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IN THE HIGH COURT OF DELHI
Sanjeev Sachdeva, J.
Radico Khaitan Limited - Appellant
Versus
Brima Sagar Maharashtra Distilleries Ltd. - Respondent
C.S. (OS) 1572/2013
Decided On : 15-10-2014
The court examined the validity of two assignment deeds, one executed in 2005 and the other in 2010, both involving the assignment of trademarks for alcoholic beverages. The court found that the 2005 assignment deed was valid and transferred all rights, titles, and interests in the assigned trademarks to the plaintiff, including the right to use the trademarks and the goodwill associated with them. The court held that the 2010 assignment deed, which purported to assign the same trademarks to the defendant, was invalid because it violated the principle of one mark, one proprietor, and resulted in the creation of concurrent exclusive rights in more than one person, which was likely to deceive or cause confusion. The court also found that the defendant's adoption of deceptively similar trademarks was dishonest and that the defendant could not claim the defense of honest concurrent user. The court granted an ad-interim injunction restraining the defendant from using the deceptively similar trademarks.
Fact of the Case:
The plaintiff, a manufacturer and marketer of alcoholic beverages, filed a suit against the defendant, a competing manufacturer and marketer of alcoholic beverages, for infringement of trademarks, passing off, and other related claims. The plaintiff alleged that the defendant was using deceptively similar trademarks for its alcoholic beverages, which were likely to cause confusion among consumers and dilute the plaintiff's goodwill and reputation. The defendant contended that it had acquired the trademarks through a valid assignment deed and that it was entitled to use them.
Finding of the Court:
The court found that the 2005 assignment deed was valid and transferred all rights, titles, and interests in the assigned trademarks to the plaintiff, including the right to use the trademarks and the goodwill associated with them. The court held that the 2010 assignment deed, which purported to assign the same trademarks to the defendant, was invalid because it violated the principle of one mark, one proprietor, and resulted in the creation of concurrent exclusive rights in more than one person, which was likely to deceive or cause confusion. The court also found that the defendant's adoption of deceptively similar trademarks was dishonest and that the defendant could not claim the defense of honest concurrent user.
Issues: 1. Whether the 2010 assignment deed was valid and transferred the trademarks to the defendant. 2. Whether the defendant's use of deceptively similar trademarks constituted infringement and passing off. 3. Whether the defendant could claim the defense of honest concurrent user.
Ratio Decidendi: 1. The court held that the 2010 assignment deed was invalid because it violated the principle of one mark, one proprietor, and resulted in the creation of concurrent exclusive rights in more than one person, which was likely to deceive or cause confusion. 2. The court found that the defendant's use of deceptively similar trademarks constituted infringement and passing off because it was likely to cause confusion among consumers and dilute the plaintiff's goodwill and reputation. 3. The court held that the defendant could not claim the defense of honest concurrent user because its adoption of the deceptively similar trademarks was dishonest.
Final Decision: The court granted an ad-interim injunction restraining the defendant from using the deceptively similar trademarks.
JUDGMENT :
Sanjeev Sachdeva, J.
IA 12712/2013 (On behalf of the Plaintiff Under Order 2 Rule 2 CPC)
The present application has been filed by the Plaintiff seeking liberty under Order 2 rule 2 to sue the Defendant for similar reliefs as prayed for in the suit in respect of other trademarks of the Plaintiff which are being infringed by the Defendant and of which the Plaintiff does not have knowledge at present but may become aware in the future.
The Plaintiff has contended that the Plaintiff has filed the present suit in respect of only five trademarks of the Plaintiff which are being infringed by the Defendant. It is contended that the Plaintiff is not aware if the Defendant is infringing any other trademark of the Plaintiff. Liberty is sought to sue the Defendant in future in respect of trademarks that are not subject matter of the present suit and in respect of which the Plaintiff is not aware if the Defendant is infringing the same.
The present suit is restricted to the trademarks that are subject matter of the present suit. The Plaintiff has contended that the Plaintiff is not aware if any other trademark is being infringed by the Defendant. In case the Plaintiff becomes aware subsequently that the Defendant is infringing any other trademark of the Plaintiff, cause of action would accrue to the Plaintiff from the date of such knowledge. In the said circumstances the application is allowed and the liberty is granted to the Plaintiff under Order 2 rule 2. IA 16926/2013 (On behalf of the Plaintiff under Section 148 Code of Civil Procedure for enlargement of time to file rejoinder to reply filed by Defendant in IA 12719/2013)
The Plaintiff has sought for enlargement of time to file the rejoinder to the reply filed by the Defendant to the application filed by the Plaintiff under Order 39 rules 1 & 2.
The Rejoinder has since been filed and the arguments of the parties have been made on the said application under Order 39 rules 1 & 2. Parties have addressed detailed submissions. The respective pleadings of the parties have been taken into consideration.
In view of the above, the application is allowed and the time to file the rejoinder is enlarged. The rejoinder is directed to be taken on record.
IA 12710/2013 (On behalf of the Plaintiff under Order 39 rules 1 & 2 Code of Civil Procedure)
1. The Plaintiff has filed the present suit for permanent injunction, restraining infringement of trademark, infringement of copyright, passing off etc. against the Defendant thereby restraining the Defendant from selling, manufacturing, offering for sale or in any manner dealing in any alcoholic beverage bearing the mark/label "BRIHAN'S DANZ No. 1 WHISKY, BRIHAN'S PREMIUM BLUE WHISKY, GOA, NOVA GOA, BRIHAN'S ORIGINAL DOCTOR BRANDY" or from adopting/using any other identical or deceptively similar trademark/label. The case of the Plaintiff is that the Plaintiff was formerly known as Rampur Distillery and was established in the year 1943. In the year 1999, the Plaintiff launched its brand under the house mark/trademark Radico.
2. As per the Plaintiff, the Plaintiff has state-of-the-art bottling lines and had set up some well-known trademarks. The Plaintiff is stated to have set up bottling plants in various states. The Plaintiff claims to have strong presence in the market.
3. In the year 2005 the Plaintiff acquired several trademarks including GOA DRY GIN AND LIME, BRIHAN'S GOA, BRIHAN'S No. 1 WHISKY, BRIHAN'S PREMIUM BLUE WHISKY, BRIHAN'S DOCTOR BRANDY etc.. along with their goodwill from Brihans Maharashtra Sugar Syndicates Ltd. (hereinafter referred to as BMSS). Deed of assignment dated 5.10.2005 was executed in favour of the Plaintiff. The assignment is stated to cover all the intellectual property residing in the said trademarks including copyrights in the Logos/legends of the trademarks and the packaging material being used with those trademarks. The Plaintiff also has registrations in its favour in respect of some of the trademarks.
4. As per the Pl
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