The main legal point established in the judgment is the protection of essential, leading, and memorable features of a registered trade mark under the Trade Marks Act, and the finding of infringement when such features are used without permission.

G.S. Patel, J.

1. The Plaintiff and the Defendant both manufacture and sell country liquor. The suit is an action in trade mark infringement combined with a cause of action in passing off. A petition for leave under Clause XIV of the Letters Patent is pending. The present application is restricted to interim reliefs in infringement.

2. The Plaintiff claims to have a registered trade mark “TANGO PUNCH” under registration no.1051107 in Class 33, of which the word TANGO is said to be an essential, leading and memorable feature. This word is used by the Plaintiff with or without a device of a raised palm with the first three fingers held upright. This mark TANGO and the three-finger device are embossed on the Plaintiff’s glass bottles. The Notice of Motion seeks interim injunctive relief for, according to the Plaintiff, the Defendant has been found to be vending its own distillations in the Plaintiff’s embossed bottles. Therefore, the Plaintiff says, the Defendant must be restrained from using bottles with the trade mark TANGO or any other mark with the mark TANGO in respect of country liquor. The claim is based on the registration of TANGO PUNCH, of which TANGO is said to be an essential feature.

3. The Defendant opposes the application. It says that the Plaintiff’s registered trade mark is a composite label mark, not a word mark and that the Plaintiff has no monopoly in the word TANGO; that word is not a registered trade mark at all. In any case, the Plaintiff is itself guilty of piracy and can therefore claim no proprietary rights or infringement. Independently of that, the word TANGO is descriptive, not distinctive. The Defendant’s rival mark, TANGO CHARLIE, is distinguishable and is, in fact, distinguished by consumers. The word TANGO is very common to this trade, and the consumer’s eye falls to the following word PUNCH or CHARLIE as the case may be; and, consequently, it follows that there can be no infringement.

4. I have heard Dr. Tulzapurkar and Mr. Kadam, learned Senior Counsel for the appearing parties at some length. On a careful consideration of their submissions and the material on record that I have gone through with their assistance, I am unconvinced of the defences raised or that the balance of convenience can be said to favour the Defendant. I have, therefore, granted the injunction sought.

5. The Plaintiff claims that in 2001, its predecessor, Brihan-Maharashtra Sugar Syndicate Ltd. (“BMSSL”), adopted a composite trade mark label ‘TANGO PUNCH’, in devnagari script, in respect of its orange- or lime-flavoured country liquor, with a view to distinguish its goods from those of others in the market. TANGO is claimed to have been a leading, essential and memorable feature of this trade mark label. BMSSL obtained registration for TANGO PUNCH under registration number 1051107 in Class 33 on 10th October 2001. By a deed of assignment dated 9th June 2008, BMSSL assigned this trade mark and its associated goodwill to the Plaintiff. On 4th December 2008, the Registrar of Trade marks accepted the Plaintiff’s application to have its name entered on the register of trade marks as the proprietor. The relevant documents are annexed to the plaint. The use of the trade mark (by the Plaintiff and, before the assignment, by BMSSL) is open, extensive and continuous. The Plaintiff has popularised its products and spent considerable amounts promoting them. Sales and expenses figures certified by a Chartered Accountant are annexed to the plaint. For the year 2013-14 alone, the Plaintiff’s sales are nearly Rs.300 crores, and its expenses about Rs.2.5 crores.

6. The Plaintiff claims that in 2011 it decided to emboss its trade mark containing the word TANGO on glass bottles either on its own or in conjunction with the palm-and-three-finger device so as to distinguish its products from those of others. This embossing was on the front and rear of the Plaintiff’s glass bottles. Since that time, the Plaintiff has sold its products in suc