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High Court Of Delhi
DYER MEAKIN BREWERIES LIMITED - Appellant
Versus
SCOTCH WHISKY ASSOCIATION, EDINBURGH, SCOTLAND - Respondent
S.A.O.(T.) 33 of 1972
Decided On : 07/23/1979
TRADEMARK - HIGHLAND CHIEF - S. 11 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - LIKELIHOOD OF DECEPTION OR CONFUSION - FALSE TRADE DESCRIPTION - ONUS OF PROOF - ADMISSIONS IN PLEADINGS AND UNCONTROVERTED AVERMENTS IN AFFIDAVIT - DISCRETION OF THE REGISTRAR - JUDICIAL REVIEW.
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 mark was likely to deceive or confuse purchasers into believing that the whisky was Scotch Whisky when it was not.
Finding of the Court:
The court held that the onus was on the appellant to show that the trademark was not likely to deceive or confuse purchasers. The court found that the words "highland Chief" and the picture of the Scottish soldier were likely to deceive or confuse purchasers into believing that the whisky was Scotch Whisky. The court also found that the use of the words "highland Chief" was a false trade description because it was untrue or misleading as to the place of origin of the whisky.
Issues: 1. Whether the onus was on the appellant to show that the trademark was not likely to deceive or confuse purchasers. 2. Whether the words "highland Chief" and the picture of the Scottish soldier were likely to deceive or confuse purchasers into believing that the whisky was Scotch Whisky. 3. Whether the use of the words "highland Chief" was a false trade description.
Ratio Decidendi: 1. The court held that the onus was on the appellant to show that the trademark was not likely to deceive or confuse purchasers because the prohibition contained in Section 11 of the Trade and Merchandise Marks Act, 1958, is such that the onus is on the applicant from beginning to end. 2. The court found that the words "highland Chief" and the picture of the Scottish soldier were likely to deceive or confuse purchasers into believing that the whisky was Scotch Whisky because the words "highland" and "highland Chief" are synonymous with Scotch Whisky and the picture of the Scottish soldier is a well-known symbol of Scotland. 3. The court held that the use of the words "highland Chief" was a false trade description because it was untrue or misleading as to the place of origin of the whisky.
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 product described as "malted Whisky" along with the 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 Scotland and is thus likely to deceive or confuse the unwary pur" chaser 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, 1974, manufacturing various types of liquors and having its registered office at Solan in Himachal Pradesh. The appellant filed application with Trade Mark Registry seeking registration of trademark consisting of label, inter alia, portraying in vivid colours the bust of what appears to be Scottish soldier with words "highland Chief" in class 33 in respect of Whisky. The application was admitted by the Assistant Registrar and advertised in Trade Marks Journal on Oct. 16, 1964. The Scotch Whisky Association, (hereinafter let erred 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 if not, in fact, the case, filed opposition to the said application on Feb. 11, 1965. It was contended, inter alia, that 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, a well known symbol of Scottish origin. If 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 description could only be used in relation to a product wholly distilled in Scotland. It was, however, pleaded that the label bore name and place of manufacture and bottling in bold letters and set forth that the produce was a product of India and, therefore, no conside ration 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, took 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 Scotland. The result was that the opposition was dismissed and application No. 214480 was ordered to be proceeded with tor registration vide order dated April 21, 1970.
( 5 ) FEELING aggrieved, the respondent preferred appeal under S. 109 of the Trade and Merchandise Marks Ac
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