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B.     FACTS


2)              Plaintiff Nos.1 and 2 are Companies organised and existing

under the Dutch laws and are producers, importers, exporters, sellers and distributors of various spirits and liquors including scotch, brandy, whisky, gin, vodka, rum, liqueurs and cognac. Plaintiff Nos.1 and 2 are fully owned subsidiaries of UTO holding B.V. formerly known as B.V. UTOMIJ. For ease of reference, Plaintiff Nos.1 and 2 are collectively referred to as 'UTO'. Plaintiffs claim that the trademark 'MANSION HOUSE' was registered by UTO in the Netherlands in November 1922. UTO claims to have secured registration of the mark 'MANSION HOUSE' in 33 jurisdictions across the world. The mark 'SAVOY CLUB' was registered by the UTO in the Netherlands on 12 January 1967 and UTO claims to have secured registration of the trademark 'SAVOY CLUB' in 27 jurisdictions 16 July 2025 Neeta Sawant COMAPL-6617-2025 with APP-66-2012-FC across the world. UTO applied for registration of the wordmark 'MANSION HOUSE' in India and it is claimed that it is the proprietor of the wordmark 'MANSION HOUSE' in India since 5 April 1983. UTO claims to have secured registration of the wordmark 'SAVOY' in India on 20 December 1983. UTO entered into a License and Manufacturing Agreement with the Defendant-Tilaknagar Industries Ltd. (Tilaknagar) for use of the marks 'MANSION HOUSE' and 'SAVOY CLUB' in India on condition of procurement of specified minimum quantities of concentrates for producing and selling whisky, brandy, gin and rum from UTO.

5) Tilaknagar sent a telex requesting UTO to issue No-Objection letter for registration of the wordmark 'MANSION HOUSE' in the name of Tilaknagar on 9 February 1989. In the meantime, UTO's application for registration of the wordmark 'MANSION HOUSE' was advertised and according to UTO, no opposition was filed by Tilaknagar to the said application. On 21 February 1989, UTO wrote to Tilaknagar under which UTO agreed not to take away the brand names 'MANSION HOUSE' and 'SAVOY CLUB' from Tilaknagar if Tilaknagar managed to import specified quantities of concentrates every year starting from 1989. Tilaknagar developed its own concentrates by the year 1992-93 for use in the drinks to be sold under the mark 'MANSION HOUSE' and started manufacturing and selling the same using its own concentrate. On 22 November 1993, Tilaknagar was granted registration of label marks using the said mark 'MANSION HOUSE'. Tilaknagar stopped purchasing concentrates from UTO from 1994. Tilaknagar thereafter applied for registration of the label marks using the mark 'SAVOY CLUB'. On 28 April 1994, the applications of Tilaknagar were allowed. Thereafter, Tilaknagar filed application for registration of the wordmark 'MANSION HOUSE CHOCOLATE MINT LIQUEUR' on 1 July 1994. On 21 October 1997, UTO and Tilaknagar signed a letter referring to the letter dated 7 July 1983 specifying minimum quantities of concentrates to be procured by Tilaknagar for the year 1998. Certain correspondence took place between UTO and Tilaknagar in the year 2002 under which arrangements for procurement of concentrates from UTO were discussed 16 July 2025 Neeta Sawant COMAPL-6617-2025 with APP-66-2012-FC between the parties. On 7 August 2003, UTO sent legal notice to Tilaknagar. On 15 December 2003, Tilaknagar replied the legal notice. It appears that further correspondence took place between the parties between 2004 to 2008 where discussions were held for resuming procurement of concentrates by Tilaknagar from UTO. It however appears that Tilaknagar continued manufacture and sale of its products by using its own concentrates. In the above background, UTO served cease and desist notice to Tilaknagar on 11 June 2008, which was replied by Tilaknagar on 20 June 2008. UTO thereafter filed Suit No. 632/2009 [now Commercial (IP) Suit No. 2/2009] against Tilaknagar seeking permanent injunction against infringement of copyright in UTO's labels, permanent injunction against passing off goods under the marks 'MANSION HOUSE' and 'SAVOY CLUB', permanent injunction against passing off goods under the label marks 'MANSION HOUSE', 'MH', 'MHB' and 'SAVOY CLUB', mandatory injunction requiring Tilaknagar to withdraw its registration/applications in respect of the marks 'MANSION HOUSE' and 'SAVOY CLUB' and damages in the sum of Rs.78 crores.

(viii) The findings of the learned Single Judge that MANSION HOUSE labels are dissimilar is perverse as the same is recorded by mixing the concept of copyright infringement with passing off. That MANSION HOUSE constitutes prominent and essential features of the two wordmarks and once it is established that the rival wordmarks are similar, no further inquiry is required. In support, he would place reliance on judgments on K. R. Chinna Krishna Chettiar Versus. Sri Ambal & Co.and others50, Hiralal Prabhudas Versus. Ganesh Trading Company and others51, Reckiit & Colman of India Ltd. Versus. Wockhardt Limited52 and Messrs Girnar Tea Versus. Brooke Bond (India) Ltd. 53

(ix) That the learned Single Judge has failed in permitting ABD to launch same products under the mark 'MANSION HOUSE' in violation of principle of one mark, one source and one proprietor. Reliance is placed on M/s. Power Control Appliances and others Versus. Sumeet Machines Pvt. Ltd. (supra).

(x) That Tilaknagar is entitled to injunction as it has been exclusively using the marks for 42 years thereby generating enormous sales in India. Tilaknagar has been recognised as proprietor of both the marks in the first judgment. UTO proposes to use same identical wordmarks for same goods. That injunction is essential since the tort of passing off subserves the public interest by protecting the public from being deceived by use of 48 MIPR 2007 2 185 49 2023 SCC OnLine Del 1118 50 AIR 1970 SC 146 51 AIR 1984 Bom 218 52 Appeal No. 1180 of 1991 in NMS No. 2141 of 1991 in Suit No. 2970 of 1991 53 1990 93 Bom. L.R. 97 16 July 2025 Neeta Sawant COMAPL-6617-2025 with APP-66-2012-FC identical or deceptively similar marks by others. That therefore balance of convenience lies in favour of Tilaknagar as UTO is without any interim relief in pending suit for about 14 years.