Back
2014 Supreme(Del) 2034
High Court of Delhi
G.P. MITTAL, J.
Diageo Brands B. V & Others
Versus
Khoday Breweries Ltd. & Others
I.A. No. 16758 of 2010 & I.A. No. 1908 of 2012 In CS (OS) No. 2510 of 2010
Decided On : 03-09-2014
For the Plaintiffs :C.M. Lall, Nancy Roy, Advocates.
For the Defendants :D1 to D15, Gopal Jain, Senior Advocate with Padma Priya, Advocate.
The Plaintiffs established a strong prima facie case for trademark infringement and passing off, leading to the grant of an ad interim injunction.
Headnote:
Trademark Infringement - Ad Interim Injunction - Code of Civil Procedure, 1908
Fact of the Case:
The Plaintiffs sought an ad interim injunction against the Defendants for trademark infringement, passing off, unfair competition, and damages. The Plaintiffs alleged that the Defendants, part of a group of companies dealing in alcohol and beverage products, were using or attempting to use trademarks deceptively similar to the Plaintiffs' trademarks. The Plaintiffs operate globally and own a portfolio of well-known brands. The Defendants had filed trademark applications confusingly similar to the Plaintiffs' trademarks, some of which were opposed by the Plaintiffs. The Plaintiffs sought ad interim injunction to restrain the Defendants from using or asserting any right to use the trademarks mentioned in the application.
Finding of the Court:
The Court found that the Defendants had applied for trademarks deceptively similar to the Plaintiffs' trademarks and had not used or proposed to use these trademarks. The Court held that the Plaintiffs had established a strong prima facie case for trademark infringement and passing off. It also found that the Plaintiffs would suffer irreparable loss and injury if the injunction was not granted. The balance of convenience also favored the Plaintiffs as they were entitled to protection of their trademarks. Therefore, the Court granted an ad interim injunction in favor of the Plaintiffs and against the Defendants, restraining them from using or asserting any right to use the trademarks mentioned in the application and from passing off goods as those of the Plaintiffs.
Issues: Trademark infringement, passing off, unfair competition, damages
Ratio Decidendi: The Defendants had applied for trademarks deceptively similar to the Plaintiffs' trademarks, without using or proposing to use these trademarks. The Plaintiffs had established a strong prima facie case for trademark infringement and passing off, and would suffer irreparable loss and injury if the injunction was not granted. The balance of convenience favored the Plaintiffs as they were entitled to protection of their trademarks.
Final Decision: The Court granted an ad interim injunction in favor of the Plaintiffs and against the Defendants, restraining them from using or asserting any right to use the trademarks mentioned in the application and from passing off goods as those of the Plaintiffs.
1. By virtue of this application under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (CPC), the Plaintiffs seek an ad interim injunction in their favour and against the Defendants in the following terms :-
(i) From either jointly or severally using or attempting to use or asserting any right to use or applying to register or to maintain the applications, or to register any of the trademarks mentioned in paragraph 20 of the plaint or any other trademark similar to any trade mark of any of the Plaintiffs more particularly mentioned in paragraphs 5 to 16 of the plaint, or using or applying for any trademarks containing an essential or prominent element of the trademarks mentioned in paragraphs 5 to 16 of the plaint or in any other manner whatsoever infringing the registered trademarks of the Plaintiffs or in violation of any other rights in the registered trademarks of the Plaintiffs;
(ii) From passing off their goods as and for the goods of the Plaintiffs by the use of any of the marks specifically mentioned in paragraph 20 of the plaint or any other trademark similar to the trademarks of the Plaintiffs more particularly mentioned in paragraphs 5 to 16 of the plaint or associating themselves or their products in any way with the Plaintiffs or the Plaintiffs' trademarks or products; and
(iii) From either jointly or severally using or attempting to use or asserting any right to use the registered trademarks, mentioned under paragraph 21 of the plaint and/ or any other registration that the Defendants may have obtained for a mark which is similar to trademarks of the Plaintiffs mentioned in paragraphs 5 to 16 of the plaint and produce such Registration Certificates.
2. A suit for permanent and mandatory injunction for infringement of registered trademarks, for passing off, unfair competition and damages has been filed by the Plaintiffs alleging that the Plaintiffs are a group of companies or associated or affiliated companies of Diageo Plc., which is one of the world’s most famous trade names in manufacturing, distribution, marketing and sale of alcohol beverages including wines, liquors, spirits, cordials, beers and other products.
3. Plaintiffs operate in over 180 countries and territories across Europe, North and South America and Asia-Pacific and are the owners of a global portfolio of the world’s best known brands such as JOHNNIE WALKER RED LABEL, JOHNNIE WALKER BLACK LABEL, JOHNNIE WALKER GREEN LABEL, JOHNNIE WALKER GOLD LABEL, JOHNIE WALKER BLUE LABEL, CAPTAIN MORGAN, VAT 69, SMIRNOFF, BLACK & WHITE, BAILEYS, BELL’S, J&B and GUINNES and several others.
4. It is urged that Plaintiff no. 1 is a company incorporated under the laws of Netherlands and is the registered proprietor of the trademarks mentioned at pages 17-38 of the plaint, in India. Some of the mentioned registrations are pending certain recordals of devolution of title and are pursued by Plaintiff no. 1 with the Trademarks Registry. However, applications for the trademarks mentioned at pages 38-39 of the plaint are pending before the Registrar of Trademarks in India.
5. Plaintiff no.2 is a corporation incorporated under the laws of the State of Connecticut, U.S.A. and is the registered proprietor of the trademarks mentioned at pages 40-51 of the plaint, in India. Some of the mentioned registrations are pending certain recordals of devolution of title and are pursued by Plaintiff no.2 with the Trademarks Registry. However, applications for the trademarks mentioned at page 51 of the plaint are pending before the Registrar of Trademarks in India.
6. Plaintiff no.3 is a corporation organised under the laws of Scotland and is the registered proprietor of the trademarks mentioned at pages 52-56 of the plaint, in India. Some of the mentioned registrations were pending certain recordals of devolution of title and are pursued by Plaintiff no.3 with the Trademarks Registry. However, applications for the trademarks mentioned at
