ORAL JUDGMENT:

1. The shape of a bottle of Vodka gives rise to the controversy in these proceedings. The Plaintiff, in a quia timet action, asserts that the shape of its bottles of Vodka is distinctive and forms an intrinsic part of its goodwill and reputation. The grievance of the Plaintiff is that the Defendant has invaded its intellectual property rights by adopting a deceptive variation of the shape of the bottles of the Plaintiff. The case presents an interesting question, argued with felicity on both sides. Simply put, do shapes matter in the law relating to intellectual property?

2. In the early years of the twentieth Century, Mr.Leontowitsch Gorbatschow owned a distillery which manufactured Vodka in what was then St.Petersburg. Following the October Revolution of 1917 in Russia, the Gorbatschows emigrated to Berlin and received a permit to manufacture Vodka on 28 April 1921. The Plaintiff is a wholly owned subsidiary of Henkell & Co. Sektkellerei KG which has headquarters in Wiesbaden, Germany. The turnover of the group was Euro 628.6 million. The Plaintiff has bottled Vodka in a shape which is distinctive and which is perceived to be visually appealing. The first version of its bottle was introduced in 1958 and was modified in 1984. The present shape of the bottle was devised in 1996. In 1999, a device of a bird was embossed on the bottle. According to the Plaintiff Vodka is synonymous with Russia. The architecture of the Russian Orthodox Church was famous for its onion dome or bulbous structure with a diameter more than that of the tower upon which it is mounted. This, according to the Plaintiff, is the inspiration for the shape of its bottles. The Plaintiff has registered the shape of its bottle in various jurisdictions worldwide, including in Germany, Poland, New Zealand, Australia and in several nations governed by the WIPO framework. In India, the Plaintiff applied for registration of the shape of its bottle as a trade mark on 31 January 2008 in Class 33 of the Trade Marks Act, 1999, claiming use since 19 December 1999. The application is pending. The Plaintiff has claimed that the international profile of its brand under the “trade mark shape of the bottle” is impressive as it is one of the top fifteen premium Vodkas in the world. The Plaintiff has numerous awards to its credit. The Plaintiff operates and manages several websites such as www.gorbatschow.com, www.gorbatschow.de, www.wodkagorbatschow. de and www.wodkagorbatschow.in. According to the Plaintiff, its bottles of Vodka were available in India since January 1996 initially at duty free shops managed by the India Tourism Development Corporation at major International Airports. The Plaintiff officially launched its product in India in 2008 through a joint venture formed between an Indian Company and the parent of the Plaintiff. The Plaintiff claims a global goodwill and trans borders reputation transcending geographical barriers.

3. The Plaintiff claims to have learnt recently through the website of the Defendant that the Defendant claims to be manufacturing Vodka under the trade mark Salute. The case of the Plaintiff is that the bottle which has been adopted by the Defendant bears a deceptive similarity to the bottle of the Plaintiff. The shape of the Plaintiff's bottle has, according to it, acquired a secondary meaning indicative of the Plaintiff's brand. If the Defendant were to succeed in launching its product that, according to the Plaintiff, would lead to a substantial portion of the purchasing public to assume that the product of the Defendant has emanated from or has some connection with the Plaintiff. An action for passing off has accordingly been instituted.

4. This Court was moved exparte for the grant of ad-interim relief. On 20 September 2010, a Single Judge granted ad-interim relief in terms of prayer clause (a) of the motion, subject to the clarification that it would be open to the Defendant to market its goods and to sell them