The transfer of trademarks was invalidated due to breach of conditions, resulting in automatic reversion of rights to UTO, emphasizing that acquiescence does not divest proprietary rights.

ORDER :

(R.I. CHAGLA J.)

1. Notice of Motion No. 1287 of 2010 has been filed by the Counter Claimant – Tilaknagar Industries Ltd. (for convenience referred to as “Tilaknagar”) seeking an injunction restraining the Defendants to the Counter Claim from manufacturing and/or bottling and/or marketing and/or trading in and/or otherwise dealing in the alcoholic products and like goods bearing the trademarks MANSION HOUSE and/or SAVOY CLUB or any other trademark deceptively similar to the Tilaknagar’s well known trademarks MANSION HOUSE and SAVOY CLUB so as to commit the tort of passing off.

2. Interim Application (L) No. 16999 of 2023 has been taken out by the Applicant - Allied Blenders and Distillers Private Limited (for convenience referred to as “ABD”) who is Defendant No.3 to the Counter Claim for leave to introduce products in the State of West Bengal under the trade mark MANSION HOUSE into the market in terms of label registrations secured by ABD in the State of West Bengal.

3. The above Notice of Motion and Interim Application have been heard together and are being collectively disposed of.

4. A brief background of facts is necessary :-

(i) Since 1983, Tilaknagar has been manufacturing, marketing and selling whisky, gin and brandy under the MANSION HOUSE and SAVOY CLUB trademarks in India. It is claimed by Tilaknagar that its use in India has been open, exclusive, uninterrupted and continuous and that the general public in India associates MANSION HOUSE and SAVOY CLUB with Tilaknagar alone.

(ii) From April 1983 to May 1983, Tilaknagar, who was carried out the business of manufacturing and marketing alcoholic beverages, such as Brandy, Whisky and Indian made foreign liquor, decided to manufacture and market Whisky, Brandy and Gin under the trademark MANSION HOUSE. Tilaknagar applied to the Commissioner of Prohibition and Excise, Maharashtra State, Bombay for approval of the “MANSION HOUSE labels. These approvals were granted.

(iii) On 5th April 1983, the Defendant No. 1 had applied for trademark registration of the word “MANSION HOUSE under the TM No. 403783 in Class 33 for Alcoholic Beverages. It is pertinent to note that the mark was granted registration only on 3rd December 2004.

(iv) Under a writing dated 7th July 1983, Tilaknagar agreed to procure whisky concentrates from the Defendant Nos. 1 and 2 (inter-changeably collectively referred to as “UTO”) for producing and selling whisky, brandy, gin and rum. Under this writing/agreement, HJ inter alia agreed that Tilaknagar had the exclusive and irrevocable rights to the use of MANSION HOUSE and SAVOY CLUB for marketing and selling whisky, brandy, gin and rum. Tilaknagar thereafter, began manufacturing and selling its alcohol beverages under the MANSION HOUSE and SAVOY CLUB trademarks.

(v) In 1986, disputes arose between the Scotch Whisky Association and the UTO. The Scotch Whisky Association was aggrieved with UTO indicating its products as Scotch Whisky whilst not meeting the standards set by the Association. Accordingly, Scotch Whisky Association filed an action against UTO in the Rotterdam District Court for restraining UTO from indicating its products as Scotch Whisky.

(viii) On 23rd February 1987, the Rotterdam District Court pronounced its Judgment on the action brought by the Scotch Whisky Association. The Court opined that there was a real likelihood of confusion and danger to the public, who may be deceived into believing that they were purchasing real Scotch Whisky. In those proceedings, UTO took a stand that they had no control over Tilaknagar qua the products manufactured and sold under the said Marks. The Court rejected this contention.

(ix) The Rotterdam District Court passed the judgment in Summary proceedings by which it inter alia restrained the Defendant Nos. 1, 2 and 3 therein from using the mark MANSION HOUSE for Scotch Whiskey Association or allowing such use for whisky which is not pure Scotch whisky. This included use of the mark MANSION HOUSE in India and Indone