Delhi High Court - Orders
Diageo Brands B.V. & Anr vs Whiskin Spirits Private Limited on 8 July, 2021
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~19
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 310/2021
DIAGEO BRANDS B.V. & ANR. ..... Plaintiffs
Through: Mr. Amit Sibal, Senior Advocate with
Mr. Sidharth Chopra, Mr. Nitin
Sharma, Ms. Savni D. Endlaw, Ms.
Subhoshree Sil, Mr. Sudarshana MJ,
Mr. Saksham Dhingra and Mr.
Aishvary Vikram, Advocates.
versus
WHISKIN SPIRITS PRIVATE LIMITED ..... Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 08.07.2021 [VIA VIDEO CONFERENCING]
I.A. 7862/2021 (for seeking exemption from filing clearer copies/typed copies/ originals of documents and notarized affidavits)
1. The application is allowed, subject to just exceptions.
2. The Plaintiff shall file the originals of documents, which are in its possession, within two weeks from today.
3. The application stands disposed of.
I.A. 7863/2021 (u/O 11 Rule 1(4) r/w Section 151 of the Code of Civil Procedure, 1908 seeking leave to file additional documents) CS(COMM) 310/2021 Page 1 of 11
4. The present application filed on behalf of the Plaintiffs seeks leave to file additional documents under the Commercial Courts Act, 2015.
5. The Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.
6. Accordingly, the application stands disposed of.
I.A. 7861/2021 (u/Section 151 of the Code of Civil Procedure, 1908 for the disclosure by the Defendant of details of the manufacturer of the bottles of the Defendant's infringing product)
7. Issue notice to the Defendant by all permissible modes upon filing of process fee by the Plaintiffs, returnable on the next date of hearing.
I.A. 7860/2021 (u/Section 151 of the Code of Civil Procedure, 1908 seeking exemption from e-filing the Defendant's promotional video and seeking direction for physical filing of the same stored in pen drive/ compact disc)
8. The present application under Section 151 of the CPC seeks exemption from e-filing Defendant's promotional video available on the Defendant's Instagram and Facebook social media handles.
9. The application is allowed, subject to the Plaintiffs filing the same on a pen drive/CD with the Registry within a period of two weeks.
10. The application stands disposed of.
CS(COMM) 310/2021 Page 2 of 11CS(COMM) 310/2021
11. Let the plaint be registered as a suit.
12. Upon filing of process fee, issue summons to the Defendant by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the date of receipt of summons. Along with the written statement, the Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiffs, without which the written statement shall not be taken on record.
13. Liberty is given to the Plaintiffs to file replications within 15 days of the receipt of the written statement. Along with the replications, if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendant, be filed by the Plaintiffs, without which the replications shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
14. List before the Joint Registrar for marking of exhibits on 10th September, 2021. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before the Court on 8th November, 2021 for framing of issues thereafter.
I.A. 7858/2021 (u/O 39 Rules 1 and 2 r/w Section 151 of the Code of Civil Procedure, 1908, restraining infringement of registered design, registered trademark and passing off) CS(COMM) 310/2021 Page 3 of 11
16. The Plaintiffs have filed the instant suit seeking permanent injunction restraining infringement of design, infringement of registered trademark, passing off, unfair competition, delivery up, rendition of accounts, damages etc.
17. The case as set out in the plaint is as follows: Plaintiffs are part of the Diageo group of companies - colloquially referred to as "Diageo" and are involved in the business of manufacturing, selling, distributing, and marketing of inter alia, alcoholic beverages. Inspired by the Smartphone culture and with a view to create a sleek and stylish product to attract consumers, the Plaintiffs conceptualized and designed a product known as the 'Pocket Scotch' / 'Hipster' (hereinafter "Hipster") with the idea to make Scotch Whisky more accessible, so that consumers can enjoy Scotch Whisky in a smaller (200 ml/ 180 ml), portable size bottle.
18. The Plaintiff No. 1 has a design registration over the aforesaid product being registration no. 306577. The said design registration is valid and subsisting. The novelty of the bottle's design resides in its overall shape and configuration. The Plaintiffs are also the registered proprietors of the trademark- 'Hipster' under Class 33 vide application no. 4419654. They also claim statutory rights and common law rights in the overall trade dress and get up of their products 'Black Dog (Black Reserve)', 'Black Dog (Triple Gold Reserve)', 'Vat 69' and 'Black & White' which are sold in the 'Hipster' (Plaintiffs' 'Hipster' products).
CS(COMM) 310/2021 Page 4 of 1119. Mr. Amit Sibal, learned Senior Counsel for the Plaintiffs submits that the above-mentioned design was globally launched in 2018 with respect to the Plaintiffs' well-known Scotch Whisky 'Johnnie Walker (Black Label)' and 'Johnnie Walker (Red Label)'. In India, the design was launched by the Plaintiffs for their blended Scotch Whiskies under the brands 'Black Dog (Black Reserve)', 'Black Dog (Triple Gold Reserve)', 'Vat 69' and 'Black & White' around May, 2019.
20. In the month of June, 2021, Plaintiff No. 2 learnt from its market sources about 'Whiskin Craft' Crafted Whisky, that is being packaged and sold in 180 ml bottles by the Defendant (hereinafter "infringing product"). After conducting market investigation, the Plaintiffs found out that the design and packaging of the Defendant's infringing product are a slavish and fraudulent imitation of the Plaintiffs' registered design of the 'Hipster' bottle and also dishonest adoption of trade dresses and overall get up of the Plaintiffs' products, especially that of 'Black Dog (Black Reserve)', 'Black Dog (Triple Gold Reserve)', 'Vat 69' and 'Black & White' which are sold in 'Hipster' for an identical class of products 'alcoholic beverages'. Mr. Sibal contends that the Defendant, despite having a pre-existing 180ml bottle for the brand 'Whiskin Craft', has recently on 12th June, 2021 posted a promotional video on its Instagram and Facebook handles claiming that the infringing product i.e., 'Whiskin Craft' is now available in "easy to carry 'Hipster' pack" in India and the overseas market. The Defendant is promoting the infringing product as 'Hipster' pack in blatant violation of Plaintiffs' rights emanating from its registered trademark registration and this also amounts to passing off.
CS(COMM) 310/2021 Page 5 of 1121. A comparative chart showing similarity of design and overall trade dress between the infringing product of the Defendant and the Plaintiffs' 'Hipster' products as shown in the plaint is as under: -
COMPARISON CHART Plaintiffs' Product Defendant's Infringing Product 'BLACK DOG BLACK RESERVE' 'WHISKIN CRAFT WHISKY' FRONT VIEW
22. Mr. Sibal submits that the Defendant's product is being sold to an identical consumer base through identical trade channels and on the same shelves of liquor stores which is likely to cause confusion amongst the general public. The Defendant has blatantly copied the Plaintiffs' design and overall trade dress of its products available as 'Hipster', including the monochromatic trade dress of the same size and configuration of the bottle, which dilutes the distinctiveness of the Plaintiffs' products and the design CS(COMM) 310/2021 Page 6 of 11 therein, thereby tarnishing the Plaintiffs' goodwill and reputation attached with them. The Defendant is thus liable for the infringement of the Plaintiffs' registered design and registered trademark and also for passing off the Plaintiffs' overall trade dress and get up in its products 'Black Dog (Black Reserve)', 'Black Dog (Triple Gold Reserve)', 'Vat 69', 'Black & White'.
23. In view of the above, the Plaintiffs have established a prima facie case in their favour. The balance of convenience also lies in favour of the Plaintiffs and an irreparable loss would be caused to the Plaintiffs, in case an ex-parte interim injunction is not granted. Accordingly, till the next date of hearing, 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 their behalf are: -
(a) restrained from manufacturing, selling, offering for sale, importing, exporting, advertising, directly or indirectly dealing in the infringing product- 'Whiskin Craft Whisky', 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 (design registration no. 306577) for its 'Hipster' bottle;
(b) restrained from infringing the Plaintiffs' registered trademark "HIPSTER" (trademark application no. 4419654) by using the marks 'HIPSTER' or 'HIPSTER PACK', and/ or any other mark deceptively CS(COMM) 310/2021 Page 7 of 11 similar thereto in relation to the infringing product and/ or any other goods and services;
(c) restrained from manufacturing, selling, offering for sale, importing, exporting, advertising, directly or indirectly dealing in the infringing product- 'Whiskin Craft Whisky', or any other product, in 180 ml or any other size, with a packaging which is 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 Products and unfair competition; and
(d) promoting and addressing the Defendant's infringing product including 'Whiskin Craft' Whisky in 180 ml or any other product as 'HIPSTER' or 'HIPSTER' PACK amounting to passing off.
24. Let the provisions of Order XXXIX Rule 3 of the CPC be complied with within a period of one week from today.
I.A. 7859/2021 (u/O 26 Rules 9 and 11 r/w Order 39 Rule 7 r/w Section 151 of the Code of Civil Procedure, 1908 for appointment of a Local Commissioners)
25. Mr. Sibal submits that the Defendant is aware of the Plaintiffs and their products. The subsequent adoption by the Defendant of the infringing design and promoting the infringing product are evidence of the intention of the Defendant to ride upon the goodwill and reputation of the Plaintiffs. The Plaintiffs believe that the infringing products are sold at the locations set out in para 7 of the application and the Defendant is likely to remove all CS(COMM) 310/2021 Page 8 of 11 physical evidence or deny its involvement in the infringing activities. Therefore, in order to preserve evidence of infringement, it is necessary that Local Commissioners are appointed to visit the premises of the Defendant.
26. Accordingly, the following are appointed as Local Commissioners with a direction to visit the premises of the Defendant, as detailed hereinbelow: -
(a) Mr. Puneet Khurana, Advocate [Contact No.: +91 9810341338] to visit the premise of the Defendant located at- Whiskin Spirits Private Limited; X-18A, Okhla Industrial Area, Phase-II, New Delhi-110020,
(b) Ms. Rekha Tiwari, Advocate [Contact No.: +91 9811333698] to visit the premise of the Defendant located at- Whiskin Spirits Private Limited; C/o Batra Breweries & Distilleries Pvt Ltd., Village Purkhali, District Ropar, Punjab-140108, and
(c) Mr. Satinder Pal Singh, former Registrar, High Court of Delhi [Contact No.: +91 9910390959] to visit the premise of the Defendant located at- Whiskin Spirits Private Limited; At Village Samgoli, Tehsil Derabassi, Dist Mohali, Punjab- 140506,
27. The Local Commissioners, along with a representative of the Plaintiffs and its counsel, shall be permitted to enter upon the premises of the Defendant mentioned above or any other location/ premises that may be identified during the course of commission, in order to conduct the search and seizure. The Local Commissioners shall conduct a search at the respective Defendant's premises and seize the infringing products or any CS(COMM) 310/2021 Page 9 of 11 other bottle/ flask/ container that is a slavish imitation of the Plaintiffs' registered design, trade dress of the Plaintiffs' 'Hipster' products, and any document/ packaging/ promotion material reflecting infringement of Plaintiffs' registered trademark 'Hipster'. After seizing the infringing material, the same shall be handed over to the Defendant superdari upon them furnishing an undertaking that the Defendant will produce the products before the Court as and when further directions are issued in this regard. The Local Commissioners shall also be permitted to make copies of the books of accounts including ledgers, cash registers, stock registers, invoices, books, etc. insofar as they pertain to the infringing products. Further, the Local Commissioners shall be permitted to undertake/ arrange for photography/ videography of the execution of the commission. They shall also be entitled to seek Police assistance or protection of the Local Police Station, if so required for the purpose of execution of the order of this Court. The SHOs of the aforesaid areas are directed to provide the necessary assistance to the Local Commissioners. In case any of the premises are found locked, the Local Commissioners shall be permitted to break open the locks.
28. The fee of the Local Commissioners, to be borne by the Plaintiffs, is fixed as Rs. 75,000/- for the visit to the premises in Delhi and Rs. 1 lakh each for the outstation premises. The Plaintiffs shall also bear expenses for travel and lodging of the Local Commissioner and other miscellaneous out of pocket expenses for the execution of the commission. The Local Commissioner and Plaintiffs' representatives visiting the premises shall comply with all the travel restrictions and protocols that have been put in place by the Government of NCT of Delhi and Government of Punjab and CS(COMM) 310/2021 Page 10 of 11 the commission shall be executed by strictly following the social distancing and such other guidelines relating to COVID-19 that are in force.
29. The order passed today shall be uploaded after the Local Commissioners execute the commissions as directed by this Court.
30. A copy of the order be furnished to the learned counsel for the Plaintiffs by e-mail.
SANJEEV NARULA, J JULY 8, 2021/nd CS(COMM) 310/2021 Page 11 of 11