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2019 Supreme(Del) 1498
IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Allied Blenders and Distillers Private Limited – Appellant
Versus
Rangar Breweries Ltd. – Respondent
Civil Suit (COMM) No. 1213 of 2018
Decided On : 21-05-2019
Advocate Appeared:
Sanjay S. Chhabra, Shrawan Chopra, Vibhav Mithal, Bobby Jain, Vijay Laxmi Mewana, Dushyant K. Mahant, Ajit Pathak.
The main legal point established is that repeated infringement of a trademark can lead to the grant of a permanent injunction, and the Court may order the infringing party to pay costs and consider refunds in case of third-party involvement in counterfeiting.
Headnote:
Trademark Infringement - Officer's Choice - Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 - Order XVA Rule 2
Fact of the Case:
The Plaintiff, a whisky manufacturer, filed a suit against the Defendant for using bottles bearing the Plaintiff's trademark 'Officer's Choice' for selling country made liquor under the brand name 'Rangar da Santra'. The Defendant had previously given an undertaking to not use the bottles with the Plaintiff's trademark, but the Plaintiff found infringing bottles again. The Defendant denied using the bottles but agreed to suffer an injunction.
Finding of the Court:
The Court found that the Defendant was using bottles bearing the Plaintiff's trademark for selling its product, and granted a permanent injunction against the Defendant. The Court also directed the Defendant to pay costs to the Plaintiff and agreed to refund 50% of the amount if a third party was found to be involved in the counterfeiting.
Issues: The issues involved the repeated infringement of the Plaintiff's trademark by the Defendant, the Defendant's denial of using the bottles, and the question of costs and refund in case of third-party involvement in counterfeiting.
Ratio Decidendi: The Court applied the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, and Order XVA Rule 2 to determine that a permanent injunction was warranted due to the Defendant's use of the Plaintiff's trademark. The Court also considered the Defendant's denial and the potential involvement of a third party in counterfeiting.
Final Decision: The suit was decreed in favor of the Plaintiff, and the Defendant was directed to pay costs. The Court granted a permanent injunction against the Defendant and agreed to refund 50% of the costs if a third party was found to be involved in the counterfeiting.
JUDGMENT :
Prathiba M. Singh, J.
1. The Plaintiff, M/s. Allied Blenders and Distillers Pvt. Ltd. is a manufacturer and seller of whisky under the trademark Officer's Choice. The same is registered in the name of the Plaintiff and has been in use since 1988. The case of the Plaintiff is that Officer's Choice is the largest selling whisky in the world in terms of volumes. The Plaintiff has placed on record several orders which have been passed in various proceedings protecting the trademark Officer's Choice. The registrations for the mark "Officer's Choice" have also been set out in paragraph 14 of the plaint.
2. The present suit has been filed against Defendant-M/s. Rangar Breweries Ltd. which sells country made liquor under the brand name 'Rangar da Santra' among others. The Plaintiff has raised a grievance that the Defendant's products are being sold with the label of the Defendant. However, the said bottles have embossings of the trademark Officer's Choice on them. The bottles could be recycled bottles of the Plaintiff but the Defendant has no right to be using the same for the purpose of manufacture and sale of their own product Rangar da Santra.
3. The Plaintiff has instituted proceedings against the Defendant in the past being CS (OS) No. 1198/2012. At that time, the Defendant was selling country made liquor under the mark/label Lal Quila. In the said suit, the Defendant had given an undertaking to the following effect:
"(a) The defendant will not use the bottles on which "Officer's Choice" has been embossed, for selling liquor in any other manner.
(b) The defendant will not use the bottles having designs identical or similar to the plaintiff's design Registration No. 223751 dated 10th July, 2009 under class "09-01."
(c) The bottles, if any, which infringe the registered design of the plaintiff and/or on which "Officer's Choice" has been embossed would be destroyed by the defendant Company within two weeks."
4. Thereafter, the Plaintiff traced infringing activity of use of "Officer's Choice" bottles by the Defendant and addressed letters to the Defendant, including letter dated 6th April, 2015. The Defendant, vide its reply dated 11th April, 2015, confirmed that it had withdrawn all the bottles bearing the name "Officer's Choice" and that it would abide by the decree dated 18th September, 2012.
5. The present suit has, thereafter, been filed on the premise that the Plaintiff again found bottles under the mark, which were being sold bearing the Defendant's label by embossing the mark Officer's Choice. One such bottle was purchased by the Plaintiff on 30th June, 2018, from M/s. Daya Nand Tyagi & Co. Beli Bangla, Teh. Nalagarh, Ramshehar Unit. The Plaintiff has produced the original bottle which has the embossing of Officer's Choice and on the front side bears the yellow and black Rangar da Santara label. The label also bears the printed excise batch number and the date of manufacturing. The Plaintiff also claims that it has a registered design in respect of the said bottle. The registration certificate of the design no. 221521 has also been placed on record. In view of these submissions, vide order dated 31st October, 2018 the Defendant was restrained from using the said glass bottles bearing the mark Officer's Choice. The said order reads as under:
"13. It appears that the Defendant is sourcing these bottles from the market and fixing its own label and mark with whisky in the said bottle. The same constitutes not just infringement of the registered trademark but also constitutes falsification of the mark of Plaintiff. Defendant is well aware of the Plaintiffs mark owing to earlier proceedings, which have been filed against it. Plaintiff has made out a prima facie case in its favour. Balance of convenience rests in favour of the Plaintiff and irreparable harm would be caused to the Plaintiff if the Defendant is not injuncted. Accordingly, it is ordered that till the next date the Defendant is restrained from marketing its liquor/whis
