The judgment establishes the principle of deceptive similarity in trademark infringement cases, emphasizing the impact on consumer perception and goodwill, irrespective of product categories and price differentials.

Rajiv Sahai Endlaw, J.

1. The plaintiff has instituted this claiming permanent injunction restraining the defendant from manufacturing, selling, offering for sale, distributing, advertising or dealing in alcoholic beverages especially Indian Made Foreign Liquor (IMFL) or goods of any description bearing the trademark and/or trade name and/or label “TOLD MOM” and/or any other name/mark or label deceptively similar to the plaintiff’s trademark/label “OLD MONK”, and for ancillary reliefs of delivery, damages etc.

2. Summons of the suit and notice of the application for interim relief were issued. After extensive arguments on 2nd December, 2010 and 8th December, 2010, the counsel for the defendant stated that the defendant was agreeable to change the mark “TOLD MOM” as well as the label then being used by it for selling rum and sought time to suggest alternative names and labels. When further time for the said purpose was sought on 20th December, 2010, the defendant was restrained from using the name “TOLD MOM” and the label which it was then using and to which objection was taken in the plaint. No settlement could however be reached between the parties. The defendant ultimately proposed to change the name of its product from “TOLD MOM” to “TALL MOM” but which proposal was rejected by the plaintiff as recorded in the order dated 19th September, 2012.

3. Arguments on the application of the plaintiff for interim relief and of the defendant under Order 39 Rule 4 of the Civil Procedure Code (CPC), 1908 were commenced on 8th January, 2013, when upon enquiry, whether any evidence was required to be led in the suit, both counsels after consideration stated that the suit itself can be disposed of without any further evidence. Accordingly, arguments were heard on the suit itself. The defendant in the course of the said arguments filed an affidavit which was taken on record and considered.

4. The case of the plaintiff in the plaint is: (i) that the plaintiff is engaged in manufacturing and selling of vetted rum under the trademark “OLD MONK” since the year 1959;

(ii) that the plaintiff’s rum under the trademark “OLD MONK” is the largest selling rum in India;

(iii) that apart from the common law rights accruing in favour of the plaintiff?s trademark “OLD MONK” by virtue of long and continuous use, the plaintiff also holds proprietary rights over the trademark “OLD MONK” by virtue of as many as fifteen registrations, first of which is of 5th July, 1971 and all of which are subsisting;

(iv) that the plaintiff also holds registration of the trademark “OLD MONK” in various other countries;

(v) that the plaintiff has been using the trademark “OLD MONK” in unique distinctive design, colour scheme, lay out, get up and the said trademark and device/logo have become exclusively associated with the plaintiff’s product; the colour combination, lay out, get up and the lettering style used on the label/logo also constitute an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1956 and the plaintiff is the owner thereof and entitled to protection thereof;

(vi) that the sales of the said product of the plaintiff in the year 2009-2010 were of approximately Rs.1,14,84,28,312;

(vii) that the plaintiff, since the year 1962 has been spending large amount of monies to promote the sales of its product “OLD MONK”, with the amount spent in the year 20092010 being Rs.2,33,65,038/-;

(viii) that the trademark “OLD MONK” , owing to continuous and extensive use for the long period of time spanning a wide geographical area, has acquired the status of a well known trademark;

(ix) that in the month of January, 2010, the plaintiff learnt of the product “TOLD MOM XXX RUM” of the defendant being sold in a label/trade dress nearly identical to and a complete rip off of the plaintiff’s product;

(x) that the defendant was thus attempting to pass off its product as those of the plaintiff to the unwary customers, encasing upon the goodwill a