Delhi High Court - Orders
Diageo Brands Bv & Anr vs Whiskin Spirits Private Limited on 29 April, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~66
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 310/2021 & I.As. 1663/2022, 5757/2022
DIAGEO BRANDS BV & ANR. ..... Plaintiffs
Through: Mr. Amit Sibal, Senior Advocate with
Mr. Nitin Sharma, Ms. Subhoshree Sil,
Mr. Angad S. Makkar and Mr.
Saksham Dhingra, Advocates.
versus
WHISKIN SPIRITS PRIVATE LIMITED ..... Defendant
Through: Mr. Chander M. Lall, Senior Advocate
with Mr. Kapil Wadhwa, Ms. Deepika
Pokharia, Ms. Tejaswini Puri, Ms.
Manya Ahuja and Ms. Ananya Chugh,
Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 29.04.2022
[VIA HYBRID MODE]
1. The present suit concerns Plaintiffs' intellectual property rights in the registered design no. 306577 pertaining to the shape and configuration of its bottle that is marketed and sold as 'Hipster'; in the word mark 'Hipster' bearing registered trademark application no. 4419654; as also common law rights.
2. Vide order dated 8th July 2021, while issuing summons, an ex-parte injunction was passed and the Defendant was inter-alia restrained from Signature Not Verified Digitally Signed CS(COMM) 310/2021 Page 1 of 7 By:SAPNA SETHI Signing Date:10.05.2022 11:13:14 packaging in an identical or obvious or fraudulent imitation of the Plaintiffs' registered design noted above and also from infringing Plaintiffs' registered Trademark 'Hipster'. The said injunction is continuing till date and the Defendant has filed I.A. 1663/2022 seeking vacation thereof.
3. While the aforenoted application was being adjudicated, Defendant filed I.A. 5757/2022 seeking variation and clarification of the injunction order. Considering the afore-noted applications on 13th April 2022, the following order was passed:
"1. Through the present application, Defendants seek variation/ clarification of ex-parte ad-interim injunction granted by this Court on 29th October 2021 to the effect that the proposed design disclosed in the application does not fall within the ambit of the said injunction.
2. During the course of submissions, Mr. Chander M. Lall, Senior Counsel for the Applicant, has handed over a specimen of a new design of the bottle that the Defendants propose to adopt - photographs whereof are enclosed with the application. Mr. Lall, without prejudice to his rights and contentions, adds that since proposed design is not even remotely identical or similar to Plaintiffs Registered Design No. 306577, it cannot be considered as an identical / obvious / fraudulent imitation of the Plaintiffs"
Registered Design. In such circumstances, Mr. Lall submits that they are open to the court disposing of the application of the plaintiff under Order 39 Rules 1 & 2 of the CPC, by clarifying / allowing the Defendants to use only the proposed design. Mr. Lall further adds that in fact. Defendants would be open to the disposal of the suit itself in the above terms, subject to Plaintiffs giving up their relief for damages and the Court allowing liquidation of the stock of the impugned design of the Defendants. Mr. Lall also states that the Defendants would not use the word 'hipster' on any of their products.
3. Mr. Lall further states that by way of an e-mail communication. Defendants' counsel would intimate to Plaintiffs' counsel the stock details today itself, which shall be followed by an affidavit to that effect, within a period of three days from today.
4. Mr. Amit Sibal, Senior Counsel for the Plaintiffs, seeks time to take instructions, in light of Mr. Lall's submissions."
Signature Not Verified Digitally Signed CS(COMM) 310/2021 Page 2 of 7 By:SAPNA SETHI Signing Date:10.05.2022 11:13:144. Pursuant to the afore-noted order, Mr. Sibal, senior counsel for the Plaintiffs, has received instructions and is agreeable to the Defendant adopting the proposed design disclosed in the application and for disposal of the suit in those terms. Since there is no formal application for bringing the terms of the settlement on record, both the Senior Counsel pray that the suit be disposed of on their statements, which they are making on instructions.
5. Mr. Chander Lall, Senior Counsel for the Defendant, states as follows:
(i) The Defendant has agreed to modify the impugned bottle by adopting a new design, a representation of which is as under:
(ii) The above representation is from a 3D printer, and the final bottle will be translucent green. Specimen of the above design has been provided to Plaintiffs' counsel.
(iii) The labelling and overall get up of the final product shall be exactly as was on the Defendant's impugned/original bottle, on which no Signature Not Verified Digitally Signed CS(COMM) 310/2021 Page 3 of 7 By:SAPNA SETHI Signing Date:10.05.2022 11:13:14 objection was ever raised.
(iv) The Defendant shall also discontinue the use of the word 'HIPSTER' and 'HIPSTER PACK', upon which the plaint is also based.
(v) The afore-noted concession is being made, subject to the Plaintiffs agreeing to waive costs and damages, and the Defendant being permitted to sell its unfinished and finished stocks.
(vi) The Defendant is agreeable to the suit being disposed of in case the above proposals are acceptable.
6. Mr. Sibal, on instructions, states that in light of the statement made by Mr. Lall, the Plaintiffs have no opposition to the Defendant adopting the proposed design referred above. He states that since the Defendants have willingly agreed not to contest the suit, Plaintiffs are not insisting on any damages or costs. At the same time, he prays that the suit be decreed in terms of prayers (a) to (d) as stated in the plaint, which read as follows:
"(a) A decree of permanent injunction and order restraining the Defendant, its directions/principal officers as the case may be, sister concerns, affiliates, group companies, agents, legal representatives, heirs and any other person acting for or on its behalf, from manufacturing, selling, offering for sale, importing, exporting, advertising, directly or indirectly dealing in the Infringing Product, 'Whiskin Craft Whiskey', as also in any other beverage product packaged in 180 ml or any other sizes, which packaging is an identical/ obvious or fraudulent imitation of the Plaintiffs' registered design 306577 for its 'Hipster' bottle or doing any other act which amounts to infringement of the Plaintiffs' registered design No. 306577;
(b) A decree of permanent injunction and order restraining the Defendant, its directors/principal officers as the case may be, sister concerns, affiliates, group companies, agents, legal representatives, heirs and any other person acting for or on its behalf, from infringing the Plaintiff's registered trademark "HIPSTER" (trademark application no. 4419654) by using the marks 'HIPSTER' or 'HIPSTER PACK', and/ or any other mark deceptively similar thereto in relation to the Infringing Product and/or any other goods and serves;
(c) A decree of permanent injunction and order restraining the Defendant, their Signature Not Verified Digitally Signed CS(COMM) 310/2021 Page 4 of 7 By:SAPNA SETHI Signing Date:10.05.2022 11:13:14 directions/principal officers as the case may be, sister concerns, affiliates, group companies, agents, legal representatives, heirs and any other person acting for or on its behalf, from manufacturing, selling, offering for sale, importing, exporting, advertising, directly or indirectly dealing in the Infringing Product, 'Whiskin Craft Whiskey' or any other product, in 180 ml or any other sizes, which packaging is an identical/ deceptively similar to the Plaintiffs' overall trade dress and get up of the Plaintiffs' Hipster products amounting to passing off the trade dress of Plaintiffs' Hipster and unfair competition;
(d) A decree of permanent injunction and order restraining the Defendant, their directions/principal officers as the case may be, sister concerns, affiliates, group companies, agents, legal representatives, heirs and any other person acting for or on its behalf, from promoting and addressing the Defendant's Infringing Product including 'Whiskin Craft' whiskey in 180 ml or any other product as 'HIPSTER' or 'HIPSTER PACK' amount to passing off;"
7. Mr. Chander Lall states that he does not oppose the prayers (a) to (d) as extracted above.
8. The statements made by Mr. Lall are taken on record and shall bind the Defendant.
9. In view of the above, the suit is decreed in favour of the Plaintiffs and against the Defendant in terms of prayers (a) to (d) extracted above. The remaining prayers in the suit are dismissed as not pressed.
10. The Plaintiffs shall not object or contest Defendant's proposed design extracted above. For the sake of clarity, it is observed that the decree shall not apply to the proposed design.
11. Mr. Lal prays for clarification regarding the colour of the bottle, which is proposed to be is translucent green in colour. He states that the Defendant Signature Not Verified Digitally Signed CS(COMM) 310/2021 Page 5 of 7 By:SAPNA SETHI Signing Date:10.05.2022 11:13:14 should be granted liberty to use any other colour as well. Accordingly, in order to remove any ambiguity, it is clarified that Defendant will be free to use any colour as long as the same is not in breach of the decree passed herein.
12. Next, the discordant issue: The existing stock of impugned products which are lying with the Defendant. In terms of affidavit dated 18th April 2022 filed by Mr. Ashok Chawla, Director of the Defendant, the stock details of the impugned product are as follows: (a) Unfinished Stock: 4033 cases; (b) Finished Stock: 157 cases. It has been explained that finished stock are packaged bottles and unfinished stock are empty bottles. Considering the fact that parties are in agreement with respect to the terms recorded above, and that the suit is being disposed of by consent, and that Mr. Sibal has left it to the court to pass appropriate orders on the above issue, a solution has to be found for the liquidation of the stock. Since the Defendant has agreed to henceforth not use the impugned design of the Plaintiffs, it would be appropriate to allow the Defendant to liquidate the finished stock in a time- bound manner.
13. The Defendant is directed to disclose on affidavit the batch number and the date of manufacturing of the stock of finished products within seven days from the uploading of this order / decree. In the same affidavit, the Defendant is also directed to disclose the batch number and date of manufacturing of the infringing products which were sold before the passing of the ad-interim injunction Order dated 8th July, 2021. Defendant shall be permitted to liquidate and dispose of the finished stock of the impugned product, as disclosed above, within a period of three months from the date of filing of the Signature Not Verified Digitally Signed CS(COMM) 310/2021 Page 6 of 7 By:SAPNA SETHI Signing Date:10.05.2022 11:13:14 said affidavit. In case there is any unliquidated stock after the expiry of three months, the Defendant shall take appropriate steps to recycle/destroy the same, after which, it shall file an affidavit to that effect before this court, with a copy thereof to the other side. Further, as the unfinished stock comprises of empty bottles that the Defendant has decided to discontinue, which are merely lying at the premises, Defendant shall forthwith recycle/destroy the same in the manner it deems fit, but not bring the same into circulation, after which, it shall file an affidavit to that effect before this court, with a copy thereof to the other side. In case of breach, the Plaintiff will be free to take any action against it in accordance with law.
14. Suit is decreed in the above terms.
15. All pending applications are also disposed of.
16. Decree sheet be drawn up.
SANJEEV NARULA, J APRIL 29, 2022 d.negi Signature Not Verified Digitally Signed CS(COMM) 310/2021 Page 7 of 7 By:SAPNA SETHI Signing Date:10.05.2022 11:13:14