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High Court Of Delhi
MOHAN MEAKIN BREWERIES LIMITED - Appellant
Versus
SCOTCH WHISKY ASSOCIATION - Respondent
SECOND APPEAL 33 of 1972
Decided On : 07/23/1979
TRADEMARK - HIGHLAND CHIEF - SECTION 11 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - DECEPTIVE OR CONFUSING TRADEMARK - FALSE TRADE DESCRIPTION - ONUS OF PROOF - JUDICIAL DISCRETION OF REGISTRAR.
Fact of the Case:
The appellant, Dyer Meakin Breweries Limited, applied for registration of a trademark consisting of a label portraying a Scottish soldier with the words "highland Chief" for whisky. The respondent, Scotch Whisky Association, opposed the application, contending that the trademark was likely to deceive or confuse purchasers into believing that the whisky was produced in Scotland.
Finding of the Court:
The court held that the onus of proof was on the appellant to show that the trademark was not likely to deceive or cause confusion. The court found that the words "highland Chief" and the picture of the Scottish soldier were likely to create the impression that the whisky was produced in Scotland, and that this impression was not dispelled by the words "produce of India" appearing on the label. The court also held that the trademark was a false trade description within the meaning of Section 2(l)(f) of the Act.
Issues: 1. Whether the onus of proof was on the appellant to show that the trademark was not likely to deceive or cause confusion. 2. Whether the words "highland Chief" and the picture of the Scottish soldier were likely to create the impression that the whisky was produced in Scotland. 3. Whether the trademark was a false trade description within the meaning of Section 2(l)(f) of the Act.
Ratio Decidendi: 1. The court held that the onus of proof was on the appellant because the provisions of Section 11 of the Act are expressed in a way that lays down a number of prohibitions in the matter of registration of trademarks, and one of the prohibitions is that the trademark should not be likely to deceive or cause confusion. 2. The court found that the words "highland Chief" and the picture of the Scottish soldier were likely to create the impression that the whisky was produced in Scotland because the words "highland" and "chief" are associated with Scotland, and the picture of the Scottish soldier reinforced this association. 3. The court held that the trademark was a false trade description because it was untrue or misleading in a material respect as regards the goods to which it was applied, namely, that the whisky was produced in Scotland.
Final Decision: The court dismissed the appeal and held that the trademark was not registrable.
( 1 ) THE short point that arises for determination in this appeal is whether the brand name highland Chief used in relation to the product described as "malted Whisky" along with a device of the head and shoulders of a Scottish gentleman wearing feather bonnet and plaid and the tartan edging gives the impression that the product in relation to which it is used comes from. Scottland and is thus likely to deceive or confuse the unwary purchaser in India.
( 2 ) FACTS relevant for the purpose are these. Dyer Meakin Breweries Limited (now Mohan Meakin Breweries Limited), hereinafter REFERRED TO as the appellant, is a company incorporated under the Indian Companies Act, 1914, manufacturing various types of liquors and having its registered office at Solan in Himachal Pradesh. The appellant filed an application with the Trade Mark Registry seeking Registration of a trade-mark consisting of a label, inter alia, portraying in vivid colours the bust of what appears to be a Scottish soldier with the words "highland Chief" in class 33 in respect of Whisky. The application was accepted by the Assistant Registrar and advertised in the Trade Mark Journal on October 16, 1964. The Scotch Whisky Association, (hereinafter referred as the respondent), an Association incorporated under the English Companies Act, 1948, having its registered office at Edinburgh, Scotland, which does not itself carry on trade but includes amongst its members the leading producers and sellers of Scotch Whisky and has one of the principal aims to protect the interests of the producers and sellers of Scotch Whisky and take action for the purpose of restraining the sale of any product which deceives the purchaser into believing that it is Scotch Whisky when it is not, in fact the case, filed opposition to the said application on February 11, 1965. It was contended, inter alia, that the description "scotch Whisky" was not generic but related solely to the geographical origin of the product and meant whisky distilled in Scotland and the words "highland Chief", when used in relation to malted whisky, would be assumed by purchasers to relate to a product of Scotland since the highlands of Scotland are an area world-famous for the production of Whisky. It was also stated that the impression created by the words "highland Chief" would be confirmed as the label bore prominently the device of the head and shoulders of a gentleman dressed in Scottish Highland costume wearing, inter alia, feather bonnet and plaid and edged with tartan, well-known symbol of Scottish origin. It was submitted that the mark in question was one the use of which was likely to deceive or cause confusion.
( 3 ) IN the. counter statement filed by the appellant, the status and functions of the respondent were not challenged and it was conceded that the description "scotch Whisky" meant whisky distilled in Scotland and that the description could only be used in relation to a product wholly distilled in Scotland. It was, however, pleaded that the label bore the name and place of manufacture and bottling in bold letters and set forth that the produce was a product of India and, therefore, no consideration of deception or confusion at all could arise.
( 4 ) THE parties filed affidavits and Shri V. H. Mehta, Assistant Registrar of Trade Marks, on consideration of the material before him,tqok the view that there was absence of evidence to indicate that the purchasing public in India associated the word "highland" with whisky produced in Scotland and held that he was not prepared to believe that on seeing the picture of a Scottish Highlander or the words "highland Chief" on a bottle of whisky the purchasers in India would think that the whisky inside was produced in Scottland. The result was that the opposition was dismissed and application No. 214480 was ordered to be proceeded with for registration vide order dated April 21, 1970.
( 5 ) FEELING aggrieved, the respondent preferred appeal under S
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