Delhi High Court
Austin Nichols & Co Inc & Anr vs Gwalior Distilleries Private Ltd & Anr on 18 August, 2022
Author: Navin Chawla
Bench: Navin Chawla
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on:21.07.2022
Date of decision:18.08.2022
+ CS(OS) 250/2010 & I.A. 1806/2010 & 463/2022
AUSTIN NICHOLS & CO INC & ANR ..... Plaintiffs
Through: Ms.Mamta Jha, Mr.Abhijeet
Rastogi & Mr.Vishesh Kumar,
Advs.
versus
GWALIOR DISTILLERIES PRIVATE LTD ..... Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
1. The plaintiffs have filed the present suit praying inter-alia for a
decree of permanent injunction restraining the defendant, its directors,
assigns in business, distributors, licensees and dealers from
manufacturing, selling, offering for sale, advertising, directly or
indirectly dealing in whiskey or any other alcoholic beverages under the
impugned trade mark/logo/label SEAGRAM'S and/or ROYAL
CHAMP or any other trade mark/logo/label as may be deceptively
similar to the trade marks of the plaintiffs that is SEAGRAM'S or
SEAGRAM'S logo or ROYAL STAG or its label amounting to
infringement of trade marks registrations of the plaintiffs, passing off,
unfair competition, as also infringement of copyright of the plaintiffs.
The plaintiffs also pray for rendition of accounts of profits earned by the
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defendant or in the alternative, a decree of Rs. 20 Lakh (Rupees Twenty
Lakh only) and the costs of the suit.
SEAGRAM'S
2. The plaintiff no. 2 was originally known as 'Seagram India Pvt.
Ltd.' before the change of name to the present one with effect from
23.04.2007. (Exh. PW-1/4).
3. The plaintiffs assert that their predecessor in the business was 'The
Seagram Company Ltd.', a company incorporated under the laws of
Canada, and was the ultimate holding company of the Seagram Group
through its various subsidiaries and group companies, having presence in
many countries of the world.
4. It is asserted that 'Pernod Ricard S.A.' (the parent company of the
plaintiffs) acquired a part of the Seagram Group in December 2001. The
Seagram Company Ltd. assigned their various trade marks, service
marks, trade names and logos along with the goodwill of the business to
'Pernod Ricard S.A.' Alcoholic beverages under various brands of
Pernod Ricard Group continue to use the trade mark 'SEAGRAM'S' and
'SEAGRAM'S CREST DESIGN' (hereinafter referred to as 'the
SEAGRAM Marks') along with the respective brands, such as
'Seagram's Blenders Pride', 'Seagram's Imperial Blue' etc.
5. The plaintiffs assert that the plaintiff nos. 1 and 3 and their
predecessors have been carrying on the business of bottling and
marketing of alcoholic beverages in India through the plaintiff no. 2
under the name of 'Seagram India Pvt. Ltd.' since the year 1995 with the
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trade mark SEAGRAM being the key and distinguishing feature. Though
the name of plaintiff no. 2 changed in 2007, however, it continued to use
the SEAGRAM Marks.
6. It is asserted that the plaintiff no. 3 is the proprietor of the
SEAGRAM Marks and the plaintiff no. 2 is the licensed user of the
SEAGRAM Marks under the name of 'Seagram India Pvt. Ltd.' since
the year 1995. The SEAGRAM Marks have been used by the plaintiffs
internationally since 1940 and in India since 1995.
7. The plaintiffs state that the SEAGRAM Marks are registered
worldwide and also in India. The Certificates for Use in Legal
Proceedings for trade mark registration nos. 105507, 634730 and 854323
under Class 33 are Exh. PW-1/10, Exh. PW-1/11 and Exh. PW-1/12
respectively. It is asserted that these registrations are valid and subsisting.
It is further asserted that though these registrations are in the name of
Lawrenceburg Distillers and Importers LLC (the erstwhile name of the
plaintiff no. 3), the plaintiff no. 3 has taken steps to record the change of
name to 'Pernod Ricard USA LLC' and the same has been accepted by
the Trade Marks Registry. The Certificates for Use in Legal Proceedings
for trade mark registration nos. 105507, 634730 and 854323 under Class
33 recording the plaintiff no. 3 as the subsequent proprietor of the
SEAGRAM Marks are Exh. PW-1/23 (Colly.)
8. It is the case of the plaintiffs that the SEAGRAM Marks have
acquired worldwide goodwill and reputation, including in India, on
account of sale and marketing of varieties of alcoholic beverages in
several countries worldwide as also in India.
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ROYAL STAG
9. It is asserted that one of the whiskies manufactured and marketed
by the plaintiff no. 2 since the year 1995 is under the trade mark ROYAL
STAG. The trade mark ROYAL STAG is a coined trade mark, having
no significance or meaning in common parlance, and no correlation to the
character or quality of whiskey marketed there under.
10. The plaintiffs assert that the volume of sales of the goods bearing
the mark ROYAL STAG in India rose from Rs. 4.04 Crore (Rupees Four
Crore Four Thousand only) in the year 1995 to Rs. 848.68 Crore (Rupees
Eight-Hundred Forty-Eight Crore Sixty-Eight Thousand only) in the year
2008. The plaintiffs further assert that the marketing expenditure incurred
by them in the advertisement and promotion of goods bearing the mark
ROYAL STAG have increased substantially from Rs. 1 Crore (Rupees
One Crore only) in the year 1995 to Rs. 42.37 Crore (Rupees Forty-Two
Crore Thirty-Seven Lakh only).
11. The plaintiff no. 1 had filed and obtained registration for the trade
mark ROYAL STAG internationally as well as in India. Certificates of
its Indian registrations no. 709137 dated 10.07.1996 in Class 33 for
'wines, spirits and liqueurs', 1228614 and 1228616 in Class 28, 1228617
and 1228615 in Class 25, and 1280949 in Class 9 are marked as Exh.
PW-1/15 (Colly.). The Certificates for Use in Legal Proceedings for
trade mark registration nos. 1228612 in Class 28, 1228613 in Class 25
and 1280950 in Class 9 are marked as Exh. PW-1/16 (Colly.). The
plaintiffs claim that the above registrations are valid and subsisting.
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12. The plaintiff no. 1 has assigned trademark registrations for
ROYAL STAG to the plaintiff no. 2 vide the Intellectual Property Rights
Agreement dated 27.06.2018. A copy of the Confirmatory Deed of
Assignment dated 08.08.2018 filed before the Trade Marks Registry is
Exh. PW-1/22. A list of registrations assigned by the above documents is
provided by the plaintiffs as below:
Trade Mark Registration No. & Class & Goods Status & Valid up
Date of description to
Registration
ROYAL STAG 709137 Class 33 Registered and
(Registration of this 10/07/1996 "Wines, Spirits valid up to
trade mark shall and Liqueurs 10/07/2026
give no right to the included in class
exclusive use of the 33"
word 'ROYAL')
1228612 Class 28 Registered and
29/08/2003 "Games and valid up to
playthings, 29/08/2023
gymnastic and
sporting articles
(except clothing)
ornaments and
decorations for
Christmas trees
included in class
28"
1228613 Class 25 Registered and
29/08/2003 "Clothing valid up to
including boots, 29/08/2023
shoes and slippers
included in class
25."
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1228614 Class 28 Registered and
29/08/2003 "Games and valid up to
playthings, 29/08/2023
gymnastic and
sporting articles
(except clothing),
ornaments and
decorations for
Christmas trees."
1228615 Class 25 Registered and
29/08/2003 "Clothing valid up to
including boots, 29/08/2023
shoes and
slippers"
ROYAL STAG 1228616 Class 28 Registered and
29/08/2003 "Games and valid up to
playthings, 29/08/2023
gymnastic and
sporting articles
(except clothing),
ornaments and
decorations for
Christmas trees
included in Class
28."
ROYAL STAG 1228617 Class 25 Registered and
29/08/2003 "Clothing valid up to
including boots, 29/08/2023
shoes and
slippers."
ROYAL STAG 1280949 Class 09 Registered and
27/04/2004 "CD & Cassettes valid up to
included in class 27/04/2024
9"
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1280950 Class 09 Registered and
27/04/2004 "CD & Cassettes valid up to
included in class 27/04/2024
9"
1552103 Class 33 Registered and
23/04/2007 "Wines, Spirits & valid up to
Liquors" 23/04/2027
13. The Certificates for Use in the Legal Proceedings for various trade
mark registrations recording the plaintiff no. 2 as the subsequent
proprietor of ROYAL STAG trade mark/logos/labels are on record as
Exh. PW-1/25 (Colly.).
14. The plaintiffs also place reliance on the registrations obtained by
plaintiff no. 1 with respect to the ROYAL STAG mark and its label in
foreign jurisdictions such as Belgium, the Netherlands, Luxembourg (in
short, 'Benelux'), Bulgaria, Romania and Nepal [Exh. PW-1/14
(Colly.)].
15. The plaintiffs, with respect to the ROYAL STAG label, state that
the same constitutes an 'original artistic work' within the meaning of
Section 2(c) of the Copyright Act, 1957 (in short, 'Copyright Act') and is
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accorded copyright protection in India. The ROYAL STAG label
comprises of a cream background with a prominent device of a thick
swirling ribbon downwardly in burgundy and golden colours and the
trade mark ROYAL STAG represented upon the burgundy surface of the
ribbon in bold cream colour letterings; and the SEAGRAM Marks
depicted at the top of the label as also the bottom. Reference in this
regard may be made to a photograph of the plaintiffs' ROYAL STAG
whiskey, which has been marked as Exh. PW-1/18.
16. The learned counsel for the plaintiffs has drawn the attention of
this Court to the order passed by this Court dated 17.08.2016 in CS(OS)
1716 of 2015, titled Austin Nichols & Co Inc & Anr. v. Idea Distilleries
(P) Ltd, whereby the ROYAL STAG mark of the plaintiffs was declared
to be 'well-known', as defined in Section 2(1)(zg) of the Trade Marks
Act, 1999 (in short, 'the Act'), as it has acquired high degree of
distinctiveness and recognition amongst consumers, and thus requires
protection of widest and beyond limitation or constriction of category of
goods or services that it is used for.
17. It is asserted that on account of the extensive trade usage by the
plaintiffs since the year 1995, the trade mark comprising the ROYAL
STAG label and the trade dress have become distinctive of whiskey
marketed by and originating from the plaintiffs and insignia of source in
the minds of the consumers at large. Since the first adoption of ROYAL
STAG trade dress and the label in the year 1995, its broad, visual,
essential and distinguishing features, as described hereinabove, have
remained the same and consistent. The plaintiffs submit that the ROYAL
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STAG mark has acquired highest degree of distinctiveness and visual
impression in the minds of the consumers. There have been some minor
variations from time to time, not affecting the overall get up of the label
and the trade dress of the goods bearing the mark ROYAL STAG.
USE BY THE DEFENDANT
18. It is the case of the plaintiffs that the plaintiff no. 2 became aware
of the fact that the defendant has filed an application before the Trade
Marks Registry seeking registration of the mark ROYAL CHAMP vide
application no. 1576335, advertised in the Trade Marks Journal no. 1408
dated 16.01.2009. In light of the same, the plaintiff nos. 1 and 2 filed
their Notice of Opposition against the said application on 29.04.2009
[Exh. PW-1/19 (Colly.)].
19. In the fourth week of December, 2009, it came to the knowledge of
the plaintiffs that the defendant was manufacturing, bottling and selling
whiskey bearing the trade mark ROYAL CHAMP and under a
deceptively-similar label to that of the plaintiff's ROYAL STAG label.
The defendant was also found to be using bottles embossed with the
SEAGRAM Marks thereon. In the affidavit filed by the PW-1, she
details that the present suit was necessitated as the defendant was either
using discarded bottles or getting bottles made with the SEAGRAM
Marks.
PROCEEDINGS IN THE SUIT:
20. This Court, vide its order dated 16.02.2010, was pleased to pass an
ad-interim order restraining the defendant from manufacturing, selling,
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offering for sale, advertising, directly or indirectly dealing in whiskey or
any other alcoholic beverages under the impugned trademark
'SEAGRAM'S' and/or 'ROYAL CHAMP' or the impugned logo/label
pertaining thereto or any other trade mark/logo/label, as may be
deceptively similar with the trade marks 'SEAGRAM'S' or
'SEAGRAM'S' logo or 'ROYAL STAG' or its labels of the plaintiffs as
may lead to confusion or deception amounting to passing-off,
infringement of plaintiffs' registered trade marks and/or infringement of
copyright of the plaintiffs' in the logo/label.
21. On 17.07.2013, the learned counsel for the defendant had tendered
in Court the proposed label of the goods of the defendant that it would
adopt in the event of the parties arriving at an amicable settlement. The
suit was thereafter adjourned on various dates as it was represented that
the parties are on the verge of arriving at an amicable settlement.
22. Vide the order of this Court dated 21.01.2016, this Court noted that
the parties were unable to arrive at a settlement, and framed the following
issues:
"(i) Whether the plaintiff No.1 is the proprietor of
the trade mark ROYAL STAG and ROYAL STAG
Label? OPP
(ii) Whether the plaintiff No.3 is the proprietor of
the trade mark SEAGRAM'S and SEAGRAM
Logo? OPP
(iii) Whether the plaintiff no.1 is the owner of the
copyright in the ROYAL STAG Label? OPP
(iv) Whether the use of the trade mark ROYAL
CHAMP and its label by the defendant amounts to
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infringement of the plaintiffs' registered trade
mark ROYAL STAG and its label? OPP
(v) Whether the use of the trade mark
SEAGRAM'S and SEAGRAM Logo by the
defendant amounts to infringement of the
registered trade mark SEAGRAM'S and
SEAGRAM Logo of the plaintiffs? OPP
(vi) Whether the use of ROYAL CHAMP label by
the defendant amounts to infringement of
plaintiffs' copyright in the ROYAL STAG label?
OPP
(vii) Whether the defendant is committing act of
passing off by use of the trade marks ROYAL
CHAMP, ROYAL CHAMP label and SEAGRAM'S
trade marks? OPP
(viii) Whether use of the trade mark ROYAL in the
impugned manner as first component of two
component mark by the defendant is publici juris?
OPD
(ix) Whether the present Court has no territorial
jurisdiction to entertain the present suit? OPD
(x) Whether the suit has not been filed by a duly
authorised person? OPD
(xi) Whether the plaintiffs are entitled to rendition
of accounts of profit and/ or damages as prayed
for? OPP
(xii) Whether the suit filed by the plaintiffs is
based on concealment of material facts? OPD
(xiii) Relief?"
23. The learned Joint Registrar (Judicial), in its order dated
26.09.2018, noted that the learned counsel for the defendant had sought
discharge. Court Notice was, therefore, issued to the defendant.
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24. In the order dated 08.02.2019, the learned Joint Registrar (Judicial)
noted that the Court Notice had been duly served on the defendant on
19.11.2018 and 07.02.2019, however, no one was present on their behalf.
25. Thereafter, notice was again issued to the defendant on an
application filed by the plaintiff under Order VI Rule 17 of the Code of
Civil Procedure, 1908 (in short, 'CPC'), being I.A. no. 2195 of 2019. The
defendant, in spite of being served with this application as well, did not
appear.
26. This Court, vide its order dated 16.01.2020, observed that the
defendant had not been appearing for several dates and did not even
appear on that date. Accordingly, the defendant was proceeded ex-parte
and the matter was listed before the learned Joint Registrar (Judicial) for
recording of evidence.
27. The learned Joint Registrar (Judicial), vide order dated 26.04.2022,
noted the submission of the learned counsel for the plaintiffs that the
evidence of the plaintiff had concluded and as the defendant had been
proceeded ex-parte, directed the matter be listed before this Court for
further directions.
EVIDENCE OF THE PLAINTIFFS:
28. The plaintiffs filed the affidavits of evidence of Ms. Divya Vijan,
who was examined as PW-1 in the suit.
SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE
PLAINTIFF
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29. The learned counsel for the plaintiff submits that the defendant's
ROYAL CHAMP label and trade dress establish an overall deceptive-
similarity with the plaintiff's ROYAL STAG mark. The defendant's
mark ROYAL CHAMP is structurally and phonetically deceptively-
similar to the plaintiff's well-known mark ROYAL STAG. The
defendant has copied all the features that collectively distinguish the
plaintiff's trade dress of ROYAL STAG. The bottle of the defendant has
a label affixed upon the front panel, having the same colour combination
of cream, burgundy and gold- as that of the plaintiffs' ROYAL STAG
label. The front panel depicts two thick ribbon devices having a burgundy
background and gold borders, upon which the trade mark ROYAL
CHAMP is represented in cream colour in bold capital letters, in the
same font and manner as the ROYAL STAG mark. The goods of the
parties are comparatively depicted hereinbelow:
Plaintiff's Royal Stag whiskey Defendant's Royal Champ whiskey
30. The learned counsel for the plaintiffs further submits that the
defendant has been using the SEAGRAM Marks and bottles, which have
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been embossed with the same. The bottles showing the embossing of the
SEAGRAM Marks on the rear and bottom view of the defendant's
ROYAL CHAMP bottle have been marked as exhibits for the purpose of
the trial and are on record as Exh. P-4 and Exh. P-5.
31. The learned counsel for the plaintiffs states that the use of similar
marks by the defendant is an infringement of its statutory as well as
common law rights as also results in passing off, dilution and unfair
competition by the defendant.
FINDINGS OF THE COURT
32. I have considered the submissions made by the learned counsel for
the plaintiffs.
Issue No. (i)
33. The plaintiffs have asserted that the plaintiff no. 1 started selling
the whiskey under the trade mark ROYAL STAG since the year 1995.
The plaintiffs have filed Certificates for Use in Legal Proceedings for the
trade mark registrations granted in favour of the plaintiff no. 1, including
under Class 33, and thereafter assigned to the plaintiff no. 2. They state
that the said registrations remain valid and subsisting. As no evidence to
the contrary has been produced by the defendant, the Issue No. (i) is
decided in favour of the plaintiffs and against the defendants.
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Issue No. (ii)
34. The plaintiffs have proved on record that the name of the plaintiff
no. 2, prior to the change thereof on 23.04.2007, was 'Seagram India Pvt.
Ltd.'. The plaintiffs have also filed on record the Certificates for Use in
Legal Proceedings for trade mark registrations obtained by the plaintiff
no. 2 in trade mark SEAGRAM under Class 33. As no evidence to the
contrary has been produced by the defendant, the Issue No. (ii) is decided
in favour of the plaintiffs and against the defendants.
Issue No. (iii)
35. The plaintiffs have claimed that the plaintiff no. 1 is the owner of
the copyright in the ROYAL STAG label. This assertion remains
unrebutted in evidence. Issue No. (iii) is therefore, decided in favour of
the plaintiffs and against the defendant.
Issue Nos. (iv) to (vii)
36. From the above narration of facts, it is proved that the plaintiffs are
the registered proprietors of the mark ROYAL STAG and the
SEAGRAM Marks, including in Class 33. The defendant is using the
mark ROYAL CHAMP along with the logo that is deceptively similar to
the SEAGRAM Marks of the plaintiffs. The photographs of the
defendant's products, Exh. P-1 to P-3 are as under:-
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37. Section 29(1) and Section 29(2)(b) of the Act are reproduced
hereinbelow:-
"29. Infringement of registered trade marks.----
(1) A registered trade mark is infringed by a
person who, not being a registered proprietor or a
person using by way of permitted use, uses in the
course of trade, a mark which is identical with, or
deceptively similar to, the trade mark in relation
to goods or services in respect of which the trade
mark is registered and in such manner as to
render the use of the mark likely to be taken as
being used as a trade mark.
(2) A registered trade mark is infringed by a
person who, not being a registered proprietor or a
person using by way of permitted use, uses in the
course of trade, a mark which because of--
xxxx
(b) its similarity to the registered trade mark and
the identity or similarity of the goods or services
covered by such registered trade mark;"
38. In the present case, the goods of the plaintiffs and defendant are
identical, that is whiskey. The mark of the defendant is deceptively
similar to that of the plaintiffs. The test to be applied for judging the
claim of infringement and passing off is of an unwary consumer with
average intelligence and imperfect recollection. The same, following the
judgments of the Supreme Court in Corn Products Refining Co. v.
Shangrila Food Products Ltd., (1960) 1 SCR 968 and Cadila Health
Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, has been
reiterated by the judgment of a Co-ordinate Bench of this Court dated
26.07.2022 in Mondelez India Foods Pvt. Ltd. and Anr. v. Neeraj Food
Products, 2022 SCC OnLine Del 2199, where it has been held as under:
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"29. In two seminal judgements of the Supreme
Court, the test of infringement and deceptive
similarity of competing marks is well settled. The
Supreme Court in Corn Products Refining Co. v.
Shangrila Food Products Ltd., (1960) 1 SCR
968, has observed that the said question has to be
approached from the point of view of a man of
average intelligence and of imperfect recollection.
It was observed that, to such a man, the overall
structural and phonetic similarity and the
similarity of the idea in the two marks is
reasonably likely to cause a confusion between
them. The relevant extracts from the judgment in
Corn Products (supra) are set out below:
"18. We think that the view taken by Desai,
J., is right. It is well known that the question
whether the two marks are likely to give rise
to confusion or not is a question of first
impression. It is for the court to decide that
question. English cases proceeding on the
English way of pronouncing an English
word by Englishmen, which it may be stated
is not always the same, may not be of much
assistance in our country in deciding
questions of phonetic similarity. It cannot
be overlooked that the word is an English
word which to the mass of the Indian people
is a foreign word. It is well recognised that
in deciding a question of similarity between
two marks, the marks have to be considered
as a whole. So considered, we are inclined
to agree with Desai, J., that the marks with
which this case is concerned are similar.
Apart from the syllable "co" in the
appellant's mark, the two marks are
identical. That syllable is not in our opinion
such as would enable the buyers in our
country to distinguish the one mark from
the other.
19. We also agree with Desai, J., that the
idea of the two marks is the same. The
marks convey the ideas of glucose and life
giving properties of vitamins. The
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Aquamatic case (Harry Reynolds v.
Laffeaty's Ld.) is a recent case where the
test of the commonness of the idea between
two marks was applied in deciding the
question of similarity between them. Again,
in deciding the question of similarity
between the two marks we have to
approach it from the point of view of a
man of average intelligence and of
imperfect recollection. To such a man the
overall structural and phonetic similarity
and the similarity of the idea in the two
marks is reasonably likely to cause a
confusion between them."
30. In Parle Products (P) Ltd. v. J.P. & Co.,
Mysore [AIR 1972 SC 1359], it was held that the
Court has to see similarities and not the
dissimilarities. The relevant extracts of the said
judgment, which has been followed in innumerable
judgments subsequently, are set out hereinbelow:
"According to Kerly's Law of Trade Marks
and Trade Names (9th Edition Paragraph
838) "Two marks, when placed side by
side, may exhibit many and various
differences, yet the main idea left on the
mind by both may be the same. A person
acquainted with the one mark, and not
having the two side by side for comparison,
might well be deceived, if the goods were
allowed to be impressed with the second
mark, into a belief that he was dealing
with goods which bore the same mark as
that with which he was acquainted.
It would be too much to expect that persons
dealing with trademarked goods, and
relying, as they frequently do, upon marks,
should be able to remember the exact
details of the marks upon the goods with
which they are in the habit of dealing.
Marks are remembered rather by general
impressions or by some significant detail
than by any photographic recollection of
the whole. Moreover, variations in detail
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might well be supposed by customers to
have been made by the owners of the trade
mark they are already acquainted with for
reasons of their own. It is therefore clear
that in order to come to the conclusion
whether one mark is deceptively similar to
another, the 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 differences in the design
and if so, whether they are of such
character as to prevent one design from
being mistaken for the other. It would be
enough if the impugned mark bears such
an overall similarity to the registered mark
as would be likely to mislead a person
usually dealing with one to accept the
other if offered to him."
(Emphasis Supplied)
39. Applying the above test, it is seen that mere use of the word
'CHAMP' instead of 'STAG' is not sufficient to distinguish the two
marks, especially when combined with the overall get up of the label.
The goods are sold over the counter and an unwary consumer is likely to
confuse one for the other.
40. The plaintiffs have also been able to establish a long, continuous
use of its trade marks. As held herein above, the mark of the defendant is
deceptively similar to that of the plaintiffs. In fact, it is clearly intended to
deceive the unwary consumer. The defendant is, therefore, guilty of
passing off its goods as that of the plaintiffs.
41. The use of the offending marks by the defendant shall also cause
dilution of the marks of the plaintiffs. This Court, in Tata Sons Ltd. v.
Manoj Dodia & Ors., CS(OS) 264 of 2008, held that a well-known trade
mark is a mark which is widely known to the relevant general public and
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enjoys a comparatively high reputation amongst them. It further held that
when a person uses another person's 'well-known trade mark', he tries to
take advantage of the goodwill that such a 'well-known trade mark'
enjoys. Such an act constitutes as unfair competition. It also causes
dilution of a 'well-known trade mark' as it loses its ability to be unique
and distinctively identified and distinguish as one source and consequent
change in perception which reduces the market value or selling power of
the product bearing the well-known trade mark.
42. The label of the defendant is a colourable and slavish imitation of
the plaintiffs' ROYAL STAG label and also amounts to copyright
infringement under Section 51 read with Section 55 of the Copyright Act.
43. The issue nos. (iv) to (vii) are accordingly decided in favour of the
plaintiffs and against the defendant.
Issue Nos. (viii) to (x) and (xii)
44. The onus of proving these issues was on the defendant. As noted
herein above, the defendant has not led any evidence in the suit. The
above issues are therefore, decided against the defendant.
Issue No. (xi)
45. In the present case, the adoption by the defendant of the trade
marks ROYAL CHAMP and the deceptively-similar logo to the
SEAGRAM logo of the plaintiffs was clearly intended to deceive the
unwary consumer and to ride on the reputation and goodwill of the
plaintiffs. As held herein above, the same was intended to cause dilution
of the marks of the plaintiffs.
46. At one point of time, the defendant had agreed to give up use of
the impugned label and trade mark in offer of settlement of disputes.
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However, the settlement could not materialise and the suit continued. The
defendant thereafter stopped appearing, however, the plaintiffs have
spent further amount of money towards litigation costs, including court
fee, counsels' fees and miscellaneous expenses.
47. Therefore, considering the observations of the Supreme Court on
the issue of costs to be awarded in commercial matters in Uflex Ltd. v.
Government of Tamil Nadu & Ors. [Civil Appeal Nos.4862- 4863 of
2021, decided on 17th September, 2021] and of this Court in Intel
Corporation v. Dinakaran Nair & Ors., 2006 SCC OnLine Del 459, as
also, in terms of the Commercial Courts Act, 2015 and the Delhi High
Court (Original Side) Rules, 2018 read with Delhi High Court Intellectual
Property Division Rules, 2022, the plaintiffs are held entitled to damages
and costs quantified at Rs. 20 Lakh.
Issue No. (xiii)
48. In view of the above, the suit is decreed in terms of prayers 39(i) to
(iv) of the plaint. The defendant shall also pay to the plaintiff a sum of
Rs. 20 Lakh as damages and costs of the suit.
49. The decree-sheet be drawn up accordingly.
NAVIN CHAWLA, J.
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