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IN THE HIGH COURT AT CALCUTTA
SABYASACHI BHATTACHARYYA, J.
Tilaknagar Industries Ltd. – Petitioner
Versus
The State of West Bengal and Others – Respondents
WPA No. 18026 of 2023
Decided On : 17-08-2023
TRADE MARK - REGISTRATION - WEST BENGAL EXCISE (FOREIGN LIQUOR) RULES, 1998 - RULE 118, 120, 122 - VALIDITY OF REGISTRATION OF TRADEMARK - RESTRICTION ON SALE - SCOPE OF RULE 122(C) - INTERPRETATION - COURT HELD THAT THE AUTHORITIES CAN ONLY CONSIDER WHETHER OTHER BRAND NAMES OR LABELS HAVE ALREADY BEEN “REGISTERED”.
Fact of the Case:
Petitioner, Tilaknagar Industries Limited, challenged the orders passed by the Excise Commissioner and the Additional Chief Secretary, Government of West Bengal, granting registration to respondent no. 6, Allied Blenders and Distillers Private Limited, in respect of the brand name “Mansion House” for the manufacture and sale of foreign liquor. The petitioner claimed exclusive rights regarding manufacture and sale in India and argued that the respondent no. 6 failed to obtain any order of manufacture and sale of alcoholic beverages under the trademark-in-dispute from the Bombay High Court or the Delhi High Court. The respondent no. 6 argued that the Bombay High Court had permitted it to obtain licenses and other permissions at its own risk and peril and that it was not precluded from doing so by any of the orders passed in the Bombay High Court or Delhi High Court suits.
Finding of the Court:
The court held that the Excise Commissioner and the Additional Chief Secretary did not commit any error or breach of law or of the orders of the Bombay and Delhi High Courts in granting registration to the respondent no. 6. The court observed that the registration granted under Rule 118, circumscribed by Rule 122, is for the specific purpose of manufacture and sale, which the respondent no. 6 is restrained from doing due to the restraint order passed by the Bombay High Court. However, the court also noted that the Bombay High Court had permitted the respondent no. 6 to obtain license/other permission, at its own risk and peril.
Issues: 1. Whether the authorities erred in granting registration to the respondent no. 6 in respect of the brand name, which is disputed here, in violation of the orders of the Bombay High Court and the Delhi High Court? 2. Whether the authorities violated Rule 122 of the West Bengal Excise (Foreign Liquor) Rules, 1998 (hereinafter referred to as “the 1998 Rules”) by granting registration to the respondent no. 6?
Ratio Decidendi: 1. The court interpreted Rule 122(c) of the 1998 Rules and held that the purpose of the said provision is to ascertain whether the registration to be granted would violate any pre-existing right of a third party pertaining to the brand name or label. In the present case, the court found that the pre-existing right of the petitioner, who has already been manufacturing and marketing products under the disputed brand name, vis-à-vis the rights of the respondent no. 6, are subjudice. Hence, as of today, both the petitioner and the respondent no. 6 are on the same footing insofar as the validities of their registration of trademark are concerned. 2. The court also held that there was no refusal by the Commissioner, nor was there any recording that the Commissioner was not satisfied on such score. Hence, the argument based on alleged non-compliance of the said clause is not valid, as the Commissioner did not find anything not to be satisfied about regarding satisfaction of Clause (c) sufficient to refuse registration.
Final Decision: The court dismissed the writ petition filed by the petitioner, holding that there was no scope of interference in the present writ petition.
JUDGMENT :
SABYASACHI BHATTACHARYYA, J.
1. The present dispute pertains to registration in West Bengal for manufacture and sale of foreign liquor under the Brand Name “Mansion House” which the petitioner has allegedly been carrying on in India since April, 1983, openly and without any objection from any quarter.
2. The UTO Nederland B.V. (in short “the UTO”) allegedly ceded in writing its trademark rights for sale and manufacture of the said brand to the petitioner on February 23, 1987.
3. UTO, on the other hand, had applied for registration of the trademark on April 5, 1983, for sale in India, and got it subsequently.
4. UTO filed in the Bombay High Court a suit, bearing Suit No. 632 of 2009, against the petitioner for declaration and injunction pertaining to the rights of manufacture and sale regarding “Mansion House” in India. The petitioner, staking similar claims, filed a counter claim therein.
5. A learned Single Judge of the Bombay High Court, vide order dated December 22, 2011, dismissed a motion of UTO, inter-alia, holding that UTO had ceded/assigned the trademark to the petitioner. An appeal is pending against such order.
6. On a subsequent development, in August 2014, UTO transferred 50 per cent of its trademark rights to respondent no. 6, the Allied Blenders and Distillers Private Limited.
7. The petitioner, namely, Tilaknagar Industries Limited, subsequently moved a motion in connection with the Bombay suit, alleging passing off by its adversaries in the suit, which was disposed of on September 10, 2014 by another learned Single Judge of the Bombay High Court. The order specified, inter alia, that the defendants to the counterclaim there (present respondent no. 6), can obtain licences/other permissions at their risk and peril but shall not introduce any product with the subject-trademark into the market without the leave of court.
8. The UTO also filed a suit in the Delhi High Court regarding the selfsame cause of action. The petitioner sought dismissal of the suit under Order II Rule 2 of the Code of Civil Procedure, whereas the respondent no. 6 filed an injunction application. Vide order dated May 30, 2019, a learned Single Judge of the Delhi High Court refused the injunction sought by respondent no. 6, primarily on the ground of delay of about 11 years. The petitioner’s application under Order II Rule 2 was also dismissed on the ground that the cause of action for the suit was a continuing cause of action.
9. Subsequently, respondent no. 6 applied for a registration in West Bengal to manufacture and sell foreign liquor under the brand name “Mansion House Delux Brandy” using the “Mansion House” trademark.
10. The petitioner objected to such registration. The matter came up before the Excise Commissioner, West Bengal who, vide order dated January 6, 2023, held that there was no reason for restraining the respondent no. 6 from applying for registration of labels till the validity of the trademark registration; however, the product would be manufactured, imported or offered for sale in West Bengal, only after obtaining due leave of the Hon’ble Bombay High Court in Suit No. 632 of 2009, Counter Claim No. 06 of 2010.
11. Tilaknagar, the petitioner, preferred a challenge against the Excise Commissioner’s order before the appellate authority. The Additional Chief Secretary, Finance Department, Government of West Bengal (appellate authority)heard the appeal and, vide order dated May 10, 2023, affirmed the order of the Excise Commissioner, reiterating that the respondent no. 6 herein shall be precluded from manufacturing, importing, or offering for sale in West Bengal any product without the leave of the Bombay High Court.
12. The present challenge has been preferred against such affirmance by the Additional Chief Secretary.
13. Learned senior counsel appearing for the petitioner submits that it is the present petitioner which has been manufacturing and selling foreign liquor under the brand name “Mansion House” since the year 1968 an
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