Bangalore District Court
John Distilleries Pvt. Ltd vs Shashi Distilleries Private Limited on 4 March, 2022
1
OS.No.189/2015
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE,
AT BENGALURU CITY [CCH.NO.10]
Dated this day the 4th March 2022
PRESENT
Sri. NAGARAJAPPA A.K., B.Com., LL.M.
XVIII Addl.City Civil Judge.
O.S.No.189/2015
Plaintiff: John Distilleries Pvt. Ltd
(Formerly John Distilleries Ltd)
A company incorporated under the
provisions of the Companies Act, 1956
having its registered office at
No.110, Pantharapalya, Mysore Road,
Bangalore - 39
Reptd. By its Head-Legal Shakeel Syed.
S/o Syed Sadiq Basha,
Aged about 38 years,
[By Sri.B.R., Advocate]
/VS/
Defendant: Shashi Distilleries Private Limited,
A company incorporated under the
Provisions of the Companies Act,1956
having its registered office at No.67/1,
Hulimavu Village, Bannerghatta Road,
Bangalore - 76.
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OS.No.189/2015
Reptd by its Managing Director,
Ramamurty Jayavelu.
[Sri.J.K.Advocate]
Date of institution of 05.01.2015
suit
Nature of the suit Permanent & mandatory injunction
(Suit on pronote, suit
for declaration and
possession suit for
injunction, etc.
Date of the 21.02.2018
commencement of
recording of the
evidence.
Date on which the 04.03.2022
Judgment was
pronounced.
Year/s Month/s day/s
Total duration: 07 01 29
(NAGARAJAPPA A.K.)
XVIII Addl.City Civil Judge, Bangalore.
JU DG MEN T
The plaintiff filed this suit against the
defendant for seeking perpetual / permanent injunction
restraining the defendant, its directors, distributors,
employees, servants, agents or any person/s acting or
claiming through or under it in whatsoever capacity, from
using the Aseptic Brick Pack (commonly known as tetra
pack) packaging for its "Magic Blended Fine Whisky" as
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OS.No.189/2015
per the pictorial representation found in plaint document
No.10 which is deceptively similar to the Aseptic Brick
Pack ie., as per M.O.No.1 of the plaintiff.
And also sought for an order of mandatory
injunction to the defendant to withdraw its application to
the Excise Commissioner, Bangalore seeking approval of
Aseptic Brick Pack for its "Magic Blended Fine Whisky"
as per the pictorial representation found in plaint
document No.10 and for costs.
2. The nutshell case of the plaintiff are as follows:
The plaintiff company is engaged in the business of
manufacturing, selling, marketing, trading and exporting
inter alia of Indian Made Foreign Liquor (IMFL) under
various names and one of the flagship brands of the
plaintiff company is "Original Choice" for its liquor
products. They market and sells its Original Choice
product in a specially designed Aseptic Brick Pack
(Commonly known as tetra pack) packaging which is
distinctive by way of its design, patterns, colour
combinations, imagery, iconograpy, layout, fonts,
writings, prints, etc. as propounded, conceived and
launched by the plaintiff in order to maintain and build
on the exclusivity of its product. Plaintiff's packaging
are the outer red border, the inner gold border, the sun-
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OS.No.189/2015
rise icon with "Johns" imprinted, the writing/ font of
"Original Choice", the placement of glass of whisky below
the name and the barrel of whisky image, the image of
the registered design bottle and label. The entire get-up
or trade dress of the plaintiff's Aseptic Brick Pack sets
apart the plaintiff's Original Choice Deluxe Whisky
product in the market. The plaintiff manufactures
whisky, run, gin and grape brandy amongst other types
of liquor under its brand 'Original Choice'. Plaintiff is
carrying on the business activities since 1995 within
Karnataka and other parts of the country continuously
without any interruption. Plaintiff has invested huge
amounts of money towards research and development
and brand promotion of its trade name/ trademark. The
trademark Original Choice with its distinctive
packaging/trade dress have become synonymous with
the plaintiff. Since 2008-09 till July 2014 they have
spent about Rs.38.68 crores towards brand promotion
expenditure. The products of plaintiff under the brand
'ORIGINAL CHOICE' were being sold in 180ML generic
bottles which were common to trade. The plaintiff
conceived the idea of totally changing the design and
shape of the bottles in which Original Choice brand
products were hitherto being manufactured and sold. In
2008 plaintiff conceived the designed and adopted a new
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OS.No.189/2015
bottle, designed with a distinct shape, features and
contours, which is totally different from the bottles that
were being used by the plaintiff earlier .
3. It is further pleaded by the plaintiff that
during the year 2012 the plaintiff conceived the idea of
production and sale of its Original Choice brand products
in 180ML Aseptic Brick Pack (Commonly known as tetra
pack) packaging with suitable layouts, marks and
designs to identify its products. Plaintiff has also
registered owner of the trademark / Label TM No.722161
for Original Choice logo/brand with its distinctive
features registered on 4.4.1996 and renewed upto 04-04-
2016. The plaintiff is also the registered owner of the
copyright of the artistic work associated with the brand
name ORIGINAL CHOICE as per registration No.A-
88477/2010 issued on 22.7.2010. The plaintiff has also
obtained registration of the new bottle with distinctive
design, shape, pattern surface etc., as Design No.214542
from 5.2.2008 from the Controller General of Patents,
Designs and Trademarks with novelty of the front view,
back view, top view and bottom view, under the
provisions of Designs Act 2000. Further in order to
provide a more satisfying buying and consumption
experience for its customers they have also applied for
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OS.No.189/2015
registration of 3 new label to suit its packaging vide
lapplication no. 1742052 on 10-10-2008 in class 33
which is pending for registration. Since August 2012
they are using the new Aseptic Brick Pack packaging for
its products under the brand /trademark ORIGINAL
CHOICE after obtaining suitable approval from the
Excise Commissioner, Bangalore dt.18-07-2012. Further
plaintiff has pleaded with table about the cumulative
sales figures in number of cases (each case contains 9
litres of liquor) of plaintiff company's products under the
said trade mark year wise across the states in India till
july 2014 at plaint paragraphs at 12. Since the
introduction of the Aseptic Brick Pack packaging for
Original Choice products since August 2012, the sales
have consistently increased. They have also produced
their whisky product under the branch Original Choice
as per M.O.No.1. The design, prints, icon and color
combination, including the outer red border, the inner
gold border, the sun-rise icon with "Johns" imprinted the
writing/font of Original Choice, the placement of a glass
of whisky below the name and barrel of whisky image
found on the plaintiff's Aseptic Brick Pack is new and
original and conceived by the plaintiff. The plaintiff
brand /trade mark original choice has also been
identified as one of the best brands of wishky and is
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OS.No.189/2015
placed in the top 25 brands in India. Since the ban on
sale of arrack in the state of karnataka by the
governmnent of karnataka during the month of July
2007 has contributed hugely increases the business to
the IMFL manufacturers and sale etc.,
4. It is further pleaded by the plaintiff that the
defendant engaged in the similar business activities that
of the plaintiff, markets its products under the brands
Royal Cup Gold Whisky, Magic Blended Fine Whisky,
Magic XXX Rum, LBW Grape Brandy etc. The
defendant has now approached the Excise Commissioner
for approval of a Aseptic Brick Pack packaging for its
product 'Magic Blended Fine Whisky' . The defendant's
Aseptic Brick Pack is completely similar to the packing
design, pattern, layouts, colour combinations,
iconography, images etc. The design of the defendants
has a red outer border, gold inner border and it has an
icon with its name barely being seen which apes the
sun-rise icon on the plaintiff's packaging. These features
of the defendant's packaging make the impugned
package obviously and deceptively similar to that of the
plaintiff. The defendant's brand Magic has no significant
market presence or any sales in Karnataka or anywhere
else in India. The defendant time to time attempted to
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OS.No.189/2015
ride on the reputation of the plaintiff's brand /
trademark Original Choice and make unlawful gain. The
defendant's Aseptic Brick Pack to be adopted with such
design, pattern, will cause confusion in the minds of
public/ customers between the products of plaintiff and
defendant. The plaintiff got knowledge of this intention of
the defendant to seek approval from the excise
commissioner of the impugned vide a notice dt.19-12-
2014 from the excise commissioner informing the
plaintiff of the defendant's intention. Further pleaded
about the comparision of sales figures as obtained from
the records /website of the karnataka State Beverage
corporation Ltd., of plaintiff's original choice deluxe
Whisky with defendant's Magic Bleaded Fine Whisky at
plaint paragraphs 20 in details. The defendant is
unlawfully attempting to piggy -back on the reputation
and sale of the plaintiffs product under the brand /trade
mark ORIGINAL CHOICE and pass-off its goods as those
of the plaintiff etc., the plaintiff has filed OS 6660/2010
for exparte injunction restraining the defendant from
using a bottle whose design infringes the registered
bottled design of the plaintiff was passed by this court
27-09-2010 and later it was rejected and then withdraw
the said suit as not pressed on 18-07-2012. Further no
flausible reasons can be forthcoming for such dishonest
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OS.No.189/2015
adoption by the defendants. Pertinently the earlier label
of Magic of defendant which is affixed on bottle is
completely from the label/combination represented in the
Aseptic brick pack packaging now submitted for
approval. It is further pleaded that the defendants brand
of Magic Blended Fine Whisky is currently sold at an
MRP of R.40.98 for 180 ML, it falls within the sigment of
Rs.440(per case) basic price / invoice to the government
as per KSBCL price rate and therefore if the defendant is
permitted to use the Aseptic brick pack design it will
certainly adversely effect the sale and growth of the
plaintiff etc., Hence the defendant is not entitled to use
the design of the Aseptic Brick Pack. Hence the suit is
filed for the above reliefs.
5. The defendant appeared through its counsel
and filed the written statement denying the plaint
averments besides contending that the suit lacks
bonafides and ought to be dismissed. It is the contention
of the defendant that defendant is a well known
company, producing several alcoholic beverages for sale
in Karnataka and other states under the brands and
names "Royal Gold Cup Whisky, Magic Blended Fine
Whisky, Magic XXX Rum" among others since last 22
years. The defendant has been using its brand Magic
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OS.No.189/2015
Blended Fine Whisky for the last 10 years. Since 2005
when the said brand and its label was introduced, the
defendant has been selling its Magic Blended Fine
Whisky in bottle form. The distinctive label and artwork
of the defendant's brand Magic is also registered as a
trademark, and the defendant is the owner of the
trademark TM.No.1701299 Registered on 29.6.2013 with
effect from 20.6.2008 and renewed up to 20-06-2022.
The said label also protected as a trademark has been
approved every year for affixing on the defendant's
alcoholic beverages by the Excise Commissioner. The
trademark of the defendant includes the word MAGIC
and its artistic work is completely different from the trade
mark and label of the plaintiff ORIGINAL CHOICE. Even
the layout and artwork of the trademarks are completely
different. The label of the defendant has a white
background with its brand name Magic written in red
right on top in a special font and the words Blended Fine
Whisky written below with Whisky in bold red, and the
defendants crest mark in red below. The tetra pack also
uses the identical label that the defendant has been
using in its bottles for the same brand and which is a
registered trademark and there was no objection filed by
the plaintiff to the defendant's trademark application, the
only additional design element is a glass with the whisky
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OS.No.189/2015
which is very different from the glass that is depicted on
the pack of the plaintiff. Further there is no monopoly
that any person has on the use of colours being red and
white. The defendant applied to the Excise Commissioner
for label approval for the Tetra pack as per rules. Prior to
apply, defendant obtained scientific test reports for the
use of the tetra pack from the CSIR, Mysore, dt. 31-10-
2014.
6. Further defendant has taken contention that
when defendant has filed an application on 10-12-2014
to the excise commissioner for the label approval for the
said tetra pack, using its trademark the plaintiff has
raised completely frivolous objections before the Excise
Commissioner to the application, after careful
observations the Excise Commissioner on 9.3.2015 has
rejected the objections and grounds raised by the
plaintiff and approved the label of the defendant for the
year 2015-16 for the tetra pack for its brand Magic Fine
Blended Whisky. The plaintiff in order to thwart all
competition, has filed this suit, only because it does not
want the defendant to sell its Magic brand beverages in a
tetra pack, which is completely without any legal merit.
The suit was filed even before the defendant had obtained
its label approval from the Excise Commissioner or to
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OS.No.189/2015
start selling its tetra packs. The plaintiff has raised very
same grounds as sought in OS.No.6660/2010 which is
completely false, baseless and without any legal merit
and hence on 06-12-2010 rejected the application of the
plaintiff by observing that merely because the height of
the bottle of the defendant is one and same with that of
plaintiff registered design bottle it cannot be said that
defendant has infringed the design of plaintiffs bottle
and there is no registration in respect of height of the
bottle etc., though plaintiff has filed MFA No. 1824/2011
which was also dismissed vide order dated 06-02-2012
by the Hon'ble High court of karnataka.
7. The defendant has taken further contention
that the defendant is also an registered owner of the
trademark/label TM.No.1701299 with its distinctive
features registered on 20.6.2008 renewed upto 20.6.2022
and the defendant's label is not identical with or
deceptively similar to the label of the plaintiff and the
suit is without any grounds and deserves to be
dismissed. It is further pleaded by the defendant that
tetra packs have been used for beverages since decades
all over the world in India and hence by no stretch of
imagination the plaintiff is the inventor for using tetra
pack for its products. The tetra pack of the plaintiff in
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OS.No.189/2015
shape is a regular rectangular shape as most other tetra
packs in the market, and there is nothing distinctive
about its shape. The plaintiff does not have any design
or any other protection over the shape of its tetra pack.
All tetra packs for beverages are rectangular shaped.
There are many other manufacturers selling their
products in tetra packs. The defendant has its own
goodwill and reputation for its brands in the market
and its own following of customers and the plaintiff is
trying to restrain without any legal basis. Further
defendant has denied rest of the plaint averments
specifically except which are specifically admitted in toto.
On the above grounds prays to dismiss the suit.
8. On the basis of the above pleadings the
predecessor in office has framed the following issues:
(1) Whether the plaintiff proves that they are the
registered owner and copy right holder of the
Aseptic Brick pack for packaging its products as
alleged?
(2) Whether plaintiff proves that the defendant
infringed their well established copyright of
Aseptic Brick Pack for packaging its 'Magic
Blended Fine Whisky?
(3) Whether the plaintiff is entitled for the decree
of permanent & mandatory injunctions as sought
for?
(4) What order or decree?
9. The plaintiff in order to prove its case, got
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OS.No.189/2015
examined its head-legal as PW1, got marked Ex.P1 to P8
and material object M.O.No.1 and closed its side. On the
other hand, defendant examined its authorised
representative as DW1, got marked the documents as per
Ex.D1 to D12 and closed their side.
10. Heard the arguments for plaintiff and defendant.
The counsel for the plaintiff has relied on the following
decisions:
1. AIR 1972 SC 1359- Parle Products(P) Ltd. Vs. J.P.&
Co., Mysore.
2. 2003 SCC Online Del.1005 - Colgate Palmolive
Company & Another Vs. Anchor Health and Beauty
Care Pvt Ltd.
3.128(2006) DLT 649 -N.Ranga Rao & Sons Vs. Anil
Garg and others.
4. 2018 (76) PTC 309(Cal) - LA Opala R.G.Ltd. Vs.
Cello Plast & Others.
5. AIR 2019 CAL 215 - ITC Ltd. Vs. Whole Leaf
Tobacco Ventures Pvt.Ltd.
The counsel for the defendant has relied on the
following decisions:
1. 2021 SCC Online Del.1489 - Britannia Industries Ltd.
vs. ITC Ltd & Ors.
2. 1996 SCC Online Del 170- Kellogg Company Vs.
Pravin Kumar Bhadabhai.
3. 2006(32) PTC 733 (Del) - Astrazeneca UK Ltd. & Ors.
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OS.No.189/2015
Vs. Orchid Chemicals & Pharmaceuticals Ltd.
4. MANU/DE/1425/2019 - Surya Food & Agro Ltd. Vs.
Om Traders & Ors.
I have considered the rulings of both the parties and
the arguments advanced by both counsels with utmost
reverence.
11. My findings on the above issues are as under:
Issue No.1 : In the affirmative
Issue No.2 : In the negative
Issue No.3 : In the negative
Issue No.4 : As per final order,
For the following:
R EAS O N S
12. Issue No.1:- In this case it is an undisputed
fact that plaintiff is the registered company running the
business under the name and style of John Distilleries
Private Limited and also engaged in the business of
manufacturing, selling, marketing, trading and exporting
inter alia of Indian Made Foreign Liquor (IMFL) under
various names and one of the flagship brands of the
plaintiff company is "Original Choice" for its liquor
products. It is further an undisputed fact that the
plaintiff's liquor products Original Choice having
registered trademark label No.722161 registered on
4.4.1996 renewed upto 4.4.2016 as per Ex.P7. It is also
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OS.No.189/2015
an undisputed fact that the artistic work of the plaintiff
label has been registered in No.A-88477/2010 on
22.7.2010 and also obtained registration of new bottle
with the distinctive design, shape, pattern, surface etc. as
design No.214542 with effect from 5.2.2008 under the
Design Act 2000.
13. It is also further an undisputed fact that
defendant is also a registered company running under the
name and style as Shashi Distilleries Private Limited,
engaged in the business of producing several alcoholic
beverages for sale in Karnataka and other states under
the brands and names Royal Cup Gold Whisky, Magic
Blended Fine Whisky, Magic XXX Rum, LBW Grape
Brandy etc. It is also an undisputed fact that defendant
has been selling its Magic Blended Fine Whisky in bottle
form since 2005 and it is having a distinctive label and
artwork of the defendant's brand 'Magic' is also registered
as trademark and it is the owner of the trademark/label
TM.No.1701299 registered on 29.6.2013 with effect from
20.6.2008 renewed upto 20.6.2022. It is further an
undisputed fact that defendant company also obtained an
approval from the Excise Commissioner under the
Karnataka Excise(Bottling of Liquor) Rules 1987 for
affixing on the defendant's alcoholic beverages since
2005-06 marketing to brand label of he defendant. It is
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also an undisputed fact that defendant applied to the
Excise Commissioner for label approval for Tetra Pack as
per Rules and Prior to applying to the Excise
Commissioner for label approval, the defendant obtained
scientific test reports for the use of the tetra pack from
the CSIR - Central Food Technological Research Institute,
Mysore, and the test report dtd.31.10.2014 written
statement obtained by the defendant for the purpose of
applying to the Excise Commissioner on 10.12.2014 for
the label approval of the tetra pack using its trademark as
per the documents produced by the defendant. It is also
an undisputed fact that the Excise Commissioner rejected
the objection and grounds raised by the plaintiff on
19.3.2015 and approved the label of the defendant for the
year 2005-06 for the tetra pack for its product ' Magic
Blended Fine Whisky'.
14. The learned senior counsels for the plaintiff has
vehemently argued that since August 2012 plaintiff is
using the Aseptic Brick Pack (commonly known as tetra
pack) packing for its products for the brand / trademark
Original Choice after obtaining suitable approval from the
Excise Commissioner, Bangalore with certificate is also
issued on 18.7.2012 and after obtaining the said approval
plaintiff has sold the products under the said name
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across the states of India till July 2014 as pleaded in
plaint para 12. The packaging of the plaintiff is visually
appealing to the eye of the customer and since 2012 the
customer has began to associate this product as an
Original Choice originating from the plaintiff. Now by
introduction of a distinctively designed and patterned
Aseptic Brick Pack (commonly known as tetra pack) the
plaintiff's product achieved even better market
penetration, appreciation and sales, the plaintiff product
is identified by the general public. Plaintiff trademark is
one of the best brand whisky and is placed in top 25
brands in India.
15. Further argued that defendant is also engaged
in the similar business under its products under the
brands Royal Cup Gold Whisky, Magic Blended Fine
Whisky, Magic XXX Rum, LBW Grape Brandy etc., and
approached the Excise Commissioner for approval of a
Aseptic Brick Pack(commonly known as tetra pack)
packaging for its product Magic Blended Fine Whisky.
The same is completely similar to the packing design,
pattern, layouts, colour combinations, iconography,
images etc. The design of the defendant has a red outer
border, gold inner border and it has an icon with its
name barely being seen which apes the sun-rise icon on
the plaintiff's packaging. That part, the name Magic is
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written in similar cursive font as that of the Original
Choice of the plaintiff's packaging and that too in red
colour. An image of glass of whisky is also imprinted
below the name and 'Blended Fine Whisky' in the
defendant's proposed Aseptic Brick Pack (commonly
known as tetra pack) packaging. These features of the
defendant's packaging make the impugned package
obviously and deceptively similar to that of the plaintiff.
Further plaintiff got knowledge of the defendant seeking
approval from the Excise Commissioner of the impugned
and they received notice from the Excise Commissioner
on 19.12.2014 informing the plaintiff of the defendant's
intention. The defendant's brand Magic has no significant
market presence or any sales in Karnataka or anywhere
else in India. But the comparison of the sales figures as
obtained from the records / website of the Karnataka
State Beverage Corporation Limited of the plaintiff's
Original Choice Deluxe Whisky with defendant's Magic
Blended Fine Whisky in year wise and month wise are
mentioned in the plaint para 20. Now the defendant is
attempting to sell its Magic Blended Fine Whisky product
in Aseptic Brick Pack (commonly known as tetra pack)
which is so deceptively similar to that of the plaintiff. It
amounts to nothing but unlawful attempt on the part of
the defendant passing off its goods as that of the plaintiff.
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It is further that due to deceptive similarity in the plaintiff
packaging tetra pack and fraudulently adoption of the
tetra pack of the defendants there is bound to be
confusion in the market as to the identity of the products
and therefore it is necessary to restrain the defendants
from using the tetra pack for its Magic Blended Fine
Whisky. If the defendant is not restrained for selling its
brand Magic Blended Fine Whisky from using the tetra
pack it will cause harm to the reputation of the plaintiff
trademark brands etc.
16. Inter alia the senior counsel for the defendant
has vehemently argued that defendant company has been
manufacturing Magic Blended Fine Whisky for the last
10 years and it was introduced in the year 2005 and they
have been selling the said Magic Blended Fine Whisky in
bottle form and obtained label and artistic work of the
defendant's brand Magic Blended Fine Whisky. Further
argued that it is the registered owner of the trademark
bearing no.1701299 registered on 29.6.2013 renewed
upto 20.6.2022 as per Ex.D3. The tetra pack also uses
the identical label that the defendant has been using in
its bottle for the same brand and which is a registered
trademark. The only additional design element is a glass
with the whisky, which is very different from the glass
that is depicted on the pack of the plaintiff. There is no
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monopoly that any person has on the use of the colours
being red and white. After approval of the label for the
tetra pack as per the rules, issued by the Excise
Commissioner that too after considering the objection
filed by the plaintiff and after rejecting the objection filed
by the plaintiff, the commissioner has approved the label
of tetra pack for the year 2015-16 and now it is renewed
periodically and plaintiff has not established any
primafacie case against the defendant. Though they have
filed OS.No.6660/2010, restraining that the bottle of the
defendant was using for selling its LBW brand of brandy
was similar to its own bottles of its Original Choice Brand.
Even this court rejected the interim application filed by
the plaintiff on 6.12.2010 and then Hon'ble High Court of
Karnataka in MFA no.1824/2011 same was dismissed as
per order dated 6.2.2012. Again the plaintiff has filed this
suit after defendant has obtained the approval for label in
tetra pack. There is nothing distinctive about its shape
and plaintiff does not have any design or protection over
the shape of the tetra pack. Many other manufacturers
are selling their products in tetra pack and there is no
infringement or passing off of plaintiff trademark by the
defendant in any manner etc.
17. Now the crucial points for consideration are
whether the plaintiff is the registered owner and
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copyright holder of the Aseptic brick Pack(commonly
known as tetra pack) for its products 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
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
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certification trade mark or collective mark;
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Whereas in the present case on hand to show that
the plaintiff is the proprietor of the John Distilleries Pvt.
Ltd., he has produced the Memorandum and Article of
Association including certificate of Incorporation asper
Ex.P6. Same is not denied by the defendant. Further to
prove that plaintiff is a registered trademark he has
produced Ex.P7 legal use certificate wherein, it is
specifically mentioned that plaintiff has registered the
Original Choice logo word mark, trademark device on
4.4.1996 same is used since 28.3.1996. Further plaintiff
has produced the order of the Excise Commissioner
dtd.18.7.2012 to sell the products in tetra pack as
mentioned in Ex.P2 ie., Original Choice Deluxe Whisky,
Grand Duke Premium Whisky 180 ML in tetra pack and
also produced Ex.P2(a) tetra pack packaging. Ex.P3 is
another order of the Excise Commissioner passed on
19.3.2013 again approved the mark Original Choice
Deluxe Whisky and other in total 16 variety of brands
issued in the name of plaintiff. Ex.P3(a) is another tetra
pack packaging mark of the plaintiff. Ex.P3(b) is again the
tetra pack packaging ie., for Original Choice Deluxe
Whisky 1000ML, 750ML, & 180ML belongs to the
plaintiff. Ex.P4 is the approval certificate of Excise
Commissioner dtd.18.7.2014 in total for 20 brands of the
plaintiff with tetra pack packing as per Ex.P4(a). Ex.P5 is
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the notice issued by the Excise Commissioner to the
plaintiff in pursuance of the application filed by the
defendant for new liquor label of Royal Gold Cup Extra
Smooth Whisky, Magic Blended Fine Whisky and Magic
XXX Rum in 180ML in Aseptic Brick Pack. Ex.P5(a) to (c)
are the Tetra Pack packaging materials of the defendant
for Royal Gold Cup Extra Smooth Whisky, Magic Blended
Fine Whisky and Magic XXX Rum. Ex.P8 is the total
turnover of the plaintiff company from 2008-09 to 2014
till July it is not in dispute.
18. Whereas in the evidence of PW1, he has
reiterated the plaint averments. He is an authorized
person in view of the authorisation given by the plaintiff
company as per Ex.P1.
19. On the other hand, defendant has not denied
that plaintiff is the registered owner of the brand Original
Choice as per Ex.P7. Even in the evidence also not denied
the ownership of the plaintiff over the said product.
Because in the evidence of DW1 in his cross examination
there is no denial that plaintiff is the owner of the brand
Original Choice.
20. When plaintiff has produced the trademark
registration certificate as per Ex.P7 for Original Choice
26
OS.No.189/2015
Whisky and he has also approved the label from the
commissioner as per provision Sec.2(q) of the Trademark
Act. It is one more contention of the plaintiff is that its
product is having own design and obtained the
registration for the new bottle with distinctive design,
shape, pattern, surface etc., as the design No.214542
w.e.f. 5.2.2008 from the Controller General of Patents,
Designs and Trademark with Novelty of the front view,
back view, top view and bottom view under the provisions
of Designs Act, 2000. Now I would like to re produce the
Provision of Sec. 2(d) of the said Act to know the meaning
of Design.
The Sec.2(d) of the Designs Act, 2000 defines about
the design reads as follows:
(d) "design" means only the features of shape,
configuration, pattern, ornament or composition
of lines or colours applied to any article whether
in two dimensional or three dimensional or in
both forms, by any industrial process or means,
whether manual, mechanical or chemical,
separate or combined, which in the finished
article appeal to and are judged solely by the
eye; but does not include any mode or principle
of construction or anything which is in
substance a mere mechanical device, and does
not include any trade mark as defined in clause
(v) of sub-section (1) of section 2 of the Trade
and Merchandise Marks Act, 1958 (43 of 1958)
or property mark as defined in section 479 of
the Indian Penal Code (45 of 1860) or any
artistic work as defined in clause (c) of section 2
of the Copyright Act, 1957 (14 of 1957);
27
OS.No.189/2015
In view of the oral and documentary evidence and
considering the application filed by the plaintiff under
section 18 of the Trademarks Act for registration, he got
registered the trademark as per Sec.23 of the said Act.
When it is not in dispute by the defendant that the
plaintiff is the registered owner of the trademark
ORIGINAL CHOICE and also he has produced the
documentary evidence as discussed supra, under such
circumstances, there is no need to more discussion on
this issue. Hence, I answer issue No.1 in the
affirmative.
21. Issue No.2: The specific allegations of the
plaintiff against the defendant is that defendant infringing
their well established copyright for Aseptic Brick Pack
(commonly known as tetra pack) for its brand Magic
Blended Fine Whisky. Before discussing about the facts of
the case, what is the meaning of infringing or passing off
is to be looked into. In this aspect I would like to
reproduce Sec.29 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
28
OS.No.189/2015
taken as being used as a trade mark.
(2) A registered trade mark is infringed by a
person who, not being a registered proprietor or
a person using by way of permitted use, uses in
the course of trade, a mark which because of--
(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
29
OS.No.189/2015
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 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 30 OS.No.189/2015 the use of a mark shall be construed accordingly.
According to the plaintiff it is a registered owner of the trademark Original Choice Deluxe Whisky, it has got an approval of label for its brand from the Excise Commissioner and has been using it for more than 2 years, despite knowledge of the same, defendant has willfully, deceptively adopted and copied the Aseptic Brick Pack(commonly known as tetra pack) design and art work of the plaintiff for its produce only with a view to pass off its goods as that of the plaintiff. But the defendant has denied the case of the plaintiff and as per the contention of the defendant, they have been using its brand Magic Blended Fine Whisky since 2005 which is distinctive label and art work of the defendant for Magic Blended Fine Whisky as well as registered the trademark bearing No.1701299 registered on 29.6.2013 renewed upto 20.6.2022 and how the tetra pack is distinctively different than the plaintiff has been elaborately stated in the written statement also. Even the Excise Commissioner has approved the tetra pack of the defendant ie, Magic Blended Fine Whisky and defendant was selling its Magic Blended Fine Whisky in bottle and the objections were raised by the plaintiff before the Excise Commissioner, when the defendant has applied for approval of tetra 31 OS.No.189/2015 pack, but the Excise Commissioner has rejected the objection raised by the plaintiff but said order has not been challenged by the plaintiff. In order to prove the same defendant has produced number of documents. Those are certified copy of the order passed by the Excise Commissioner on 9.3.2015 as per Ex.D1 wherein after considering the application filed by the defendant and objections filed by the present plaintiff and after comparison of the trademark of the plaintiff as well as defendant including the label, he has passed an order for approval of the label bearing Magic Blended Fine Whisky in Aseptic Brick Pack(commonly known as tetra pack). The objection filed by the plaintiff was over ruled. And against the said order of the Excise Commissioner, neither the plaintiff nor on its behalf no body challenged the said order till today. It is also admitted by the plaintiff in his evidence recorded on 30.3.2021 reads as follows:
It is correct to suggest that before issuing permission/approval granted by the Excise Commissioner hearing was conducted and approval was granted vide order dtd. 9.3.2021 as per Ex.D1.
Further he has specifically deposed that he has admitted the contents of the order and he has not challenged the said order due to para 3 of page 6 of the order. Even the plaintiff has not produced any document to show that he has challenged the said order Ex.D1.32
OS.No.189/2015 When he has not challenged the said order it has attained finality.33
OS.No.189/2015
22. Moreover in order to substantiate the contention of the defendant, they have produced Ex.D2 Magic Blended Fine Whisky Label in two pages. The Certificate of registration of the trademark of the defendant is produced as per Ex.D3 wherein, the trademark No.1701299in class 33 of the defendant is registered on 20.6.2008 with annexed label ie., "Magic"
as mentioned in Ex.D3. Ex.D4 is the copy of the letter written by the defendant to the Excise Commissioner requesting for approval of their IML brand Aseptic Brick Pack labels for the Excise year 2014-15. Ex.D5 is the tetra pack packaging of the defendant. Ex.D6 is the certified copy of the order sheet in OS.No.6660/2010 which was filed by the present plaintiff against the same defendant for permanent injunction restraining the defendant from manufacturing, bottling, selling, marketing, distributing liquor and other related products under any brand name in the bottle design as per MO.2 which is obviously/deceptively similar to the registered bottle design of the plaintiff as per design No.214542. although in the said suit plaintiff has sought for interim injunction order against the defendant same was dismissed. Thereafter he has preferred MFA No.1824/2011 before Hon'ble High Court of Karnataka. But the Hon'ble High Court of Karnataka on 6.2.2012 34 OS.No.189/2015 dismissed the MFA No.1824/2011 as per Ex.D7. Ex.D8 is the order passed by the Excise Commissioner about the renewal of the label issued in favour of the defendant relating to tetra pack. Ex.D9 is the authorisation letter issued by defendant to the DW1 to give evidence. Ex.D10 is another order passed by the Excise Commissioner dtd.11.7.2014 for approval of the label of glass bottle. Ex.D11 is the letter issued by CSIR - Central Food Technological Research Institute Mysore about the analysis of the sample as sought by the Excise Commissioner. In turn the CSIR has issued the test report with regard to the tetra pack of the defendant. Ex.D12 is another order passed by the Excise Commissioner in favour of defendants on 24.7.2015 with regard to the label on bottle as well as tetra pack till 2015-16.
35OS.No.189/2015
23. In view of the documentary evidence produced by the defendant once it is crystal clear that defendant is the owner of the registered trademark MAGIC and he has obtained approval from the Excise Commissioner to use the tetra pack to sell their product Magic Blended Fine Whisky. Though the plaintiff has filed objection before the Excise Commissioner, but the Excise Commissioner has rejected and over ruled the objection of the plaintiff and finally passed the order as per Ex.D1 a discussed supra. While passing the order as per Ex.D1 the Excise Commissioner has elaborately discussed stage by stage how the tetra pack of the plaintiff differs from the tetra pack of the defendant and description of the product of the plaintiff and defendant more particularly, design as well as get up. Because in his order in page 5 he has specifically discussed that " after perusing all the records submitted, the applicant's proposed label MAGIC BLENDED FINE WHISKY was compared with the label ORIGINAL CHOICE DELUXE WHISKY of the objector. Comparison reveals that the brand name appearing on the applicant's label is MAGIC BLENDED FINE WHISKY whereas the brand name appearing on the objector's brand is ORIGINAL CHOICE DELUXE WHISKY which are completely different from each other. Phonetically, the words are of different lengths, pronunciations and sound 36 OS.No.189/2015 completely different and cannot be confused by any person to be the same. The logo on the top of the label of the applicant is completely different from the logo style of embedded on the top of the label of the objector. The objector has the sunrise logo on its label, but the applicant does not have any logo of a sunrise and has its own distinctive logo on the top of the label. The glass image of the objector's label is slightly of pentagon shape whereas the glass image of the label of the applicant is rectangular shape. Further the image of the glass on the label of the objector shows whisky over-flowing whereas the image of the glass of the label on the applicant's label is only half filled with alcohol which clearly indicates the difference on the labels. Visually also, the two labels are completely dissimilar and can be easily differentiated by any person.
Further, the objector does not have monopoly in the words ORIGINAL CHOICE used in the labels since, it is a generic term widely used in various industries and also in several brands of alcoholic beverages. Furthermore the objector cannot have any exclusive rights over the colour combination of red and white or any other colour, which are widely used in various industries and also in several brands of alcoholic beverages.
In this regard, the Hon'ble High Court of Karnataka 37 OS.No.189/2015 in RFA No.66/2008 - United Breweries Ltd. Vs. Khodays Breweries Ltd held that the names of Kalyani Black Label and Hercules Black Label are not similar, and that the phrase Black Label is a generic term and is commonly used by manufacturers of liquor and therefore, no party can claim any exclusive right to use the words Black Label. This judgment also refers to Johnnie Walker using the phrase Black Label within its trademark and held that this was generic and allowed the petitioner in that case to use the mark Hercules Black Label and held that it did not infringe the rights of the owners of the mark Kalyani Black Label as they were different.
In the light of the above decision of the Hon'ble High Court, it is clear that the words ORIGINAL CHOICE, RED and WHITE are generic in nature an no party has exclusive right or any proprietary interest over the same. These words are in generic use and cannot be monopolised by any one entity. "
24. In support of the said order passed by the Excise Commissioner, when I gone through the evidence of PW1 wherein he has specifically and categorically admitted in his cross examination recorded on 30.3.2021 reads as follows:
We are not the first company to use the tetra pack. There is no phonetic similarity between the 38 OS.No.189/2015 plaintiff's Original Choice and defendant's Magic products.
It is correct to suggest that on the front of plaintiff Ex.P3(a) there is no Kannada Words. It is correct to suggest that on the front of defendant Ex.P5(b) there is a Kannada words.
25. It is well settled principle of law that the admission made by the party before court was admissible against them proprio vigore. ie., a judicial admission by themselves can be made the foundation of the rights of the parties as discussed by the Hon'ble Apex Court in the case of Nagindas Ramdas Vs. Dalpatram Iccharam @ BridgeRam and others reported 1974(1) SCC 242.
Whereas in the present case on hand also PW1 himself has admitted that there is no phonetically similarity between the plaintiff Original Choice product and defendant Magic product. As per Sec.58 of the Indian Evidence Act facts admitted need not be proved. When there is no similarity between two products of plaintiff and defendant question of defendant infringing the trademark of the plaintiff or passing off of the trademark of the plaintiff tetra pack as alleged in the plaint does not arise. In addition to that PW1 himself has admitted in his cross examination recorded on 11.12.2019 that the outer border of aseptic brick pack in Ex.P3(a) and P4(a) is red colour. Witness volunteers that I am not able to say the colour code. Further he has deposed how both products are 39 OS.No.189/2015 different. He has also stated that in Ex.P5(a), P5(b) & P5(c) defendant had not used the words Original Choice. There is no whiskey barrel on Ex.P5(a) to P5(c). He has answered to question that whether the phrase Deluxe Whiskey is used in Ex.P5(a) to P5(c) that the phrase Deluxe is not used but Whiskey is used. Further deposed Phrase Smooth and Satisfying below the whiskey barrel on Ex.P3(a) and P4(a) are used to indicate quality. The phrase Smooth and Satisfying is not found in Ex.P5(a) to 5(c). The above testimony of PW1 itself clearly goes to show that there is no similarity between the two products of plaintiff tetra pack and defendant's tetra pack.
26. It is true during the course of cross examination of DW1 the learned counsel for the plaintiff took admission from the mouth of the defendant that Ex.D5 in tetra pack there is a red outer border. The same is not found in glass bottle of Magic Blended Fine Whisky as shown in Ex.D5. Further he has admitted that the outer border in the glass bottle of Magic Blended Fine Whisky as shown in Ex.D5 is having a golden colour border. The logo of the defendant in glass bottle is written below the words Magic Blended Fine Whisk. However the said logo is found above the Magic Blended Fine Whisky in Ex.D5 tetra pack. But he has denied that Ex.P4(a) and 40 OS.No.189/2015 defendant's logo Ex.D5 tetra pack is one and the same. Moreover, in Ex.D1 the Excise Commissioner has specifically pointed out the differentiation between two products as discussed supra.
41OS.No.189/2015
27. It is true that the learned counsel for the plaintiff has argued that though earlier suit in OS.No.6660/2010 filed by the plaintiff with regard to the bottle label dismissed. But whatever the cause of action in that suit and present cause of action are different. Therefore the defendant cannot take advantage of the order passed in the earlier suit etc. Further he has argued that defendant is not entitled to use the getup, trade dress, colour combination, writings on the aseptic brick pack adopted by it since it is deceptively similar to the plaintiff's tetra pack with its distinctive feature colour combination, writings, border, layout etc. But when I gone through the documents produced by both parties, it cannot be said that both the features, design, colour combination, writings are all similar. Because in logo on the top of the label of the plaintiff is completely different from the logo and style embedded on the top of the label of the plaintiff. Further plaintiff label is having sunrise logo but the defendant does not have any sunrise and has its own distinctive logo on the top of the label. It is true that the learned counsel for the plaintiff has vehemently argued that even the glass image on the label are similar colour in nature. But when I carefully observed the glass image of the label of the defendant is rectangular shape and the image of the glass on the label of the plaintiff shows 42 OS.No.189/2015 whisky over flowing whereas, the image of the glass of the defendant label is only half filled with alcohol which clearly indicates the difference on the labels. The differentiation of two labels can be easily identified by any person on the face of the document. Under such circumstances, the decision cited by the learned counsel for the plaintiff reported in AIR 1972 SC 1359(Parle Products(P) Ltd. Vs. J.P.& Co., Mysore) is not helpful to the case of the plaintiff. It is true that in the said decision lordships observed as follows:
It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in ,our opinion who has a look at one of the packets to-day may easily 43 OS.No.189/2015 mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs goods, he might easily mistake the defendants' wrapper for the plaintiffs if shown to. him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be, judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.
When I gone through the said decision in detail and admission of PW1 as well as specific opinion of the Excise Commissioner while passing an order as per Ex.D1, the tetra pack of the plaintiff as well as defendant are not similar both are distinct. Hence plaintiff cannot take shelter under the above decision.
28. Relating to the same principle the learned counsel for the plaintiff has relied upon the decision reported in 2003 SCC Online Del.1005 (Colgate Palmolive Company & Another Vs. Anchor Health and Beauty Care Pvt Ltd.) Wherein their lordship observed that:
"Words "Colgater" and "Anchor" are distinct and have not an iota of similarities either in look or in sound. That is why the ingredients of trade dress, getup, colour combination, layout of container or the packaging acquire significance 44 OS.No.189/2015 and relevance determining the offence of passing off. This criteria flows from the concept of action passing off developed over the years that that is the similarities and not the dissimilarities which go to determine whether the action of passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of trademark, if the similarities of the trade dress are substantiated from the look of the two goods, it comes within the mischief of passing off The said decision is with regard to the plaintiff trademark Colgate and that of the defendant is Anchor. But when I gone through the said decision the facts of the said decision and the present case are entirely different. It is a well settled principle of law that the person who comes before the court has to prove on the merits and demerits of the case but he cannot make use of the weakness of the defendant as a trumpcard.
29. When the plaintiff is the registered owner of the trademark Original Choice under Sec.29 of the Trademarks Act and defendant is also a registered trademark owner of Magic, the law is well settled that a registered trademark is infringed by a person who, not being registered proprietor ie., registered trademark cannot be said to be infringed by another registered trademark, but only by an unregistered mark. But plaintiff has pleaded that instead of words infringement 45 OS.No.189/2015 he is seeking injunction against the defendant. In this aspect the learned counsel for the defendant has relied on the decision reported in 2006(32) PTC 733 (Del) (Astrazeneca UK Ltd. & Ors. Vs. Orchid Chemicals & Pharmaceuticals Ltd.), wherein their lordship observed that:
23. Therefore the plaintiffs can not contend that they have exclusive and registered trademark against the defendant nor can seek relief against the defendant on the ground that there is infringement of their registered trademark. The plaintiffs will not have a legal rights emanating from infringement of registered trade mark, as one registered trademark is not infringed by another registered trademark. The two marks `Meronem' and `Meromer' having `Mero' as common word will not infringe each other on account of their registration in the present facts and circumstances.
30. When I gone through the said decision in detail though the facts of the said decision is different from the case on hand, but the principles laid down in the said decision is aptly applicable to the case of the defendant. Because the plaintiff has not made out any legal grounds to seek injunction restraining the defendant from using the registered aseptic brick pack (commonly known as tetra pack), when the plaintiff has not objected to use the trademark or label on a bottle, but he has raised objection only to use the tetra pack by the defendant on the same label though the defendant has obtained approval from 46 OS.No.189/2015 the concerned authority. Further defendant's counsel has argued that by effect of acquiescence as stipulated under Sec.33 of the Trademarks Act, plaintiff has acquiesced for the continuous period of 5 years from the registration of defendant's trademark in 2008 in the use of the defendant's registered trademark as per Ex.D3. Hence, he is no longer allowed to apply for declaration that the registration of the defendant's trademark is invalid. In support of his argument the learned counsel for the defendant has cited a decision reported in 2021 SCC Online Del.1489 (Britannia Industries Ltd. vs. ITC Ltd & Ors. ,) wherein their lordship observed as follows:
50. Though the defendants' packs in the present case are more similar in appearance to the plaintiff's packs, vis-a-vis the position which obtained in these added points of similarity in the present case are also, in my view, insufficient to render the pack of the defendants confusing or deceptively similar to that of the plaintiff.
51. Other salient points of the discussion in CS (Comm) 553/2020 apply, mutatis mutandis, to the present case as well. Parle Products21 cannot help the plaintiff in this case either.
52. For this reason, I am of the opinion, that even in this case, it is not possible to arrive at a prima facie finding in favour of the plaintiff on the aspect of deceptive similarity, and, consequently, infringing or passing off.
When I gone through the said decision though the facts of the said case is differs from the case on hand, but the principles laid down in the said decision is 47 OS.No.189/2015 helpful to the case of the defendant, because in this case also though there is similar colour of red and white, but rest of the writings and other contents, get up, pattern, iconography layout etc., are entirely different than that of the plaintiff's tetra pack. Further the counsel for the defendant cited two more decisions reported in 1996 SCC Online Del 170 (Kellogg Company Vs. Pravin Kumar Bhadabhai) wherein their lordship observed that Order 39 rule 1 & 2 - Interim injunction sought passing off the goods in similar get up - dispute on passing off Kellogg's Corn Flakes' as 'Aims Aristo Corn Flakes' - Likelihood of confusion and deception ruled out- Order refusing interim injunction affirmed.
31. He has relied on another decision reported in 2006(32) PTC 733 (Del) - Astrazeneca UK Ltd. & Ors. Vs. Orchid Chemicals & Pharmaceuticals Ltd. Though the said decision relating to the principle of granting temporary injunction but what are all the principles to be looked into, while coming to the conclusion of infringement by the defendant has been elaborately discussed in the said decisions.
48OS.No.189/2015
32. The counsel for the defendant also cited the decision reported in MANU/DE/1425/2019 - Surya Food & Agro Ltd. Vs. Om Traders & Ors., wherein the Hon'ble High Court of Delhi has discussed that It was held to be impermissible to say that ―the square on the left side top had a small red and green border and or there was a red band horizontally and defendant's carton if examined from close quarters, showed these feature. It was further held that since viewed as a whole, one can see the words ―Kellogg's, and ―AIMS prominently displayed on each carton there could be no confusion.
Whereas in the present case on hand, plaintiff tetra pack is also having red color and defendant tetra pack is also having same colour it cannot be said that it is confusing the customers because the name of the plaintiff trademark is ORIGINAL CHOICE and the name of the defendant is MAGIC BLENDED FINE WHISKY. Even the description of the tetra pack as discussed supra are entirely different and the same is admitted by PW1 one also. Hence, question of causing confusion among the customers of the plaintiff and defendant does not arise, since the plaintiff has failed to prove the ingredients of Sec.2(1)(h) of Trademarks Act, 1999.
33. The learned counsel for the plaintiff has cited three more decisions.
49OS.No.189/2015 In the decision reported in 128(2006) DLT 649
-N.Ranga Rao & Sons Vs. Anil Garg and others. Wherein his lordship observed that:
74. Interestingly, defendants have admittedly applied subsequently for registration of the mark DIA and not LOTUS DIA. The essential ingredient feature of the mark is DIA and not LOTUS DIA. It is not just a case of phonetic similarity, a prefix being added, a similar colour scheme, similar packaging with certain endorsement, but all these aspects taken collectively to see the import of the trade dress used by the plaintiff and the defendants. If each individual feature is taken into consideration, maybe there would be some minor differences. However, that is not material.
In the decision reported in 2018 (76) PTC 309(Cal) - (LA Opala R.G.Ltd. Vs. Cello Plast & Others) . Wherein his lordship observed that:
121. Likelihood of confusion in the context of trade dress is evaluated by reference to similar factors as used in the ordinary trade mark context. The factors as evolved from the authorities and decided cases are:
(i) strength of the trade dress,
(ii) similarity between plaintiffs and defendants trade dress,
(iii) evidence of actual confusion,
(iv) marketing channels used,
(v) type of goods and likely degree of purchaser care, and
(vi) the defendants intent in selecting its trade dress, Relating to same principle of law plaintiff counsel cited a decision reported in AIR 2019 CAL 215 -(ITC Ltd. Vs. Whole Leaf Tobacco Ventures Pvt.Ltd) .50
OS.No.189/2015 Wherein their lordships have discussed the three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff.
34. When I gone through the said decisions in detail, the facts and circumstances of the decisions and the present fact of the case are entirely different. In view of the admission of PW1 and in view of the orders passed by Excise Commissioner while granting the approval for the use of tetra pack by the defendant under Karnataka Excise Act, the principles laid down in the said decisions are helpful to the case of the defendant but not the plaintiff.
35. Even though defendant has obtained approval from the Excise Department, till today whether the defendant is selling the product by using the said tetra pack itself is not proved by the plaintiff by producing documentary evidence. In this aspect in the evidence of DW1 he has deposed that defendant is no more producing and selling the product Magic Blended Fine Whisky for the last 10 years. When I gone through the entire evidence of DW1 no where he has admitted the plaintiff product and defendant product Tetra pack are similar in nature. He has also admitted in his cross 51 OS.No.189/2015 examination recorded on 26.11.2021 at page No.12 that we have not yet launched our product after approval from the excise commissioner due to financial difficulty." Further DW1 has voluntarily depsoed that now they are not selling the product and not produced Magic Blended Fine Whisky in the year 2014-15. Hence, considering the facts and circumstances of the case and considering the oral and documentary evidence produced by the parties I am of the considered opinion that the plaintiff has failed to prove issue No.2. In the result, I answer issue No.2 in the negative.
36. Issue No.3: In view of findings on issue No.1 though the plaintiff has proved that they are the registered owner of the trademark Original Choice but failed to prove that defendant is using the tetra pack to the Magic Blended Fine Whisky which is deceptively similar to the tetra pack as per MO.1 of the plaintiff in view of the above reasons.
37. When the Excise Commissioner has passed an order by fallowing all procedure of law and approved the tetra pack of the defendant and overruled the objection filed by the plaintiff with proper reasons, the said order not challenged by the plaintiff before the Revenue Appellate Tribunal under Sec.61(3) of Karnataka Excise 52 OS.No.189/2015 Act till today. Hence, without challenging the said order seeking the relief to give direction to the defendant to withdraw its application to the Excise Commissioner Bangalore seeking approval of Aseptic Brick Pack for its Magic Blended Fine Whisky as per the pictorial representation found in plaint document No.10 is not permissible under law. Hence, the plaintiff is not entitled for any relief as prayed in the suit. In the result, I answer the above issue in the negative.
38. 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 liable to be dismissed without costs. Under the above circumstances, accordingly I proceed to pass the following:
ORD ER Suit of the plaintiff is hereby dismissed. 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 4th March 2022.
(NAGARAJAPPA. A.K.) XVIII ADDL. CITY CIVIL AND 53 OS.No.189/2015 SESSIONS JUDGE, BENGALURU A N N EXU RE
1. No.of witnesses examined on behalf of plaintiff/s :
PW1 : Shakeel Syed
2. No.of documents marked on behalf of plaintiff/s :
Ex.P1 :Board Resolution Ex.P2 :Approval Certificate issued by Commr of Excise.
Ex.P2(a) :Tetra Packing material of plaintiff Ex.P3 :Approval Certificate issued by Commr.of Excise dtd.19.7.2013 Ex.P3(a) : Tetra Packing material of plaintiff Ex.P4 : Approval Certificate dtd.8.7.2014 Ex.P4(a) : Tetr packing material of plaintiff.
Ex.P5 : Intimation letter dtd.19.12.2014 Ex.P5(a to c): Tetra packing material of plaintiff Ex.P6 : Certificate of incorporation with Articles of Association.
Ex.P7 : Legal use certificate
Ex.P8 : Expenditure certificate issued by CA.
M.O.1 : Brick(Tetra) Packof Deluxe Whisky
with mark Original Choice
3. No. of witnesses examined on behalf of
defendant :
DW1 : S.G.Jagadeesh
4. No. of documents marked on behalf of defendant :
54OS.No.189/2015 Ex.D1 : CC of the order dtd.9.3.2015 passed by Excise Commr.
Ex.D2 : Original Magic Blended Fine Whisky Bottle label Ex.D3 : Certificate of trademark Regn. Dtd.29.6.2014 Ex.D4 : Defendant's application dtd.10.12.2014 Ex.D5 : Tetra pack packaging of defendant for the Excise Year 2014-15 Ex.D6 : CC of order dtd.6.2.2010 in OS.NO.6660/2010 Ex.D7 : CC of order dtd.6.2.2012 in MFA No.1824/2011 Ex.D8 : Order of label approval for the bottle label dtd.2.2.2021 Ex.D9 : Board resolution dtd.29.1.2015 Ex.D10 : CC of label approvals dtd.11.7.2014 Ex.D11 : CC of CFTRI Test report dtd.31.10.2014 Ex.D12 : CC of label approvals dtd.24.7.2015 for the year 2015-16 XVIII Addl. City Civil Judge Bangalore City.55
OS.No.189/2015 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 dismissed.
No order as to costs. Draw
decree accordingly.
XVIII Addl.C.C. & S.J.,
Bangalore
3.128(2006) DLT 649 -N.Ranga Rao & Sons Vs. Anil Garg and others.
4. 2018 (76) PTC 309(Cal) - LA Opala R.G.Ltd. Vs. 56 OS.No.189/2015 Cello Plast & Others.
5. AIR 2019 CAL 215 - ITC Ltd. Vs. Whole Leaf Tobacco Ventures Pvt.Ltd.
The counsel for the defendant has relied on the following decisions:
1. 2021 SCC Online Del.1489 - Britannia Industries Ltd. vs. ITC Ltd & Ors.
2. 1996 SCC Online Del 170- Kellogg Company Vs. Pravin Kumar Bhadabhai.
3. 2006(32) PTC 733 (Del) - Astrazeneca UK Ltd. & Ors. Vs. Orchid Chemicals & Pharmaceuticals Ltd.
4. MANU/DE/1425/2019 - Surya Food & Agro Ltd.
Vs. Om Traders & Ors.
28.
29.
30. xxxxxxxxxxxxxxxxxxxxx Whe are Xxxxxxxxx page 6 he has stated that
23. Sec.2(d) of the Designs Act, 2000 defines about the 57 OS.No.189/2015 design reads as follows:
(d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause
(v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957);
17 Meaning of passing off The illegal act of selling a product that is similar to one that another company has legally protected by a trademark: The restaurant was found guilty of passing off, as its name and logo were too close to those of a major chain.23-Feb-2022 58 OS.No.189/2015 Sec.135. Relief in suits for infringement or for passing off.--
(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery- up of the infringing labels and marks for destruction or erasure.
(2) The order of injunction under sub-section (1) may include an exparte injunction or any interlocutory order for any of the following matters, namely:--
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to the subject- matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.59
OS.No.189/2015 (3) Notwithstanding anything contained in sub- section (1), the court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case-
(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark or collective mark; or
(b) where in a suit for infringement the defendant satisfies the court--
(i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and
(ii) that when he became aware of the existence and nature of the plaintiff's right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or
(c) where in a suit for passing off, the defendant satisfies the court--
(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and
(ii)that when he became aware of the existence and nature of the plaintiff's trade mark he forthwith ceased to use the trade mark complained of.