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2019 Supreme(Del) 1648
IN THE HIGH COURT OF DELHI
JAYANT NATH, J.
Allied Blenders And Distillers Private Limited And Others - Appellant
Versus
Amit Dahanukar And Another - Respondent
Civil Suit (Comm) No. 1067 of 2016
Decided on : 30-05-2019
Advocate Appeared:
Rajiv Nayyar, Adv., Shrawan Chopra, Adv., Sanjay Chhabra, Adv., Pundreek Dwivedi, Adv., Hemant Singh, Adv., Mamta Jha, Adv., Waseem Shuaib Ahmed, Adv., Saumya Gupta, Adv.
The main legal point established in the judgment is the principle of comity and the legal implications of delay and laches in seeking relief, particularly in the context of trademark infringement and the continuing cause of action.
Headnote:
Trademark Infringement - Alcoholic Beverages - Agreement dated 7.7.1983 and 23.2.1987 - [TRADEMARK INFRINGEMENT] - [Alcoholic Beverages] - [Agreement dated 7.7.1983, Agreement dated 23.2.1987] - The court discussed the interpretation of the agreements dated 7.7.1983 and 23.2.1987, which were central to the dispute. The plaintiff sought a decree of permanent injunction to restrain the defendants from manufacturing, selling, etc. alcoholic beverages bearing the trademark MANSION HOUSE and SAVOY CLUB. The defendants claimed exclusive rights in the trademarks based on the agreements. The court highlighted the conduct of the parties and the findings of the Bombay High Court, emphasizing the principle of comity and the legal implications of the plaintiff's delay and laches in seeking relief.
Fact of the Case:
The plaintiff sought a decree of permanent injunction to restrain the defendants from manufacturing, selling, etc. alcoholic beverages bearing the trademark MANSION HOUSE and SAVOY CLUB. The defendants claimed exclusive rights in the trademarks based on the agreements dated 7.7.1983 and 23.2.1987. The Bombay High Court had previously dismissed the plaintiff's notice of motion for interim injunction, recording findings in favor of the defendants.
Finding of the Court:
The court emphasized the principle of comity and the legal implications of the plaintiff's delay and laches in seeking relief. It held that the plaintiff's conduct amounted to forum shopping and abuse of process of law. The court also noted the continuing cause of action in the case of trademark infringement, which was not barred under Order 2 Rule 2 CPC.
Issues: The issues revolved around the interpretation of the agreements dated 7.7.1983 and 23.2.1987, the conduct of the parties, the findings of the Bombay High Court, and the legal implications of the plaintiff's delay and laches in seeking relief.
Ratio Decidendi: The court's decision was influenced by the principle of comity, the legal implications of the plaintiff's delay and laches, and the continuing cause of action in the case of trademark infringement, which was not barred under Order 2 Rule 2 CPC.
Final Decision: The court dismissed the plaintiff's application for interim injunction, vacated the interim order, and dismissed the defendant's application seeking dismissal of the suit.
JUDGMENT :
Jayant Nath, J.
IA Nos.8795/2017 & 14016/2015
1. The suit is filed by the plaintiff seeking a decree of permanent injunction to restrain defendants etc. from manufacturing, selling, etc. alcoholic beverages especially IMFL and/or goods of any description bearing the trademark MANSION HOUSE and SAVOY CLUB or any other mark which is deceptively similar to the plaintiff's said registered trademarks. Other connected reliefs are also sought.
2. Ia No.14016/2015 is filed by the defendant for dismissal of the suit under Order 2 Rule 2 CPC. IA No.8795/2017 is filed by the plaintiffs under Order 39 Rules 1 and 2 CPC to restrain the defendants from creating any third rights in the trademarks MANSON HOUSE and SAVOY CLUB during pendency of the present dispute.
IA No.8795/2017
I will first deal with the above application for injunction. I may note that when this matter came up for hearing on the first date on 13.10.2014 only notice was issued on the stay application i.e. IA. No. 19963/2014 and no ex parte injunction was passed. IA No. 19963/2014 is still pending. Thereafter IA No.8795/2017 was filed by the plaintiff. In the said application being IA No.8795/2017 it is stated that recently plaintiff No.1 became aware that defendant No.2 has informed stock exchanges that a company Edelweiss Asset Reconstruction Company Ltd. has acquired part of the debt of the defendants. It is further claimed that the plaintiffs has rights in the trademarks MANSION HOUSE and SAVOY CLUB. It is further stated that the plaintiffs apprehend that defendants would create third party rights in the said trademarks and the plaintiffs would suffer great prejudice and irreparable injury. On 13.11.2017 the court directed that status quo qua transfer of the subject trademark will be maintained by all the parties till the next date of hearing. The matter was heard on more than 8 different dates and judgment was reserved.
3. The case of the plaintiff as stated in the plaint is that the plaintiff No.2 is said to be an affiliate company of plaintiff No.3 and a part of the UTO/Harman Jansen Group of Companies. The groups are producers, sellers and distributors of various spirits and liquors including whiskies, gin, etc. tracing their origin back to 1777. Present suit concerns the trademarks MANSION HOUSE, MH and SAVOY CLUB for alcoholic beverages. It is the case of the plaintiff that through their predecessors they have been using the above marks for more than 70 years and their extensive use has spread over several countries. It is pleaded that in 2014 plaintiffs No.1 and 2 acquired ownership in the above trademarks for India and other neighbouring countries as stated in the Assignment Deed from plaintiff No.3 and its other group companies.
4. It is pleaded that the plaintiff's predecessors have been using the trademark MANSION HOUSE since 1912. In India it is stated that plaintiff No.3 is the registered proprietor of the trademark MANSION HOUSE which dates back to 1983.
5. The plaintiff's use of the trademark SAVOY CLUB dates back to 1947. In India plaintiff No.3 is the registered proprietor of SAVOY CLUB trademark. It is pleaded that the plaintiffs enjoy vast reputation and goodwill in the said trademarks and is recognized as proprietor of the said trademarks globally.
6. Pursuant to a request from defendant No.2 plaintiff No.3 granted a license to defendant No.2 on 7.7.1983 to use the plaintiff's said trademarks MANSION HOUSE and SAVOY CLUB for alcoholic beverages in India. It is further stated that a dispute that arose between Scotch Whisky Association and plaintiff No.3 over the use of the term SCOTCH. Certain proceedings commenced against plaintiff No.3 in a Dutch Court. It was suggested by defendant No.2 that the said trademarks in India be temporarily transferred to the defendant so that the Plaintiff was not liable for its use in India. Another agreement was entered into between the parties on 23.2.1987. It is claimed that plaintiff No.3 retained ownership of the
