Bangalore District Court
M/S. United Spirits Limited vs M/S.N.V.Distillers & Breweries ... on 8 March, 2022
1
OS.No.2101/2012
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE,
AT BENGALURU CITY [CCH.NO.10]
Dated this day the 8th March 2022
PRESENT
Sri. NAGARAJAPPA A.K., B.Com., LL.M.
XVIII Addl.City Civil Judge.
O.S.No.2101/2012
Plaintiff: M/s. United Spirits Limited
A company incorporated under the
provisions of the Companies Act, 1956
having its regd. Office at UB Tower,
24, Vittal Mallya Road,
Bangalore - 560 001
Reptd.by its Senior General Manager -
Legal & authorized representative
Mahesh Nedungadi,
S/o P.P.Nedungadi, Aged 52 years
[By Sri.C.K.N., Advocate]
/VS/
Defendant: M/s.N.V.Distillers & Breweries Pvt.Ltd.
No.8, Bagwanpur, Parwalao,
Derabassi District,
SAS Nagar (Mohali)- 140 507,
Punjab,
Reptd.by Managing Director
[Sri.R.A.M./ N.D.K.Advocates]
2
OS.No.2101/2012
Date of institution of 24.03.2012
suit
Nature of the suit Permanent injunction
(Suit on pronote, suit
for declaration and
possession suit for
injunction, etc.
Date of the 11.02.2014
commencement of
recording of the
evidence.
Date on which the 08.03.2022
Judgment was
pronounced.
Year/s Month/s day/s
Total duration: 09 11 14
(NAGARAJAPPA A.K.)
XVIII Addl.City Civil Judge, Bangalore.
JU DG MEN T
The plaintiff filed this suit against the defendant for
permanent injunction restraining the defendant, their
agents, servants and assigns and each of them in any
way using, selling or infringing upon the plaintiff's
registered trade mark "Plantinum" registered vide
registration No.756366 dated 26.05.1997 and from
infringing plaintiff's trade name / mark / label/ device
"McDowell No.1 Platinum" whisky which is deceptively
similar to that of plaintiff's trade mark label registered
3
OS.No.2101/2012
vide registration No.1928614 dated 1.3.2010 and for
costs.
2. The nutshell case of the plaintiff are as follows:
The plaintiff company was earlier known as
McDowell & Company Limited for several decades and
subsequently by a scheme of amalgamation got changed
as "United Spirits Limited". The Government of India
has also issued fresh incorporation certificate dated
17.10.2006. Plaintiff is the largest manufacturer of
alcoholic beverages in the country and also biggest
manufacturer and marketer in the world in terms of
volumes and got excellent network throughout the
country for the purpose of sale, manufacture,
distribution, promotion of their products. Plaintiff has
got registered its logo and trade mark with trade mark
registry and its successful product namely "McDowell's
No.1 Platinum" whisky is duly protected under
Trademarks Act. The word 'Platinum' has also been
specifically registered in class 33 for whisky, brandy,
vodka, gin, alcoholic beverages and other goods thereto
under registration No.756366 dated 26.5.1997.
plaintiff company registered their label "McDowell No.1
Platinum" in class 33 bearing registration No.1928614
and continuously enjoying exclusive right since 1996.
4
OS.No.2101/2012
They have spent several crores of rupees since its
inception, year by years towards promoting their product.
The word McDowell No.1 Platinum is written in a unique
font, so as to make it very catchy concept and impressive
at its first glance itself. The word McDowell's No.1 is in
italics and printed in white letters one below the other
and at the bottom, the exclusive word Platinum on a
white banner background with black letters is printed
down below the word McDowell No.1. It is only the
plaintiff's product and not any other whisky.
3. It is further case of the plaintiff that the plaintiff
continues to enjoy a monopolistic and proprietary right of
not only McDowel's No.1 platinum, but separately
registered mark/word platinum also. Thus by virtue of a
long and prior users since 1997 coupled with
registration of the word/mark platinum and its
device/lable McDowel's No.1 platinum, it has exclusively
owned property of the plaintiff's company. Further
plaintiff has pleaded that defendant is also a company
and having business of manufacturing and sale of
whisky. Defendant appears to have been carried away by
the huge success of their product namely McDowell's
No.1 Platinum whisky with the emphasis of the word
"Platinum". Defendant in order to en cash upon the
5
OS.No.2101/2012
vast goodwill, market, reputation etc., has in an
ingenious way copies, imitated their label by using the
exclusive registered word mark Platinum and used it on
the bottles by way of label and selling the same as that of
them. Defendant has been selling their whisky by adding
the word "Party Special" to plaintiff registered trade
mark / word Platinum to have unlawful gain. The
defendant selling their whisky by name "Party Special
Platinum". The conduct of the defendant is deceitful and
it is nothing but deliberate acts of the defendant in
coping and imitating and reproducing the plaintiff's
registered word/mark platinum by adding a suffix
namely " party special" in order to make an unlawful and
illegal gain. The defendant has deliberately,
mischievously adopted/copied the plaintiff's registered
mark /name as well as its artistic colorful label this led
to piracy and invasion of plaintiff's trademark. On
comparison of plaintiff and defendant product, the
overall shape is almost similar. The colour scheme of the
label is similar. The shape of the bottle of both plaintiff
and defendant are similar. The volume of the bottle of the
plaintiff and defendant are similar. The neck of the bottle
of plaintiff is proportional and the neck of the bottle of
the defendant is slightly elongated. The cap of the bottle
of plaintiff is in a unique design with red band in colour
6
OS.No.2101/2012
and the defendant is similar with only colour change in
blank. The outer carton of plaintiff is black in colour and
the defendant carton is similar in colour scheme of the
plaintiff. The shape of the carton of plaintiff and
defendant are almost similar ie., rectangle. The brand
name of plaintiff McDowell's No.1 Platinum is printed at
the center of the carton. The brand name Party Special
Platinum is printed at the center of the carton. Only the
word/mark Partly Special has been replaced instead of
McDowell No.1. The word Platinum is similar unlike the
plaintiff. The contents of whisky is also similar. On
verification made by the plaintiff it was noticed that
defendant has sold in local markets of Chandigarh state
namely Manimajra and then test purchase was made on
16-10-2011 and this test purchase has confirmed that
the defendant has deliberately selling their product at a
much lower price of that of the plaintiff and it constitutes
an absolute infringement of the plaintiff trademark and
label. Hence the suit is filed for the above reliefs.
4. The defendant appeared through its counsel and
filed the written statement. Wherein they have denying
the plaint averment paragraphs no.5 6,7 to 9.Further
denied plaint averment paragraphs no.11 to 14., 16, 17
except specifically admitted in toto. besides contending
7
OS.No.2101/2012
that plaintiff has not come with clean hands and has
made dishonest pleas with some ulterior motives. There
is no cause of action for the suit. The suit suffers from
gross delay, latches and acquiescence on the part of the
plaintiff. Suit of the plaintiff deserves to be dismissed in
limini with cost as the plaintiff is guilty of "supressio veri"
and "suggestion falsi". The plaintiff has not disclosed
that in addition to the registered trademarks relied by
the plaintiff and had also obtained three trade mark
registration numbers bearing No. 700652 dt.05-03-
1996, 700657 dt.5-03-1996 and 1997581 dt.22-07-2010
obtained by the plaintiff are in respect of alcoholic
beverages under class 33, which also contained or
consisting of the word "Platinum". In the later
registration of trade mark No.1928614 dated 1.3.2010
under class 33 the plaintiff has lodged a specific
disclaimer in respect of the word 'Platinum'. Legal effect
of the disclaimer is that the plaintiff cannot claim any
exclusivity over the word PLATINUM in respect of trade
mark interalia containing the expressions "McDowell's
No.1 PLATINUM" which is registered under trade mark
No.1928461 in class 33, the Plaintiff has concealed the
relevant facts.
5. Further the defendant has taken contention that it
8
OS.No.2101/2012
is a private company incorporated and they have been
manufacturing or marketing merchandising Indian Made
Foreign Liquor for a long time. It has installed capacities
and infrastructure available to make 2 million cases of
IMFL per year. It produces packs and sells whisky,
vodka, gin, rum, brandy etc., It has also done substantial
brand promotion by hiring celebrity Model like Irfaan
Khan as Brand Ambassador. Through its subsidiaries
and sister concern own and control 8 liquor
manufacturing units located at Rajpura - Punjab,
Aurangabad - Maharashtra, Goa, Ambala- Haryana and
Derabhari -Punjab with sales turnover of approximately
Rs.427 crores of all the units. The defendant has sold ,
within a year, party special platinum to the tune of Rs.
12.28 crores approximately and has spent over Rs. 4.5
crores in advertisement and publicity. The defendant also
bottles for reputed international companies like Pernod
Ricard India private ltd., Bacardi Martini India Ltd., and
Belvedere, France. The defendant having their own good
will and reputation. The mere registration of a
trademark is no conclusive proof of its validity. They
have already initiated proceedings for the removal of the trade
marks registered under TM Nos.700652 dated 5.3.1996,
756366 dated 26.5.1997, 700657 dated 5.3.1996, 1928614
dated 1.3.2010 & 1997581 dated 23.7.2010 for the mark
containing or consisting the word PLATINUM in Class 33.
9
OS.No.2101/2012
They have also filed miscellaneous petition in the
aforesaid rectification applications for interim stay of
operations of said registrations. The registered trade
mark of plaintiff "McDowell's No.1 Platinum" in class
33 comprises 3 elements namely McDowell, No.1, and
Platinum. The expression "No.1" and "Platinum" are
laudatory and descriptive expressions on which no one
can claim any exclusive right whatsoever and these
expressions have become common to trade. At least 7
trade mark registrations have been granted for the word
"Platinum" for persons, entities other than the plaintiff.
Comparison of plaintiff and their products there are
substantial differences between the rival products. In
addition to more than 10 other applications have been
made for the word 'platinum' . Which are pending before
the Trade mark registry Application No.715438 of
International Breweries Pvt.Ltd., No.1324439 of Jagajith
Industries, No.1512021 of Roust Incorporated,
No.1512559 of Roust Incorporated, No.1812956 of Allied
Blenders & Distillers Pvt. Ltd., No.1951455 of AS
Consultants Pvt. Ltd., No.2111032 of Diaego Brands
B.V., No.2143354 & No.2169427 of Jagajith Industries
and No.2224708 of Jaideep Mohan. The use of the word
PLATINUM is common to liquor industry and forms a
trade usage over the same. No person can claim
10
OS.No.2101/2012
monopoly over the same. Plaintiff has not taken any
design registration for the bottle or the shape of the label.
In the prosecution of the trademark application
No.756366, on oath, the signatory to the plaint had
stated before the trademark registry that the word
Platinum is proposed to be used. Whereas in the plaint
they claim the date of use to be 1997.
6. Defendant has not committed any act of
infringement of trade marks or passing off or has caused
any damages to the plaintiff. Plaintiff is not entitled for
any reliefs. Further taken contention that admittedly
plaintiff has not taken any design registration for the
bottle or the shape of the label and in either case,
neither the shape of the label nor the place of affixing the
label can qualify for any exclusivity and denied the plaint
avernment para 12, the plaintiff cannot claim any
exclusivity over the capacity of the bottle, shape of the
bottle or the rectangular container to house the bottle as
these are compelled by functional necessity of packing a
product, the consumer do not recognize platinum as a
standalone mark, the word platinum is always prefixed
with the real brand/trade name such as Johnnie
walker, patron, party special etc., there are other liquor
manufacturers who are using the same word platinum to
describe their gradation in quality of their product,
11
OS.No.2101/2012
however the plaintiff has been very selective in initiating
proceedings for infringement and it shows plaintiff
collusion with the other registered owners or users of the
mark platinum. The plaintiff and defendants cater to two
different segments of the liquor consumers in view of the
admitted pricing differentials between the products of the
plaintiff and defendant. The validity of the plaintiff's
registered trademark is under adjudication by the IPAB,
the plaintiff cannot claim the rights arising from their
registrations etc., Further defendant has denied rest of
the plaint avernment specifically. On the above grounds
prays to dismiss the suit.
7. On the basis of the above pleadings the
predecessor in office has framed the following issues:
(1) Whether the plaintiff proves that the
defendant has infringed its trade mark
"McDowell's No.1 Platinum"?
(2) Whether the defendant proves that the suit of
the plaintiff is hit by principles of delay and
latches?
(3) Whether the plaintiff is entitled for the reliefs
as sought for?
(4) What order or decree?
Addl.Issues framed on 22.1.2015
(1) Whether plaintiff proves that it is a registered
owner of the Trade mark Platinum?
(Recasted as Addl.Issue on 26.2.2015)
12
OS.No.2101/2012
(2) Whether the word Platinum became common and
non-distinctive in the liquor industry and not
entitled for protection?
Addl.Issue No.1 recasted on 26.2.2015.
1. Whether plaintiff proves that it is a registered
owner of the trade mark "Platinum" as well as
label/device "Mc Dowell No.1 Platinum"?
Addl.Issues framed on 18.10.2021
1. Whether plaintiff proves that it is a registered
owner of the Trade mark Platinum?
8. In order to prove the case of the plaintiff got
examined its Senior Manager- Legal as PW1, got marked
Ex.P1 to P17 and closed its side. On the other hand,
defendant examined its Deputy Managers- Legal and two
witnesses as DW1 to 3, got marked the documents at
Ex.D1 to D45 and closed their side.
9. Heard the arguments for plaintiff and defendant.
The counsel for the plaintiff has relied on the following
decisions:
1. 2014(57) PTC 617 -Pidilite Industries Ltd Vs.
Jubilant Agri and Consumer Products Ltd.
2. 2007 SCC Online Del 868 - Pfizer Products Inc. Vs.
Rajesh Chopra and others.
3. 2019(80) PTC 124 (Bom) -Royal Dryfruit Range Vs.
Royal Suvidha
13
OS.No.2101/2012
4. 1999 SCC Online Del 27 - Automatic Electric Ltd.
Vs. RK.Dhawan & Anr.
5. 2010 SCC Online Del 114 - Ozone Spa Pvt. Ltd. Vs.
M/s. Ozone Club.
6. 2006 3 LW 350 - Devi Pesticides Pvt. Ltd. Vs. Shiv
Agro Chemicals Industries.
7. 2011 SCC Online Del.4768 - Infosys Technologies
Ltd. Vs. Adinath Infosys Pvt. Ltd.
8. 2014 SCC Online Del.564 - S.Oliver Bernd Freier
GMBH & Co.KG Vs.M/s. Rasul Exports.
9. ILR (2007) II DEL. 1065 - Cadbury India Ltd. Vs.
Neeraj Food Products.
10. (1999) 3 SCC 573 - Vidhyadhar Vs. Manikrao &
Another.
11. 2010 SCC Online Mad 5997 - Rajendran Vs.
A.Saminathan
12. 2010 SCC Online Cal.2300- Biswanath Paul and
others Vs. Laxman Chandra Roy
13. 2020 SCC Online Mad.9030 - G.Balaji & Another
Vs. Saravanasamy
14. 2021 SCC Online SC 1169 - Arce Polymers Pvt.
Ltd. Vs. Alphine Pharmaceuticals Pvt. Ltd. & Ors.
15. 2012 SCC Online Del.4589 - Stokely Van Camp
Inc. Vs. Heinz India Pvt. Ltd.
16. 2011 (123) DRJ 263 - Financial Times Ltd. Vs.
Bennett Coleman & Co. Ltd.
17. 2016 SCC Online Del.4818 - Times Publishing
House Ltd. Vs. Financial Times Ltd & Ors.
18. 2016 SCC Online Del.4512 - Wonderful Developers
Pvt. Ltd. Vs. Impresario Entertainment & Hospitality
14
OS.No.2101/2012
Pvt. Ltd.
19. ILR 1985 KAR 1946 - Dattatraya Vs. Srinivasa
Bhat Thammanna
20. 2010 SCC Online Kar.1472- Hashin Sharief Vs.
Srinivasamurthy.
The counsel for the defendant has relied on the
following decisions:
1. (2018)2 SCC 112 - Patel Field Marshal Agencies Y
Anr. Vs.VPM.Diesels Ltd. & Ors.
2. 2014(58) PTC BOM - Cipla Ltd. Vs. Cipla Industries
Pvt. Ltd & Anr.
3. 1965 SCC Online Cal. 128 - Caprihans (India) Pvt.
Ltd. Vs. Formica International Ltd. & Ors.
4. MPR 2018 (2) 421 - J.K.Oil Industries Vs. Adani
Wilmar Ltd.
5. MANU/MH/0393/2014 - SAB Miller Vs. Fortune
Alcobrew Pvt. Ltd. & Ors.
6. (1974) 1 SCC 242 - Nagindas Ramdas Vs. Dalpatram
Ichharam @ Brijraam & Ors.
7. (2012) 8 SCC 516 - Ahmed Saheb (Dead) By Lrs. &
Ors. Vs. Sayad Ismail
8. (2005) 11 SCC 314 - Sangramsingh P.Gaekwad & Ors
Vs. V.Shantadevi.P.
9. 2016 SCC Online Bom 4789- Garware Polyester Ltd.
Vs. 3M
10. 1994 Supp (3) SCC 215 - J.R.Kapoor Vs. Micronics
11. 2010) 2 SCC 142 - Skyline Education Institute
(India) Pvt.Ltd. Vs. S.L.Vaswani & Ors.
12. Judgment of Madras High Court in
15
OS.No.2101/2012
OA.No.1113/2018 between Matrimony.Com Ltd. Vs.
Love Vivah & Ors.
13. 2009(41) PTC 336(Del.)(DB) - Cadila Healthcare Vs.
Gujarat Coop Milk Fideration
14. 2007(3) Bom.L.R.1819- Asian Paints Vs. Home
Solutions
15. 2010(42) PTC 660 (DEL) - Rich Products
Corporation & Anr. Vs. Indo Nippon Food Ltd.
16. 2010(44) PTC 736 (Del) (DB) - Marico Ltd. Vs.
Agrotech Foods Ltd.
17. 2021 (85) PTC 490(Bom) - Kamruddin I. Mehsaniya
Vs. Sarah International
18. 2016(68) PTC 225 (Bom) - People Interactive(India)
Pvt. Ltd. Vs. Vivek Pahwa & Ors.
19. 2016 SCC Online Bom 4789 - Garware Polyester
Ltd., Vs. 3M
20. (1955) 2 SCR 252 - Registrar of Trademarks Vs.
Ashok Chandra Rakhit Ltd.
21. 2012 (49) PTC 231 (BOM) - Skol Breweries Vs. Som
Breweries
22. (1998) 1 Arb LR 436 - Cluett Peabody & Co. Inc.Vs.
Arrow Apparels
23. 2016 SCC Online Bom 3574 - Ultratec Cement Ltd.
Vs. Dalmia Cement Bharat Ltd.
24. 2016(6) Mh.L.J. 249 - Datamatics Global Services
Ltd. Vs. Royal Datamatics Pvt. Ltd.
25. (1984) 2 SCC 656 - AC.Jose V. Sivan Pillai & Ors.
26. 2012 (49) PTC 571 (Del) - Samsung Electronics
Company Ltd & Anr. Vs. Kapil Wadhwa & Ors.
16
OS.No.2101/2012
27. 2019(79) PTC 99 (Del) - Teleecare Network India Pvt.
Ltd. Vs. Asus Technology Pvt.Ltd.& Ors.
I have considered the rulings of both the parties and
the arguments advanced by both counsels with utmost
reverence.
10. My findings on the above issues are as under:
Issue No.1 : In the affirmative
Issue No.2 : In the negative
Addl.Issue No.2}: In the negative
dtd.22.1.2015 }
Add.Issue }: In the affirmative
dtd.26.2.2015}
Addl.Issue }: In the affirmative
dtd.18.10.2021}
Issue No.3 : In partly affirmative
Issue No.4 : As per final order,
For the following:
R EAS O N S
11. Addl. Issue No.1 dtd.26.2.2015 & Addl.Issue
dtd.18.1.2021:- As these two issues are interlinked with
each other, they are taken up together for consideration to
avoid repetition of facts.
12. In this case it is an undisputed fact that plaintiff
company is the registered company in the name and style
M/s. United Spirits Limited manufacturing alcoholic
beverages. Earlier the said company was running in the
17
OS.No.2101/2012
name and style as McDowell & Company Ltd., and
subsequently it was changed as United Spirits Limited. It
is further undisputed fact that plaintiff is having a
registered trademark 'McDowell's No.1 Platinum' and
plaintiff's word mark 'Platinum' is also have been
subsequently registered in Class 33 for Whisky, brandy,
vodka, gin, alcoholic beverages and all other goods.
Further plaintiff is claiming that company is having
registration of trademark PLATINUM under registration
No.756366 dtd.26.5.1997 in class 33. The learned senior
counsel for the plaintiff has vehemently' argued that
plaintiff not only the word mark 'Platinum' registered but
the label of trademark namely 'McDowell No.1 Platinum' is
also registered under class 33 bearing No.1928614 in class
33. The plaintiff by virtue of long and prior user since
1997 coupled with registration of the word /mark
'Platinum' and its device/label 'McDowell No.1
Platinum' plaintiff has become exclusively owned
property of plaintiff company. Though the defendant is
also a registered company under the name and style M/s.
N.V.Distillers & Breweries Pvt. Ltd., and defendant
company got registered the trademark 'PARTY SPECIAL
PLATINUM '. But defendant has been selling the Whisky
by adding the word 'Party Special' to the registered
trademark of the plaintiff "Platinum' and they used the
plaintiff's trademark by adding the words Party Special
18
OS.No.2101/2012
and it is nothing but deliberate acts of the defendants in
copying and imitating and reproducing the plaintiff's
registered trademark to make an illegal and unlawful
gain. According to the plaintiff comparison of the plaintiff
label and defendant's label, the overall shape of the label
is rectangle with a tilt at the center and affixed at the
center of the bottle. But the overall shape of defendant is
almost similar and affixed at the center of the bottle
unlike the plaintiff's USL Label. The plaintiff's colour
scheme of the label is black in colour( back ground) but
the colour scheme of the defendant is the same unlike the
plaintiff. The shape of the label of plaintiff is rectangle
and the shape of the label of defendant is almost similar
ie., rectangle. Further pleaded that even the defendant
has copied the bottle as well as cartoon ie., packaging
material box. The shape of the bottle of the plaintiff is
unique with a slight bulge on the top end corners in a
convex way and the shape of the defendant's bottle is
similar to that of the plaintiff. The volume of the bottle is
similar. The neck of the bottle is slightly elongated. The
cap of the bottle is in a unique design with a red band in
colour but the defendant is in black colour. Likewise the
outer carton and shape of the carton of plaintiff and
defendant are similar. The content of whisky is 750ml is
also similar. When the plaintiff test purchase was made
19
OS.No.2101/2012
on 16.10.2011 belonging to the defendant product in the
local markets of Chandigarh at Manimajra and come to
know that defendant company deliberately, mischievously
adopted /copied the plaintiff's registered mark/name as
well as its artistic colourful label etc. as a result the
defendant has infringed the plaintiff registered trademark
under section 134 & 135 of Trademarks Act, 1999 etc.,
13. Inter alia the learned counsel for the defendant
has vehemently argued that the suit of the plaintiff itself
is not maintainable either in law or on facts. The cause of
action does not disclose and suit of the plaintiff is guilty
of suppressio veri and suggestio falsi. The plaintiff has
not come before court with clean hands because plaintiff
had obtained three other registration No.700652
dtd.5.3.1996, 700657 dtd.5.3.1996 and 1997581
dtd.23.7.2010 in class 33 inter alia in respect of alcoholic
beverages, which also contained of the word 'Platinum'.
However in the later registration in trademark
No.1928614 dtd.1.3.2010 under class 33 plaintiff has
lodged a specific disclaimer in respect of the word
Platinum. The plaintiff cannot claim any exclusivity over
the word PLATINUM in respect of the trademark containing
the expression 'McDowell's No.1 platinum' ' which is
registered in TM.No.1928614 in class 33 and
subsequently the TM No.1997581 dtd.27.7.2010 in class
20
OS.No.2101/2012
33 and plaintiff has suppressed the material facts. In fact
plaintiff is also guilty of making false averments on oath.
In para 6 to 8 of the plaint, plaintiff has asserted that
they have been using the PLATINUM since 1997 however
in prosecution of the trademark application No.756366
same deponent had sworn the plaint and the IA affidavit
had stated before trademark registry that the name
PLATINUM is proposed to be used by the applicant on late as
7.10.2006 . When the plaintiff sworn affidavit before the
statutory registering authority, there was no conflict or
dispute and it would have deposed truth and thus
plaintiff is guilty of false statement. Even defendant
company have been manufacturing / marketing/
merchandising Indian Made Foreign Liquor to make 2
million cases per year and approximate total turn over of
the defendant is Rs.427 crores having 8 liquor
manufacturing units. Defendant sold within a year Party
Special Platinum to the tune of Rs.12.28 crores and has
spent over Rs.4.5 crores for advertisement and publicity.
Therefore mere registration of the trademark is no
exclusive proof of its validity under the Trademarks Act.
14. Further the defendant counsel has very much
emphasized that Defendant has already initiated
proceedings for the removal of the plaintiff's trademarks
registered under TM No.700652 dtd.5.3.1996, 75666
21
OS.No.2101/2012
dtd.26.5.1997 700657 dtd. 5.3.1996, 1928614
dtd.1.3.2010 and 1997581 dtd.23.7.2010 for the mark
containing the word PLATINUM in class 33. Hence the
proceedings of this suit is to be stayed for a period of 3
months u/s.124 of Trademarks Act. Even more than 10
other applications have been made for the word
PLATINUM which are pending before the trademark
registry. The details of the company given in written
statement at para (p). The word PLATINUM is common in
the trade and no one can claim monopoly. The expression
"No.1" and "Platinum" are laudatory and descriptive
expressions on which no one can claim any exclusive
right etc.
15. Before discussion about ownership of trade
mark of the plaintiff and defendant whether further
proceeding of this suit is liable to be stayed under section
124 of the Trade marks Act. in view of the application
filed by the defendant before the Intellectual Property
Appellate Board Chennai or not is to be looked into.
Because the main argument canvassed by the counsel for
the defendant is that since defendant has already filed
applications for challenging of validity of the registered
trademark of the plaintiff before IPAB, as per Ex.D3 to D6
therefore the further proceedings of this case is to be
stayed. Admittedly in this case defendant's counsel has
22
OS.No.2101/2012
filed an IA.No.III under section 10 of CPC to stay the
further proceedings of this suit. But this court has
passed an order on 16.4.2013 that the defendant has not
made out grounds to stay further proceedings of this suit.
Further in the said order on IA III at para 11 & 12 my
predecessor in the office has specifically discussed why
the further proceeding of this suit cannot be stayed even
under Sec.124 of Trademarks Act, 1999 etc., reads as
follows:
11. Even the prayer made by the defendant
under Sec.124 of Trademarks Act cannot be
considered since, the defendant has not made out
any ground to establish that the registration of
the trademark in favour of the plaintiff is invalid
both under Sec.1(a) & 1(b) of Sec.124 of
Trademarks Act. Therefore, the pendency of
appeal filed by the defendant seeking removal of
registration of trademark will not in any way come
in the way of deciding the present suit, since the
plaintiff is alleging infringement of registered
trademark and registration granted in favour of
plaintiff, is still valid.
12. Therefore, IA.No.3 filed by the defendant
deserves to be rejected.
When I gone through the Sec.124 of Trademarks
Act which reads as follows:
Sec.124 of Trade Marks Act, 1999 reads thus:
"Stay of proceedings where the validity of
registration of the trade mark is questioned, etc.,
(1) Where in any suit for infringement of a
trade mark-
(a) the defendant pleads that registration of
the plaintiff's trade mark is invalid; or
23
OS.No.2101/2012
(b) the defendant raises a defence under
clause(e) of sub-section (2) of Section 30 and the
plaintiff pleads the invalidity of registration of the
defendant's trade mark,
The court trying the suit (hereinafter referred to
as the court), shall,-
(i) if any proceedings for rectification of
the register in relation to the plaintiff's or
defendant's trade mark are pending before the
Registrar or the Appellate Board, stay the suit
pending the final disposal of such proceedings;
(ii) if no such proceedings are pending
and the court is satisfied that the plea regarding
the invalidity of the registration of the plaintiff's
or defendant's trade mark is prima-facie tenable,
raise an issue regarding the same and adjourn
the case for a period of three months from the
date of the framing of the issue in order to enable
the party concerned to apply to the Appellate
Board for rectification of the register.
(2) If the party concerned proves to the
court that he has made any such application as
is referred to in clause(b)(ii) of sub-section (1)
within the time specified therein or within such
extended time as the court may for sufficient
cause allow, the trial of the suit shall stand
stayed until the final disposal of the rectification
proceedings.
(3) If no such application as aforesaid has
been made within the time so specified or within
such extended time as the court may allow, the
issue as to the validity of the registration of the
trademark concerned shall be deemed to have
been abandoned and the court shall proceed with
the suit in regard to the other issue in the case.
(4) The final order made in any
rectification proceedings referred to in sub-
section (1) or sub-section (2) shall be binding
24
OS.No.2101/2012
upon the parties and the Court shall dispose of
the suit conformably to such order in so far as it
relates to the issue as to the validity of the
registration of the trade mark.
(5) The stay of a suit for the infringement of a
trade mark under this section shall not preclude
the court from making any interlocutory order
(including any order granting an injunction,
directing account to be kept, appointing a
receiver or attaching any property), during the
period of stay of the suit.
16. Admittedly, the defendant till today not
challenged the said order passed on IA.No.3. When my
predecessor in the office has passed an order by
considering the pleading of the defendant to stay the
further proceedings of the suit and also considered that
the defendant has not made out any grounds to establish
to stay the further proceedings u/s.124 of the said Act.
When the things stand thus, whether the court can stay
further proceedings of the suit at the fag end of the
proceedings of the suit, that too when the case is posted
for judgment is a crucial point for consideration.
17. It is true in order to substantiate the contention
of the defendant, defendant's counsel has relied upon
number of decisions our of them the decision reported in
(2018) 2 SCC 112 (Patel Field Marshal Agencies & Anr. Vs.
P.M.Diesels Ltd & Ors.), wherein their lordships have
observed as follows:
25
OS.No.2101/2012
C. Intellectual property - Trade and
Merchandise Marks Act, 1958- Ss.46,56,111 &
107 - Jurisdiction of civil court to decide validity
of the registration of the trademark - exclusion of
-Held, all issues relating to and connected
with the validity of registration have to be dealt
with by the Tribunal and not by the civil court. -
Once an issue connected with the validity of
registration is framed by the civil court the matter
will have to go to the Tribunal and the decision of
the Tribunal will thereafter bind the civil Court.
Relating to the same principle the learned counsel
for the defendant has relied on the decision reported in
(1998) 1 Arb LR.436(Cluett Peabody & Co. Inc.Vs. Arrow
Apparels . Whereas in the present case on hand, relating to
question of jurisdiction as well as stay of the proceedings
already an order has been passed by my predecessor in
the office on IA.No.3 by considering Sec.124 of
Trademarks Act also and same is not challenged by the
defendant and there is no issue had been framed in this
case relating to the validity of the registration of the
trademark of the plaintiff in view of defense taken by the
defendant.
18. Relating to the same principles of law the
counsel for the defendant has relied upon the decisions
reported in 2014(58) PTC BOM (Cipla Ltd. Vs. Cipla
Industries Pvt. Ltd & Anr.,) 1965 SCC Online Cal. 128
(Caprihans (India) Pvt. Ltd. Vs. Formica International Ltd. &
Ors.,) MPR 2018 (2) 421 (J.K.Oil Industries Vs. Adani Wilmar
26
OS.No.2101/2012
Ltd.,) MANU/MH/0393/2014 (SAB Miller Vs. Fortune
Alcobrew Pvt. Ltd. & Ors.), and (1974) 1 SCC 242(Nagindas
Ramdas Vs. Dalpatram Ichharam @ Brijraam & Ors .) When I
gone through the said decisions in details the facts of
the said decisions and the present case on hand are
entirely different in view of the order on IA III. Under the
circumstances, the defendant cannot rely upon these
decisions at this stage.
19. Whereas plaintiff counsel has also relied upon
the decision reported in 2012 (131)DRJ 635( Stokely Van
Camp Inc. & Anr. Vs. Heinz India Private Limited) wherein
the lordship have held as follows:
Sec.134 - Stay of proceedings in suit
pending disposal of rectification - petition pending
before Appellate Board- Rectification proceedings
initiated without seeking leave of the court -
object of provision is to avoid parallel
proceedings- defendant is not entitled to stay of
suit.
Further discussed in the said decision at para 29
reads as follows;-
29. Hence, keeping the legal principles as
discussed above in mind, it is concluded that in a
suit for infringement of a trademark, the applicant
cannot ask for a relief of the stay of the suit until
he fulfills the conditions stated in 124(1) of the
Act. If the rectification proceeding are not pending
the institution of the suit, it is obligatory on part
of the applicant to follow the provision laid down
under section 124(1)(ii) of the Act in order to
initiate rectification proceedings before the
Appellate Authority. In case he fails to adhere to
the same and yet initiates rectification
27
OS.No.2101/2012
proceedings, then he will not be entitled to the
relief of stay of the suit under section 124 of The
Trade Mark Act, 1999.
Relating to same principal of law plaintiff counsels
has relied upon decision reported 2011 (123) DRJ
263(Financial Times Camp Inc. Vs. Heinz India Private
Limited)
Whereas in the present case on hand also defendant
has initiated rectification proceedings without seeking
leave of the court . Hence in view of the said decision
defendant is not entitle to stay of this suit.
20. It is true the learned counsel for the defendant
has also much canvassed the argument that no question
of rejection as sought to be applicable to the case on hand
in view of dismissal of I.A.No.3. Because the I.A No.3 filed
by the defendant is under section 10 of the CPC but not
u/s.124 of Trademarks Act and therefore the question of
principles of res-judicata available to the case on hand to
stay further proceedings of the suit by invoking Sec.124
does not arise etc. Inter alia the senior counsel for the
plaintiff has vehemently argued by filing additional
written argument on that point contending that in view of
the disposal of the IA.No.3, already this court has formed
an opinion by considering Sec.124 of Trademarks Act also
28
OS.No.2101/2012
while passing the orders on IA.no.3 and therefore if the
same matter is re-agitated at subsequent stage of the
same proceedings , it amount to hit the principles of res-
judicata. In this aspect counsel for the plaintiff has
referred the decisions reported in ILR 1985 KAR
1946(Dattatraya Vs. Srinivas Bhat Thammanna), wherein it is
held as follows:
It is now well settled that interlocutory
applications in a suit cannot themselves be
regarded as suits but for the purpose of Sec.11 of
CPC, a finding thereon which has become final at
an earlier stage of the proceedings would become
res judicata and cannot be re-agitated at a
subsequent stage of the same proceedings.
21. Relating to same principles of law he has relied
on the decision reported in 2010 SCC Online Kar 1472
(Hashim Sharief Vs. Srinivasamurthy). Further he has
argued that Patel Field Marshal Agencies Vs.
PM.Diesels Ltd., case is not applicable because firstly
this judgment is distinguishable since the issue dealt with
relates to whether, in a suit for infringement which is
pending wherein the issue of validity of the registration of
the trademark in question has been raised either by the
plaintiff or the defendants and no issue on the said
question of validity has been framed in the suit or, if
framed has not been pursued by the concerned party by
filing an application for rectification, the recourse to the
remedy would still be available to contest the validity of
29
OS.No.2101/2012
the mark. Further in that case the Hon'ble Supreme
Court held that a rectification application sought to be
filed after the suit is instituted would have to be filed after
an issue to this effect is framed. In the present case,
however the defendant has prematurely filed the
rectification applications before an appropriate issue has
to the validity of the plaintiff's marks was framed, and
without leave of the court he has filed those applications.
22. It is true in this case, as argued by the learned
counsel for the plaintiff already this court has given
findings that sec.124 of Trademarks Act is not applicable
as no grounds were made out by the defendant. It is true
in view of the said provision of law once the defendant has
challenged the validity of the Trade mark of the plaintiff
before the IPAB, it is necessary to stay the further
proceedings of the suit but with regard to validity and
point of law under section 124 of Trade mark Acts
already decided and hence question of defendant once
again re-agitate the same contention subsequent
proceedings in the same case does not arise as discussed
supra. Suppose, if the issue had been framed with
regard to the validity of the registration of trademark of
the plaintiff the matter would have been different. Hence
considering the facts and circumstances of the case and
30
OS.No.2101/2012
considering the oral and documentary evidence and
considering not challenged the orders on IA.3 by
defendant till today and defendant has not obtained any
order from the IPAB till today at this stage, question of
stay the further proceedings of this case or wait for 3
months to give finding on the validity of the registration of
the trademark by IPAB does not arise. In the result, the
argument canvassed by the learned counsel for the
defendant holds no water.
23. In view of admitted and disputed facts,
whether the plaintiff is exclusive owner of the trademark
McDowell No.1 Platinum is to be looked into. It is true as
per section Sec.2(v) & (w) speaks about who is the
registered proprietor and what is the meaning of
registered trademark reads as follows:
2(v) - Registered proprietor - in relation to a
trademark, means the person for the time being
entered in the register as proprietor of the
trademark
2(w) - Registered trademark- means
trademark which is actually on the register and
remaining in force.
Where as Sec.2(zb) defines about the trademark
reads as follows:
(zb) "trade mark" means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one person
from those of others and may include shape of
goods, their packaging and combination of
31
OS.No.2101/2012
colours; and--
(i) in relation to Chapter XII (other than section
107), a registered trade mark or a mark used in
relation to goods or services for the purpose of
indicating or so as to indicate a connection in the
course of trade between the goods or services, as
the case may be, and some person having the
right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a
mark used or proposed to be used in relation to
goods or services for the purpose of indicating or
so to indicate a connection in the course of trade
between the goods or services, as the case may be,
and some person having the right, either as
proprietor or by way of permitted user, to use the
mark whether with or without any indication of
the identity of that person, and includes a
certification trade mark or collective mark;
24. In order to substantiate their contention,
plaintiff got examined its senior legal manager and
authorized representative as PW1. He has filed affidavit
for his examination in chief wherein he has reiterating the
plaint averments and got marked number of documents.
Out of them Ex.P1 is the Authorization letter issued to
S.Udayakumar to prosecute the above case. Ex.P11 is the
certificate of Incorporation, consequent upon change of
name of plaintiff company in the name and style M/s.
United Spirits Limited. Ex.P2 is the Trademark
registration certificate bearing No.756366 in class 33 for
the word mark 'PLATINUM' dtd.12.10.2011 and date of
registration 26-05-1997 but not mentioned from which
32
OS.No.2101/2012
date it is using . Ex.P3 is the Trademark registration
certificate No.1928614 in class 33 for Device mark
Mc.DOWELL'S No.1 PLATINUM, date of registration
dt.01-03-2010, used since 01-01-1996. Ex.P4 is the
details of sales turn over of plaintiff company, local
advertisements & sales promotion of Mc.Dowell's No.1
Platinum Whisky. Ex.P5 is the Photographs of plaintiff
product Mc.Dowell's No.1 Platinum luxury Whisky. Ex.P6
is the advertisement of plaintiff product Photographs of
plaintiff product Mc.Dowell's No.1 Platinum. Ex.P7 is the
photograph of defendant's product ' party special platinum
whisky'. Ex.P8 is the Photograph of plaintiff and
defendant product. Ex.P9 is the cash purchase receipt of
defendant's product ie., test purchase of defendant
product. Ex.P10 is the CD. Ex.P12 is the payment receipt,
Ex.P13 is the copy of Form No.18, Ex.P14 is the
Annual Report book of plaintiff, Ex.P15 is the Form GNL
-2, Ex.P16 is the plaintiff publishing on website
dtd.13.1.2015, Ex.P17 is the Board of directors of
plaintiff and their addresses.
25. In view of the documents produced by the
plaintiff, Ex.P2 & 3 are the trade mark legal use
certificates wherein it is clearly mentioned in Ex.P2 that
plaintiff is the registered owner of the trademark
'Platinum' as per registration dt.26.5.1997 and renewed
33
OS.No.2101/2012
on 26.6.2007 certificate dtd.27.3.2008. Whereas in Ex.P3
it is specifically mentioned that McDowell's No.1
Platinum used since 1.1.1996 registered on 1.3.2010.
registration is valid upto 1.3.2020 under class 33. But in
Ex.P3 once it is clearly mentioned that " Registration of
this trademark shall give no right to the exclusive
use of the word & quot: PLATINUM "". Further in
Ex.P4 is the details of sale turn over and local
advertisement and sale promotion expenses with regard to
McDowell's No.1 Platinum Whisky. The remaining
documents as discussed supra clearly shows that plaintiff
is the exclusively owner of the McDowell's No.1 Platinum
and in the mean time the plaintiff has also obtained
registration with regard to the word PLATINUM. But as
per Ex.P3 condition has been imposed while issuing the
trademark registration certificate. At this stage I would
like to reproduce the said provision under section 28 of
Trade Marks act reads as follows:
28. Rights conferred by registration.--
(1) Subject to the other provisions of this Act, the
registration of a trade mark shall, if valid, give to
the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in
relation to the goods or services in respect of
which the trade mark is registered and to obtain
relief in respect of infringement of the trade mark
in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark
given under sub-section (1) shall be subject to any
conditions and limitations to which the
34
OS.No.2101/2012
registration is subject.
(3) Where two or more persons are registered
proprietors of trade marks, which are identical
with or nearly resemble each other, the exclusive
right to the use of any of those trade marks shall
not (except so far as their respective rights are
subject to any conditions or limitations entered on
the register) be deemed to have been acquired by
any one of those persons as against any other of
those persons merely by registration of the trade
marks but each of those persons has otherwise
the same rights as against other persons (not
being registered users using by way of permitted
use) as he would have if he were the sole
registered proprietor.
26. So in view of the said provision of law and
considering the documents placed before court once it is
crystal clear at this stage that plaintiff is the registered
owner of the trademark of the plaintiff with regard to
McDowell No.1 Platinum Whisky and confirmed under
Sec.28 of the said Act. Further as per Ex.P2 the plaintiff
is having registration of the trademark 'Platinum' word.
Unless and until the validity of the trademark certificate
of the plaintiff is cancelled by the concerned Appellate
Authority, at this stage it cannot be said that the plaintiff
is not a registered owner of the said trademark. It is true
during the course of cross examination of PW1 he has
admitted that the product platinum was launched may be
in the year 2010. He has further admitted that their
trademark McDowell's No.1 Platinum and platinum are
in public domain and contents of para 4 of additional
35
OS.No.2101/2012
affidavit are true and correct. PW1 has also admitted that
'platinum' is used along with company's name.
27. On the other hand, the defendant has also
produced number of documents. Out of them Ex.D1 is
the Affidavit of Mahesh Nedungadi filed in support of the
application No.756366 for the mark PLATINUM which is
confronted through PW1 during the course of cross
examination. Wherein PW1 has admitted that " the word
platinum was proposed to be used by the plaintiff
company". Ex. D2 is the copy of board resolution of the
defendant. Ex.D3 to 6 the rectification applications filed
by the defendant before The Intellectual Property
Appellate Board at Chennai in respect of trademark of
plaintiff No.700652, 756366, 1928614, & 1997581 on
18.5.2012. those application are still pending before the
appellate board at chennai. Ex.D7 is the advertisement
in relation of Johnnie Walker Platinum. Ex.D8, Ex.D9
are photographs of the tequila bottles Reposado Patron,
Silver Patron and Patron Anejo and Gran Patron
Platinum. Ex.D10 is the print out of promotional material
of the defendant product. Ex.D11 is the copy of approval
of label issued by Excise & Taxation Commissioner,
Hariyana for the years 2011-12 dtd. 11.5.2011 including
Party Special Platinum. Ex.D12 is the approval issued by
Excise Commissioner of Maharashtra. Ex.D13 is the copy
36
OS.No.2101/2012
of license issued by Excise Commissioner New Delhi for
Party Special Platinum . Ex.D14 is the copy of VAT
invoice dtd.31.5.2011 issued by the defendant for sale of
its product including Party Special Platinum. Ex.D15 is
the copy of advertisement in respect of trademark
No.1928614 dtd.26.10.2010. Ex.D16 is the CD of
defendant document. Ex.D17 is the copy of the
Rectification application filed on 5.7.2012 of plaintiff'
trademark No.700657. Ex.D18 is the certificate of
incorporation of defendant company. Ex.D19 & 20 are
certified copies of trademark applications of the
defendant. Ex.D21 is the certified copy of approval &
Labels by Excise & Tax Officer, Punjab. Ex.D22 to 34 are
the Photographs showing the name of Platinum in various
liquor bottles. Ex.D35 is the CD. Further Ex.D36 to 40
are marked through DW2. Out of them Ex.D36 is the
certificate of registration of defendant's mark PARTY
SPECIAL bearing No.783732. Ex.D37 is the trade mark
registration certificate of defendant's mark PARTY
SPECIAL BLU bearing No.3073412. Ex.D39 are the
search report printouts on the website of of trademark
registry showing the results of Platinum and Ex.D40 is
the results generated by company /LLP name search
report in the website of Ministry of Corporate Affairs for
the word Platinum. Ex.D41 to 45 are marked through
37
OS.No.2101/2012
DW3. Out of them Ex.D41 is the copy of Board resolution
dtd.19.10.2019 of defendant. Ex.D42 & 43 are the
attested true copies of invoices of the product Party
Special Rare Whisky. Ex.D44 is the certificate of
registration dtd.10.10.2019 in respect of defendant mark
Party Special Platinum Luxury. Ex.D45 is the copy of
bank statement of defendant for the period from
20.10.2011 to 31.10.2012.
28. When I gone through the said documents once
it is crystal clear that at this stage defendant is the
registered owner of the trademark Party Special and
Party Special Blue as per Ex.D37 & 38 and also
defendant has obtained the trademark certificates after
institution of the suit. But in respect of the Party
Special Platinum is concern the defendant has applied
as per Ex.D19. But now obtained the certificate and the
said fact is specifically admitted by DW1 in his cross
examination that they have applied for trademark Party
Special Platinum approximately in the year 2011.
Whereas in the evidence of DW2 recorded on 5.09.2019
he has deposed that the trademark Party Special Platinum is
not yet registered as it is opposed. There is no any other
brand registered for Platinum. It is correct to suggest that
they started selling Party Special Platinum brand from
2011 even without obtaining the registration. So in view
38
OS.No.2101/2012
of the clear admission of DW2 and the documentary
evidence itself sufficient to hold that though defendant
applied for registration of the trademark Party Special
Platinum as per Ex.P19 & 20, but not obtained
registration certificate. Further in Ex.D19 and additional
representation annexed with Ex.D19 used date is shown
as 15.1.2011 in Class 32. Whereas in Ex.D20 it is
mentioned user dated as 20.1.2008 in class 33 relating to
additional representation annexed to Party Special
Platinum.
29. Whereas in the evidence of DW1 he has
reiterated the plaint averments. Further in the cross
examination also he has admitted that as per the search
results other companies have also applied for registration
of the trademark Platinum. It is true he is fully aware of
the status of trademark Platinum of defendant company
and other company and alleged rectification proceedings
against the applications for registration of trademark
Platinum. The learned counsel for the defendant
vehemently argued that the word Platinum it is not only
used by plaintiff, but number of other companies have
also applied for registration having the trademark
Platinum. In this aspect PW1 has deposed that out of 19
companies, four are is companies registered mark which
are amalgamated with the plaintiff company and he has
39
OS.No.2101/2012
not produced any documents to show that Shawallance is
amalgamated with the plaintiff company. Further during
the course of cross examination of PW1 recorded on
17.8.2016 he has deposed reads as follows:
Out of 19 applicants 4 are my company's
registered marks which are amalgamated with the
plaintiff company. I have not produced any
documents to show that Shawallance is
amalgamated with our company. It is true the
remaining 15 companies are different companies.
30. But the plaintiff's counsel has argued that
though the defendant has produced some documents
Ex.D7, 8, 9 & 11 to show that others company also
having the word PLATINUM but the brand Johnnie
Walker is owned by DIAGEO (India) which is also a
holding company of the plaintiff. In this aspect DW2 has
admitted in his cross examination recorded on 5.9.2019
that he is aware that plaintiff company M/s.United Spirits
is merged with DIAEGO (India) Pvt. Ltd. Further with
regard to Ex.D7 & 8 is the photograph of bottles of
Johnnie Walker, Johnnie Walker Black Label, Johnnie
Walker Double Black, Johnnie Walker Green Label,
Johnnie Walker Green Label 180 Cask, Johnnie Walker
Gold Label, Johnnie Walker Platinum Label and Johnnie
Walker Blue Lable as shown in Ex.D8, Further DW2 has
admitted that these companies products are merged with
plaintiff company, with regard to remaining products
40
OS.No.2101/2012
Ex.D9 & 10 are concerned defendant has not produced
any documents to show that those products are sold in
India. In the absence of the documentary evidence the
contention of the defendant cannot be said that other
than plaintiff company trademark McDowell No.1
Platinum, some other companies are also having the word
Platinum along with their company name etc. Even
though defendant has applied for Party Special Platinum
same is opposed and the same is pending as admitted by
DW2 and till today the defendant has not obtained the
registration of the trademark Party Special Platinum.
31. It is true that DW1 has filed an affidavit in lieu
of his examination in chief and he was partly cross-
examined, subsequently defendant did not secure the
DW1 for further cross examination on the ground that he
left the job and therefore evidence of DW1 may be
discorded. But my predecessor in office passed an order
on I.A.No.10 filed by the defendant on 30.10.2017 that
the evidence of DW1 cannot be discarded and defendant
may examine some other witnesses. The said order is
challenged neither by plaintiff nor by defendant. Now
main point that arise for my consideration is whether the
evidence of DW1 can be looked into or cannot be looked
into in the eye of law. In this aspect the learned senior
41
OS.No.2101/2012
counsel for the plaintiff has vehemently argued that DW1
not appeared before court after partly cross examined.
Even though defendant got marked Ex.D1 to D35 through
DW1, subsequently DW1 not appeared before court and
even after examination of DW2 & 3 also defendant has not
confronted the Ex.D1 to D35 and those are already
marked through DW1 and therefore the documents
produced by at Ex.D1 to D35 cannot be looked into as
the defendant has not given an opportunity to cross
examine DW1 in respect of those documents etc.
32. On the other hand, defendant's counsel has
vehemently argued that though the court has rejected the
IA.No.19, but there is no any speaking order that the
evidence of DW1 cannot be looked into etc., or there is no
speaking order with regard to discard the evidence of
DW1. In the absence of the speaking order about
discording the evidence of DW1, whether the entire
evidence of DW1 is to be considered or not. In this aspect
the learned counsel for the plaintiff had relied upon
number of decisions reported in ( 1999) 3 SCC 573
(Vidhyadhar Vs. Manikrao & Another para 17), 2010 SCC
Online Mad 5997 (Rajendran Vs. A.Saminathan para 8), 2010
SCC Online Cal.2300 (Biswanath Paul and others Vs. Laxman
Chandra Roy)para 10,11 & 27 and lastly he has relied on
the decision reported in 2020 SCC Online Mad.9030 -
42
OS.No.2101/2012
(G.Balaji & Another Vs. Saravanasamy) para 16 & 17. When I
gone through the said decisions in detail the facts of the
said decisions and the present facts of the case are
entirely different. Because in the present case on hand,
after partly cross examined DW1, due to DW1 left the
company of the defendant and thereafter the defendant
company has examined DW2 & 3 and this court has not
passed any order regarding the evidence of DW1 is
discorded etc. It is true in the decision reported in (1999)
3 SCC 573 (Vidhyadhar Vs. Manikrao & Another) the Hon'ble
Apex Court observed that w here a party to the suit does not
appear in the witness box and states his own case on oath
and does not offer himself to be cross examined by the other
side, a presumption would arise that the case set up by him is
not correct and it would give rise to an adverse inference
against him u/s.114 of the Evidence Act. Whereas in the
present case on hand also though DW1 has not entered
the witness box, but defendant has examined DW2 & 3.
Hence, merely DW1 has not appeared before court for
completing the cross examination, the documents
produced by the defendant company through DW1,
cannot be said to that those documents not admissible in
evidence etc., because plaintiff counsel referred those
documents while cross examination of Dw2 & 3 hence at
the most as per the observations of the Hon'ble Apex
Court an adverse inference can be drawn against the
43
OS.No.2101/2012
defendants in respect of evidence of DW1 is concerned.
But cannot be said that the documents Ex.D2 to 35
cannot be looked into. Hence, plaintiff cannot take
shelter under the above decisions. Even though there is
no provision to eschew the evidence of defendant in the
above case not tested by cross examination on account of
his non-appearance,does not even have the probative
value, for, the incompleteness is attributable to the
defendant himself. Hence, for a limited purpose the
evidence of DW1 can be looked into only relating to the
document is concerned as those documents are subjected
to cross examination by plaintiff counsel through DW2 &
3.
33. When the plaintiff has produced the registration
of trade mark certificates with regard to McDowell No.1
Platinum. Further plaintiff is having a registration
certificate of the word PLATINUM and defendant has also
admitted that plaintiff is having registered trademark
certificate as per Ex.P2 & 3 and DW2 has also admitted
the same and hence, there is no bar to hold at this stage
that plaintiff is the registered owner of the trademark
PLATINUM as well as label/device McDowell No.1
Platinum till deciding the validity of the trademark of the
plaintiff by the concern appellate authority(IPAB) in view
44
OS.No.2101/2012
of the application filed by the defendant. Moreover, there
is a specific condition imposed in Ex.P3 while issuing
registration of the trademark that 'shall be given no right
to the exclusive use of the word & quot PLATINUM and
quot'. In the result I answer Addl.Issue no.1
dtd.26.2.2015 and Addl.Issue framed on 18.10.2021
are in the affirmative.
34. Issue No.1 and Addl.Issue No.2 framed on
22.1.2015 : Since these issues are interlinked with each
other, they are taken up together for consideration to
avoid repetition of facts.
35. Now the question arise before court is whether
the defendant has infringed the plaintiff's trademark
'McDowell No.1 Platinum' and another trademark
'Platinum' and whether the said word Platinum becomes a
common and non-distinctive in the liquor industry and
not entitled for protection is to be looked into. Admittedly
as per Sec.29(i) of Trademarks Act reads as follows:
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
45
OS.No.2101/2012
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--
(a) its identity with the registered trade mark and
the similarity of the goods or services covered by
such registered trade mark; or
(b) its similarity to the registered trade mark and
the identity or similarity of the goods or services
covered by such registered trade mark; or
(c) its identity with the registered trade mark and
the identity of the goods or services covered by
such registered trade mark, is likely to cause
confusion on the part of the public, or which is
likely to have an association with the registered
trade mark.
(3) In any case falling under clause (c) of sub-
section (2), the court shall presume that it is
likely to cause confusion on the part of the public.
(4) 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--
(a) is identical with or similar to the registered
trade mark; and
(b) is used in relation to goods or services which
are not similar to those for which the trade mark
is registered; and
(c) the registered trade mark has a reputation in
India and the use of the mark without due cause
takes unfair advantage of or is detrimental to, the
distinctive character or repute of the registered
trade mark.
(5) A registered trade mark is infringed by a
person if he uses such registered trade mark, as
his trade name or part of his trade name, or name
of his business concern or part of the name, of his
business concern dealing in goods or services in
respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses
a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on
46
OS.No.2101/2012
the market, or stocks them for those purposes
under the registered trade mark, or offers or
supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business
papers or in advertising.
(7) A registered trade mark is infringed by a
person who applies such registered trade mark to
a material intended to be used for labelling or
packaging goods, as a business paper, or for
advertising goods or services, provided such
person, when he applied the mark, knew or had
reason to believe that the application of the mark
was not duly authorised by the proprietor or a
licensee.
(8) A registered trade mark is infringed by any
advertising of that trade mark if such advertising
--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
Section 29(1) in The Trade Marks Act, 1999 (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 .
In view of the specific claim and allegations of the plaintiff that plaintiff is the registered owner of the 47 OS.No.2101/2012 trademark Mc.Dowell No.1 Platinum, and defendant is also manufacturing and marketing IMFL, including whisky, vodka, gin, run and brandy, but defendant is selling the products under the brand name Party Special Platinum . But the said product of the defendant is extremely similar on all the key visual aspects of the plaintiff's product having been copied by the defendant and therefore defendant has committed infringement under Sec.29(1) r/w Sec.2(h) of Trademarks Act .
36. It is true in order to claim right of infringement against the defendant plaintiff has to prove the ingredients under Sec.29(1) of Trademarks Act those are the plaintiff mark is to be registered, defendant is not a registered proprietor or a person using by way of permitted use, defendant is using the offending mark in the course of trade, and the defendant mark is identical with or deceptively similar to the plaintiff's mark, the defendant's mark is used in relation to goods or services in respect of which plaintiff's mark is registered and defendant mark is used in such a manner as to render the use of the mark likely to be taken as a trademark. If so, what is the specific oral and documentary evidence of the plaintiff to prove their contention is to be looked in to. According to plaintiff as per Ex.P9 photographs speaks 48 OS.No.2101/2012 that plaintiff has made test purchase of defendant product Party Special Platinum from English Wine Shop in Manimajra, Chandigarh on 16.10.2011 and payment receipt is also produced to show that defendant is selling its products under the name Party Special Platinum. Further to know whether the product of the plaintiff and defendant are similar or likely to cause deception in the mind of the customers. When I gone through the photographs of both the products of plaintiff and defendant as discussed supra are clearly goes to show that plaintiff label is rectangular in shape, curving outwards at the top and the defendant is also similar. The colour scheme of the label of the plaintiff is predominantly black with gold and red accents and the defendant product is also similar. Further the lettering on the label , base and body of the bottle are similar. The neck of the bottle of the bottle is proportionate to the size of the bottle, but the neck of the bottle of defendant is slightly elongated. The volume of the bottle and the outer carton features of both plaintiff and defendant product are similar. The lettering on the outer carton and shape of the carton of both products are seems to be similar.
37. So when I gone through the said fact, pleaded by the plaintiff what is the evidence of defendant's witness 49 OS.No.2101/2012 is to be looked into. In this aspect DW3 has categorically admitted in his cross examination recorded on 29.9.2021 which reads as follows:
It is true to suggest that I have no personal knowledge of marketing and branding of defendants products including the trademark.
So DW3 has no knowledge what is the defendants product including the trademark. He has also admitted that he was not aware about Party Special Platinum trademark application filed by the defendant. But Ex.D19 & 20 applications are filed by the defendant and defendant has already obtained registration of trademark Party Special. Further he has categorically admitted at page 5 in his cross examination reads as follows:
I t is true to suggest that only difference of defendant's trademark Party Special and the trademark sought to be registered Party Special Platinum the difference is only word 'Platinum'.
38. He has further deposed that he do not know whether the defendant has withdrawn its application for registration of trademark "Party Special Platinum". So as per oral testimony of DW3 except the words Party Special rest of the things are seems to be similar to that of the plaintiff's product. Further he has deposed that he do not know whether defendant is taking any steps to prosecute the rectification application before the IPAB. He do not know the rectification application is pending before the 50 OS.No.2101/2012 IPAB or not.
39. Further DW3 has deposed that he do not know whether the defendant started to sell the Party Special Platinum only to capture the market of plaintiff customers. Even DW2 also deposed that he has no personal knowledge and but he is giving evidence only on the basis of the documents. Where as in the evidence of PW1 he has specifically stated that what ever products of the plaintiff and defendant ie., similar products under the brand name Party Special Platinum and selling the products without registration and to capture the market of the plaintiff. It is true the defendant's counsel has vehemently argued that what ever design, getup and colour combination are entirely different and there is no similarity with the products of plaintiff and defendant. In this aspect even PW1 has deposed that the products of the plaintiff Platinum was launched may be in the year 2010 and also admitted that as per Ex.P3 registration certificate McDowell No.1 Platinum which is used more than 100 years.
40. The main grievance of the plaintiff as per plaint prayer (b) restraining the defendant from in any manner using or infringing upon the plaintiff's trade name / mark / label/ device "McDowell No.1 Platinum" whisky which 51 OS.No.2101/2012 is deceptively similar to that of plaintiff's trade mark label registered vide registration No.1928614 dated 1.3.2010. But no where plaintiff has prayed to restrain the defendant from misusing or infringing upon the plaintiff's trademark which is deceptively similar to that of the PARTY SPECIAL PLATINUM. That means plaintiff is not restraining the defendant from using PARTY SPECIAL PLATINUM or PARTY SPECIAL PLATINUM LUXURY. It is the contention of the plaintiff that defendant should not use similar trademark of the plaintiff ie., McDowell's No.1 Platinum . In this aspect he has cited the decision reported in 2006 3 LW 350 (Devi Pesticides Pvt. Ltd. Vs. Shiv Agro Chemicals Industries) , wherein it is held as follows:
Trademark- plaintiffs, manufacturers of fertilizers and flowering stimulants in business since 1985 started manufacture and trade under the trademark BOOM PLUS since 1987 and the said trademark has also been registered- Suit was filed for permanent injunction restraining the defendant from infringing the plaintiff's registered trademark BOOM PLUS by use of the trademark SUPER BOOM or any other mark similar to plaintiff's - Held: Court is satisfied that the applicant has made out that it is clear case of infringement of their trademark BOOM PLUS by the respondent by using their trademark SUPER BOOM - Respondent has committed an act of passing off their goods as that of applicant by using their trademark SUPER BOOM, which is deceptively similar and identical to the plaintiff's trademark BOOM PLUS - By using phonetically similar mark and making the unwary consumers to believe that the product of the respondent 52 OS.No.2101/2012 originates from that of the applicant, thus committed an act of passing off infringement of trademark.
Further in the decision reported in ILR (2007) II DEL. 1065 (Cadbury India Ltd. Vs. Neeraj Food Products) , wherein it is held as follows:
Important issue involved : In the case of passing off, the real test is whether the consuming public would be confused or misled. No parameter or objective standards can be laid down to determine as to what would constitute deception. The resemblance may be phonetic or visual.
41. Regarding the same principles of law the counsel for the plaintiff has relied upon another decision reported in 1999 SCC Online Del. 27 (Automatic Electric Ltd. Vs. R.K.Dhawan and Another) . When I gone through above decisions in detail though the facts of the said decisions and present case on hand are different, but the principles laid down in the said decision are applicable to the case of the plaintiff with regard to the plaint prayer para 2 regarding infringement of the trademark of the plaintiff McDowell's No.1 Platinum.
42. It is true in the cross examination of PW1 at para 12 page 14 he has admitted that " Party Special is predominantly appears on the defendant's bottle. It is true the neck of the defendant's bottle is longer than the bottle of the plaintiff". The letters on their label are in 53 OS.No.2101/2012 white colour with black background and the characters on the label of the bottle of defendant with black background. Except these descriptions between the products of plaintiff and defendant with regard to the McDowell's No.1 Platinum but rest of the description of the products of plaintiff and defendant are similar to the product of the plaintiff as discussed supra.
43. It is true the defendant has taken specific contention that the word PLATINUM become common and non-distinctive in the liquor industry and not entitled for protection. Whereas the plaintiff has taken contention that the word PLATINUM is not a common word, because plaintiff has registered trademark under the name PLATINUM and therefore the word PLATINUM is distinctive in the liquor industry and he is entitled for protection. In this aspect plaintiff counsel has cited number of decisions reported in 2011(4) CTC 397 ( Ashok Leyland Ltd. Vs. Blue Hill Logistics Pvt. Ltd., 1999 PTC (19) 81
- Automatic Electric Ltd. Vs. R.K.Dhawan and another and 2010 SCC Online Del.114- Ozone Spa Pvt. Ltd. Vs. M/s. Ozone Club , by contending that defendant do not entitled to raise defense as to the validity of the trademark on the ground that the mark is a generic word, when very same defendant has applied for registration of the word which is claimed to be generic. But in this case PW1 himself 54 OS.No.2101/2012 has admitted in his cross examination at page 13 at para 10 which reads as follows:
It is true our trademark McDowell No.1 Platinum and Platinum are in public domain. It is true the additional affidavit filed by way of examination in chief is prepared on my instructions. The contents of para 4 of additional affidavit are true and correct. I am a Law Graduate. I know the meaning of word Public Domain.
Whereas in his chief examination at para 4 he has admitted as follows:
Our company name, frame and trademark are in public domain. Ours was the first company in the liquor industry in India, to use the exclusive word Platinum which is duly protected under the Indian Trademark Act 1999.
Further he has deposed that 'It is true disclaimer is the restriction of the exclusivity granted by the trademark registry .' Further it is an undisputed fact that both the trademark registration which plaintiff relied upon has been challenged by the defendant before the IPAB, Chennai. Further he has deposed in his cross examination recorded on 26.10.2015 in para 8 reads as under:
Witness voluntarily says that Johnny Walker is our principal. May be Gold and Platinum labels are used to denote the quality and grade of the product.
44. So in view of the specific admission of PW1 once it is crystal clear the word PLATINUM label used to 55 OS.No.2101/2012 denote the quality and grade of the product. When the word Platinum is being used to denote the quality and grade of the product, whether plaintiff can claim to restraining the defendant from using, selling the infringing upon the plaintiff registered trademark Platinum, merely it has been registered is a material point for consideration.
45. Whereas in the Ex.P3 trademark certificate there is a condition with regard to the disclaimer by imposing condition reads as follows:
"T he registration of the trademark shall give no right to the exclusive use of the word " Platinum"."
Such being the condition and limitations imposed by the trademark registry, how the plaintiff can seek an order of injunction against the defendant with regard to the trademark Platinum merely he got registered the said word trademark itself not explained. Moreover, defendant has challenged the so called trademark certificate of the plaintiff as per Ex.D3 to 6 which are still pending before the IPAB.
In this aspect the defendant counsel has referred the decision reported in 2016 SCC Online Bom 4789(Garware Polyester Ltd. Vs. 3M Company and another) wherein 56 OS.No.2101/2012 lordships have observed as follows:
Intellectual property- Trademarks Act,1999 Ss.29,30(2)(a) and 35 - infringement of trademark/ product logo - plaintiff alleged defendants using the mark SUNCONTROL adopted and registered by plaintiff in relation to Polyester films and plastic films - trademark used by defendants is 3M or SCOTCHTINT and Sun Control is only used descriptively to denote kind, quality and intended purpose of goods- and expression is publici juris- expression used by defendants not calculated to deceive - plaintiff uses description as part of its mark - disputed expression is understood and used not only generally but by plaintiff itself as a description of what product is and what it does - notice of motion dismissed.
Relating same principle of law he has cited another decision reported in 2010) 2 SCC 142 (Skyline Education Institute (India) Pvt.Ltd. Vs. S.L.Vaswani & Ors.), wherein their lordships observed as follows:
Trade and Merchandise Act, 1958,Ss2(1)(d) &12 - Trade name MICROTEL and MICRONIX used in respect of electrical and electronic apparatus- Micro-chip technology being the base of many of the products- Hence no one can claim monopoly over the use of the word micro- There being no phonetic or visual resemblance between the words 'tel' and 'nix' users of such products not likely to be misguided or confused- Visual effect of logos M and IM and cartons which reproduces both the trade names and logoes not the same on the mind of the buyer- Interim injunction issued by High Court set aside.
Relating to the same principles of law he has relied on another decision reported in 2009(41) PTC 336(Del.)(DB) (Cadila Healthcare Vs. Gujarat Coop Milk Fideration) wherein 57 OS.No.2101/2012 their lordship have observed as follows:
Trademarks Act,1999 Sec.9,30 &35 Trademark Sugar Free - product containing 'Aspartame' an artificial sweetener as a low calorie table-to sweetener,- Use of the term Sugar Free by the respondent is not in the trademark sense but as a common descriptive adjective- Trademark Sugar Free not a coined word; at best it is a combination of two popular English words- Merely because the attributes of Sugar Free can be described by other phrases cannot detract from the common usage of the phrase 'sugar free' as denoting products which do not contain sugar- Any trader which adopts such mark in the market place, does so with the clear knowledge of the possibility of other traders also using the said mark- mark which serves to designate the quality of the goods would be an absolute ground for refusal of registration- Word Sugar Free is not inherently distinctive and is clearly descriptive in nature- Grievance adequately redressed by the restriction on the size of font by interim order held to be justified not warranting any interference.
Further relating to the same principles the learned counsel for the defendant has relied on the Judgment of Madras High Court in OA.No.1113/2018 between Matrimony.Com Ltd. Vs. Love Vivah & Ors ., and decisions reported in 2007(3) Bom.L.R.1819- Asian Paints Vs. Home Solutions, 2010(42) PTC 660 (DEL) - Rich Products Corporation & Anr. Vs. Indo Nippon Food Ltd., and 2010(44) PTC 736 (Del) (DB) - Marico Ltd. Vs. Agrotech Foods Ltd.
Relating to same principle of law he has relied on the decisions reported in 2021(85) PTC 490(Bom)(Kamruddin 58 OS.No.2101/2012 Imehsaniya Vs. Sarah International, (1955) 2 SCR 252( Registrar of Trademarks Vs. Ashok Chandra Rakhit Ltd., 2012 (49) PTC 231(Bom) - Skol Breweries Vs.Som Breweries, 2016 SCC Online Bom 3574 (Ultratec CementLtd. Vs. Dalmia Cement Bharat Ltd, 2016(6) Mh.L.J. 249 (Datramatics Global Services Ltd. Vs. Royal Datamatics Pvt. Ltd., and (1984) 2 SCC 656 - AC.Jose Vs. Sivan Pillai and Ors.
46. When I gone through the said decisions in detail, though the facts of the said decisions and present case on hand are entirely different, but the principles laid down in the said decisions are helpful to the case of the defendant relating to the relief sought in prayer (a). So in view of the said decisions if the word is a generic one it cannot be claimed as exclusive right for seeking the relief of injunction. Whereas in the present case on hand also though the plaintiff has proved that they are the registered owner of the trademark McDowell No.1 Platinum and Platinum, but as admitted by PW1 the word Platinum denotes quality and grade of the product.
When the said Platinum denotes grade or quality of the product, he cannot claim exclusive right over the said word Platinum. Moreover in the evidence of DW2 at para 5 in page 7 has deposed the word Platinum is common to trade to denote the gradification of the product. Even the trademark registry also imposed condition that plaintiff cannot claim exclusive right over the word Platinum as 59 OS.No.2101/2012 per Ex.P3. Thus the plaintiff cannot say that the defendant has infringed the plaintiff trademark word 'Platinum' registered on 16.5.1997. Because the word Platinum become common and not distinctive in the liquor industry but it denotes quality and grade as discussed supra.
47. It is true in the cross examination of PW1 recorded on 10.7.2015 he has admitted that " It is true that the statement made in the plaint at para 8 that we have been using the word Platinum since 1997 is incorrect." He has also admitted that plaintiff has not been using the word 'Platinum' by the plaintiff company after 7.10.2006. ie., during the February and March 2010. That itself shows that what ever contents of the plaintiff in the plaint, is far away from truth with regard to the usage of word 'Platinum'. Further PW1 has admitted that disclaimer of exclusivity granted by the trademark registry and also admitted that to his knowledge their company has not filed any other infringement of the trademark 'Platinum'. Admittedly defendant company has obtained the trademark registration on 'Party Special Platinum Luxury in the year 2019 ie., after filing of the suit, same is not challenged by the plaintiff and not disputed the same.
60OS.No.2101/2012
48. It is true the admission of the party during the course of cross examination is judicial admission by themselves can be made foundation of right of the parties. Whereas in the present case on hand also when PW1 himself has admitted that the word 'Platinum' denotes grade and quality of the product, it is a best piece of evidence to use against the plaintiff as observed in the decision reported in (2012) 8 SCC 516-Ahmed Saheb (Dead) by Lrs., & Ors. Vs. Sayed Ismail and (2005) 11 SCC Online 315- Sangramsingh P.Gaekwad & Ors., Vs. Shantadevi.P. Gaekwad (Dead) through Lrs., & Ors .
49. It is true the plaintiff counsel has also relied on the decision reported in 2007 SCC Online Del.868 (Pfizer Products Inc.Vs. Rajesh Chopra and others) wherein their lordship have observed that "t hough the suit is prior registration of trademark however registration which relates to the year 1992 to 1996 application for injunction cannot be defeated only on the ground that defendants have sought rectification". He has also referred another decision reported in 2019 (80) PTC 124 (Bom) - Royal Dryfruit Range Vs. Royal Suvidha wherein their lordships observed that "if according to defendant, the word ROYAL is generic and plaintiff cannot claim exclusivity to the word ROYAL certainly the same principle would apply to defendant and defendant cannot claim to be the 61 OS.No.2101/2012 proprietor of a trademark used or proposed to be used by him where the word ROYAL is prominent." Whereas in the present case on hand, plaintiff is seeking the relief of injunction against the defendant restraining him from using exclusive word 'Platinum' and also they have sought for injunction against the defendant restraining them from using or infringing upon the plaintiff trademark "McDowell's No.1 Platinum". Admittedly, defendant has also already obtained the trademark registration for the word Party Special Platinum Luxury. But the defendant has not claimed the trademark exclusive 'Platinum'. When so called word 'Platinum' denotes the quality and grade of the product, question of defendant infringing the rights of the plaintiff trademark 'Platinum' cannot be accepted in the eye of law in any manner. But if the defendant has used to the trademark of the plaintiff McDowell's No.1 Platinum it amounts to infringement of trademark right of the plaintiff in view of the above reasons. Therefore I am of the considered opinion that what ever decisions cited by the defendant's counsel are helpful to the case of the defendant with regard to Addl.Issue No.2 but not applicable to the Issue No.1. In addition to that the principles laid down in the said decisions are clearly says that if the word is generic one cannot claim exclusive right over the word as a 62 OS.No.2101/2012 trademark. Admittedly the validity of the trademarks of plaintiff is under challenge before IPAB and same is pending. Unless and until decided, the said issue by the concerned appellate authority as observed by Hon'ble High Court that civil court has no jurisdiction to decide the validity of the trademark but it is to be decided by Intellectual Property Appellate Board and only civil court can decide whether the defendant has infringed the right of plaintiff's trademark or not. Hence viewed from any angle I am of the considered opinion that plaintiff has proved that defendant has infringed its trademark McDowell's No.1 Platinum but, plaintiff has failed to prove that the word 'Platinum' is not common or it is distinctive. On the contrary the defendant has proved that the word 'Platinum' is a common and it is non-distinctive in the liquor industry and defendant has not infringed the trademark Platinum as alleged by the plaintiff. In the result, I answer Issue No.1 in the affirmative and Addl.Issue No.2 in the negative
50. Issue No.2: According to the defendant suit of the plaintiff is barred by principles of delay and latches. In order to prove that suit of the plaintiff is delayed and latches, it is not properly explained by the defendant. Because immediately after coming to know that defendant 63 OS.No.2101/2012 was selling the products, on 16.10.2011 the plaintiff has made test purchase as per Ex.P9 and immediately has filed the present suit on 24.3.2012 for permanent injunction. Whereas in the evidence of PW1 also he has reiterated the plaint averments and deposed that there is no delay and latches. Even during the course of cross examination of PW1 also defendant's counsel has not taken any admission from the mouth of PW1 that there is delay and latches to file this suit. On the other hand, in the evidence of DW2 he has admitted that they started selling the product 'Party Special Platinum' from 2011 even without obtaining registration. As of now rectification proceedings filed by the defendant before IPAB are still pending. The learned counsel for the defendant has relied on the decision reported in 2016(68) PTC 225(Bom) (People Interactive(India) Pvt.Ltd. Vs.Vivek Pahwa & Others. When I gone through the said decision in detail the facts of the said decision and present case on hand are entirely different in view of the above reasons. Hence what ever the decisions cited by the defendant's counsel with regard to the delay and latches not at all helpful to the case of the defendant. Because as per the decision cited by the plaintiff's counsel reported in 2014 SCC Online Del.564 - S.Oliver Bernd Freier GMBH & Co. Vs.M/s. Rasul Exports wherein their lordships have observed as follows:
64OS.No.2101/2012 Intellectual property- Trademarks Act,1999
-Ss28 & 29- Delay in bringing an action against infringement before court- Effect of - Held, delay that happened on the part of the plaintiff for bringing an action for infringement of trademark, the same is not fatal for the purpose of grant of injunction order.
51. When the Hon'ble Apex Court has observed that the delay that happened on the part of the plaintiff for bringing an action for infringement of trademark the same is not fatal for the purpose of grant of an injunction order question of the plaintiff is not entitled to the relief of permanent injunction with regard to the plaint prayer (b) does not arise. Whereas in the present case on hand also plaintiff has filed this suit immediately after coming to know that defendant is selling the products without obtaining registration in the brand name of 'Party Special Platinum'. Hence considering the oral and documentary evidence, I am of the considered opinion that the question that suit is hit by principles of delay and latches does not arise in view of the observations of the Hon'ble Apex Court. Hence I answer Issue No.2 in the negative.
52. Issue No.3: In view of findings on the above issues that plaintiff has proved that it is the registered owner of the trademark 'McDowell's No.1 Platinum' and also proved that it is the owner of the trademark 65 OS.No.2101/2012 'Platinum' as per trademark certificate. But failed to prove that the word Platinum is not a common or distinctive in liquor industry. Hence he is not entitled for protection by way of permanent injunction. Because in view of the findings on above issue, principles laid down in the above decisions of Hon'ble High Court and Hon'ble Supreme Court as discussed supra, the word 'Platinum' denotes for the quality and grade of the product of liquor and in view of the conditional registration certificate issued by trademark registry as per Ex.P3, plaintiff has no right to the exclusive use of the word or quote 'PLATINUM'. Under such circumstances, question of defendant has infringed the trademark of the plaintiff 'PLATINUM' as alleged by the plaintiff in this case does not arise. But considering the claim of the plaintiff with regard to the registered owner of the trademark of 'McDowell's No.1 Platinum', the plaintiff has proved that the defendant has infringed the right of the plaintiff trademark 'McDowell No.1 Platinum' as discussed supra. Moreover plaintiff is not seeking permanent injunction against the defendant restraining them from using 'Party Special' or 'Party Special Platinum Luxury'. But the relief of the plaintiff is limited to restraining the defendant from using and infringing upon the plaintiff's trade name/mark /label/ device 'McDowell No.1 Platinum' whisky which 66 OS.No.2101/2012 is deceptively similar to that of the plaintiff's trademark label. Suppose if the IPAB has decided on the application filed by the defendant challenging the validity of plaintiff trademark are invalid trademark/ trade name question of restraining the defendant by way of permanent injunction does not arise but till deciding by the concerned appellate authority with regard to the validity of the trademark / name / label/ device mark of plaintiff , it is very much necessary to protect the name/ mark / label/ device mark of plaintiff relating to McDowell No.1 Platinum by way of permanent injunction as the plaintiff has sought the relief of infringement of the trademark only but not sought the relief of passing off. Hence, considering the oral and documentary evidences and observations of Hon'ble Supreme Court and Hon'ble High Court decisions as discussed supra, I am of the considered opinion that plaintiff is entitled for the relief of permanent injunction as prayed in prayer (b) of the plaint, but not in the plaint prayer (a). In the result, I answer Issue No.3 in Party Affirmative.
53. Issue No.4: For the foregoing reasons and discussion and considering the facts and circumstances of the case and considering the findings on the above issues, the suit of the plaintiff is deserved to be decreed 67 OS.No.2101/2012 partly without costs. Under the above circumstances, accordingly I proceed to pass the following:
ORD ER Suit of the plaintiff is hereby decreed in part.
The defendant, their agents, servants and assigns and each of them are hereby restrained by an order of permanent injunction from infringing plaintiff's trade name / mark / label/ device "McDowell No.1 Platinum" whisky which is deceptively similar to that of plaintiff's trade mark label registered vide registration No.1928614 dated 1.3.2010.
No order as to costs.
Draw decree accordingly.
[Dictated to the Judgment Writer, computerised, and print out taken by him, corrected and then pronounced by me, this day the 8th March 2022.
(NAGARAJAPPA. A.K.) XVIII ADDL. CITY CIVIL AND SESSIONS JUDGE, BENGALURU A N N EXU RE
1. No.of witnesses examined on behalf of plaintiff/s :
PW1 : S.Udaya Kumar
68
OS.No.2101/2012
2. No.of documents marked on behalf of plaintiff/s :
Ex.P1 : Authorisation letter
Ex.P2 : Trademark registration certificate
Ex.P3 : Trademark registration certificate for Label
Ex.P4 : Details of sales turn over, local advertisements
& sales promotion
Ex.P5 : Photographs of plaintiff production
Ex.P6 : Advertisement of plaintiff
Ex.P7 : Photograph of defendant's product
Ex.P8 : Photograph of plaintiff and defendant
Ex.P9 : Cash purchase receipt of defendant's product
Ex.P10 : CD
Ex.P11 : Certificate of Incorporation, consequent upon
change of name of plaintiff company
Ex.P12 : Payment receipt
Ex.P13 : Copy of Form No.18
Ex.P14 : Annual Report book
Ex.P15 : Form GNL -2
Ex.P16 : Plaintiff publishing on website dtd.13.1.2015
Ex.P17 : Board of directors of plaintiff and their addresses
3. No. of witnesses examined on behalf of
defendant :
DW1 : Nitin Joshi
DW2 : Amit Kumar
DW3 : Aman K Jain
4. No. of documents marked on behalf of defendant :
Ex.D1,1(a): Affidavit of Mahesh Nedungadi & Signature Ex.D2 : Copy of board resolution Ex.D3 : Copy of Form No.1 & Statement of case filed by IPAB 711052 Ex.D4 : Copy of Form No.1 & Statement of case filed before IPAB -756366 Ex.D5 : Copy of Form No.1 & Statement filed before IPAB seeking revocation of trademark No.1928614 Ex.D6 : Copy of Form No.1 & Statement filed before IPAB 69 OS.No.2101/2012 seeking revocation of trademark No.1997581 Ex.D7 : Print out of Johnnie Walker Publicity brochure Ex.D8 : Photographs of various ranges of Whiskies Produced by Johnnie Walker Ex.D9 : Photographs of various range of Tequias of Patron Ex.D10 : Print out of promotional material of the defendant product.
Ex.D11 : Copy of approval of label issued by Excise & Taxation Commissioner, Hariyana Ex.D12 : Copy of approval of Label issued by Excise Commissioner of Maharashtra Ex.D13 : Copy of approval of label issued by Excise Commissioner New Delhi Ex.D14 : Copy of invoice issued by the defendant for sale of its product.
Ex.D15 : Copy of advertisement in respect of trademark No.1928614 Ex.D16 : CD Ex.D17 : Copy of Form No.1 & Statement of case filed before IPAB seeking revocation of trademark No.700657 Ex.D18 : CC of certificate of incorporation Ex.D19 : CC of trademark application No.2123389 Ex.D20 : CC of trademark application No.213388 Ex.D21 : CC of approval & Labels by Excise & Tax Officer, Punjab Ex.D22 to 34: Photographs Ex.D35 : CD Ex.D36 : Board Resolution Ex.D37 &38: Legal use certificates Ex.D39& 40: Search report printouts along with certificate U/s.65 B of Evidence Act.
Ex.D41 : Board resolution dtd.19.10.2019 Ex.D42 & 43: Attested true copies of invoices Ex.D44 : Notarised copy of trademark registration certificates Ex.D45 : Attested true copy of bank account statement.
XVIII Addl. City Civil Judge Bangalore City.
70 OS.No.2101/2012 Judgment pronounced in the open court vide separate judgment. The operative portion of judgment reads thus:
OR D E R Suit of the plaintiff is hereby decreed in part.
The defendant, their agents, servants and assigns and each of them are hereby restrained by an order of permanent injunction from infringing plaintiff's trade name / mark / label/ device "McDowell No.1 Platinum"
whisky which is deceptively similar to that of plaintiff's trade mark label registered vide registration No.1928614 dated 1.3.2010.
No order as to costs.
Draw decree accordingly.
XVIII Addl.C.C. & S.J., Bangalore