IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 12.10.2007
Coram
THE HONOURABLE MR. JUSTICE P.K.MISRA
AND
THE HONOURABLE MR. JUSTICE K.MOHAN RAM
Trade Mark Second Appeal (TMSA) No.2 of 1999
and
Civil Miscellaneous Petition No.4350 of 1999
Khoday Distilleries Limited
A Company incorporated under the Companies Act
having its Registered Office at
No.54
Kannayakana Agrahara
Anekal Taluk
Bangalore District
Karnataka State ..Appellant
Vs.
1. The Scotch Whisky Association
No.20
Atholi Crescent
Edinburgh
Scotland
United Kingdom
2. John Walker and Sons Limited
No.83
St. James Street
London SWIA Ind.
3. The Deputy Registrar of Trade Marks
Trade Mark Registry
Shastri Bhavan
Shastri Bhavan
No.35
Haddows Road
Chennai 600 006
Now at
Rajaji Bhavan
Besant Nagar
Chennai 600 090 ..Respondents
TMSA filed under Section109 of Trade and Merchandise Marks
Act 1958 against the judgment dated 25.09.1998 made in
T.M.A.No.3 of 1989.
For Appellant : Mr. Vedantham Srinivasan,
for Mr. C.Hanumantha Rao
For Respondents : Dr. Veerendra Thulza Purkar,
Assisted by
Mr. Amit Jamsandikan.
Mr. Swapail Desan for Mr. N.L.Rajah.
J U D G M E N T
(Judgment of the Court was delivered by K.Mohan Ram, J.)
This appeal has been filed under Section 109 of the
Trade and Merchandise Marks Act, 1958 (hereinafter referred
to as ‘the Act’) against the order of the learned Single
Judge dated 25.09.1998 in T.M.A. No. 3 of 1989 and Cross
Objections. The said appeal has been filed against the
order dated 12.05.1989 passed by the learned Deputy
Registrar of Trade Marks allowing the Rectification
application No.MAS-300 and directing the removal of the
Registered Trade Mark No.273203 of the appellant from the
Register.
2. The rectification application relates to
rectification of Registered Trade Mark No.273203 in Class 33
consisting of the words ‘PETER SCOT’ per se. The said
trade mark was registered with effect from 3rd July 1971 by
Khoday Distilleries Private Limited, the appellant herein,
on the basis of user claimed since May 1968. On 21.04.1986,
rectification application was filed by the respondents 1 & 2
seeking expunction of the impugned registered trade mark on
the ground:
(1) That the registration of impugned trade
mark offends Section 9 of the Act on the ground
that the mark was neither distinctive nor capable
of distinguishing the registered proprietors’
goods;
(2) That the impugned registration also
contravenes Section 11 as the impugned registered
trade mark contains the word ‘SCOT’ which is
likely to deceive or cause confusion in as much
as the word ‘SCOT’ indicates Scottish origin for
the liquors;
(3) That the mark is also disentailed to
protection in a Court of law
(4) That in all the foregoing premises, the
mark shall be removed from the register.
3. The registered proprietors namely the appellants
herein filed a counter statement denying all the material
averments in the application for rectification and
ultimately prayed for the exercise of Registrar’s discretion
to allow the trade mark to remain on the register.
4. The respondents 1 & 2 filed an affidavit of IAN Glen
Barclay in-house solicitor of the first respondent as
evidence in support of the application for rectification and
also 20 third party affidavits have been filed as evidence.
But the appellant herein did not file any evidence in
support of registration.
5. The Deputy Registrar of trade Marks, the third
respondent herein framed the following five issues;
(1) Whether the Applicants are “persons
aggrieved” under Section 56;
(2) Whether the Application for rectification
is not maintainable due to any mis-joinder of
Applicants;
(3) Whether the impugned mark was not
distinctive of the goods of the registered
proprietors at the commencement of the
rectification proceedings;
(4)Whether the impugned registration
contravenes Section 11 at the commencement of
rectification proceedings; and
(5) Whether the mark is liable to be
rectified and if so, in what manner.
6. On a careful consideration of the materials
available on record, the third respondent held that the
first respondent association cannot be regarded as a “rival
in trade” to the registered proprietors and consequently
held that the first respondent cannot be considered to be a
person aggrieved and accordingly accepted the contentions of
the appellant that the first respondent has no locus standi
to maintain the application under Section 56 of the Act.
But at the same time, upheld the locus standi of the second
respondent. As far as the second issue is concerned, the
third respondent held that the mis-joinder of applicants is
not fatal. As far as the third issue is concerned, the
third respondent held that the respondents 1 & 2 herein have
practically admitted that the impugned mark is in use during
the last several years and therefore it cannot be held that
the impugned mark is not distinctive of the goods of the
registered proprietors at the commencement of the
proceedings and accordingly, decided the issue against the
respondents 1 & 2 and in favour of the appellant herein. So
far as the issue No.4 is concerned, the third respondent
mainly relying upon the failure on the part of the
appellants to adduce any evidence to counter the evidence
adduced by the respondents 1 & 2, accepted the case of the
respondents 1 & 2 and held that the impugned registration
contravenes Section 11 on the date of the rectification
proceedings. In the absence of contra evidence on the side
of the appellant, the third respondent accepted the plea of
deceptive element in the impugned mark and also rejected the
plea of acquiescence put forth by the appellant.
7. In the appeal against the order passed by the third
respondent, filed by the appellant herein, the learned
Single Judge agreed with the findings of the third
respondent and dismissed the appeal.
8. In his order the learned Singe Judge in paragraphs
29, 36 and 37 has observed as follows:
“29. The reputation and good will earned by Scotch
Whisky has been set out at great length in the
affidavit of the solicitor to the Scotch Whisky
Association. The appellant did not choose to
controvert any of the averments in that affidavit
or in the other affidavits nor did it offer any
evidence. The objection statement filed by the
appellant cannot be treated as evidence.
36. It is unfortunate that the appellant had
chosen to refrain from placing any material before
the authority to refuse the claim for
rectification. Apparently appellant did not have
great faith in the validity of the registration
and did not consider it worthwhile even to cross-
examine the witnesses who had filed the affidavits
in support of the application for rectification.
It is evident that adoption of the mark ‘Peter
scot’ by the appellant was for the reasons
mentioned in the affidavit of Peter Jeffery
Warren. The mark was adopted apparently with a
view to take advantage of the good will associated
with Scotch whisky by using the word ‘Scot’ as
part of the trade mark for the whisky manufactured
by the appellant.
37. The conduct of the appellant subsequent to the
registration is not of much materiality. The
appellant has continued to use that mark. The
fact that appellant did not do anything more than
use the mark does not have the effect of
discharging it from the consequences of adopting a
mark which should not have been registered.”
9. Having observed so and by applying the legal
principles applicable for deciding the application for
rectification filed under Section 56 of the Act, the learned
Single Judge held that the trade mark that was adopted by
the appellant ‘Peter Scot’ was in relation to whisky and
when so used, the mark was deceptively similar to ‘Scotch’
and was likely to lead a consumer of whisky into thinking
that the whisky manufactured in this country by the
appellant and sold under the trade mark ‘Peter Scot’ was
also scotch whisky. The learned Single Judge also held that
the registering authority should have declined to register
that mark notwithstanding the fact that no objection had
been filed. The learned Single Judge further held that the
facts of this case are not such as to warrant the conclusion
that there has been acquiescence.
10. The learned Single Judge by applying the legal
principle that the statutory standard is not actual
confusion and deception but likelihood thereof, held that
the term ‘Scot’ when used in association with whisky of non-
Scottish origin is inherently capable of and is likely to
cause confusion and deception. The learned single Judge
further held that the discretion exercised by the third
respondent is not the result of any arbitrary exercise of
power but is based upon the material placed before the
authorities and does not require interference. The learned
Single Judge held that simply because Scotch Whisky
Association consists of manufacturers by itself is
insufficient to enable the association to maintain the
action by itself but however it can do so along with a
member who is prejudicially affected by the registration and
accordingly allowed the cross-objections.
11. For proper appreciation of the contentions put
forth by the learned counsel on either side it will be
useful to refer to the following provisions of the Act viz.:-
“Section 11: Prohibition of registration of
certain marks.:
A mark–
(a) the use of which would be likely to deceive or
cause confusion; or
(b) the use of which would be contrary to any law
for the time being in force; or
(c) which comprises or contains scandalous or
obscene matter; or
(d) which comprises or contains any matter likely
to hurt the religious susceptibilities of any
class or section of the citizens of India; or
(e) which would otherwise be disentiled to
protection in a Court;
shall not be registered as a trade mark.
Section 32: Registration to be conclusive as to
validity after seven years: Subject to the
provisions of Section 35 and Section 46, in all
legal proceedings relating to a trade mark
registered in Part A of the register (including
applications under section 56), the original
registration of the trade mark shall, after the
expiration of seven years from the date of such
registration, be taken to be valid in all respects
unless it is proved-
(a) that the original registration was
obtained by fraud; or
(b) that the trade mark was registered in
contravention of the provisions of Section 11 or
offends against the provisions of that Section on
the date of commencement of the proceedings; or
(c) that the trade mark was not, at the
commencement of the proceedings, distinctive of
the goods of the registered proprietor.”
12. Heard Mr.Vedantham Srinivasan, learned senior
counsel for Mr.C.Hanumantha Rao learned counsel for the
appellant and Mr.Veerendra Thulza Purkar learned counsel for
the respondents.
13. Mr.Vedantham Srinivasan, learned senior counsel for
the appellant submitted that respondents 1 and 2 in their
rectification application raised the following grounds
namely:
(i) the mark is not distinctive;
(ii) it was not capable of distinguishing itself as the
goods of khodays;
(iii) the use of the mark is likely to deceive or
confuse;
(iv) non-user of the mark;
and the third respondent rejected the objections of
respondents 1 and 2 on distinctiveness, non-user and locus
standi and therefore it is not open to respondents 1 and 2
to plead the same in the above appeal and the issue to be
decided in the appeal is whether the mark was likely to
deceive and confuse the consumer.
(II) Learned senior counsel for the appellant further
submitted that the cause of action for filing the
rectification petition accrued from the date of knowledge
i.e., 20.09.1974 and the application ought to have been made
within three years from the date i.e., on or before
19.09.1977 as the period of limitation prescribed under
Article 137 of the Limitation Act is three years. Since the
rectification application has admittedly not been filed in
time, the same is barred by limitation. In support of his
contentions, the learned senior counsel based reliance on
the decision reported in A.I.R.1977 S.C. 282 = 1976 (4)
S.C.C. 634 (Kerala State Electricity Board Vs.
T.P.Kunhallumma), wherein it is held that the words “any
other application” will include not only any application
under Code of Civil Procedure, but it will include
applications under any Act and therefore, Article 137 of the
Limitation Act applies to the applications filed under any
Act. Learned senior counsel also relied upon the decisions
reported in 1999 (19) P.T.C. 718 and 2002 (6) Bombay CR 796
= 2003 (26) P.T.C. 517 (Bombay) (Rakesh Kumar Gupta Vs.
Goresh Domesztic Appliances and others).
(III) Regarding the scope of interference by the High
Court in an appeal filed under Clause 15 of the Letters
Patent Appeal, the learned senior counsel for the appellant
relied upon the decision of the Apex Court reported in
A.I.R. 1974 S.C. 2048 (Smt. Asha Devi Vs. Dukhi Sao and
another). In the said decision, it is laid down as follows:
“The first contention urged before us on
behalf of the appellant is that the Letters
Patent Bench was not authorized in law to
reverse the concurrent findings of fact of
the Subordinate Judge and the learned Single
Judge of the High Court. It is submitted
that a Letters Patent Appeal stand on the
same footing as a second appeal and it was
therefore not open to the Letters Patent
Bench to reverse the concurrent findings of
fact of the two courts below. We are of
opinion that this contention is not correct.
A Letters Patent appeal from the judgment of
a learned Single Judge in a first appeal to
the High Court is not exactly equivalent to
a second appeal under Section 100 of the
Code of Civil Procedure, and therefore, it
cannot be held that a Letters Patent appeal
of this kind can only lie on a question of
law and not otherwise. The matter would
have been different if the Letters Patent
appeal was from a decision of a learned
Single Judge in a second appeal to the High
Court. In these circumstances it will be
open to the High Court to review even
findings of fact in a Letters Patent Appeal
from a first appeal heard by a learned
Single Judge, though generally speaking the
Letters Patent Bench would be slow to
disturb concurrent findings of fact of the
two courts below. But there is no doubt
that in an appropriate case a Letters Patent
Bench hearing an appeal from a learned
Single Judge of the High Court in a first
appeal heard by him is entitled to review
even findings of fact. The contention of
the appellant therefore that the Letters
Patent Bench was not in law entitled to
reverse the concurrent findings of fact must
be negatived”.
(IV) Learned senior counsel for the appellant by
pointing out various contradictions in the third party
affidavits filed by respondents 1 and 2 submitted that these
evidence are not worthy of acceptance. Learned senior
counsel further contended that, according to respondents 1
and 2 themselves, 46 brands contain the name of ‘Scot’ as
part of their brand name, but no one has complained about
confusion or deceit in respect of these band name, because
the universal practice is to demand a particular brand by
its full name in the whisky trade; therefore there can be
no scope or cause for any sort of confusion or deceit
particularly having in mind the kind of customers who
consume scotch whisky as also its availability and
affordability in India where the import and trade were
severely restricted and regulated; the third party
affidavits filed in 1986 are to be rejected as false,
fabricated, contrived, untrue, unbelievable and contrary to
the course of common human conduct.
(V) The following submissions have been made by the
learned senior counsel for the appellant regarding the third
party affidavits, namely:
(a) no deponent states that he has been deceived
into thinking that “Peter Scot” was a ‘Scotch Whisky’;
(b) all the stamp papers are purchased by Little
and Co., the counsel for respondents and hence, they cannot
be treated as independent witnesses;
(c) The vital aspect that the affidavits have been
procured by M/s.Little and Company, the Solicitors of the
respondent had not been considered by the third respondent
and by the learned Single Judge; the stamp papers on which
the affidavits have been engrossed stand in the name of
M/s.Little and Company; this shows that the affidavits have
been obtained by respondents 1 and 2 for production before
the third respondent and hence they are not independent;
(d) Scotch Whiskey is very expensive; it is
generally consumed only by rich businessmen, industrialists,
well paid executives and successful professionals like
Doctors, Chartered Accountants or Lawyers; there is no
evidence from any such person; all the deponents are
ordinary individuals, some even workers and some waiters and
bar attendants; none of them have stated their financial
status; it is unbelievable that they could afford to drink
scotch whisky, which wold have cost at least Rs.60 per peg
in bars in respect of IMFL;
(e) most of the bar attendants knowing fully well
that PETER SCOT is an Indian Whiskey deliberately mislead
their customers that it was Scot Whisky; this kind of
misrepresentation could be made with any Indian Whisky
bearing a foreign name or work as brand name e.g., Diplomat,
Ambassador, McDowell’s and so on; their evidence does not
prove that a customer without any misrepresentation by them
was deceived into thinking that “Peter Scot” was scotch
whisky; practically, all the deponents have stated that
Peter Scot was an Indian Whisky; none of the deponents
refer to the lion device; In Ex/”g” (Price Lists of
liquors) exhibited in brand hotels, Indian and Foreign
Whiskies are listed separately; generally customers order
by brand or after seeking the price list; hence, there is
no likelihood of confusion;
(f) there is no evidence given by the respondents
to show that Peter Scot has been used as a trade mark for
scotch whisky; the evidence does not show that the name of
any person has been used as a trade mark for scotch whisky;
McDonald, MacAndrews are Scottish names used as brand name
for Indian Whisky; the respondents did not raise any
objection to this trade mark; in the menu cards of bars and
restaurants, the Scottish Whisky and Indian brands of whisky
are separately listed;
(g) the very same persons who have filed evidence
before the Registrar have also examined themselves in favour
of respondents 1 and 2 in Suit No.1352 of 1986 and that
itself will show that the deponents are stock witnesses and
therefore no reliance can be placed upon them; that the
third respondent himself has come to the conclusion that the
evidence of the parties are unsatisfactory and as such the
third respondent by invoking the proviso to Section 99 of
the Act should have recorded evidence;
(h) I.G.Barkley is an In house Solicitor of the
first respondent and he cannot file an affidavit on behalf
of his client; in support of the said contention, the
learned senior counsel relied upon the decision reported in
A.I.R.2003 AP 445 (Pasupuleti Subba Rao Vs. Nandavarapu
Anjaneyulu).
(VI) Learned senior counsel for the appellant submitted
that though the affidavit of Mr.Jefrey Warran was filed, the
same has been overlooked by the third respondent. In the
said affidavit in paragraph 3 it is averred as follows:
“… While I was employed by Khoday, the
whisky we produced was sold under at least
two marks, namely RED KNIGHT and PETER SCOT.
The brand name “PETER SCOT” was coined
primarily with my father in mind i.e. using
his forename “Peter” and his nationality
“Scot”. Another factor behind coining of
this brand name was the internationally known
British explorer “Captain Scott”, who is
widely known as an artist, naturalist and
Chariman of the World Wildlife Fund.
Although the name “Scott” is spelt with two
“t’s, it is phonetically the same as “Scot”.
but the third respondent has not considered the affidavit
filed by Mr.Jefrey Warran which will amount to patent non-
application of mind. Learned senior counsel submitted that
the learned Single Judge has noticed and stated that the
name of the employee cannot be a ground to name a brand,
overlooking the fact that prior to the employment of Peter
Jefrey Warren and his father Peter Warren, Khoday did not
make any whisky and therefore the appellant as blender and
brewer of this brand ascribed his name to the whisky.
(VII) Learned senior counsel for the appellant further
submitted that under Section 11 of the Customs Act, imports
of goods is prohibited except with the permission upon
import license given under the Imports and Exports Control
Act, 1947; the distribution and sale of such liquor are
restricted only to Five Star Hotels and Tourism Hotels
approved by the Department of Tourism, Government of India
Embassies, shops and airlines; the price of the goods added
with 230% customs duty 50% sales tax put it way above the
ordinary consumers of the whisky; the laws show that the
goods are not available across the country; Foreign liquors
have to be specifically produced for and obtained;
therefore, the issue of confusion does not arise at all; in
addition, the liquor being difficult to procure, it is way
above most of the persons who have filed the affidavits; in
fine, the pricing, quality and regulations remove any kind
of doubt over the brands;
(VIII) Learned senior counsel for the appellant further
submitted that the proper time for rectification was after
they had knowledge of the publication of the application for
registration of the trademark PETER SCOT; no opposition or
objection has been taken from 1968 until 1986 by which time,
the appellants has established a reputation for the trade
name and trade mark; “PETER SCOT” had found acceptance from
customers not only in India but throughout the world; the
figures from the year 1968 up to date would show the extent
of reputation earned by the Indian company; the demand it
had created among the discerning liquor customers; nowhere
has khoday’s claimed PETER SCOT as Scotch Whisky; the lable
and the carton clearly indicate then it is a product of
India distilled, blended and bottled in India in Bangalore,
Karnataka State as required by law; this satisfies the
requirements of the Trade Marks Rules Part II Schedule 4
Item 43; there is, no likelihood of any confusion or
deception as contended by the respondents, since the custom
of the trade is to sell goods by description and by brand
name only and not by the generic name like scotch or whisky
or brandy or gin or rum or beer or vodka.
(IX) Learned counsel further submitted that every wine
and every spirit, like cigarettes is only sold by the brand
name and the customer also asks and demands these goods only
by the brand name; this will clearly prove beyond doubt
that the affidavits filed by the Scotch Whisky Distillers
Association are procured, false, fabricated contrived and
obtained for the purpose of this litigation; they do not
deserve any credibility and no reliance can be placed on any
of them since many of the submissions are self-contradictory
and self defeating; the respondents did not establish the
allegation of deception or confusion; on the other hand,
some of the affidavits would reveal that the deponents are
fraudulent persons because by their own admission, they have
cheated the public by giving them something other than what
was sought by the customers; not one of the affidavits
proves the contention of the respondents as to deception or
confusion; those affidavits would amount to offences under
Section 191 of the Indian Penal Code and action should be
taken against the deponents and the persons who relied upon
them and filed them into Court for perjury; the filing of
perjured affidavits would amount to sharp practice, fraud on
court and abuse of process of law.
(X) Learned senior counsel for the appellant further
submitted that Section 26 of the Geographical Indication of
Goods Act, 1999 protects the trade mark where the rights of
such trademarks are acquired through the use in good faith;
no explanation is given by the respondents on the deception
and similarity in the name of scotch whisky brands; at
pages 118 and 199 of the typed set, the respondents have
mentioned more than 44 brands of Scotch whiskeys having the
word scott or scot, etc.,; they have not properly explained
on the phonetic similarity as well as the deception,
similarity in the name of the scotch whisky mentioned
therein; hence the objection raised by the respondents in
use of words “Scot” is not sustainable; it proves the point
of appellant that the customers of scotch whisky is
different to that of the persons consuming Indian made
foreign liquors and Indian whiskeys; hence the question of
confusion or deception in the minds of the consumers as they
go by the brand and not by the name; there is no phonetic
similarity with any of the brands of the respondents and no
customer or consumer has been deceived by the trademark of
the appellant; in Slavid 1977 RPC I PC, the Court therein
held that there is no cause for any confusion whatsoever and
there is no phonetic similarity or confusion between the
appellant’s brand name and any other brand and this is the
finding of the Division Bench of the Bombay High Court in 57
BLR.
(XI) Learned senior counsel for the appellant further
submitted that respondents 1 and 2 filed a suit in
C.S.No.1729 of 1987 on 17.06.1987 before the Bombay High
Court stating that the Whisky sold by the appellant under
the name “Peter Scot” has resulted in passing off the goods
of the appellant as that of the manufacture of Scotch in
Scotland who are well known for the Scotch whisky
manufactured by them and which is universally known as
Scotch whisky; during the pendency of the said suit this
application for rectification was filed and the same ought
to have been stayed in view of the decision reported in
A.I.R. 1999 SC 22 in the case of Whirlpool Corporation; the
conduct of the respondent in spite of their knowledge about
the alleged likelihood that the use of the trade mark of the
appellant would deceive or confuse and their failure to act
against them as early as 1974 amount to blame worthy conduct
in the relevant sense and referred to GE Trade mark case
1973 RPC 297.
(XII) Learned senior counsel for the appellant
submitted that the word Scot has many meanings from
indicating whisky; the word Scot has also other meaning
besides the native Scotland; Scotch has more than one
meaning; as per Black Law Dictionary – 3rd Edition – Scots
means in old English Law a text or contribute one share of a
contribution; “Scots” also have more than one meaning;
there is no reference to “Scot” or “Scott”; “Scot” is
indicting Scotch whisky; “Scot” is a rare surname and Scott
is a common surname; Peter Scot is the name of the person.
Learned senior counsel further submitted that the consumers
of wines are aware of the distinctive tastes of each
particular brand and not taken in or deceived by brand name
and the same principles apply to whisky also. In support of
the above said submission, the learned senior counsel for
the appellant relied upon the Decision of a Delegate of
Devils Ridge – Devils Lair (Nature of Customers).
14. Per contra Dr. Veerendra Thulza Purkar learned
counsel for Respondents 1 and 2 submitted as follows:-
(I) The present appeal under Section 109 (5) of the Act
is in the nature of a second appeal and hence concurrent
findings of facts of the Deputy Registrar which have been
confirmed by the learned Single Judge should not be
interfered with unless it is found that such findings are
capricious or perverse or based on no evidence.
(II) The decision of the Deputy Registrar is confirmed
by the learned Single Judge by a well reasoned judgment and
after proper appreciation of evidence and applying the
settled principles of law; the uncontroverted facts,
supporting the respondents’ contentions, the failure of the
appellant to lead any evidence, the failure of the appellant
to dispute the contents of the affidavits filed by the
respondents and the existence of evidence adduced before the
Deputy Registrar and which evidence have been appreciated by
the learned Single Judge show that the decision of the
Deputy Registrar and confirmed by the learned Single Judge
cannot be termed as arbitrary or capricious or unsustainable
or based on no evidence, or was reached by wrong application
of principles of law.
(III) Since the appellant had not raised the question
of limitation before the Registrar or in the first appeal,
the same cannot be raised in the above appeal; the
appellant has conceded the non-applicability of the
provisions of the Limitation Act, 1963 as could be seen from
paragraph 11 of the judgment rendered in the appeal wherein
the learned Judge has observed as follows:
“The long user by the appellant, it was
submitted, shows the acquiescence on the
part of the respondents and therefore,
despite the fact that no period of
limitation is prescribed in Sec. 56 of the
Act, the application should have been
rejected.”
(IV) Learned counsel for respondents 1 and 2
alternatively submitted that considering the objects of the
Act i.e., to maintain the purity of the Register and in the
absence of any express provision for limitation in the Act,
no Section or Article in the Limitation Act can apply so far
as the application for rectification under Section 56 is
concerned; in support of his contentions the learned
counsel relied upon the following decisions reported in
A.I.R. 1969 S.C. 1335 (Town Municipal Council Vs. Presiding
Officer, Labour Court), A.I.R. 1970 SC 209 at 210 (para 3)
(Nityanand M.Joshi & another Vs. The Life Insurance
Corporation of India and Others), A.I.R. 1977 S.C. 282 @ 285
(para 18) (The Kerala State Electricity Board Vs.
T.P.Kunhaliumma) and A.I.R. 1985 S.C. 1279 at 1280 (Sakuru
Vs. Tanaji).
(V) Learned counsel for respondents 1 and 2 further
submitted that Article 137 of the Limitation Act does not
apply to the rectification application filed by the
respondents before the Registrar. Learned counsel submitted
that the decision relied upon by the appellant namely 2002
(6) Bombay CR 796 = 2003 (26) P.T.C. 517 (Bombay) (referred
to supra) is not applicable to the facts of this case since
in the above case the application for rectification was
filed before the High Court and it has been clearly laid
down by the Apex Court that Article 137 is applicable to any
petition/applicantion filed before the Civil Court only;
similarly, the decision reported in 1999 (19) P.T.C. 718
(referred to supra) is also not applicable since in that
case also the application was filed before the High Court.
(VI) Learned counsel for respondents 1 and 2 submitted
that the contentions of the appellant that the respondents
have not made out a case for rectification under Section 11
of the Act is not sustainable; the first respondent has
specifically pleaded that the application has been filed
under Sections 11 (a) and (e) of the Act. Learned counsel
for respondents 1 and 2 submitted that under Section 11 (a)
of the Act, a mark, the use of which is likely to deceive or
cause confusion is prohibited from being registered as a
trade mark, the law does not require the respondents to
establish actual deception and confusion; as regards the
entry in respect of registered trade mark made under Section
11 (a) of the Act, it is submitted that the use of the words
“Scot” as part of the registered trade mark is not just
likely to deceive or cause confusion but has actually
resulted in causing deception and confusion in believing
such a whisky to be Scotch Whisky as the word “Scot” is a
abbreviation of /synonymous to / evocative of Scotland and
when used in relation to a whisky is indicative that such
whisky is distilled and matured in Scotland and is Scotch
Whisky; the fact that the word ‘Scot’ is indicative of/ an
abbreviation of/ synonymous to / evocative of Scotland is
admitted by the appellants in the affidavit of Mr.Peter
J.Warren which was filed by the appellants while reasoning
the adoption of the mark Peter Scot; the reason given for
adoption of the word Scot as contained in the affidavit of
Peter Warren (page 112) is that the word ‘Scot’ was the
nationality of Peter Warren which clearly shows that the
appellants admit that the word ‘Scot’ in the mark Peter Scot
is suggestive of Scotland; it is further submitted that the
use of the mark ‘Peter Scot’ containing the word ‘Scot’ in
connection with the appellant’s whisky is matured and
distilled in Scotland and therefore is Scotch Whisky; in
order to establish the same, the first respondent contended
that Scotch Whisky is a whisky which is distilled and
matured in Scotland and that it was available in India; the
material produced by the respondents in the form of the
first affidavit of Ian Barclay dated 20.10.1987 showed that
whisky distilled and matured in Scotland can be called
“Scotch Whisky”; as regard the availability of Scotch
Whisky in India, the first affidavit of Ian Barclay dated
20.10.1987 at pages 114, 116, 117, 120, 137 and 138 of the
paper book as also in second affidavit of Ian Barclay at
page 147 of the paper book and the affidavits of the
consumers and shopkeepers at pages 148 to 208 of the Paper
Book contain materials which clearly establish that the
Scotch Whisky was available in India; the contention of the
appellant that there were import restrictions till 1999 and
that, therefore, Scotch Whisky was not available in India is
contrary to the evidence on record which has not been
controverted by the appellant.
(VII) Learned counsel for respondents 1 and 2, as
regards deception and confusion, submitted that it is for
the Tribunal to ultimately arrive at a conclusion whether
there was likelihood of deception or confusion; in deciding
that question, it is not necessary to refer to or apply any
abstruse principle but a common-sense approach is required
to be applied; the question of likelihood of deception or
confusion arises in,
(a) opposition proceedings i.e. when an
application for registration is based and Section 11 of the
Act is pleaded by the opponent;
(b) in rectification proceedings where the
registration is challenged on the ground of Section 11 of
the Act;
(c) in a passing-off action.
(VIII) Learned counsel for respondents 1 and 2 relied
upon the decision reported in the case of Parker-knoll
Limited Vs. Knoll International Limited reported in 1962 RPC
265, Lord Morris of Borth-y-Guest at page 278 wherein it is
stated as follows:
“My Lords, in the interests of fair trading
and in the interests of all who may wish to
buy or to sell goods the law recognises that
certain limitations upon freedom of action
are necessary and desirable. In some
situations the law has had to resolve what
might at first appear to be conflicts between
competing right. In solving the problems
which have arisen there has been no need to
resort to any abstruse principles but rather,
I think, to the straightforward principle
that trading must not only be honest but must
not even unintentionally be unfair”.
In the instant case, the affidavits of the consumers were
filed by the respondents at pages 148 to 208 of the paper
book. It is submitted that the appellant did not file any
affidavit in reply disputing or doubting the contents of the
said affidavits. It is not now open for the appellant to
level any criticism that they are procured affidavits. It
is pertinent to note that some of the deponents had in fact
given evidence in the Bombay High Court Suit, and who were
cross-examined and the suit was decreed by Justice Pendse.
The contention of the respondents is that whisky distilled
and matured in Scotland alone is entitled to be called
“Scotch Whisky”. Any other whisky if called “Scotch
Whisky”, or by any word such as “Scot”, or “Scott” or
“Scottish” or any trade mark, emblem or device suggesting
Scottish origin is likely to deceive or cause confusion.
This contention is based on the extended principles of law
relating to unfair trading. Till 1960, the classic cases
relating to deception and confusion were confined to the use
of or in connection with his goods by one trader of the
trade, name or a trade mark so as to induce any potential
purchaser to believe that his goods were those of the rival
trader.
(IX) The aforesaid principle was extended by Justice
Danckwerts in the case of Bollinger, J., and Ors. Vs. Costa
Brava Wine Coy., Ld, reported in 1960 RPC 16 to deception
and confusion caused by a person attached to his product, a
name or description with which it has no natural association
so as to make use of the reputation and goodwill which has
been gained by a product genuinely indicated by the name or
description. The learned senior counsel relied upon the
following passage from the above decision viz.:
“There seems to be no reason why such licence
should be given to a person, competing in
trade, who seeks to attach to his product a
name or description with which it has no
natural association, so as to make use of the
reputation and goodwill which has been gained
by a product genuinely indicated by the name
or description. In my view, it ought not to
matter that the persons truly entitled to
describe their goods by the name and
description are a class producing goods in a
certain locality, and not merely one
individual. I do not believe that the law of
passing-off, which arose to prevent unfair
trading, is so limited in scope. In my view,
the decision in the Pilsbury Washburn Flour
Mills case is good sense, and I find nothing
in the English cases which is at all
inconsistent with the reasoning of the
Americal Court, except possibly some of the
remarks of Buckley J. in Whistable Oyster
Fishing Company Vs. Hayling Fisheries Ld.,
which, I think, related to the particular
circumstances of the trade in oysters in
those cases.”
The aforesaid decision was applied in the case of Wine
Products Limited and others Vs. Mackenzie & Co. Ltd., & Ors.
reported in 1969 RPC Page 1. The same principle was applied
to Scotch Whisky in the case of John Walker & Ors. Vs. Henry
Ost & Co. Ltd. & Anr. reported in 1970 RPC 489 and the
aforesaid decisions were approved by the House of Lords in
the case of Erven Warnink B.V. & Anr. Vs. J.Townend & Sons
(Hull) Ltd. & Anr. reported in 1980 RPC 31, wherein it was
observed as follows:
“I would hold the champagnes case to have bee
rightly decided and in doing so would adopt
the words of Danckwerts J., where the said
(at [1960] R.P.C. 31):
“There seems to be no reason why such
licence (sc. To do a deliberate act
which causes damage to the property of
another person) should be given to a
person, competing in trade, who seeks to
attach to his product a name or
description with which it has no natural
association, so as to make use of the
reputation and goodwill which has been
gained by a product genuinely indicated
by the name or description. In my view,
it ought not to matter that the persons
truly entitled to describe their goods
by the name and description are a class
producing goods in a certain locality,
and not merely one individual. The
description is part of their goodwill
and a right of property. I do not
believe that the law of passing-off,
which arose to prevent unfair trading,
is so limited in scope”.
In the same case, Lord Fraser of Tyllybelton in his speech
observed as follows at page 105:
” … As I have already said, I think that
the case went rather further than the
previous decisions in passing-off cases. I
would respectfully adopt the words of
traditional legal theory used by Cross J.
(as he then was) in the Sherry case, (1969
RPC 1 at 23, where he said that the
Champagne case “uncovered a piece of common
law or equity which had till then escaped
notice”. But the decision is in my opinion
soundly based on the principle underlying
the earlier passing-off actions, which I
take to be that the plaintiff is entitled to
protect his right of property in the
goodwill attached to a name which is
distinctive of a product or class of
products sold by him in the course of his
business”.
The same principle was applied in India in Suit No.1352 of
1986 before the Bombay High Court, wherein in the said case,
the suit was filed by the Scotch Whisky Association & Anr.
against Mohan Meakin Ltd. for passing off, complaining that
by the use of the mark Royal Scot, the defendant in that
case was passing off their whisky as scotch whisky. In the
same decision, it is held as follows:
“It is obvious that the use of the
expressions “SCOT”, “SCOTS”, “SCOTTISH” or
“Scotch Whisky” is bound to cause confusion
in the mind of the customers who are not
regularly drinking or who are not well
educated that the Whisky with such a brand
name is a Scotch Whisky”.
The suit was decreed granting an injunction against use of
the word “Scot” as part of the trade mark Royal Scot.
(X) Learned counsel for respondents 1 and 2 therefore
submitted that the decision of the Registrar and confirmed
by the learned Single Judge is based on correct appreciation
of evidence and correct application of the principles of
law. In view of the aforesaid settled position in law, a
case was also made under Section 11(e) of the Act viz. that
the use of the words “Peter Scot” containing the word “Scot”
could be injuncted in a passing off action and, therefore,
the use of the mark “Peter Scot” was dis-entitled to
protection in a Court of law. It is submitted that the
decision of the learned Registrar and of the learned Single
Judge cannot be faulted on any ground whatsoever. It is
further to be seen from the first affidavit of Ian Barclay
that many brands of genuine Scotch Whisky include the words
“Scot” or “Scott” or “Scottish” as part of their brand names
and around 50 such examples were referred to. In the
circumstances, it is submitted that sufficient material was
produced to show the likelihood of deception and confusion
and, therefore, decisions of the learned Registrar and
confirmed by the learned Single Judge cannot be faulted on
any ground whatsoever. The use of the device of lion
Rampant and the description “Distilled from the finest malt
and blended with the choicest whiskies by Scotch experts
under Government Supervision” made by the respondents was to
confirm deception and confusion. The device used by the
appellant (see page 66 of the paper book for the image) is
an exact replica of the Royal Standard of Scotland which is
a wellknown emblem of Scotland. This is clear from Ex.-21,
which is a copy of the booklet entitled Scotland Kings and
Queens which states that the Lion Rampant was adopted as
Royal arms of Scotland by William the Lion in the 13th
Century which is referred to in paragraph 40 of the first
affidavit of Ian Barclay dated 20.10.1987 (pages 130 and
131). The description, “Distilled from the finest malt and
blended with the choiciest whiskies by Scotch Experts under
Government Supervision” used by the appellant referring to
the words “Scotch Experts” it is submitted, is intended to
lead consumers to believe that the appellant’s whisky is
Scotch Whisky which is referred to in paragraph 40 of the
first affidavit of Ian Barclay dated 20.10.1987. In the
circumstances, the learned senior counsel submitted that the
use of the Lion Rampant and the description by the appellant
additionally results in the likelihood of deception and
confusion and, therefore, decisions of the learned Registrar
and confirmed by the learned Single Judge cannot be faulted
on any ground whatsoever.
(XI) Learned senior counsel for respondents 1 and 2
submitted that the adoption of the mark “Peter Scot”
containing the word “Scot” by the appellant itself was
dishonest; the reason given for adoption as contained in
the affidavit of Peter Warren and which was filed by the
appellants clearly show that the reason for adoption of the
word “Scot” as a part of the trade mark ‘Peter Scot” was to
suggest Scottish connection; it is not a case of the
appellants making any mistake of its rights so as to warrant
application of the principles of acquiescence; in this
connection, the learned senior counsel relied upon Willmott
Vs. Barber reported in 15 Ch. D. 96 at 105, where it is
observed as follows:
“It has been said that the acquiescence which
will deprive a man of his legal rights must
amount to fraud, and in my view that is an
abbrevated statement of a very true
proposition. A man is not to be deprived of
his legal rights unless he has acted in such
a way as would make it fraudulent for him to
set up those rights. What, then, are the
elements or requisites necessary to
constitute fraud of that description? In the
first place the plaintiff must have made a
mistake as to his legal rights. Secondly,
the plaintiff must have expended some money
or must have done some act (not necessarily
upon the defendant’s land) on the faith of
his mistaken belief. Thirdly, the defendant,
the possessor of the legal right, must know
of the existence of his own right which is
inconsistent with the right claimed by the
plaintiff. If he does not know of it he is
in the same position as the plaintiff, and
the doctrine of acquiescence is founded upon
conduct with a knowledge of your legal
rights. Fourthly, the defendant, the
possessor of the legal right, must know of
the plaintiff’s mistaken belief of his
rights. If he does not, there is nothing
which calls upon him to assert his own
rights. Lastly, the defendant, the possessor
of the legal right, must have encouraged the
plaintiff in his expenditure of money or in
the other acts which he has done, either
directly or by abstaining from asserting his
legal right. Where all these elements exist,
there is fraud of such a nature as will
entitle the Court to restrain the possessor
of the legal right from exercising it, but,
in my judgment, nothing short of this will
do.”
It is therefore submitted that the adoption itself being
dishonest, there is no question of the plea of acquiescence
being raised. Further, it is stated in the affidavit of Ian
Barclay that the appellant was aware that the first
respondent was objecting to the applications of the
appellant for registration of the marks having Scottish
connection. Further, it is submitted that the plea of
acquiescence has no application to the case of rectification
as the registration confers rights in rem and the conduct of
an applicant for rectification is irrelevant considering the
nature of the proceedings. The contention of the appellant
that in view of the TRIPS agreement and in view of the
Geographical Indications Act, the respondents are not
entitled to maintain an application for rectification is
required to be stated to be rejected. The aforesaid
contentions were not raised either before the Registrar or
the learned Single Judge and the appellant is not entitled
to raise the same. In any event, neither the TRIPS
agreement nor the provisions of the Geographical Indication
Act, prevent the operation of Section 56 of the Act. The
rights created under the TRIPS agreement or under the
Geographical Indication Act are in addition to the
provisions of the Trade Marks Act. Article 22 of TRIPS
requires member states to make provisions for protecting
geographical indications and make provisions for preventing
the acts resulting in unfair competition.
15. We have carefully considered the submissions made
by the learned senior counsel on either side, the materials
available on record and perused the order of the learned
Single Judge.
16. At the outset, we would like to first take up for
consideration the submission made by the learned counsel on
either side regarding the scope of interference of this
Court in an appeal filed under Section 109 of the Act read
with Clause 15 of the Letters Patent.
17. Mr.V.Thulza Purka, learned senior counsel appearing
for the respondents contended that the above appeal is in
the nature of second appeal and the concurrent findings of
fact of the learned Deputy Registrar and confirmed by the
learned Single Judge should not be interfered with unless it
is found that the said findings are arbitrary or capricious
or unsustainable or based on no evidence or was reached by
wrong application of principles of law.
18. Per contra, Mr.Vedantham Srinivasan, learned senior
counsel appearing for the appellant relied upon the decision
of the Hon’ble Apex Court reported in A.I.R. 1974 S.C. 2048
(Smt. Asha Devi Vs. Dukhi Sao and another) referred to
supra, contended that it will be open to the High Court to
review even findings of facts in a Letters Patent Appeal
from a first appeal heard by a learned Single Judge and is
entitled to reverse the concurrent findings of fact. In the
light of the law laid down by the Hon’ble Apex Court in the
above said decision, it is clear that this Court while
hearing the above appeal is entitled to review even findings
of fact and reverse concurrent findings of fact and the
above appeal is not exactly equivalent to a second appeal
under Section 100 of the Code of Civil Procedure.
19. Coming to the question of limitation raised by the
learned senior counsel appearing for the appellant, we are
unable to accept the contentions of the learned senior
counsel for the following reasons:
(a) The Hon’ble Apex Court in the decision rendered in
the case of Sakur Vs. Tanaji reported in AIR 1985 SC 1279
has observed at page 1280 as follows:
“It was well settled by the decision of this
Court in Town Municipal Council, Athani Vs.
Presiding Officer, Labour Court, (AIR 1969 SC
1335), Nithyanand M.Joshi & Anr. Vs. The Life
Insurance Corporation of India & Ors. (AIR 1970
SC 209) and Sushila Devi v. Ramanandan Prasad
(AIR 1976 SC 177) that the provisions of the
Limitation Act, 1963 apply only to proceedings in
“Courts” and not to appeals or applications
before bodies other than Courts such as quasi-
judicial Tribunals or executive authorities,
notwithstanding the fact that such bodies or
authorities may be vested with certain specified
powers conferred on Courts under the Codes of
Civil or Criminal Procedure.”
Therefore, the contentions of the learned senior counsel for
the appellant that the rectification application filed by
the respondents 1 & 2 before the third respondent is bared
by limitation is unsustainable.
(b) The decision relied upon by the learned senior
counsel appearing for the appellant viz., 2003 (26) P.T.C.
517 (Bombay) (Rakesh Kumar Gupta Vs. Goresh Domesztic
Appliances) and 2002 (6) Bombay Cases Reporter 796
(Bhagwandas G. Agrawal Vs. Brijwasi Dughdhalaya Private
Limited & Anr.) = (2002) Bombay Law Reporter 335 are clearly
distinguishable on the ground that the said decisions have
been rendered in applications made to the High Court for
rectification. The Gujarat High Court in the decision
reported in 1999 PTC 718 (Patel Field Marshal Agencies vs.
P.M.Diesels Ltd. has observed as under:
“the dichotomy noticed is that when an
application is made before the Registrar, Article
137 does not apply but when an application is
made to the Court for rectification, Article 137
will apply.”
Further the Gujarat High Court after referring to the
decision of the Hon’ble Apex Court reported in AIR 1977 SC
282, has observed in paragraph 21 as follows:
“21…….. with this change in law, all
applications which are required to be made to the
High Court became amenable to the law of
limitation, while the applications, made to any
authority which is not constituted as a court did
not attract the provisions of the Limitation Act.”
Therefore, the contention of the learned senior counsel
appearing for the appellant that the rectification
application filed by the respondents 1 & 2 was barred by
limitation is unsustainable.
20. As far as the contention of the learned senior
counsel appearing for the appellant regarding the Locus
Standi of the first respondent to maintain the rectification
application before the third respondent is concerned, we do
not agree with the contention of the learned counsel for the
appellant for the following reasons:
(a) The learned senior counsel for the appellant
submitted that though the Deputy Registrar has rejected the
application field by the first respondent as not
maintainable on the ground of locus standi, as the first
respondent failed to file any appeal against the said
finding and decretal order and the said finding has been
confirmed by the learned single judge, the filing of cross
objection in the TMA would not amount to filing an appeal
and therefore the finding of the Registrar as to the locus
standi of the first respondent has become final and amounts
to resjudicata. But it will be useful to refer to the
observation of the learned Single Judge in para 40 of the
judgment while dealing with the cross objections namely,
“40……. Having regard to that fact, the
authority below was in error in holding that the
association had no standing to maintain the
application along with one who had the
standing…………It would be within the
competence of the association to support the
action of its members and join them in the action,
but the association cannot replace a member in a
statutory action unless the statue permits it.”
Thus it is clear that the learned Single Judge has held that
it would be within the competence of the association to
support the action of its members and join them in the
action and has held that the third respondent was in error
in holding that the association had no standing to maintain
the application along with one who had the standing. It is
pertinent to point out that the learned senior counsel has
not advanced any submission regarding the above said finding
of the learned Single Judge. We are in complete agreement
with the above said decision of the learned Single Judge.
21. The learned senior counsel appearing for the
appellant strenuously contended that the averments contained
in the affidavits filed by IAN Glen Barclay and by the
third parties numbering 20 ought not to have been accepted
by the third respondent and by the learned Single Judge.
The submissions made by the learned senior counsel appearing
for the appellant and the submissions made by the learned
senior counsel appearing for the respondents 1 & 2
countering the said submissions have been elaborately set
out in the proceedings paragraphs.
22. It is true that the third respondent in his order
has observed that all the affidavits, evidence of applicants
is not too satisfactory. But the third respondent has
further observed as follows:
“Unfortunately, there is absolutely no evidence
whatever from the registered proprietors to
assail or counteract or rebut the Applicant’s
evidence. In the absence of any material or
evidence in rebuttal or reply from the registered
proprietors, the evidence of Applicants stands
unquestioned, unrebutted, unassailed and even
unmitigated and I have no other go except to
receive the voluminous affidavit and documentary
evidence filed by Applicants on its fact value.
I am accordingly constrained to uphold the
Applicants’ plea that the impugned registration
contravenes Sec.11 on the date of the
rectification proceeding.”
23. We have already extracted in the proceeding
paragraphs the observations made by the learned Single Judge
in paragraphs 29 and 36 of the Judgment regarding the
failure on the part of the appellant to lead contra evidence
in rebuttal of the evidence adduced by the respondents 1 & 2
and the failure on the part of the appellant to cross
examine the deponents of the affidavits.
24. The learned senior counsel for the appellant
referring to Section 99 of the Act submitted that when the
third respondent has observed that the evidence is
unsatisfactory, he ought to have summoned the witnesses.
But we are unable to understand as to what prevented the
appellant from summoning the deponents of the affidavits and
cross examine them. Having failed to summon the deponents
of the affidavits and cross examine them and failed to
adduce evidence in support of its case., it is a futile
attempt on the part of the appellant to try to persuade us
to reject the evidence adduced by the respondents 1 & 2 by
merely pointing out certain discrepancies in the affidavits
filed by the third parties.
25. The learned counsel appearing for the respondent
vehemently contended that all the deponents are ordinary
individuals, some even workers and some waiters and bar
attendants and none of them has stated about their financial
status and it is unbelievable that they could afford to
drink scotch whisky, which would have cost atleast Rs.60/-
per peg in bars in respect of IMFL. These facts now urged
by the learned senior counsel ought to have been put to the
deponents of the affidavits in their cross examination and
their veracity should have been tested. When admittedly,
the appellant had not chosen to cross examine the deponents
of the affidavits, the said contention put forth by the
learned senior counsel appearing for the appellant cannot be
accepted. Only for the above said reasons, the third
respondent and the learned Single Judge have accepted the
affidavit evidence tendered by the respondents 1 & 2. We
find absolutely no infirmity or error in the third
respondent and the learned Single Judge accepting the
evidence adduced by the respondents 1 & 2.
26. It is the contention of the learned senior counsel
for the appellant that no case has been made out for
rectification under Section 11 of the Act. It has to be
pointed out that the respondents pleaded that the
application has been filed under Section 11 (a) and (e) of
the Act. Under Section 11(a) of the Act, a mark, the use
of which would be likely to deceive or cause confusion shall
not be registered as a trade mark; the law does not require
the respondent to prove actual deception or confusion. As
rightly contended by the learned senior counsel for the
respondents 1 & 2 as regards the entry in respect of
registered trade mark made under Section 11(a) of the Act,
it has to be noted that the use of word ‘SCOT’ as part of
the registered trade mark is not just likely to deceive or
cause confusion but has actually resulted in causing
deception and confusion in believing such a whisky as Scotch
Whisky as the word ‘SCOT’ is an abbreviation of /
synonymous to / evocative of Scotland and when used in
relation to a whisky is indicative that such whisky is
distilled and matured in Scotland and is Scotch Whisky.
27. As rightly pointed out by the learned senior
counsel for the respondents 1 and 2 the fact that the word
‘SCOT’ is indicative of / an abbreviation of / synonymous to
/ evocative of Scotland is admitted by the appellant in the
affidavit of Peter J. Warren which was filed by the
appellant while reasoning the adoption of the mark ‘Peter
Scot’. The reason given for adoption of the word ‘SCOT’ as
contained in the affidavit of Peter J. Warren is that the
word ‘SCOT’ was the nationality of Peter Warren which
clearly shows that the appellant admitted the word ‘SCOT’ in
the mark ‘Peter Scot’ is suggestive of Scotland. The
material produced by the respondents in the form of the
first affidavit of Ian Barclay dated 20th October, 1987
clearly showed that whisky distilled and matured in Scotland
can be called ‘Scotch Whisky’ and is available in India. As
regards the availability of Scotch Whisky in India it is not
only stated in the first affidavit of Ian Barclay but is
also stated in his second affidavit and further the
affidavit of the consumers and shop keepers contain
materials which clearly establish that the Scotch Whisky was
available in India. The averments contained in the above
said affidavits as pointed out above have not been
controverted by the appellant. Therefore, the contention of
the appellant that there was import restrictions in the year
1969 and that therefore Scotch Whisky was not available in
India is contrary to the evidence on record.
28. The learned senior counsel for the appellant
submitted that there is, no likelihood of any confusion or
deception as contended by the respondents, since the custom
of the trade is to sell goods by description and by brand
name only and not by the generic name like scotch or whisky
or brandy or gin or rum or beer or vodka.
29. The learned senior counsel appearing for the
respondents 1 & 2 countered the above said submissions and
the submissions have already been set out in the preceding
paragraphs.
30. The learned senior counsel appearing for
respondents 1 and 2 further submitted that it is for the
Hon’ble Tribunal to ultimately arrive at a conclusion
whether there was likelihood of deception or confusion. In
deciding that question, it is not necessary to refer to or
apply any abstruse principle but a common sense approach is
required to be applied.
31. The learned senior counsel further submitted that
in the instant case, the affidavits of the consumers were
filed by the respondents and analysis of affidavits of the
consumers and waiters and shopkeepers will show that there
was likelihood of deception and confusion.
32. The learned senior counsel further submitted that
the appellant did not file any affidavit in reply disputing
or doubting the contents of the affidavit filed on the side
of the respondents. The learned senior counsel further
submitted that the contention of the respondents is that
whisky distilled and matured in Scotland alone is entitled
to be called “Scotch Whisky”. Any other whisky if called
“Scotch Whisky”, or by any word such as “Scot”, or “Scott”
or “Scottish” or any trade mark, emblem or device suggesting
Scottish origin is likely to deceive or cause confusion.
This contention is based on the extended principles of law
relating to unfair trading. The learned senior counsel
further submitted that till 1960, the classic cases relating
to deception and confusion were confined to the use of or in
connection with his goods by one trader of the trade name or
a trade mark so as to induce any potential purchaser to
believe that his goods were those of the rival trader. The
learned senior counsel further relied upon the decision
reported in 1960 RPC 16 and 1969 RPC Page 1 referred to
supra.
33. The learned senior counsel also relied upon the
unreported decision of Pendse J. dated 17th, 18th and 19th
November, 1986 in the Bombay High Court Suit No.1352 of
1986. In the said case, the suit was filed by The Scotch
Whisky Association & Anr. Agaisnt Mohan Meakin Ltd. for
passing off, complaining that by the use of the mark Royal
Scot, the Defendant in that case was passing off their
whisky as “scotch whisky”. In the above case also a similar
contention that is put forth before us was raised and while
considering the same the learned Judge has referred to
several English decisions like Champagne Case, Sherry Case,
Scotch Whisky case and Advacaat case and several passages
from Kerly’s Law of Trade Marks and Trade Names and deduced
the following principle viz., the question whether one name
is likely to cause confusion with another is a matter upon
which the Judge must make up his mind and which, he and he
alone, must decide. The Court cannot abdicate the decision
in that matter to witnesses, but on the other hand, he must
be guided by the evidence produced. By applying the above
said principle to the facts of that case and after
considering the evidence on record rejected the contentions
put forth by the defendants in that case and has observed as
follows:
“It is obvious that the use of the expressions “SCOT”,
“SCOTS”, “SCOTTISH” or “Scotch Whisky” is bound to cause
confusion in the mind of the customers who are not
regularly drinking or who are not well educated that the
Whisky with such a brand name is a Scotch Whisky”.
As rightly contended by the learned senior counsel for
respondents 1 and 2 the following persons who have filed
their affidavits in this case namely Shri.Maha Rao,
Shri.Chavan, Shri.Rao, Shri.Pujari, Shri.Repwate and
Shri.Sansare were examined as witnesses in that case and
were subjected to cross examination and only on a
consideration of such evidence the above observation has
been made. In this case admittedly the averments contained
in the affidavits filed by third parties have not only not
been controverted by the appellant but no rebuttal evidence
has been adduced. Therefore, we agree with the above said
observation of the learned Judge of the Bombay High Court
and reject the contentions put forth by the learned senior
counsel for the appellant.
34. Learned senior counsel appearing for the appellant
submitted that the rectification application is also barred
under law by reason of estoppel by conduct, waiver,
acquiescence, delay and laches. Learned senior counsel
further submitted that the present rectification application
has been filed as late as on 21.04.1996 i.e. 15 years after
the registration of the mark and 18 years after initial use
of the impugned mark and thus there is a lot of unexplained
and unreasonable delay on the part of respondents 1 and 2
in filing rectification proceedings and thereby allowing the
impugned mark to be used and circulated in the market.
According to the learned senior counsel, the conduct of
respondents 1 and 2 would amount to acquiescence. Learned
senior counsel further submitted that even failure of the
appellant to rebut the evidence adduced by respondents 1 and
2 ought not to be taken as a ground for rejecting the
contention of the appellant that respondents 1 and 2 have
acquiesced in the user of the trade mark of the appellant.
35. Per contra, Dr.Veerendra Thulza Purkar, learned
senior counsel for respondents 1 and 2 referred to the
following passage from the decision of the House of Lords in
Advocaat’s case:
“As far as laches and acquiescence are concerned the
position in my judgment is as follows:
To avoid any possibility of confusion in any subsequent
case, it is important always to remember that there may
be a case of acquiescence which does not depend upon
delay at all, although we are not dealing with such a
case, nor was this Court in the case of Electrolux Ltd.,
Vs. Electrix Ltd., (1954) 71 R.P.C. 23.
……….
Apart from this, acquiescence arising from delay poses
two problems when one is dealing with a right at law and
a continuing breach. One has to consider first, whether
the right has been wholly lost, and, if not, whether the
Court should withhold the equitable remedy of an
injunction and award damages.
……..
It seems to me, therefore, that the true test whether
equitable relief should be withheld in the case of a
continuing legal wrong on the ground of delay by the
plaintiff in enforcing his rights is that the facts must
be such that the owner of the legal right has done
something beyond mere delay to encourage the wrongdoer
to believe that he does not intend to rely on his strict
rights, and the wrongdoer must have acted to his
prejudice in that belief; that is to say the case
approximates to what would totally destroy his right.”
36. Learned senior counsel by relying upon the decision
in Electrolux Ltd., Vs. Electrix Ltd., and Another ((1954)
RPC Vol.71 page 23) submitted that mere delay can be no bar
to the exercise of the owner of a registered trade mark of a
statutory right. Learned senior counsel further submitted
that the adoption of the mark ‘Peter Scot” containing the
word ‘Scot” by the appellant itself was dishonest. The
reason given for adoption as contained in the affidavit of
Peter Warren and which was filed by the appellant herein,
show that the reason for adoption of the word ‘Scot” as a
part of the trade mark “Peter Scot” was to suggest
Scottish’s connection. It is not a case of the appellant
making a mistake of its rights so as to warrant application
of the principles of acquiescence. Learned senior counsel by
relying upon the decision in Willmott Vs. Barber (15 Ch.D.
96) submitted that acquiescence which will deprive a man of
his legal rights must amount to fraud and a man is not to be
deprived of his legal rights unless he has acted in such a
way as would make it fraudulent for him to set up its
rights. Learned senior counsel further submitted that
respondents 1 and 2, possessors of the legal right, must
have encouraged the appellant in his expenditure of money or
in the other acts which he has done, either directly or by
abstaining from asserting his legal rights, then only fraud
can be inferred and the plea of acquiescence can be
accepted. Learned senior counsel further submitted that the
appellant has miserably failed not only to controvert the
evidence adduced by respondents 1 and 2 but have failed to
adduce any evidence whatsoever to establish the plea of
acquiescence. In the absence of any evidence, both the third
respondent and the learned single judge have rightly
negatived the plea of acquiescence put forth by the
appellant.
37. We have carefully considered the above said
submissions of the learned senior counsel.
38. The principles laid down in the decision relied
upon by the learned senior counsel for respondents 1 and 2
clearly lay down that the owner of legal right, in the
instant case, respondents 1 and 2 ought to have done
something beyond mere delay to encourage the appellant to
believe that they do not intend to rely on their strict
legal rights and the appellant must have acted to its
prejudice in that belief. But as rightly pointed out by the
learned senior counsel for respondents 1 and 2, there is
total lack of evidence on the part of the appellant to show
that respondents 1 and 2 encouraged the appellant to believe
that the respondents do not intend to rely upon their strict
legal rights. It has to be pointed out that the learned
single Judge, at length, has dealt with the legal principles
to be applied while considering the question of acquiescence
and has observed that the facts of the instant case are not
such as to warrant the conclusion that there has been
acquiescence. Therefore, in our considered view, the plea of
acquiescence put forth by the appellant cannot be accepted.
We are in complete agreement with the finding of the learned
single Judge that there has been no acquiescence on the part
of respondents 1 and 2.
39. Learned senior counsel for the appellant submitted
that Section 26 of the Geographical Indication of Goods Act,
1999 protects the trade mark where the rights to such
trademarks are acquired through the use in good faith.
Countering the said submission, Dr.Veerendra Thulza Purkar,
learned senior counsel for respondents 1 and 2 submitted
that since the said contention was not raised either before
the third respondent or before the learned single Judge, the
appellant is not entitled to raise the same in the above
appeal.
40. We have considered the above rival contentions.
When admittedly the appellant had not raised any such plea
either before the third respondent or before the learned
single Judge, as rightly contended by the learned counsel
for respondents 1 and 2, it is not open to the appellant to
raise the plea at this stage and accordingly we are not
inclined to entertain the above said submission.
41. Mr.Vedantham Srinivasan, learned senior counsel for
the appellant submitted that respondents 1 and 2 filed a
suit in C.S.No.1729 of 1987 on 17.06.1987 before the Bombay
High Court stating that the whiskey sold by the appellant in
the name “Peter Scot” has resulted in passing off of the
goods of the appellant as that of the manufacture of scotch
in Scotland who are well known for the scotch whiskey
manufactured by them and which is universally known as
scotch whiskey. During the pendency of the said suit, the
present application for rectification was filed before the
third respondent and the same ought to have been stayed in
view of the decision of the Apex Court reported in AIR 1999
SC 22. Countering the said statement, learned senior counsel
for respondents 1 and 2 submitted that the learned single
Judge has considered the above said contention and has
rejected the same. As rightly pointed out by the learned
senior counsel for respondents 1 and 2, learned single Judge
in para 41 of the judgment considered the above said
submissions and has observed that on the facts of this case,
having regarding to the inherent inappropriateness of the
use of the word “Scot” in relation to whiskey made in India,
the exercise of the discretion of the Court in this case has
to be in favour of the respondents. We are in total
agreement with the above said observations made by the
learned single Judge.
42. Learned senior counsel appearing for the appellant
submitted that there is no evidence to show that the device
of Rampant Lion is brought so is indicative of Scottish
origin and there is no evidence to show that the consumers
have been deceived into believing that “Peter Scot”
whiskey was scotch whiskey because of the presence of the
device Rampant Lion on the label. Countering the said
submission, learned senior counsel for respondents 1 and 2
submitted that the Lion Rampant has been used on the label
of scotch whiskey as can be seen from the second affidavit
of Ian Barclay dated 19.11.1987. According to him, the
device used by the appellant is an exact replica of the
Royal Standard of Scotland which is a well known emblem of
Scotland and the same is clear from Ex.21, which is a copy
of the booklet entitled Scotland Kings and Queens which
states that the Lion Rampant was adopted as Royal Arms of
Scotland by William the Lion in the 13th century which is
referred to in para 40 of the first affidavit of Ian
Barclay dated 20.10.1987. Learned senior counsel further
submitted that the description “Distilled from the Finest
Malt and Blended with the Choicest Whiskeys by Scotch
Experts under Government Supervision” used by the appellant
referring to the words “Scotch Experts” is intended to lead
consumers to believe that the appellant’s whiskey is scotch
whiskey and the same has been referred to in para 40 of the
first affidavit of Ian Barclay dated 20.10.1987. According
to the learned senior counsel, the above said averments in
the said affidavit have not been controverted by adducing
rebuttal evidence by the appellant. Therefore, the learned
senior counsel submitted that the use of Lion Rampant and
the description by the appellant additionally results in
the likelihood of deception and confusion and therefore the
decision of the third respondent/Deputy Registrar and
confirmed by the learned single Judge cannot be faulted on
any ground whatsoever.
43. We have carefully considered the above said
submissions made by the counsel on either side. In our
considered view ,the use of the device “Lion Rampant” and
the above said description especially the description
“Distilled from the Finest Malt and Blended with the
Choicest Whiskeys by Scotch Experts under Government
Supervision” is definitely intended to lead the consumers to
believe that the whiskey manufactured by the appellant is
scotch whiskey. Though specific averments as above said have
been made in the affidavit of Ian Barclay, the same have not
been rebutted by the appellant by adducing rebuttal
evidence. The appellant has also not chosen to cross-examine
Ian Barclay on the averments contained in the affidavit.
Therefore, we are of the considered view that both the third
respondent and the learned single Judge have considered all
the relevant materials available on record and have
exercised their discretion properly and as such we do not
find any reason to interfere with the judgment of the
learned single Judge.
44. For the foregoing reasons, the above appeal fails
and the same is dismissed. However, there will be no order
as to costs.
mmi/kk/srk