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IN THE HIGH COURT OF DELHI AT NEW DELHI
JAYANT NATH, J.
United Spirits Limited – Appellant
Versus
Som Fragrances Private Limited & Ors. – Respondents
CS(COMM) 420 of 2020
Decided on : 28-04-2021
Trade Mark - Seeking relief of grant of an ad-interim injunction in favour of plaintiff and against the defendants against infringement of plaintiff’s registered trade mark - Impugned mark with underline under word ‘SIGGNATURE’ - Trade mark of plaintiff is a well- known trade mark with user since 1993 - Trade mark is registered since 1994. It is a well-know brand and merely, because products being sold by defendants are different would not be a ground to vacate interim order.
Finding of the court: It well-known mark is said to be a mark which signifies certain qualities that transcend goods and services for which it is registered. Plaintiff prima facie was conscious that use of this mark by the defendant does not create confusion or deception in the minds of the general public. That is why it agreed for the said settlement and allowed the defendant to use the said mark. One cannot forget that the defendant also claims to be using the noted mark SIGGNATURE since 1985.
Result: Applications disposed of.
JUDGMENT :
JAYANT NATH, J.
IA No.9010/2020 (U/O 39 R 1 & 2 CPC) and IA No.11432/2020(U/S 151 CPC)
1. IA No. 9010/2020 is filed by the plaintiff seeking the relief of grant of an ad-interim injunction in favour of the plaintiff and against the defendants against infringement of the plaintiff’s registered trade mark i.e.
IMAGE
2. On 07.10.2020, this court passed an interim order granting an ad interim injunction in favour of the plaintiff and against the defendants in terms of prayer (a) and (b) of IA No. 9010/2020. Prayer (a) and (b) of IA No. 9010/2010 reads as follow:-
IMAGE
restraining the respondents, their promoters, directors, assigns, relatives, successors-in interest, licensees, franchisees, partners, representatives, servants, distributors, employees, agents etc. or anyone associated with them from using the marks SIGGNATURE/or any other marks or variation thereof, identical to or deceptively similar to or containing the applicant’s registered trade mark written in a unique font and with the underline under the word ‘SIGNATURE’ either as a trade mark, copyright or as a part of their website, their products, hoardings/signages, social media webpages, online trade directories, etc. and/or in any manner whatsoever so as to infringe the same; b) Grant an ad-interim injunction in favour of the Applicant restraining the Respondents, their promoters, directors, assigns, relatives, successors-in-interest, licensees, franchisees, partners, representatives, servants, distributors, employees, agents etc. or anyone associated with them from using the mark SIGGNATURE/and/or any other mark/variation thereof identical to or deceptively similar to the Applicant’s trade mark SIGNATURE/in any manner whatsoever so as to pass off or enable others to pass off their goods as emanating from the Applicant and for the goods of the Applicant;”
3. IA No. 11432/2020 is filed by the defendants to vary or modify the order dated 07.10.2020 and take on record the defendants label which was in use as per the terms of the undertaking prior to filing of the suit.
4. It is the case of the plaintiff that it is part of the Diageo Group of Companies and is a subsidiary of Diageo Plc, which is one of the global leaders in manufacturing, distributing, marketing and sale of alcoholic beverages with a large collection of brands across spirits and beer. The brands offered by the plaintiff span across price points operating in all types of segments such as Popular, Prestige, Premium and Luxury. MCDOWELL’s No.1, ROYAL CHALLENGE, SIGNATURE, ANTIQUITY, BLACK DOG are some of the marquee brands etc. In addition, the plaintiff has rights to import, manufacture, distribute and sell various iconic Diageo Global Brands in India such as JOHNNIE WALKER, BAILEYS, CAPTAIN MORGAN, etc.
5. Products under the trade mark SIGNATURE/were first introduced in India in the year 1993 and are known for their iconic green coloured octagonal bottles and the brand is available in two variants-‘SIGNATURE Rare Aged Wishky’ and ‘SIGNATURE Premier Grain Whisky’. It is stated that the plaintiff has developed a strong business and distribution network in India. The mark SIGNATURE/stands registered in favour of the plaintiff since December 1994 in class 33 in respect of whisky. The said mark is valid and renewed up to 05.12.2024. It is stated that the plaintiff has obtained several other registrations for the mark under different variations that comprise the mark ‘SIGNATURE’ with the underline below the word ‘SIGNATURE’ as its foremost feature. The plaintiff has also obtained registrations for several other ‘SIGNATURE' formative marks such as ‘SIGNATURE SOLITAIRE’, ‘SIGNATURE STARTUP’, ‘SIGNATURE MISERIES’, etc. The immense sales of products reflecting plaintiff’s trade mark/SIGNATURE are wholly attributable to the high quality of its product
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