Bangalore District Court
; M/S. John Distilleries Pvt. Ltd vs M/S.Sri.Venkateshwara Distilleries on 28 July, 2015
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE,
AT BENGALURU CITY. [CCH.NO.10]
Dated this day the 28th July, 2015
PR E S E N T
SRI K.AMARANARAYANA, B.Com., LL.M.
XVIII Addl.City Civil & Sessions Judge.
O.S.No.4788/2009
Plaintiff ; M/s. John Distilleries Pvt. Ltd.,
A company incorporated under the
provisions of the Companies Act, 1956
having its office at;
No.110, Pantharapalya, Mysore Road,
B A N G A L O R E - 39.
Reptd. by its Manager-Legal
Shakeel Shed S/o Syed Sadiq Basha,
Aged about 31 years
[Rep. by Sri H.S.H., Advocate]
--V/S--
Defendants : 1.M/s.Sri.Venkateshwara Distilleries
Yelahanka,
B A N G A L O R E - 84,
Reptd.by its Manager,
2. M/s.Vishwanath Sugar Ltd.,
A Compny incorporated under Bella-
--2-- O.S.No.4788/2009
Bagewadi - 591 305,
Hukkeri Taluk,
Belgaum District.
[Rep.By Sri.B.N.S., Advocate]
Date of institution of suit ; 21.07.2009
Nature of the suit (suit on ; Permanent Injunction
pronote, suit for declaration surrender the articles,
and possession, suit for render accounts and
injunction etc) damages.
Date of the commencement ; 26.08.2014
of recording of the evidence.
Date on which the Judgment ; 28.07.2015
was pronounced.
Year/s Month/s day/s
Total duration: 06 00 06
[K.AMARANARAYANA]
XVIII Addl.City Civil & Sessions Judge,
Bengaluru.
JUDGMENT
The plaintiff filed this suit against the defendant No.1 & 2 prays to pass judgment and decree to restrain the defendant No.1 & 2, their servants, agents stockiest, distributors, employees or any one claiming under them from infringing
--3-- O.S.No.4788/2009 and passing off of the well established copyright in respect of label ORIGINAL CHOICE by using offending copy right label OUR CHOICE for manufacture and sale of IMFL, To restrain the defendant No.1 & 2, their servants, agents or any one claiming under them from infringing and passing off the plaintiff's well established trademark ORIGINAL CHOICE or any other trade mark which are deceptively similar to plaintiff's trade mark by using offending trade mark OUR CHOICE or any other deceptively similar trade mark for manufacturing and selling IMFL, To direct the defendants 1 & 2 to surrender to plaintiff, the entire stock of unused labels and liquor with offending trade mark OUR CHOICE hoardings, bills, carry bags, negatives, positives, transparencies, blocks for destruction. Further to direct the defendants 1 & 2 to render honestly and faithfully true accounts of the profit that the defendants have derived by promoting their firm by using offending trademark & copy right OUR CHOICE and to direct payment of such profits to the plaintiff by way of damages for infringing trade mark of plaintiff and for costs.
2. Case of the plaintiff in brief is as follows:
The plaintiff is engaged in the business of manufacturing
--4-- O.S.No.4788/2009 selling, marketing, trading and exporting Interalia of India Made Foreign Liquor (IMFL) under various brand names since 1995. One of the flagship premier brands of their company is "Original Choice - Deluxe Whisky" adopted italic fonts for depicting its trademark ORIGINAL CHOICE on its label. They have written the said brand in red colour with white background and gold colour border has been given. On account of long user, extensive marketing and huge amount spent on brand promotion, the said trademark has become one of the well known brand of liquor in India and largest selling brand in the State of Karnataka with sales crossing more than 8 Lac cases of 9 liter each. The brand "Original choice" with artistic work, design and get-up has become distinctive with plaintiff. In the year 1995 the trademark "Original Choice" was initially adopted by one M/s. National Distilleries & Allied Products, a partnership firm wherein the promoter of their company is the managing partner. Soon after the adoption of trademark ORIGINAL CHIOCE the predecessor of plaintiff applied for the label approval of the band name before Commissioner of Excise and the same was approved in the year 1995-96. They also registered their trademark vide registration No.722161 and
--5-- O.S.No.4788/2009 the same has been renewed till 2016 and copy right under No.A57394/99 from Copy Right Board, Delhi. Currently they are the fourth largest manufacturer of IMFL in India. Plaintiff has also mentioned the sales figures of their products under brand name ORIGINAL CHOICE. They are selling more than six lakh cases in a month. The brand has acquired an enviable reputation and goodwill as a result of excellent quality and characteristics namely palatable taste, flavour, blending etc. The defendant is also engaged in the business of manufacture of liquor and IMFL and sells their products in Tamil Nadu, Karnataka and other parts of India. The defendant No.1 adopted new label OUR CHOICE and filed for approval with Commissioner of Excise and inspite of their objection the same has been approved. On comparison of both labels it is clear that both are exactly similar to each other with the word "Choice" exactly the replica of their brand ie., the italic font and colour used by defendants on the label is also exactly similar. The defendants introduced the brand name OUR CHOICE during January 2008. The colour combination, the entire layout design of the label and package under which the said brand OUR CHOICE was selling was entirely different label till the month of December 2008. The
--6-- O.S.No.4788/2009 defendant have deliberately adopted the trademark OUR CHOICE in order to mislead the customers and to encash upon goodwill and reputation built by the plaintiff. The said act is dishonest and nothing but an act of deceit and fraudulent. The defendant fraudulently adopted the label by imitating the colour scheme, getup, design and put on use from January 2009 and thereby infringing their registered copyright label in respect of ORIGINAL CHOICE. On 29.5.2009 they got issued cease and desist notice to the defendants, but they gave untenable reply on 10.6.2009. The defendant has attempted to passing off the goods and services of the plaintiff's trademark Hence the suit is filed for the above reliefs.
3. The defendant No.1 & 2 appeared through their counsel and filed their written statements. In the written statement first defendant denied the plaint averments besides contending that it is nothing to do in the above suit. Neither the first defendant is owner of the alleged product OUR CHOICE nor they are marketing the same. In view of the permission granted by the Excise Commissioner the are doing business of blending and bottling the liquor for and on behalf
--7-- O.S.No.4788/2009 of second defendant and they are the owners and the licensee in respect of the product OUR CHOICE. If any order is passed, it will directly affect the interest of second defendant who is marketing and dealing in the product OUR CHOICE. First defendant is neither necessary nor a proper party in the above suit. On the above grounds prays to dismiss the suit.
b) The second defendant in the written statement denied the plaint averments besides contending that they are selling their products only in Karnataka. In the month of June 2008 they had filed an application for approval of their new label OUR CHOICE before Commissioner of Excise for exclusive use in Karnataka and the same was approved after due adjudication by negatived the contention of plaintiff. Plaintiff has not challenged the said order. After lapse of 6 months from the date of they introducing the new label OUR CHOICE, plaintiff made drastic change in its label ORGINAL CHOICE in order to distinguish it from that of OUR CHOICE by improving its registered label quality and adopted the same for marketing of its brand Original Choice along with a newly designed bottle. There is no comparison between the two brands; each differs even from its physical
--8-- O.S.No.4788/2009 appearance, style of the letter. The word CHOICE is commonly used by the liquor manufacturers in their trade all over India. At any stretch of imagination their trademarks OUR CHOICE is not similar to that of plaintiff's trademark ORIGINAL CHOICE. They have introduced their label OUR CHOICE in June 2008. The plaintiff introduced its modified, improvised labels to distinguish with that of defendant label in January 2009. Plaintiff has no right whatsoever to restrain the defendants from using their brand name OUR CHOICE. On the above grounds prays to dismiss the suit.
4. On the basis of the above pleadings, my predecessor has framed the following issues:
1. Whether plaintiff proves that the ORIGINAL CHOICE brand of him has a reputation and goodwill?
2. Does he prove that defendants are passing off their goods in the name of OUR CHOICE?
3. Does he prove that it amounts to infringe-
ment of trade name of the plaintiff?
4. Does he prove that they are deceptively similar to each other?
--9-- O.S.No.4788/2009
5. Whether court fee paid is sufficient?
6. What order or decree?
5. The plaintiff in order to prove its case, got examined its manger - legal as PW1, got marked Ex.P1 to P11, Mo.1 to Mo.3 and closed its side. The second defendant got examined its director as DW1, got marked Ex.D1 & 2 and M.O.1 and closed its side.
6. Heard the arguments on both sides. The learned counsel Sri.H.S.H appearing for the plaintiff has relied upon the decisions reported in;
1. (2007) 6 SCC 1 (Heinz Italia and another
-V/s- Dabur India Limited).
2. 2004 (28) PTC 121 SC (Midas Hygiene Industries Private Limited and another -V/s- Sudhir Bhatia and others).
3. 2008 (38) PTC 91 (Guj) (Vikram Stores and another -V/s- S.N.Perfumery).
4. PTC (Suppl) (1) 175 (SC) (Ruston & Hornsby Limited -V/s- Zamindara Engineering Company).
--10-- O.S.No.4788/2009
5. 1987 (7) PTC 73 (Hindustan Radiators Company -V/s- Hindustan Radiators Limited).
6. 1989 (9) PTC 61 (Hindustan Pencils Private Limited -V/s- India Stationery Products Company and another).
7. W.P.No.35886/2013 decided by Hon'ble High Court of Karnataka on 25th September, 2013 (M/s Four Seasons Wines Limited -
V/s- The Commissioner of Excise and another).
Perused the decisions relied upon by the learned counsel appearing for the plaintiff in the light of facts of this case.
7. My findings to the above issues are as under:
Issue No.1 ; Affirmative.
Issue No.2 ; Affirmative.
Issue No .3 ; Affirmative
Issue No.4 ; Affirmative.
Issue No.5 ; Affirmative.
Issue No.6 ; As per final order.
For the following:
8. Issue No.1 to 5: To avoid repetition all the issues taken together for my consideration. The suit is filed for bare
--11-- O.S.No.4788/2009 injunction and consequential relief of rendering accounts and damages. The plaintiff as well as the defendant being the private limited companies are in the field of liquor business in the State of Karnataka is admitted. The defendant denied the fact that the plaintiff has been using the trademark 'Original Choice' since 1996 in the State of Karnataka. It is seen that the defendant did not deny the use of the trademark 'Our Choice' and the label therein. Ex.P3 is the trademark certificate No.722161 issued on 1st July, 2008 by the Trademark Registry, Chennai disclose that the plaintiff became the registered proprietor of the trademark ORIGINAL CHOICE WITH LOGO. The defendant did not dispute the issuance of Ex.P3 by the Trademark Registry in favour of plaintiff. Ex.P3 evident that the trademark "ORIGINAL CHOICE" is in usage by the plaintiff since 1996. Ex.P3 authorises to do the business of wines, spirits and liquors as described under Class - 33 of the Act.
9. Ex.P4 is the Copyright Certificate issued by the Copyright Office, Government of India. A perusal of cross- examination of PW1, the defendant did not dispute the registration of plaintiff's logo in the office of Copyright.
--12-- O.S.No.4788/2009 Ex.P4 evident that the plaintiff became the copyright holder of the Artistic work "ORIGINAL CHOICE FINE WHISKY WITH LOGO". Ex.P3 and Ex.P4 empowers the plaintiff to have monopoly over the trademark "ORIGINAL CHOICE AND LOGO". Thus, no one will have a right to use the same mark and logo without prior permission and license of the plaintiff. Ex.P5 and Ex.P6 the sales certificate and certificate of promotion expenses would disclose that the plaintiff had a good turn over of sales of liquor under the trademark "ORIGINAL CHOICE WITH LOGO" since 1996. Looking to the sales turn over since 1996 the plaintiff had acquired good will and reputation in the field of liquor business under the word mark "ORIGINAL CHOICE WITH LOGO". There is no evidence placed by the defendant to indicate that the it has been doing business since 1996 under the mark "OUR CHOICE". Admittedly, there is no registration of the word mark "OUR CHOICE" in favour of defendant. Therefore, the contention of the defendant that it is a prior user of the trademark "OUR CHOICE" cannot be accepted. Thus, the prior usage of the trademark "ORIGINAL CHOICE" by the plaintiff is well founded.
--13-- O.S.No.4788/2009
10. The plaintiff's trademark "ORIGINAL CHOICE"
is registered one and it has monopoly over the same. The trademark "OUR CHOICE" adopted by the defendant is unregistered one. The plaintiff has acquired copyright over the logo by registration in respect of the label "ORIGINAL CHOICE". On comparison of the trademarks of both plaintiff and the defendant, one by one there is phonetic similarity. The colour scheme, background and set-up adopted by the defendant in the label OUR CHOICE is similar in toto as that of the logo adopted by the plaintiff. It is seen from the cross- examination of DW1 that the defendant aware about the trademark of plaintiff and failed to stop using the mark OUR CHOICE and the logo therein. Thus, the deception on the part of the defendant is well founded. Therefore it is held that the trademark OUR CHOICE adopted by the defendant in the similar business which the plaintiff is doing is deceptively similar.
11. Whether there is a likely hood of customers getting confused with the mark "OUR CHOICE" as of plaintiffs mark "ORIGINAL CHOICE". Normally the uneducated and labour class will ask for a choice whisky or brandy for a drink
--14-- O.S.No.4788/2009 in the shops. The customers of weaker class may not be in a position to make out the brand. Thus in all probability the trademark adopted by the defendant will create confusion among the customers. In that event, the possibility of passing off of goods by the defendant as that of plaintiff by adopting the trademark "OUR CHOICE" is well founded.
12. The artistic work of the defendant's label "OUR CHOICE" is similar as that of the plaintiff's label. The approval of the label by the Excise Commissioner will not take away the plaintiffs right to take action under section 51 of Copyright Act for infringement. The plaintiff established the prior usage of the trademark ORIGINAL CHOICE and the copyright in respect of the label. The evidence on record establish that the plaintiff is engaged in the business of manufacturing, selling, marketing, trading and exporting interalia of Indian Made Foreign Liquor (IMFL) since 1996. The turn over of the plaintiff establishes its good will and reputation in the field of said business. There is nothing on record placed by the defendant about their good will and reputation in the said field of business. The plaintiff's goodwill and reputation in the business of IMFL is well founded.
--15-- O.S.No.4788/2009
13. The plaintiff established the fact that it is a registered proprietor of the trademark "ORIGINAL CHOICE" since 1996. The defendant mark OUR CHOICE is deceptively similar to the trademark of the plaintiff. The plaintiff's trademark is valid. Section 28 of the Act confers exclusive right on the plaintiff to the use of the trademark "ORIGINAL CHOICE" in relation to the goods and services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark by the defendant. The defendant resisted the plaintiffs call to stop using the trademark OUR CHOICE and the label. Thus, it is clear that the defendant not being a registered proprietor found using the trademark, which is identical and deceptively similar to the trademark of the plaintiff. There by the defendant infringed the registered trademark of the plaintiff. Thus, the defendant is liable under section 29 of TM Act read with section 51 of Copyright Act.
14. The plaintiff has paid court fee of Rs.125/- as per valuation slip. The plaintiff valued the relief under section 26 and 33 of Karnataka Court Fee & Suits Valuation Act. The suit is filed for the relief of perpetual injunction, render
--16-- O.S.No.4788/2009 accounts. Looking to the relief claimed at this stage the court fee paid is sufficient. Thus, the contention of the defendant that the court fee paid is insufficient cannot be accepted.
15. Therefore, in view of foregoing reasons and under the circumstances, it is held that the plaintiff is entitled for a decree of permanent injunction and other relief's against the defendant. Hence I answered Issue No.1 to 5 accordingly and proceed to pass the following:
ORDER The suit is decreed with costs. The defendants 1 and 2, their servants, agents, stockiest, distributors, employees or any one claiming under them are hereby permanently restrained from infringing the well established copy right in respect of the label 'ORIGINAL CHOICE' by using the offending label 'OUR CHOICE' for manufacture and sale of IMFL.
Further, the defendants 1 and 2, their servants, agents or anyone claiming under them are hereby permanently restrained from infringing and passing off the plaintiffs well established trademark 'ORIGINAL CHOICE' by using offending trademark 'OUR CHOICE' or any other trademark which is deceptively similar to the plaintiffs trademark for manufacturing and selling IMFL.
--17-- O.S.No.4788/2009 Further the defendants 1 and 2 are hereby directed to surrender to plaintiff, the entire stock of unused labels and liquor with offending trademark OUR CHOICE, hoardings, bills, carry bags, negatives, positives, transparencies, blocks for destruction.
Further, the defendants 1 and 2 are hereby directed to render honestly and faithfully true account of the profit that they have derived by promoting their firm by using offending copyright and trademark 'OUR CHOICE' and pay such profits to the plaintiff by way of damages for infringing plaintiff's trademark and copy right.
Draw decree accordingly.
[Prepared by me on the laptop, print out by the judgment writer, corrected and then pronounced by me in the open court dated this day the 28th July, 2015] [K.AMARANARAYANA] XVIII Addl. City Civil & Sessions Judge Bengaluru.
ANNEXURE No. of witnesses examined on behalf of plaintiff:
PW1 ; Shakeel Syed.
No. of documents marked on behalf of plaintiff:
--18-- O.S.No.4788/2009
Ex.P1 : Board Resolution Copy.
Ex.P2 : Memorandum & Articles of Association
with Certificate of Incorporation.
Ex.P3 : Trademark Certificate No.722161 in
Class - 33.
Ex.P4 : Certified copy of Copyright Certificate.
Ex.P5 ; Sales Certificate of Original Choice for the
period from 1996-1997 to 2013 - 2014
issued by Chartered Accountant.
Ex.P6 ; Sales Certificate of Original Choice for the
period from 1996-1997 to 2013 - 2014
issued by Chartered Accountant in
Karnataka and Andhra Pradesh.
Ex.P7 ; Original Copy of brand promotion expenses.
Ex.P8 ; Copy of Web magazine Drinksinternational
"The millinaries Club 2014".
Ex.P9 ; Copy of Web magazine Drinksinternational
"The millinaries Club 2012".
Ex.P10 ; Copy of Web magazine Drinksinternational
"The millinaries Club 2008".
Ex.P11 ; Plaintiffs Label.
Material Objects marked on behalf of plaintiff;
MO.1 ; Plaintiffs Product (Original Choice).
MO.2 ; Defendant Product.
No. of witnesses examined on behalf of defendant:
DW1 : Mallikarjuna K Pujar.
--19-- O.S.No.4788/2009
No. of documents marked on behalf of defendant:
Ex.D1 : Labels of defendant brand.
Ex.D2 : Labels of brands of different companies
Trading in the State of Karnataka.
Materials object marked on behalf of defendant;
MO.1 ; Empty bottle with label of defendant brand, [K.AMARANARAYANA] XVIII Addl. City Civil & Sessions Judge, Bengaluru.