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2000 Supreme(Cal) 177
High Court Of Calcutta
SAMARESH BANERJEE, G. C. DE
LA OPALA R.G.LTD. - Appellant
Versus
INTERNATIONAL DISTILLERIES (I) LTD. - Respondent
F. M. A. T. 1738 Of 1999
Decided On : 04/11/2000
BHASKAR SEN, Gautam Chakraborty, INDIRA BANERJI, PRATAP CHATTERJI, SATYABRATA CHAKRABORTY
In a passing off action, the plaintiff must show that the defendant's use of a similar trademark is likely to deceive consumers and cause damage to the plaintiff's goodwill. The similarity of the products, the likelihood of confusion among consumers, and the balance of convenience are all relevant factors in determining whether an injunction should be granted.
Headnote:
PASSING OFF - SOLITAIRE TRADEMARK - SIMILARITY OF PRODUCTS - DECEPTION OF CONSUMERS - BALANCE OF CONVENIENCE - IRREPARABLE LOSS - INTERLOCUTORY INJUNCTION - TRADEMARK PROTECTION - GILBEY'S SOLITAIRE WHISKY - SOLITAIRE GLASS WARES - CONFUSION AMONGST CONSUMERS.
Fact of the Case:
Plaintiff, a manufacturer of crystal and opal glass wares, launched a range of products under the trademark SOLITAIRE in 1996. The defendant, a leading company in alcoholic beverages, began using the same trademark for its GILBEY'S SOLITAIRE whisky in 1997. Plaintiff filed a suit for passing off and sought an injunction to restrain the defendant from using the SOLITAIRE trademark for its whisky.
Finding of the Court:
The trial court dismissed the plaintiff's application for injunction, finding that there was no prima facie case of passing off. The court held that the two products, glass wares and whisky, were not similar and that there was no likelihood of deception among consumers. The court also found that the balance of convenience favored the defendant and that the plaintiff had not demonstrated irreparable loss.
Issues: 1. Whether the use of the SOLITAIRE trademark by the defendant for its whisky amounted to passing off. 2. Whether the plaintiff had made out a prima facie case for the grant of an interlocutory injunction.
Ratio Decidendi: The court held that passing off occurs when a trader misrepresents its goods or business as that of another trader, leading to deception among consumers and causing damage to the goodwill of the other trader. In this case, the court found that there was no misrepresentation or deception, as the defendant's whisky was clearly labeled with the GILBEY'S trademark and consumers would not be misled into believing that it was a product of the plaintiff. The court also found that the two products were not similar and that there was no likelihood of confusion among consumers.
Final Decision: The court dismissed the plaintiff's appeal, holding that the trial court had not erred in refusing to grant an injunction. The court found that the trial court had correctly applied the principles of passing off and that its findings were based on the evidence before it.
( 1 ) THE present appeal has been preferred by the plaintiff against an order dated 26th February, 1999 passed by the learned Additional District Judge, Alipor, 6th Court, dismissing an application for injunction under Order 39 Rule 1 of the Code of Civil Procedure in a passing off suit being Title Suit No. 3 of 1998.
( 2 ) IT is the case of the plaintiff that it is engaging in manufacturing and marketing of table wares and allied products made of crystal glass and opal glass of high quality. In the year 1994 with a view to diversity to high quality glass wares it entered into a technical tie-up with Doosan Glass of South Korea for the manufacture Of authentic crystal glass for the first time in India and such glass wares were launched by the plaintiff in 1996 under the trade mark SOLITAIRE. The range of crystal wares of the plaintiff marketed under such trade name includes beautifully crafted tumblers ; whisky glasses ; steam wares for brandy, wine, champagne, sherry, liquor, beer mugs, ice buckets, vases, bowls, ashtrays in a vide variety of cuts, sizes and shapes and have been sold extensively throughout the country and also have been exported and the sales of the plaintiff are increasing every year. The plaintiff has already applied for registration of its trade mark SOLITAIRE inter alia, in respect of table wares, glass wares, bar wares etc. It is claimed by the plaintiff that due to excellent quality and extensive publicity and sales of the products of the plaintiff the aforesaid trade mark SOLITAIRE has acquired great reputation amongst the trade and public and the trade and public associate the said trade mark exclusively with the plaintiff and the petitioner and none else.
( 3 ) IN June, 1998 the plaintiff came to know that the defendant company was advertising the trade mark SOLITAIRE in a most prominent manner all over the city of Calcutta and outside in the form of large hoardings and was offering for sale bar accessories under the said trade mark SOLITAIRE.
( 4 ) IT came to be known thereafter that the defendant had also launched alcoholic beverages in particular whisky under the same trade mark.
( 5 ) THE plaintiff through letter of its Attorney dated 22nd June, 1998 called upon the defendant to stop use of the said trade mark in respect of bar wares, glass wares and other products as the use of the said trade mark in respect of bar accessories and alcoholic beverages is likely to cause confusion amongst the public resulting in passing off or other form of confusion as to the source of the plaintiff/petitioner's product. The defendant by its reply dated 6th July, 1998 stated that the use of the trade mark SOLITAIRE in respect of glass wares and bar accessories was an inadvertent error and the defendant was taking steps to remove all such future references. The defendant, however, refused to stop of using such trade mark in respect of alcoholic beverages notwithstanding the objection of the plaintiff and the defendant contended that there would be no confusion by the use of the trade mark SOLITAIRE which has been used in conjunction with the world famous trade mark "gilbey's" and when the alcoholic beverages are totally different products from bar wares. It is also the contention of the plaintiff that claim of the defendant that expression "gilbey's SOLITAIRE" itself has been recognised and associated with a distinctive trade mark of the defendant is not tenable particularly when the application for registration of such trade mark was made by the defendant subsequent to that of the plaintiff and the glass wares produced by the plaintiff under the trade mark SOLITAIRE has already earned handsome reputation before the members of the public.
( 6 ) IT is the case of the defendant in the written objection to injunction application that it is a leading company and responsible for promoting internationally renowned brands of alcoholic beverages. Polychem is a part of Kalichand Group of compani
