Delhi District Court
Diageo Brands B. V vs M.S. Mayya on 3 November, 2014
IN THE COURT OF SH SUNIL K AGGARWAL: ADDL. DISTRICT JUDGE
(CENTRAL) 10: DELHI
TM No. 43/2010
Diageo Brands B. V.,
Molenwerf 1012,
1014 BG, Amsterdam,
The Netherlands. ....Plaintiff
VERSUS
1. M.S. Mayya,
Company Secretary
Khoday India Ltd.
No. 53 Kannayakana Agrahara
Anjanapura Post,
Bangalore - 560062
2. Khoday Breweries Ltd.
Brewery House, 7th Mile
Kanakpura Road,
Bangalore - 560062 .....Defendants
Plaint presented on 12.04.1996
J U D G M E N T:
1. This suit for permanent injunction restraining infringement of trademark, passing off, dilution, rendition of account of profits and delivery up of impugned goods was filed by United Distillers Plc as plaintiff no. 1 and United Distillers India Ltd. as plaintiff no. 2 through Mr. Ronald James Gilchrist, Company Secretary of plaintiff no.1 and Mr. Sumant Bakshi, CEO of plaintiff no. 2 in the Hon'ble High Court of Delhi stating that plaintiff no. 1 trading as William Sanderson & Sons and John Walker & Sons was incorporated as a company under T M No.43 of 2010 Page No. 1 of 21 the laws of Scotland as a subsidiary of English Company Guinness Plc while plaintiff no. 2 is an Indian Company, and have been carrying on business as distillers, bottlers, blenders, exporters and distributors of large verities of scotch whiskeys under popular brands JOHNNIE WALKER and VAT 69 etc. One of the finest scotch whiskeys of the plaintiff is a blend called VAT 69. It was adopted by Mr. William Sanderson who had established a highly respected Scotch Whiskey house in 19th Century. He was confronted with the challenge of determining the finest blends out of his various blends. Mr. Sanderson placed almost a 100 of his different blends of malt and grain whiskeys in separate containers which were individually numbered. Thereafter expert blenders and friends were invited and asked to choose the best blend. The blend contained in cask no. 69 was unanimously chosen as the best and on the said basis Mr. Sanderson decided to launch said blend under the name VAT 69. The trademark thus was first coined in 1880s. For over a century now VAT 69 Scotch whiskey has been sold in green coloured glass bottles with the mark appearing on it in bold stenciled lettering just as it used to be done when the whiskey was sold by cask. The plaintiffs, ever since the formal launch of the blend have spent huge amount on its advertisement and sales promotion in order to achieve place apart from the other ones. On the background of tremendous efforts put by the plaintiff, the trademark VAT 69 acquired instantaneous recognition and became identifiable by the members of trade and public solely with the plaintiff. In 1930 the brand became known all over the world from Holland to Argentina. One of the first advertisements of VAT 69 was published in The Times of India in 1925. About a million cases of VAT 69 are sold annually in more than 164 countries. Due to exquisite and incomparable quality of blend, VAT 69 not only has impressive T M No.43 of 2010 Page No. 2 of 21 sales but also enviable amount of goodwill and reputation.
2. VAT 69 scotch whiskey was first introduced in India in early 1900 when it was sold through stores such as "Spencer & Co." in Bombay, Madras, Karachi and Lahore. Subsequently the direct sales to Indian Public decreased due to import restrictions but the brand continued to be available and the patrons started getting their stock from duty free shops and local contacts. Subsequently it became freely available in hotels, restaurants, bars and pubs. Apart from the common law rights, the plaintiff has statutory rights over the trademark VAT 69 in India by virtue of registration of the mark vide number 5926 dated 29.09.1942 in class 33. It was originally registered in favour of William Sanderson & Sons Ltd. which had assigned it to the plaintiff in 1989. The plaintiff thereafter was registered as a subsequent proprietor of the trademark. The association of plaintiff with the brand is so inseparable that any attempt by a third party to use the mark VAT 69 or any mark similar thereto would mislead the consumers and members of trade by causing them confusion at plaintiff's cost. The plaintiff therefore, has retained its exclusivity over the trademark by maintaining strict vigil for any violation of its proprietary rights at all times and has been opposing its use by third parties.
3. The plaintiff was also trading as M/s John Walkers and Sons Ltd., a company incorporated under the laws of United Kingdom who was the owner of trademark JOHNNIE WALKER Red Label in respect of whiskeys which was previously known as old highland whiskey. The said product since its inception has been sold in unique square shaped bottles. It also has a distinctive trade dress T M No.43 of 2010 Page No. 3 of 21 in terms of get up, lay out and arrangements of features comprising three labels. The square shaped bottles and the distinctive labels appearing thereon including the central slanted label were instrument in enabling the plaintiff to set apart its JOHNNIE WALKER Red Label from other blends available at that time. The blend was introduced in India in early 1900 which soon left and indelible mark in the minds of consumers and persons of the trade. The shape of the plaintiff's bottle is registered in various countries including China, Germany, France, Indonesia, Japan and United States.
4. The defendant no. 2 has been carrying on business of manufacture and sale of spirituous liquors while defendant no. 1 appears to be the principal officer of its associate company. In August, 1991 the plaintiff came to know of the impugned trademark VAT 999 of the defendant through scotch whiskey association. The product however was not seen in the market until November, 1992 when a sample was procured by the plaintiff's agent. Even then the products bearing impugned trademark were not available in the market in commercial quantities. When the impugned products were again seen towards the end of 1994, the plaintiffs through their solicitors sent a 'cease and desist' letter dated 11.01.1995 to defendant no. 2 calling upon them to give up the unauthorized and unlawful use of mark VAT 999 and infringing trade dress of JOHNNIE WALKER Red Label bottle. The defendant however refused to comply with the fair requisitions of plaintiff by their reply dated 05.02.1995. The plaintiff thereafter attempted to settle the matter with defendants for some time but on their adopting obdurate stand, the plaintiffs have come up in this suit without undue delay.
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5. The defendants have adopted the trademark VAT, the numerals 999, square shaped bottle, the stenciled lettering style in respect of the composite trade mark and slanted central label with bold coloured border and red inner portion which are the key, essential and dominating features of both the plaintiff's product. Given that the public is generally unaware of the specific corporate structure of whose products they buy, but is aware that diversification, mergers, acquisitions and operations through subsidiaries is a fact of life, it is reasonable to believe that the adoption of trade dress and trademark of the plaintiffs by the defendants would lead to confusion as to the sponsorship of either or both plaintiff's product. The misrepresentation would succeed in its target as the tie up between plaintiffs has been publicized and the relevant class of consumers is expecting to see the locally bottled products of plaintiff in the open market in India. The defendants' products are then likely to be immediately associated with those of plaintiffs and purchased under mistaken belief of nexus.
6. The acts of infringement and passing off of the defendants are further bound to erode the distinctiveness of plaintiff's product leading to their dilution. On finding that VAT 999 does not bear the same finesse and quality as VAT 69 and JOHNNIE WALKER Red Label brand they are bound to regard the product as damp one from the stable of plaintiffs thereby adversely hitting the goodwill and reputation painstakingly built up by the plaintiffs over the years. The plaintiffs also commissioned a market survey by an independent agency in December, 1995 to gauge the effect of the use of trademark VAT 999 by the defendants and found that T M No.43 of 2010 Page No. 5 of 21 there would be high degree of confusion between the competing products VAT 69 and VAT 999.
7. The defendants have malafidely chosen the square shaped bottle which is identified with the products of plaintiff so as to give an impression to the public that their bottle comes from the same company that markets JOHNNIE WALKER Red Label and thus expected to be of same level of quality as is the tradition with plaintiff. The defendants' copying of get up, lay out and arrangement of features of the plaintiff's bottle is so slavish that the labels have been copies identically. It is estimated that plaintiff has thereby suffered a loss at least to the tune of Rs.5,00,000/ although the loss to goodwill and reputation cannot be ascertained in money terms.
8. In written statement the defendants have raised preliminary objections to the maintainability of suit. It is stated that the plaintiff does not enjoy statutory rights in the shape of bottles as it has not been registered in their name as a 'design'. Further no copyright in the label is claimed which in any case must have expired. The suit suffers from misjoinder of causes of action as JOHNNIE WALKER Red Label is not a registered trademark in India. The defendant on the other hand is a reputed industrial house manufacturing various qualities of liquors distinctly identified by consumers, dealers and distributors by the logo printed on every label indicating its origin. The basis of popularity in sales of their products is not much as the words and numbers but the reputation and logo of the house of KHODAYS. The defendants' product VAT 999 being used in relation to whiskey, brandy, rum and gin all sold in square shaped bottled with affixed labels, is neither identical nor T M No.43 of 2010 Page No. 6 of 21 deceptively similar to VAT 69. There is therefore, no likelihood of deception or confusion to anyone. It is contended that the suit suffers from inordinate delay, latches and acquiescence.
9. Defendant no. 2 has been using the fanciful trademark VAT 999 in relation to liquors since 1991 after honestly adopting it. They have also filed an application for its registration under no. 675559 which is pending. There has been gradual increase in the sales turnover of the products of defendants under the said trademark over the years with corresponding rise in promotional expenses. The defendant thereby has carved a niche in the Indian market through the products being sold under trademark VAT 999 without a single instance of confusion being brought to their notice. The nature of goods, their price and class of customers are the material factors which obliterate the likelihood of their products being mistaken for the foreign liquor of plaintiffs. On merits, defendants stated that the history of adoption of mark VAT 69 is irrelevant for present purposes. While the plaintiffs VAT 69 is sold in green colored bottles, the defendants VAT 999 is sold in transparent noncolored bottles. There is therefore, no scope for confusion or possibility of latter being passed off as the whiskey of plaintiff. The registration of plaintiff's mark in other countries is irrelevant as the law of Trademarks is not extra territorial. Further the registration of square bottle get up label of plaintiff in Canada is subject to disclaimer i.e. the right to the exclusive use of a bottle of the shape depicted is disclaimed apart from the distinguishing guise. It is denied that there was any attempt by the plaintiffs for settlement. The ploy has been cooked up as an excuse for the unexplained delay in filing the suit. The market survey report has been T M No.43 of 2010 Page No. 7 of 21 denied by the defendants terming it to be unreliable having not been conducted according to the established principles adopted by the plaintiff in their own country and following the guidelines laid down in Whitford J. Imperial Group Vs. Phillip Morris, (1984) RPC 293. On these averments the dismissal of suit was urged.
10. Replication is a formality of reiterating the contents of plaint and refuting those of the written statement.
11. By an interim order dated 23.04.1996 the defendants were restrained from selling, offering, advertising directly or indirectly dealing in whiskeys under the trademark VAT 999 or any other identical or deceptively similar trademark.
12. By way of amendment applications, which were allowed, the plaintiff incorporated the various changes in its name and those of the proprietors of relevant trademarks. It was stated that the name of plaintiff no. 1 was changed to United Distillers Ltd. and then to United Distillers & Vintners (ER) Ltd. on 27.02.1998. Vide assignment deed dated 10.11.2000 effected 28.04.2000 the rights were assigned to UDV (SJ) Ltd. The said company further assigned it to United Distillers and Vintners (SJ) B. V. vide assignment deed dated 10.11.2000 effective from 31.08.2000. It was further assigned to Guinness United Distillers & Vintners B. V. of Amsterdam, The Netherlands, by a deed of assignment dated 24.07.2001 effective from 01.12.2000. The amended plaint in the name of said company was filed through Ms. Geraldine Mary Patricia Downey, attorney. The said company further underwent change of name to Diageo Brands B. V. with effect from T M No.43 of 2010 Page No. 8 of 21 28.10.2003. It is claimed that the proprietorship of relevant trademarks now vests in this company. The second amended plaint was filed through Ms. Caron Tayler, Sr. I.P. Counsel.
13. The defendant was proceeded exparte on 27.08.2001 which order was set aside on an application of defendant no. 2 on 12.11.2002. Simultaneously the interim order was directed to continue till further orders.
14. The suit was transferred to district courts in October, 2003 on enhancement of pecuniary jurisdiction. By this time about 5 years were consumed by the parties in purported settlement efforts which however did not come through. Following issues were framed for trial on the basis of pleadings on 21.11.2005.
1. Whether the adoption and use of the trademark VAT 999 by the defendants amount to infringement and passing off of plaintiffs' registered trademark VAT 69?
OPP.
2. Whether the distinctive square shape bottle and get up used by defendant is respectively similar to the trade dress of the plaintiffs' product Johny Walker Red Label and amounts to passing off the same? OPP.
3. Whether the plaintiff enjoys statutory rights to the Johny Walker get up in India and has registered the shape of the bottle and get up as a trademark or as a design?
4. Whether the defendants are guilty of infringing the plaintiffs' trademark rights and of passing off their product for and as the product of the plaintiff?
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OPP.
5. Whether the defendants are liable to be restrained by the permanent injunction?
OPP.
6. Relief.
15. To substantiate their case plaintiffs had filed the affidavit of Sh. Sridhar Iyer, Director (Finance) of Diageo India Pvt. Ltd. on 25.04.2007 after suffering heavy costs, which could be partly tendered as the trunk containing some of the documents had not been received along with the case file on its transfer. It took about one year to retrieve the trunk. He was even partly cross examined on three occasions but before his cross could be completed, he left the employment of plaintiff. The court thereafter was informed on 10.12.2008 of the appointment of Sh. Apurv Mehta as the attorney of plaintiff. When however the witness did not appear on 03.03.2009 and also the imposed cost was not paid, the exparte evidence was closed on 03.03.2009. The opportunity however was reopened on filing of an application under Section 151 CPC on behalf of the plaintiff.
16. The defendant was again proceeded exparte on 20.07.2009 which order was recalled on 18.03.2010. Sh.Sunil Vasudeva who was appointed attorney on 04.02.2009, was thereafter proposed to be examined by the plaintiff but ultimately the affidavit of Sh. Malay Dikshit, Attorney was filed as Sh. Vasudeva had also left by that time. On the application of plaintiffs U/o 1 rule 10 CPC, plaintiff no. 2 was dropped from the array of parties on 03.05.2012.
17. The defendants were yet again proceeded exparte on 01.12.2012 and did T M No.43 of 2010 Page No. 10 of 21 not turn up. Sh. Dikshit therefore, tendered his affidavit on 24.05.2013 wherein he has stated the facts and proved his Power of Attorney Ex. PW1/1, brief history of VAT 69 Ex. PW1/2, photographs of the glass bottle Ex. PW1/3, advertisement of 1925 Ex. PW1/4, copies of other advertisements in magazines Ex. PW1/5, article on VAT 69 in The Economic Times dated 09.10.1995 Ex. PW1/6, extract of the World Book of Whiskey Ex. PW1/7, legal proceedings certificate Ex. PW1/8, copies of registration certificates in relation to VAT 69 pertaining to other countries Ex. PW1/9, a write up on JOHNNIE WALKER Red Label Ex. PW1/10, photograph of the said product Ex. PW1/11, advertisement published in newspaper dated 06.07.1924 Ex. PW1/12, extract of the book containing reference to JOHNNIE WALKER Red Label Ex. PW1/13, registration certificate Ex. PW1/14, Deeds of assignment Ex. PW1/15, legal proceedings certificate for JOHNNIE WALKER Ex. PW1/16, letter addressed to the defendant Ex. PW1/17, their reply Ex. PW1/18, photographs of the defendants' products Ex. PW1/19 and market survey report Ex. PW1/20 besides identifying documents mark A to mark G. Plaintiff closed its evidence on 24.05.2013.
18. I have perused the written synopsis filed on behalf of the plaintiffs and carefully perused the record.
19. An application under Order VII Rule 14 & Section 151 CPC was filed by the plaintiff on 25.04.2007 for producing some documents which came into existence during pendency of the suit. The documents being relevant to the subject matter of the suit, the application was allowed.
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20. I have heard Sh. Manu Manocha, Advocate learned counsel for the plaintiff and carefully perused the file. The defendants although were not serious enough to raise specific objection as to the competence of signatories to the plaint in their defence and therefore no issue for the purpose was framed or ever insisted upon yet Sh. Sridhar Iyer, when appeared as PW 1 was extensively questioned in this behalf. The major part of his crossexamination therefore is extraneous.
21. The other objection about suit suffering from inordinate and unexplained delay, latches and acquiescence as the plaintiff waited for more than four and half years in instituting the suit after gaining knowledge of the proposed use of trademark 'VAT 999' by the defendants has been adequately and satisfactorily elaborated by PW 1 in his unrebutted testimony. The court was persuaded to grant interim injunction on 23.04.1996 obviously on being satisfied with the explanation for seeming delay in approaching the court. The defendants on their part did not produce evidence of having substantial commercial market of their product under impugned trademark till just before the institution of the suit. It has been held in 'Midas Hygine Industries Pvt. Ltd. Vs. Sudhir Bhatia, (2004) 3 SCC 90' that in cases of infringement either of trademark or of copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it primafacie appears that the adoption of the mark was itself dishonest.
The case thus does not suffer from unwarranted delay, latches or acquiescence. Issuewise findings of court are recorded hereunder: T M No.43 of 2010 Page No. 12 of 21
22.Issues No. 1 & 4: 22(a) The two issues although worded differently yet are identical in substance involving the same analysis of facts and therefore taken up together for disposal. The accepted legal proposition in an action for infringement right from the ratio in 'Kaviraj Pandit Durga Dut Sharma Vs. Navratanna Pharmaceuticals Laboratories, 1965 SCR 737', is that the plaintiff must make out that the use of defendant's mark is likely to deceive but when the similarity between competing marks is so close either visually, phonetically or otherwise to enable the court to reach conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's right have been violated. If the essential features of the trademark of the plaintiff are found to have been adopted by the defendant such as get up, packing, writing on the goods and packets, there are good chances of unwary customers assuming the trade origin of two to be common.
22(b) Further it was held in 'American Home Products Corporation Vs. Mac. Laboratories Pvt. Ltd., 1986 PTC 71 (SC)' that the registration of trademark confers a valuable right upon the registered proprietor. Under Section 27 (1) of the 1958 Act, no person can institute any proceeding to prevent or to recover damages for the infringement of an unregistered mark. Simultaneously in an action for infringement, plaintiff is not required to prove the reputation of his mark. 22(c) In M/s Hindustan Radiators Company Vs. M/s Hindustan Radiators Ltd., 187 PTC 73 (Delhi) some guidelines for establishing primafacie case for grant of injunction in an action for infringement for trademark and passing off are laid T M No.43 of 2010 Page No. 13 of 21 down:
1. that the plaintiff has been using its trading style and trademark for quite a long period and continuously whereas the defendant has entered into the said filed.
2. that there has not been much delay in the filing of the suit for injunction by the plaintiff.
3. that the goods of the plaintiff have acquired a distinctiveness and are associated in the mind of the general public as goods of the plaintiff.
4. that nature of activity of the plaintiff and the defendant is same of similar.
5. that the goods of the parties to which the trademark of the plaintiff is associated are same or similar.
6. that the user of the said trademark or trade name by the defendant is likely to deceive and cause confusion in the public mind and injury to the business reputation of the plaintiff.
7. that the sphere of activity and the market of consumption of goods of the parties are the same.
8. that the customers of the plaintiff, interalia, include uneducated, illiterate and wary customers who are capable of being deceived or confused or misled.
T M No.43 of 2010 Page No. 14 of 21 22(d) The contention in defence that 'VAT is a descriptive word denoting the container in which liquors are fermented has neither been established nor is available to the defendants when they themselves claimed to have applied for the registration of impugned trademark including this word. Even the statement that defendant no. 2 has applied for registration of trademark 'VAT 999' vide application no. 675559. A copy of the said application filed on behalf of the defendants with list of documents dated 06.09.1996 indicates the name of applicant to be M/s Khoday Eshwarsa & Sons Manufactures & Traders, 9 Sheshadri Road,Bangalore560009. The application was filed on 03.08.1995 with proposal to use the trademark. The relationship between defendant no. 2 and said applicant concern has not been disclosed. Defendant no. 2 therefore can neither own the said proposed registration nor actual user of the impugned trademark from 1991.
22(e) The plaintiff on the other hand had adopted their trademark 'VAT 69' more than a century ago. It is being promoted and used in India more than half a century prior to the proposed user of impugned trademark by the defendants. The defendants have failed to explained as to how and under what circumstances they were able to coin the word 'VAT' and '999' for being jointly used for their products. Details of their origin and by whom are missing. There can be no explanation other than that the defendants had kept the trademark label of plaintiffs before them for designing the impugned trademark, when confronted with their user of stenciled font of same size as that of the plaintiff and affixing a slanted label on their square size bottle alike the long prior usage of plaintiff for their other products under trademark 'Johnnie Walker Red Label'. Reference to the ratio in 'Bata India Ltd. Vs. Pyare Lal & Company, AIR 1985 Allh. 242' which was approved in Mahendra & T M No.43 of 2010 Page No. 15 of 21 Mahendra Paper Mills Ltd. Vs. Mahindra & Mahindra Ltd., 2002 (24) PTC 212 (SC)' is useful in this context.
22(f) It cannot be just coincidence that colour scheme, layout and get up of the label of impugned trademark is exactly identical to that of 'Johnnie Walker Red Label' trademarks of the plaintiff. It was held in 'N.R.Dongre Vs. Whirlpool, (1996) 5 SCC 714' on the basis of trans border reputation even against register proprietor of a trademark that there is no plausible explanation offered by the defendants for adopting the mark 'WHIRLPOOL' when business in washing machines was being carried out earlier in other names, which at this stage is supported of the plea of unfair trade activity in an attempt to obtain economic benefit of the reputation established by the plaintiff.
22(g) Since, identical products obviously targeted at the same class of customers are being sold by the suit parties, there is good likelihood of the consumers vying for the products of plaintiff actually landing with that of the defendants based on the rule of fading memory. The consumers belonging practically to all stratas of society will have the least doubt about VAT 999 not coming out of the stable of plaintiffs' given the background of long standing plaintiff's trademark. Even if the turnovers of whiskey, brandy, rum and gin disclosed by the defendants in written statement is believed, it could be achieved by riding upon the reputation of the well established trademark of plaintiff. Interestingly, the defendants have cited a huge amount of about Rs. 50 lacs per annum having been spent annually for promotion of their products but not even a single document in this behalf was filed. T M No.43 of 2010 Page No. 16 of 21 22(h) The adoption and use of VAT 999 by the defendants akin to one of the series of VAT 69 of plaintiff thus is found to be very much capable of deceiving and confusing people not only in trade circle but also their associates and all the more the consumers. There is good potential of defendants passing off their business and products as having approval of the plaintiff. Both the issues therefore are decided in affirmative.
23. Issues No. 2 & 3: 23(a) These two issues are interconnected and therefore to avoid repetition, taken up together for disposal. So far as the reputation of trademark 'Johnnie Walker Red Label' of the plaintiff is concerned, it has been tacitly admitted under Order VIII Rule 5 CPC by the defendant by vaguely denying the assertions of plaintiff in written statement. The said trademark itself however is not the bone of contention presently, it is only its trade dress and get up which have allegedly been usurped by the defendants for promoting their products of same line. Ex. PW 1/4 are the registrations obtained by the plaintiffs through their predecessorininterest in the square shape bottle of 'Johnnie Walker'. It has been held in 'T.V.Venugopal Vs. Ushodaya Enterprises Ltd., (2011) 4 SCC 85' that permitting a party to use the trademark which has acquired an extraordinary reputation and goodwill in the state of Andhra Pradesh would be putting a seal of approval of the court on the dishonest, illegal and clandestine conduct. It will amount to encouraging the party to practice fraud on the consumer. It was observed that honest and fair play ought to be the basis of the policies in the world of trade and business.
T M No.43 of 2010 Page No. 17 of 21 23(b) The contentions of the defendants that mixing up of distinct trademarks, trade dress and getup by the plaintiff's is ill perceived. Moreover, the registration of square bottle get up of 'Johnnie Walker Red Label' in Cannada is subject to disclaimer are bound to be repel as the plaintiff's thereby have not only avoided the multiplicity of suit but also brought the complete matter to the court for comprehensive evaluation. It is too far fetched to conceive them as misjoining of causes of action. The plaintiffs having obtained registration of the get up of their square shaped bottle for 'Johnnie Walker Red Label' are not subject to the same disclaimer but the only limitation is that the registration shall give no right to the holder to the exclusive use of the device of a bottle. The shape of goods is now statutorily recognized as being constituent element of a trademark under Section 2(zb)of The Trademarks Act, 1999, the plaintiff enjoys the statutory rights in the get up of their trademark and use of strikingly similar shaped bottle by the defendants will tantamount to infringement and passing off the business and products of the plaintiff. Reliance in this behalf is placed on 'Gorbatschow Wodka KG Vs. John Distilleries Ltd., Suit No. 3046/2010 decided by Hon'ble Bombay High Court on 02.05.2011, Zippo Manufacturing Company Vs. Anil Moonchandani, 185 (2011) IX AD (Delhi) 661 & CocaCola Company Vs. Nersingh Rao, 2014 IV AD (Delhi) 487' It is not the case of plaintiff that the square shape of their bottle and its get up are registered under The Designs Act. Shorn of this, both the issues are decided in affirmative.
24. Issue No. 5: T M No.43 of 2010 Page No. 18 of 21 24(a) It was held in 'B. K. Engineering Company Vs. UBHI Enterprises, AIR 1985 Delhi 210 quoting Lord Macnaughten from Reddaway Vs. Benham' that fraud is infinite in variety. Sometime it is audacious and unblushing. Sometimes it pays a sort of homage to virtue, and then it is modest and retiring ; it would be honesty itself if it could only afford it but fraud is fraud all the same, and it is the fraud and not the manner of it which calls for the interposition of the court. 24(b) It was observed in 'Lakshmi Kant B. Patel Vs. Chetan Bhai Sah, AIR 2002 SC 275' that where there is a probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.... the law does not permit anyone to carry on his business in such a way as would persuade the customers or client in believing that the good or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does show fraudulently or otherwise. 24(c) In view of the facts coinciding with overwhelming case law, the defendants are liable to be restrained from infringing the trademark and get up of the plaintiff's and also from passing off their business and products as those of plaintiff's or in someway associated therewith. The issue is decided in affirmative.
25. Issue No. 6: 25(a) It was held in 'TATA Iron & Steel Company Ltd. Vs. Mahavir Steels, 47 (1992) DLT 412' that there is a growing tendency to copy the trademarks to cash upon someone else's business reputation. The piarators of trademarks are like T M No.43 of 2010 Page No. 19 of 21 parasites clinging to others for their growth. Imitators of trademarks have the sole objects of diverting the business of others. This tendency must be curbed in the interest of trade and consumers. Extending the cue by grant of compensation/damages for such wrongs, it was held in the 'CocaCola Company Vs. Dwarakadhish Khandelwal, CS(OS) No. 429/2007 decided by Hon'ble Delhi High Court' that the party which absence itself from the court proceedings should not be able to avoid the rigours of damages as that would amount to giving an escape route to such absenting parties from the proceedings specially when compared to parties which join the proceedings. Reference to 'Time Incorporated Vs. Lokesh Srivastava, 2005 (30) PTC (Delhi)' may also be made in this behalf. 25(b) Having been able to establish the case, the plaintiffs are logically entitled to reimbursement of the profits illegally earned by the defendants by sell of their products under impugned trademark by taking accounts of the relevant period. In view of the defendants having vanished midway however it would be practically cumbersome to indulge in the exercise of rendering accounts by them as the defendants are not reported to have breached the injunction order of court in the last 18 years. The plaintiff obviously would be put to further costs of the Chartered Accountant who may be employed for that purpose. Taking into account, the stoppage of their activities by the defendants relating to impugned trademark pursuant to court order on the one hand and that the defendants were comparatively new entrants in the market, grant of damages by judicial estimation shall serve the deterrent purpose. In view of above categorical proposition, award of damages in the sum of Rs. 4,00,000/ (Four Lacs Rupees) appear to be just and expedient in the T M No.43 of 2010 Page No. 20 of 21 facts and circumstances of the present case.
25(c) As a corollary, the suit is decreed in favour of the plaintiff and the defendants, their employees, agents, distributors, representatives or any other person acting on their behalf are permanently restrained from manufacturing, offering for sale, selling, advertising and directly and indirectly dealing in Whiskeys under the impugned trademark 'VAT 999'or any other mark as may be identical or deceptively similar to the plaintiff's registered trademark 'VAT 69'.
They are further permanently restrained from manufacturing, blending, selling, offering, advertising and directly or indirectly dealing in Spirituous Beverages under the impugned trademark 'VAT 999' or using a trade dress/get up as is substantial reproduction of plaintiff's registered trademark for 'Johnnie Walker Red Label' in a manner as would lead to confusion or passing off their Whiskey as that off of the plaintiff.
The defendants etc. are further restrained from simulating the total image including packaging, shape, size, colour, design and appearance of label of their products as that off plaintiffs 'Johnnie Walker Red Label' amounting to unfair competition and likely to dilution of plaintiffs' said trade dress. The defendants are further liable to pay damages/compensation of Rs. 4,00,000/ to the plaintiff under all applicable heads and proportionate costs of the suit.
Decreesheet be accordingly prepared. File be consigned to Record Room.
Announced in the open court
on 3rd November, 2014 (Sunil K. Aggarwal)
Addl. District Judge (Central)10
Delhi.
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