarks [other than those
covered under this deed] as well as products
of other manufacturers under the brand
names of such manufacturers.
5.3 The Assignee shall have the unrestricted
right to assign or otherwise dispose of this
assignment or any of its rights hereunder, in
whole or in part.
Annexure A lists out 39 brands/trademarks assigned by
the said deed of 2005. The brands assigned and
contained in Annexure A relevant for the present
controversy are as under:
S.No. IMFL Brands of the Status of
Company Brand
1. Brihans Premium Whisky Registered
2. Brihans No. 1 Whisky Registered
4. Brihan‟s No. 1 Registered
5. Brihan‟s Whisky Registered
6. Brihan‟s Premium Blue Whisky Unregistered
20. Brihans Doctor Brandy Registered
21. Brihan‟s Doctor (Both word Registered
and label)
26. Goa Dry Gin & Lime 35 up Unregistered
27. Brihan‟s Goa Advertised
28. Brihan‟s Goa Special Dry Gin Registered
54. The 2005 Assignment Deed by the recital clause
stipulates the Trademarks subject matter of the Deed
and as listed at Annexure A. Apart from the trademarks
stipulated in Annexure A, the Assignor has assigned
the trade-dress, Labels, Logos/Legends in the
trademarks as per Annexure C.
55. The Assignor (BMSS) has by the said deed irrevocably
assigned, conveyed and transferred to the assignee (the
Plaintiff) all the property, right, title and interests in the
trademarks, including those available at common law,
in perpetuity, together with all rights connected with
the goodwill of the business in respect of the
trademarks, for all territories of the w orld, including
India.
56. The Assignor further transferred and assigned all rights
and entitlements to extend, renew and secure
extensions, renewals of the trademarks on worldwide
basis and future rights, title and interest to any
modification and, or, alteration of the trademarks. The
Assignor further covenanted that the trademarks shall
become the absolute and exclusive property of the
Assignee and the Assignor shall thereafter have no
right, title, claim or interest in or in relation to the
trademarks.
57. The assignment included assignment, transfer and
conveyance in all the intellectual property rights,
including copyright, design and patent in (i) trade dress,
the labels and variations of the trademarks,
logos/legends in the trademarks detailed at Annexure C
hereof; and (ii) bottles, caps and other packaging
material that was being used with the trademarks.
58. It was further agreed that the Assignor shall not dispute
or impugn the validity of the rights granted to the
Assignee, nor shall the Assignor act or permit action in
any manner, that shall impair his right to such
trademarks and including, among other things,
jeopardizing the distinctiveness or significance of the
trademarks or altering the trademarks in any manner
whatsoever.
59. The Deed further stipulates that the Assignee shall be
entitled to use the trademarks and be entitled to the
goodwill of the business related to the trade marks of
the Assignor in connection therewith without any
objection or interruption by the Assignor or on any
person claiming under it. The Assignor agreed never to
adopt, use, register or seek to register any mark which
would be identical with or similar to or deceptively
similar to the trademarks .
60. The Assignee undertook that the words BRIHANS and
BRIHANS logo will be used exclusively by Assignee
strictly for the assigned trademarks only which were
covered under this deed. It was agreed by the Assignee
that the Assignor had full right to assign any o ther
word and label of the Assignor other than those
covered under the said deed. The Assignee agreed that
the ownership of the word BRIHANS and the
BRIHANS logo shall remain with the Assignor
exclusively forever as before and the Assignee shall not
use the word BRIHANS or BRIHANS logo for any
other products manufactured or marketed by Assignee,
without the prior written consent of the Assignor.
61. The Assignor was free to manufacture/bottle its own
products under other brands/trademarks (other than
those covered under the said deed) as well as products
of other manufacturers under the brand names of such
manufacturers. The Assignee had the unrestricted right
to assign or otherwise dispose of this assignment or any
of its rights, in whole or in part.
62. The clauses of the Deed further imply that the Plaintiff
had absolute right to use the assigned marks for the
products in respect of which the same had been applied.
Even BMSS could not apply the marks for the same
products and it could use the marks for p roducts other
than those covered by the Deed. The Plaintiff also had
the right to protect the marks assigned even from
misuse by BMSS.
2010 ASSIGNMENT DEED
63. The sale consideration of the 2010 Assignment Deed is
Rs. 1,000/- only.
64. By the 2010 Assignment Deed, the Assignor BMSS has
assigned to the Defendant 74 Trademarks.
65. Annexure A lists out 74 brands/trademarks assigned by
the said deed of 2010. The brands assigned and
contained in Annexure A relevant for the present
controversy are as under:
Applicatio n Tra de Ma rk Na m e Status/RenewedUpto
Date Jr. No.
24/05/1994 BRI HAN‟S 24/05/2014-1349
04/12/2008 BRI HMA‟S Registered-4/12/2008
BRI HAN‟S PREMIUM BLUE to be applied
BRI HAN‟S DANZ NO. 1 to be applied
NOVA GOA PREMI XED to be applied
DRY GI N
04/12/2008 BRI HMA‟S GOA examination report
replied
04/12/2008 BRI HMA‟S ORI GI NAL Advertised
DOCTOR BRANDY
66. It may be noted that out of the 74 trademark, the
Assignor has used the word BRIHMA‟S only for the
two impugned marks i.e. BRIHMA‟S GOA and
BRIHMA‟S ORIGINAL DOCTOR BRANDY apart
from the word per se BRIHMA‟S.
67. Comparison of the two Assignment Deeds shows that
the Assignor BMSS has sought to assign the same mark
to both the Plaintiff and the Defendant. Once the
Assignment in favour of the Plaintiff was complete, the
Assignor did not have the power to give what was
already given to the Plaintiff and was no longer it's to
give. Further, the 2010 Assignment Deed to the extent
it assigns the marks already assigned w ould be contrary
to Section 40 of the Trademarks Act, 1999 as it results
in the creation of concurrent exclusive rights in more
than one person, which would be likely to deceive and
cause confusion.
68. In view of the law as laid down by the CLASSIC
E QUIPMENTS CASE (SUPRA ) once the 2005 Assignment
Deed was executed, BMSS ceased to have any right,
title or interest in the trademarks assigned and as such
could not re-assign them by the 2010 Assignment Deed.
The 2010 Assignment Deed to the extent it seeks to
assign the trademarks already assigned would be
invalid and inoperative.
69. The Defendant has not denied the execution and
validity of the 2005 Assignment Deed on the contrary
there is an admission that the same has been duly
execute and it conveys the title in favour of the
Plaintiff.
70. The trademarks assigned by the 2005 Assignment Deed
to the Plaintiff and relevant for the present controversy
are BRIHANS PREMIUM WHISKY, BRIHANS NO.
1 WHISKY, BRIHAN‟S NO. 1, BRIHAN‟S WHISKY,
BRIHAN‟S PREMIUM BLUE WHISKY, BRIHANS
DOCTOR BRANDY, BRIHAN‟S DOCTOR , GOA
DRY GIN & LIM E 35 UP, BRIHAN‟S GOA,
BRIHAN‟S GOA SPECIAL DRY GIN.
71. Once the abovementioned trademarks were assigned to
the Plaintiff, BMSS could not have adopted, used or
assigned, identical or deceptively similar trademarks.
The 2010 Assignment Deed seeks to assign the
following trademarks to the Defendant that are claimed
to be identical or deceptively similar: BRIHAN‟S
PREMIU M BLUE, BRIHAN‟S DANZ NO. 1, NOVA
GOA PREMIXED DRY GIN, BRIHMA‟S GOA, and
BRIHMA‟S ORIGINAL DOCTOR BRANDY .
72. Another important factor to be noticed in the 2010
Assignment Deed is that for the impugned marks the
user claimed by BMSS is that of 2008 onwards. From
the own showing of the Defendant the adoption of the
deceptively similar marks are much after the adoption
of the mark by the Plaintiff coupled with the fact that
the Plaintiff has purchased the said marks along with
their goodwill and is entitled to take benefit of the user
of the predecessor i.e. of BMSS. Since BMSS prior to
the assignment of 2005 has claimed to been using the
marks for a considerably long period of time and has
assigned the said marks along with goodwill to the
Plaintiff, the benefit of the said user would inure to the
Plaintiff who had for a valuable consideration
purchased the said marks along with their goodwill.
73. The adoption of the impugned marks by the Defendant
coupled with the user of its predecessor i.e. BMSS
would be that of 2008 or so, which is subsequent to the
adoption of the marks by the Plaintiff coupled with the
user of its predecessor.
74. The fact that the 2010 Assignment Deed refers to the
status of application for some of the impugned marks
as "to be applied" and for other impugned marks the
date as 04.12.2008, prima facie shows a conscious
decision on the part BMSS and Defendant not to refer
to any prior user as it was clear to them that the user of
BMSS prior to the said period had been assigned to the
Plaintiff. If there was any residual rights remaining in
BMSS, then BMSS would not have shown the date of
adoption of the said marks as 2008 rather it would have
claimed user since 1974 or so.
75. It is settled law that for comparing two marks for their
deceptive similarity, the two marks as a whole have to
be considered. The mark or words comprised in a mark
cannot be split-up for the purposes of comparison. The
test is, if the two competing marks when taken as a
whole and compared, then whether there is any
deceptive similarity between the two or not. The test is
not that the words in the mark be split up to ascertain
whether there are any dissimilarities or not. The rival
marks have to be compared as a whole. The two
competing marks must be judged both by their look and
by their sound. All the surrounding circumstances must
be considered (AMRITDHARA PHARM ACY CASE
(SUPRA )).
76. Even if some words comprised in a mark are generic,
still the mark taken as a whole can attain
distinctiveness of the product of the proprietor. For
example the words „Premium‟ and „Whisky‟ may be
generic words but when coupled with the other words
like BRIHAN‟S then the mark as a whole i.e.
BRIHAN‟S PREMIUM WHISKY w ould be capable of
distinctiveness. More so when the mark is a registered
mark.
77. Concerted effort was made by the Defendant to point
out to the various dissimilarities in the impugned marks.
It was contended that there was difference in the colour
of the background of the label, in one there was a
single tree and in the other there was a double tree, the
picture of the Castle was different, different font was
being used, the word blue was missing and there were
other visual dissimilarities.
78. If the essential features of the trademark of the Plaintiff
have been adopted by the Defendant, the fact that the
get-up, packing and other writing or marks on the
goods or on the packets shows marked differences, or
indicate clearly a trade origin different from that of the
registered proprietor of the mark, would still be
immaterial (AMERICAN HOME PRODUCTS (SUPRA )).
Broad and essential features of the two are to be
considered. They should not be placed side by side to
find out if there are any marked differences in the
design and get up.
79. The test laid down by the Supreme Court is that the two
competing marks are not to be kept side -by-side to
ascertain whether there are any dissimilarities but the
true test is that of an imperfect recollection of a person
of average intelligence. Competing marks have to be
compared keeping in mind an unwary purchaser of
average intelligence and imperfect recollection
(AM RITDHARA PHARMACY CASE (SUPRA )).
80. If the above tests were to be applied to the impugned
marks and the labels adopted by the Defendant, then it
is clear that the test is fully satisfied in the facts of the
present case.
81. The plea raised by the Defendant that the Plaintiff is
not entitled to any injunction as there is delay in
approaching the court is not sustainable. The Plaintiff
has contended that the Plaintiff on becoming aware of
the adoption of the marks by the Defendant
immediately issued the cease and desist notice and
approached the court. Further, it is contended that the
adoption of the similar mark by B MSS was itself
dishonest and the alleged subsequent assignment to the
Defendant in 2010 was also malafide. In the facts of the
present case, BMSS being the assignors of the mark to
the Plaintiff in 2005 cannot claim that the alleged
adoption of identical or deceptively similar marks in
2008 was honest and as such cannot be permitted to set
up the defence of honest and concurrent user. It is
further contended by the Plaintiff that the Plaintiff
became aware of the use by the Defendant in 2012 and
issued a cease and desist notice to the Defendant in
2012 who failed to respond to the same. Thereafter , it
is contended that the products were not visible in the
market and therefore the Plaintiff did not take any
action. Plaintiff again came across the infringing
products in July 2013 when the second cease and desist
notice was issued and the present suit was filed. It is
denied that the Plaintiff was aware of the disputed
labels since 2008.
82. The contention of the Defendant, that both parties i.e.
BMSS and the Plaintiff were getting their products
manufactured under similar trademarks and selling
them through the same channel of suppliers and as such
there was acquiescence on the part of the Plaintiff, is
not sustainable without proof of the same. The mere
fact that the bottling plant was common would not ipso
facto imply that the Plaintiff were aware that BMSS
was using an identical mark or that the Plaintiff had
agreed to BMSS adopting a similar mark. Since the
Plaintiff has denied this fact and there is nothing prima
facie on record to show that the Plaintiff consented to
the same, it is a plea that would require the parties to
lead evidence and would be considered at an
appropriate stage.
83. It is an admitted position that the Plaintiff acquired
rights under the 2005 Assignment Deed and BMSS had
divested itself of all its rights under the said Deed.
BMSS had also agreed not to use the Marks assigned to
the Plaintiff or to use Marks that are deceptively
similar to the Marks assigned to the Plaintiff. The plea
that BMSS was also using a similar mark to that of the
mark that was assigned would only go on to show that
BMSS was using the mark in breach of the 2005
Assignment Deed. It had agreed not to use any
deceptively similar mark to the mark assigned to the
Plaintiff. BMSS, itself being the Assignor of the m arks
cannot set up a defence of an honest concurrent user.
On the other hand, it would go on to show that the
adoption of the marks that were deceptively similar to
the marks assigned was dishonest. The fact that the
mark was adopted dishonestly and put to use would not
entitle the Defendant or its predecessor to claim the
defence of honest concurrent user.
84. Since BMSS was itself the assignor of the marks, it
cannot claim that it adopted the deceptively similar
marks without the knowledge of the existence of the
marks of the plaintiff. The Plea that the Plain tiff by its
silence and inaction permitted the marks of BMSS to
grow cannot come to the aid of BMSS as the adoption
was not without the knowledge of the marks of the
Plaintiff. BMSS adopted deceptively similar marks
with full knowledge and at its own risk. Since the
adoption of the deceptively similar marks by BMSS
was with the knowledge of the marks of the Plaintiff,
the defendant being an assignee of the deceptively
similar marks from BMSS cannot thus claim to be in a
better position that its assignor.
BRIHAN'S DANZ NO. 1 WHISKY
85. The defence raised by the Defendant in respect of
BRIHAN‟S DANZ NO. 1 WHISKY is not sustainable.
The contention that BRIHAN‟S was always secured
and there is a disclaimer with regard to the words NO.
1 WHISKY and that the Plaintiff is not using the word
DANZ is also not sustainable. The Defendant is
attempting to dissect the trademark into different words.
The test is that the mark as a whole has to be
considered. The mark is not to be dissected into its
various components to see whether individually there is
any similarity or distinctiveness. What is relevant is not
to dissect the words but the trademarks as a whole
along with its trade dress, layouts, color scheme, and
other components that go into making a mark including
logo, label, ticket etc. have to be considered. One has to
see whether the mark when it is examined as a whole is
capable of distinguishing the goods or services of the
proprietor of the mark from the goods and services of
the others. If the test is satisfied then the mark as a
whole would be a distinctive mark capable of
protection. When the mark of the Plaintiff BRIHAN‟S
NO. 1 WHISKY is looked at as a whole, it is prima
facie clear that the mark is distinctive and thus capable
of protection.
86. The Trademark BRIHANS NO. 1 WHISKY is
registered and was assigned by BMSS to the Plaintiff.
The Defendant claims that the mark BRIHAN‟S DANZ
NO. 1 WHISKY was assigned to it by BMSS. The
WHISKY with the word DANZ in a much smaller font.
The addition of the w ord DAN Z, in a much smaller
font, has not made any substantial difference to the
mark and it continues to remain deceptively similar.
When the mark of the Defendant's BRIHAN‟S DANZ
NO. 1 WHISKY is compared with the trademark of the
Plaintiff's BRIHAN‟S NO. 1 WHISKY, and the test as
laid down by the Supreme Court in AMRITDHARA
PHARMACY CASE (SUPRA ) of an unwary purchaser of
average intelligence and imperfect recollection is
applied, it is apparent that the mark of the Defendant is
deceptively similar to that of the Plaintiff.
87. The contention of the Defendant that there was
disclaimer to the use of the words "No. 1 & Whisky"
and that the Plaintiff has changed the labels from the
ones that were assigned by BMSS does not further the
case of the Defendant. The Plaintiff being the
proprietor of a mark or logo or a label is also entitled to
use the marks, logos or labels that are modifications,
variation of the same. The contention that the
registered label is not w hat is being put to use and that
what was assigned is not being used also does not merit
any consideration. The variations in the mark that is
assigned and mark that is being presently used are very
insignificant and minor. The mark when taken as a
whole shows that what is being used is very similar to
the one that was assigned. Further, for the plea of
passing off, the registration would not be relevant what
is relevant is the user.
88. It has been laid down in the CADBURY INDIA L IM ITED
(SUPRA ) that the disclaimer on a registration certificate
does not prohibit, in any manner, the right given to a
person to bring a passing off action in respect of a trade
mark which though registered, but contains a
disclaimer with regard to any portion thereof. The
Supreme Court in ASHOK CHANDRA RAKHIT (SUPRA )
laid down that the dis claimer is only for the purposes of
the Act. It does not affect the rights of the proprietor,
the special advantages which the Act gives to the
proprietor by reason of the registration of his trade
mark do not extend to the parts or matters which he
disclaims. In short, the disclaimed parts or matters are
not within the protection of the statute. That
circumstance, however, does not mean that the
proprietor's rights, if any, with respect to those parts or
matters would not be protected otherwise than under
the Act. If the proprietor has acquired any right by long
user of those parts or matters in connection with goods
manufactured or sold by him or otherwise in relation to
his trade he may, on proof of the necessary facts,
prevent an infringement of his rights by a passing off
action or a prosecution under the Indian Penal Code.
Disclaimer does not affect those rights in any way.
89. Since the two marks BRIHAN‟S NO. 1 WHISKY and
BRIHAN‟S DANZ NO. 1 WHISKY are deceptively
similar and the Plaintiff is admittedly the prior user of
the trademark BRIHAN‟S NO. 1 WHISKY, the
Defendant is liable to be restrained from using the
deceptively similar mark.
BRIHAN'S PREMIU M BLUE WHISKY
90. With regard to the trademark BRIHAN‟S PREMIUM
BLUE WHISKY, it is admitted by the Defendant, that
the said mark was assigned by BMSS to the Plaintiff.
What is contended by the Defendant is that the Plaintiff
thereafter reassigned the mark back to B MSS. This
contention presupposes the validity of the 2005
Assignment Deed. It presupposes that the deed was
duly executed and all rights of BMSS in the said
trademark were duly conveyed to the Plaintiff. What
has to be seen thereafter is whether there was any re-
conveyance or reassignment by the Plaintiff back to
BMSS or not?
91. The Defendant has not placed on record any deed of
reassignment of the said mark in favour of BMSS by
the Plaintiff. Reliance is placed on letter dated
03.07.2006. The said letter only states that the Plaintiff
has agreed to reassign the brand "BRIHAN‟S
PREMIU M BLUE WHISKY" to BMSS and would be
entering into a supplemental agreement towards this. It
further states that a draft agreement would be sent
shortly. It is not the case of the Defendant that any
Agreement or Deed of Re-assignment was ever
executed between the Plaintiff and BMSS. The letter on
the contrary confirms that the Plaintiff had become the
owner/proprietor of the mark. Once the
assignment/conveyance was complete in favour of the
Plaintiff the only way that BMSS could have adopted
the mark was by way of a Re -assignment. The
Defendant has neither pleaded nor relied upon any
Deed of Re-assignment. As there is no Deed of Re-
assignment so there is no question of B MSS adopting
the same mark or assigning it to the Defendant by the
2010 Assignment Deed.
92. Even in the 2010 Assignment Deed, BMSS has stated
that the registration of the said mark is still to be
applied. BMSS, having assigned the mark to the
Plaintiff and thereafter entering into negotiation with
the Plaintiff for reassignment of the mark back to itself,
can never take the plea of honest concurrent user. Since
BMSS could not have adopted the mark there is no
question of BMSS thereafter reassigning the mark to
the Defendant.
93. The contention of the Defendant that the Plaintiff is not
entitled to an injunction as the Plaintiff has neither used
the label nor the mark BRIHAN‟S PREMIUM BLUE
WHISKY is not sustainable. It is an admitted position
that the Plaintiff had purchased the said mark along
with its goodwill from BMSS. BMSS ha d assigned the
mark to the Plaintiff and agreed not to use any mark
identical or similar to the marks assigned. Further , the
Plaintiff has contended that it has been using the said
mark uninterruptedly. Whether the Plaintiff has in fact
used the mark or not after the assignment is an aspect
which would be looked into after the parties have led
that evidence.
94. As per the Plaintiff the adoption of the mark by BMSS
and the Defendant is not honest. It is contended that the
Plaintiff was originally using the label with a windmill
which was subsequently changed to a castle and the
Defendant also changed their label to a castle which
prima facie establishes that the adoption by the
Defendant was not honest.
95. Further, the defence of the Defendant that the Plaintiff
is using the trademark BRIHAN‟S PREMIUM
WHISKY and not BRIHAN‟S PREMIUM BLUE
WHISKY amounts to an admission that the Plaintiff is
using the trademark BRIHAN‟S PREMIUM WHISKY.
The trademark BRIHAN‟S PREMIU M WHISKY and
BRIHAN‟S PREMIUM BLUE WHISKY are also
deceptively similar. The use of the mark BRIHAN‟S
PREMIU M BLUE WHISKY by the Defendant is likely
to create an impression in the mind of the consumers
that the proprietor of both the marks i.e. BRIHAN‟S
PREMIU M BLUE WHISKY and BRIHAN‟S
PREMIU M WHISKY is the same. Since the Plaintiff is
admittedly the prior user of the trademark BRIHAN‟S
PREMIU M WHISKY, the Defendant is liable to be
restrained from using the mark BRIHAN'S PREMIUM
BLUE WHISKY.
BRIHMA'S GOA/NOVA GOA
96. With regard to the trademark GOA SPECIAL DRY
GIN the contention of the Defendant is that what was
assigned was a label in a different style than what is
being used by the Plaintiff. It is contended that there is
no excise license to show that GOA SPECIAL D RY
GIN was being used.
97. The case of the Plaintiff is that the Defendant is using a
mark BRIHMA‟S GOA which is very similar to the
mark BRIHAN‟S GOA of the Plaintiff.
98. On applying the test of an unwary purchaser of average
intelligence and imperfect recollection and comparing
the two conflicting mark, it is apparent that there is a
great degree of similarity between the two rival marks
in terms of their trade dress, get up, presentation, color
scheme and layouts.
99. The word GOA is a geographic name and in terms of
the law as laid dow n in the cases of HI -T ECH PIPES
L IM ITED (SUPRA ) and SUNDAR NAGAR ASSOCIATION
(SUPRA ), a name originally purely geographical in its
significance may become so associated with the
Plaintiff‟s goods or services that its use on its own as a
trade mark or name without adequate distinction will
amount to passing off, especially if it is used in
conjunction with get-up or other indicia similar to that
used by the Plaintiff.
100. The word GOA by itself may not be capable of
protection as a trademark but when coupled with the
mark BRIHAN‟S the mark prima facie becomes
distinctive. The fact that the BMSS had adopted the
word BRIHMA‟S as a prefix to the word GOA shows
that it was aware that it could not us e the mark GOA
with the prefix BRIHAN‟S as the same would be
deceptively similar. The words BRIHAN‟S GOA and
BRIHMA‟S GOA are also deceptively similar. The fact
that the Defendant is claiming to be a successor from
BMSS and is not claiming any independent right to the
said mark, prima facie establishes that the Defendant
cannot also use a deceptively similar mark.
101. Since the Plaintiff admittedly is the prior user of the
trademark BRIHAN‟S GOA, the Defendant is liable to
be restrained from using the deceptively similar mark
BRIHMA‟S GOA.
102. However as regards the mark NOVA GOA of the
Defendant is concerned, it is seen that the Defendant is
not using the words BRIHAN‟S and/or BRIHMA‟S
either as a prefix or as a suffix with the impugned mark.
The trade dress, getup, layout, colour scheme etc. of
the two rival marks BRIHAN‟S GOA and NOVA GOA
is also not similar.
103. Prima facie the Plaintiff has not been able to show that
the mark NOVA GOA being used by the Defendant is
being used in conjunction with get -up or other indicia
similar to that used by the Plaintiff more so when the
words BRIHAN‟S or BRIHMA‟S are not being used
therein. Thus there does not prima facie seem to be any
likelihood of confusion between the two rival marks.
104. Since the Defendant is using the said mark without the
suffix or prefix BRIHAN‟S or BRIHMA‟S, and in a
trade dress and get up that is not similar of that of the
Plaintiff, the Defendant is not liable to be restrained
from continuing to use the same.
BRIHMA'S ORIGINAL DOCTOR BRANDY
105. The case of the Plaintiff is that the Defendant is using
the mark BRIHMA‟S ORIGINAL DOCTOR
BRANDY which is very similar to the Plaintiff‟s mark
BRIHAN‟S DOCTOR BRANDY.
106. On applying the test of an unwary purchaser of average
intelligence and imperfect recollection and comparing
the two conflicting mark, it is apparent that there is a
great degree of similarity between the two rival marks
in terms of their trade dress, get up, presentation, color
scheme and layouts.
107. The words DOCTOR and BRANDY by itself may not
be capable of protection as a trademark but when
coupled with the mark BRIHAN‟S the mark prima
facie becomes distinctive. The fact that the BMSS had
adopted the word BRIHMA‟S as a prefix to the words
ORIGINAL DOCTOR BRANDY shows that it was
aware that it could not use the mark DOCTOR
BRANDY with the prefix BRIHAN‟S as the same
would be deceptively similar. The words BRIHAN‟S
DOCTOR BRANDY and BRIHMA‟S ORIGINAL
DOCTOR BRANDY are also deceptively similar.
108. The fact that the Defendant is claiming to be a
successor from BMSS and is not claiming any
independent right to the said Mark, prima facie
establishes that the Defendant cannot also use a
deceptively similar mark.
109. Since the Plaintiff admittedly is the prior user of the
trademark BRIHAN‟S DOCTOR BRANDY, the
Defendant is liable to be restrained from using the
deceptively similar mark BRIHMA‟S ORIGINAL
DOCTOR BRANDY.
110. Further perusal of Annexure A to the 2010 Assignment
Deed (marks assigned to Defendant) shows that for
various marks the prefix "BRIHAN‟S" is used but for
only two marks i.e. BRIHMA‟S GOA & BRIHMA‟S
ORIGINAL DOCTOR BRANDY the prefix
"BRIHMA‟S" is used. BRIHAN‟S GOA and
BRIHAN‟S DOCTOR BRANDY are admittedly
assigned to the Plaintiff. The fact that only for these
two brands the prefix BRIHMA‟S is used implies that
the BMSS and Defendant were aware that these two
marks could not be used in their original form. This
prima facie shows a deliberate attempt to circumvent
the stipulation in the 2005 Assignment Deed.
111. The prefixes BRIHAN‟S and BRIHMA‟S are
deceptively similar. Comparing the rival marks as a
whole (i.e. BRIHAN‟S GOA v/s BRIHMA‟S GOA &
BRIHAN‟S DOCTOR BRANDY v/s BRIHMA‟S
ORIGINAL DOCTOR BRANDY) it is clear that the
said two prefixes would not make much of a difference
to the marks as a whole and that the two rival marks
would continue to be deceptively similar.
112. Further, the email of 2009 exchanged between the
Plaintiff and BMSS, relied upon by the Defendant,
goes to show that BMSS was also aware that it could
not use the Mark BRIHAN‟S GOA and BRIHAN‟S
DOCTOR BRANDY without the permission of the
Plaintiff. The email indicates that the BMSS was
seeking permission for manufacture of a limited
number of cases and was also negotiating for amending
its label to the satisfaction of the Plaintiff.
113. Though the Minutes of Meeting dated 20.02.2009
relied upon by the Defendant are disputed by the
Plaintiff, they prima facie show that the Plaintiff was
even in the year 2009 objecting to the adoption of the
two similar marks by BMSS. The fact that BMSS under
whom the Defendant is claimed to have acquired rights
had entered into negotiations with the Plaintiff prima
facie establishes that even BMSS was aware that the
rival Marks were deceptively similar and it could not
use the said Marks without the permission of the
Plaintiff.
114. There is nothing on record filed by the Defendant to
show, that the Plaintiff ever expressly agreed to the
user by BMSS of the two impugned marks and if so on
what conditions. However, prima facie the
email/minutes amount to an acknowledgment on the
part of BMSS that the Plaintiff was the proprietor of
the said Marks and BMSS could not have used the two
impugned Marks without the permission and consent of
the Plaintiff.
115. Where a trader adopts a deceptively similar mark being
fully aware of the mark of another trader, then he does
so at his own risk. He cannot be permitted to set up the
defence of honest concurrent user who has adopted the
deceptively similar mark being unaware of the earlier
mark.
116. Further, the Bombay High Court in the case of SKOL
B REWERIES (SUPRA ) laid down that so long as the
registered mark is used in substantially the same
manner in which it is registered it must be
deemed/considered to constitute the use of the
registered mark itself. Where the use of a mark,
registered or unregistered, is appa rent the mere addition
of material on the label or other material on which it
appears would not lead to the conclusion that the mark
has not thereby been used. In either case, the use of the
mark must be apparent to wit, the Court must be
satisfied that despite the added material the trademark
has been used. The use of the mark must be as a
trademark and must be obvious/perceptible. The
mark must not be lost as a result of the added material
for then it is not to the use of the mark for the purpose
of an infringement or a passing of action.
117. The plea of the Defendant that sale of liquor is licensed
and it can be marketed only if there is a license granted
and that it has a license duly approved by the excise
authorities and as such it is entitled to use the
impugned marks is also not sustainable. The mere fact
that the excise authorities have granted license to the
Defendant to market its product under a mark which is
similar to that of the Plaintiff would not in any manner
impinge upon the rights of the Plaintiff or dilute the
mark of the Plaintiff. The use of a trademark is
governed by the Trademarks Act, 1999 as also under
the common law. The excise authorities are not
authorities appointed under the Trademarks Act or
vested with the powers under the Trademarks Act. The
examination of a label by the authorities under the
Excise Act is for a purpose different than that
prescribed under the Trademarks Act for the Registrar
of Trademarks. The mere fact that the label of the
Defendant is approved by the excise authorities would
not permit or entitle the Defendant to use a mark which
is deceptively similar to the mark adopted by the
Plaintiff.
118. Another relevant factor is that the 2005 Assignment
Deed is an assignment of 39 trademarks for a
consideration of Rs. 17.50 Crores whereas the 2010
Assignment Deed is an assignment of 74 trademarks
and that also for a meager consideration of only
Rs.1000/-. It is though contended by the Defendant that
the 2010 Assignment Deed is part of a Business
Transfer Agreement. The said contention would not
prima facie make any difference as the said Assignment
Deed does not mention that there was any other sale
consideration coupled with the Rs. 1,000/- mentioned
therein.
119. Further contention of the Defendant that Annexure C is
blank is also of no consequence as the Defendant in its
written statement has itself contended that the Plaintiff
was using the logo or label different from the one that
was assigned implying thereby that it admits that
logos/labels were assigned even though they were not
enumerated in the agreement in annexure C. Further
there is nothing on record to show that the Logos/labels
were not assigned.
120. The Plaintiff has been able to satisfy the three essential
requirements for grant of an ad-interim injunction. The
Plaintiff has been able to show a strong prima facie
case in its favour. The Balance of convenience is in
favour of the Plaintiff and in case an ad-interim
injunction is not granted, the Plaintiff shall suffer an
irreparable loss and injury.
121. To conclude:
(i) BRIHAN'S DANZ NO. 1 WHISKY : The
Defendant is restrained by way of an ad-
interim injunction from directly or indirectly
selling, manufacturing, offering for sale or in
any manner dealing in any Alcoholic Beverage
bearing the mark/label BRIHAN'S DANZ NO.
1 WHISKY/BRIHAN'S NO. 1 WHISKY or
from adopting/using any other identical or
deceptively similar trademark/label. The
Defendant however, is not restrained from
using the w ords DANZ and/or NO. 1 and/or
WHISKY without the prefix or suffix
BRIHAN‟S in a getup, trade dress, style and
label that is neither identical nor deceptively
similar to that of the Plaintiff;
(ii) BRIHAN'S PREMIUM BLUE WHISKY :
The Defendant is restrained by way of an ad-
interim injunction from directly or indirectly
selling, manufacturing, offering for sale or in
any manner dealing in any Alcoholic Beverage
bearing the mark/label BRIHAN'S PREMIUM
BLUE WHISKY/BRIHAN'S PREMIUM
WHISKY or from adopting/using any other
identical or deceptively similar trademark/label
The Defendant however, is not restrained from
using the words PREMIUM and/or BLUE
and/or WHISKY without the prefix or suffix
BRIHAN‟S in a getup, trade dress, style and
label that is neither identical nor deceptively
similar to that of the Plaintiff;
(iii) BRIHMA'S GOA: The Defendant is
restrained by way of an ad-interim injunction
from directly or indirectly selling,
manufacturing, offering for sale or in any
manner dealing in any Alcoholic Beverage
bearing the mark/label BRIHAN'S
GOA/BRIHMA'S GOA or from adopting/using
any other identical or deceptively similar
trademark/label and also the trade dress, getup
of layout similar to that of the Plaintiff. The
Defendant however, is not restrained from
using the w ord GOA without the prefix or
suffix BRIHAN‟S and/or BRIHMA‟S in a
getup, trade dress, style and label that is
neither identical nor deceptively similar to that
of the Plaintiff;
(iv) NOVA GOA: The Defendant, is not restrained
from using the trademark NOVA GOA without
the prefix or suffix BRIHAN‟S and/or
BRIHMA‟S in a getup, trade dress, style and
label that is neither identical nor deceptively
similar to that of the Plaintiff; and
(v) BRIHMA'S ORIGINAL DOCTOR
BRANDY: The Defendant is restrained by
way of an ad-interim injunction from directly
or indirectly selling, manufacturing, offering
for sale or in any manner dealing in any
Alcoholic Beverage bearing the mark/label
BRIHAN‟S DOCTOR BRANDY or
BRIHMA‟S ORIGINAL DOCTOR BRANDY
or from adopting/using any other i dentical or
deceptively similar trademark/label. The
Defendant however, is not restrained from
using the words DOCTOR and/or BRANDY
without the prefix or suffix BRIHAN‟S and/or
BRIHMA‟S in a getup, trade dress, style and
label that is not deceptively similar to that of
the Plaintiff.
122. The application is accordingly partly allowed in the
above terms.
123. List the matter before the roster bench for directions on
12 th November, 2014.
SANJEEV SACHDEVA, J
October 15, 2014
HJ
