IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 23.7.2010
CORAM
THE HONOURABLE MRS.JUSTICE PRABHA SRIDEVAN
AND
THE HONOURABLE MR.JUSTICE G.M. AKBAR ALI
O.S.A.Nos.456 of 2009 and 8 of 2010
and M.P.Nos.1 of 2009 and 1 of 2010
1. SNJ Distilleries Ltd rep by
its Director,
99, Canal Bank Road,
CIT Nagar, Nandanam
Chennai-600 035
2. Radico Khaitan Ltd rep
by its Director
Plot No.J-1, Block B-1
Mohan Co-operative Industrial Area
Mathura Road
New Delhi-110 044
... Appellants in O.S.A.No.456
of 2009 and the respondents
in O.S.A.NO.8 of 2010
Vs
M/s Imperial Spirits Private Ltd.,
Maniakaranchalla,
Govindhapuram,
Chittur Taluk, Palakkad District
Kerala State rep by
its Director, K. Dhanakumar
… Respondent in O.S.A.No.456 of
2009 and the appellant in O.S.A.
No.8 of 2010.
The appeals have been preferred under Order XXXVI Rule 1 of O.S. Rules read with Clause 15 of the Letters Patent against the order made in Original Application No.1102 of 2009 in C.S.No.955 of 2009 dated 1.12.2009 passed by the learned single Judge of this Court.
For 1st Appellant : Mr.P.S. Raman,
in O.S.A.NO.456 of Advocate General
2009 and for R.1 in
O.S.A.No.8 of 2010
For 2nd appellant : Mr.R. Krishnamurth, Senior Counsel
in O.S.A.No.456 of for Mr.A.A. Mohan
2009 and for R.2 in
O.S.A.No.8 of 2010
For respondent in : Mr. Sathish Parasaran
O.S.A.No.456 of
2009 and the
appellant in O.S.A.
No.8 of 2010
C O M M O N J U D G M E N T
G.M. AKBAR ALI,J.,
Both the appeals are directed against the order dated 1.12.2009 I.A.No.1102 of 2009 in C.S.No.955 of 2009 of the learned single Judge in a “passing off” action, granting an injunction in favour of the plaintiff against the defendants only in respect of the areas where already the plaintiff established his business, namely, Karnataka, Kerala, Goa, Pondicherry and Himachal Pradesh and not in respect of Tamil Nadu, where the defendants are selling their product. The learned Single Judge made it clear that the defendants could sell their product “BRIHAN’S GOLD NAPOLEON BRANDY’ in Tamil Nadu with the said name, but the defendants are injuncted from selling their product with the trade mark ‘BRIHAN’s GOLD NAPOLEON BRANDY’ in the areas namely, Karnataka, Kerala, Goa, Pondicherry and Himachala Pradesh and in those areas the defendants could sell their product without using the word “GOLD” before the word “NAPOLEON”.
Assailing that portion of the order against them both the parties are before us.
2. The facts leading to the “passing off ” action is as follows:
The plaintiff is a part of Imperial Group of Companies, having the Head Office in Kerala and has been in the business of manufacturing and selling Indian made Foreign Spirit (hereinafter referred as IMFS). They were selling the products mainly in the States of Kerala, Karnataka, Himachel Pradesh and Union Territory of Pondicherry. They have adopted a product Imperial ‘Gold Napoleon Brandy’ in the year 2006 and has been marketing the same in the above said States. They have also applied for a licence to manufacture their brands of IMFS in the State of Tamil Nadu and more particularly, manufacturing and selling their trade mark ‘Gold Napoleon Brandy’. However, the first defendant managed to obtain a licence in the State of Tamil Nadu for their brand Brihan’s “Gold Napoleon Brandy”, which is deceptively similar to that of the plaintiff. The adoption and use of the trade mark Brihan’s “Gold Napoleon Brandy” by the defendants in respect of a product to be sold in the State of Tamil Nadu is clearly with the dishonest intention of encasing upon the reputation and goodwill of the plaintiff’s trademark Imperial ‘Gold Napoleon Brandy’. This amounts to “passing off” of the defendant’s product which is deceptively similar to that of the plaintiff’s product. Therefore, a suit for permanent injunction was filed with an application for an interim injunction.
3. The application was resisted by the defendants on various grounds. It is contended that the second plaintiff is one of the India’s premier manufacturer of IMFS and their trade mark “Brihan’s Napoleon Brandy” is exceptionally famous throughout the country. The first defendant is the licensee for the usage of “Brihan’s Gold Napoleon Brandy”, a derivative product of “Brihan’s Napoleon Brandy” for the State of Tamil Nadu. According to the defendants, the word “Napoleon” and its variant/derivatives including prefixes and suffixes such as “Gold” is used by hundreds of Companies in the International and National market. According to them, the word “Gold” is used to signify a certain higher quality of a brand and the plaintiff cannot claim any exclusive right in the generic word “Gold” or “Napoleon”. It is also contended that as far as Tamil Nadu is concerned, the 1st defendant has already obtained licence to manufacture “Brihan’s Gold Napoleon Brandy” and the sales turn over is in crores. It is further contended that the defendants mark “Brihan’s Gold Napoleon Brandy” is different from the applicant’s mark “Imperial Gold Napoleon Brandy”. The shape, colour scheme, style of writing are completely different and the shape of the bottles are also different. According to the defendants the customers of spirits and alcoholics, beverages are knowledgeable and would not be confused or misled merely on the basis of presence of common descriptive/generic words such as “Gold” and “Napoleon”.
4. While considering the above arguments and also comparing the mark and the bottles of the respective product of the parties, the learned single Judge found that a common man might tend to think that one and the same firm or company is selling the brandy in different bottles of various sizes with different colourful labels and a common man would not be able to distinguish between the two products if the products are sold in one and the same shop.
5. Having found so, the learned single Judge granted restricted injunction excluding the State of Tamil Nadu as the plaintiff is not marketing his product in Tamil Nadu. Aggrieved by which, the plaintiff has preferred O.S.A.No.8 of 2010 and the defendants have preferred another appeal No.456 of 2009 For the convenient sake, hereinafter, the plaintiff is referred as appellant and the defendants are referred as respondents.
6. The points that arise for consideration in these appeals are:
a) Whether the appellant is the prior user of the brand Imperial “Gold Napoleon Brandy”?
b) Whether the respondents mark Brihan’s “Gold Napoleon Brandy” is deceptively similar to that of plaintiff’s brand?
c) Whether the ratiocination adopted by the learned single Judge for refusing to grant injunction so far as Tamil Nadu is concerned is correct?
Prior user:
7. The 2nd respondent had purchased the rights of manufacturing Brihan’s Napoleon Brandy from Brihan Maharashtra Sugar Syndicate Limited. They have been marketing “Brihan’s Napoleon Brandy” for many years throughout the country. The 1st respondent is the licensee under the 2nd respondent for the manufacture of Brihan’s Napoleon Brandy for the state of Tamil Nadu, however, have obtained licence from the Government of Tamil Nadu for manufacturing Brihan’s Gold Napoleon Brandy from the year 2009.
8. As far as the mark “Gold Napoleon Brandy” is concerned, the appellants have been manufacturing and selling the same in the States of Kerala and Karnataka, Himachala Pradesh and Union Territory of Pondicherry from 2006. In Tamil Nadu, the appellant tried to obtain licence to manufacture and sell the product, but could not succeed, nonetheless appellant is trying. The appellant had adopted the mark “Gold Napoleon Brandy” prefixing “Imperial”.
9. The Computer Generated Public Search Report is available in the typed set at page 98. This is extracted from IP India Online Web site. In Application No.1459597, the 2nd respondent had applied for the registration of their trade mark “Brihan’s Napoleon” on 31.5.2006. Under application No.1493945, the appellant has applied for Imperial’s Gold Napoleon. His application was made in the year 2006.
10. As far as the prior user of the mark “Gold Napoleon Brandy” is concerned, indisputably the appellants have proved that they are the prior users. The 2nd respondent never claimed that they have been manufacturing and marketing the brand “Brihan’s Gold Napoleon Brandy” anywhere in the country. The 1st respondent, being the licencee under the 2nd respondent for Brihan’s Napoleon Brandy, has started using the word “Gold” for their brand only from 2009. Therefore, as far as the mark “Gold Napoleon Brandy” is concerned, the appellant is the prior user.
11) Whether the mark “Gold Napoleon Brandy” used by the respondents is deceptively similar to that of the appellant.
Mr. P.S. Raman, learned Advocate General, appearing for the 1st respondent pointed out that the term “Napoleon Brandy” is a generic term, which is used by several manufacturers. The learned Advocate General pointed out that the word “Gold” is a descriptive term which denotes the superior quality of the product and this term is also being used by several manufacturers of various types of liquors. The learned Senior Counsel further pointed out that the appellant’s brand is “Imperial Gold Napoleon Brandy” and whereas, the respondents’ brand is “Brihan’s Gold Napoleon Brandy” and therefore, the brand is best known to the customers or consumers only on the basis of the name of the manufacturer and the rest being the common term. He further contended that the label, colour scheme,writing style, shape of the bottle and prefixing the name of the manufacturer are different and therefore there is no similarity between the disputed marks leave alone deceptive similarity.
12. According to the learned Advocate General, the descriptive words can be used by the respondents and they cannot be prevented from using the same. The learned Advocate General relied on a foreign judgement reported in 1982 PTC 156 (McCain International Limited vs Country Fair Foods Limited and Another), wherein it is held as follows:
“As the plaintiffs have taken a risk of choosing descriptive words, they run the risk that the defendants cannot be prevented from using those same descriptive words so long as they make it clear that their brands of the product are not the same as the brand of the plaintiffs. In the circumstances even if there is some evidence of possible confusion, the learned Judge was wrong in holding tht the “over chips” has become distinctive of the plaintiffs’ product”.
13. He also relied on a decision reported in AIR 1990 Delhi 233 (Prem Singh vs M/s Ceeam Auto Industries), wherein, it is held as follows:
“19. The principle to guide in such cases where both contending parties before the Court are shown to be pirators of a third person’s property in trade mark or copyright has been very succinctly, but pointedly outlined in Kerly’s Law of Trade Marks and Trade Names, 12th Edn. At page 314 by laying down that the Court may refuse to interfere to protect the use of a deceptive trade mark, on the basis of the maxim: ex turpi causa non oritur actio, i.e., an action does not arise from a base case. According to him, it can be a defence to an action for an infringement, that the mark sued upon is invalid, and that one of the grounds of invalidity is that the mark is “disentitled to protection in a Court of Justice ..” He has further emphasised under the heading: IMITATIONS OF TRADE OR SERVICE MARK, GET-UP, ETC, that in order to establish passing off of a design or get-up etc., it must be shown that what a defendant has taken is in itself sufficiently distinctive of the plaintiff”
23. When therefore in a given case it becomes apparent, that plaintiff’s own conduct is tainted and he himself is prima facie an imitator of another person’s design; then the Court would not normally at the pre-trial stage afford him protection, on the mere assertion or averments in the plaint, which the defendant has succeeded in showing to be prima facie unfounded or even false”.
14. He also relied on unreported judgment of the Division Bench of this Court dated 13.10.2009, wherein it was contended that the word :”lacto” is a generic term and the court has observed as follows:
15. Though it was submitted by the learned counsel for the appellant that most of the traders, who are manufacturing their products with the name ‘lacto’ either prefixing or suffixing are not brought in the net of offence of infringement for the simpl reason that they are all small traders, this Court is of the view, from the mere non-taking of any legal action ipso facto against those small traders in the absence of any charge, levelled against them, cannot serve as supportive ground to such contention of the appellant, unless the commission of infringement is demonstrably established by sufficient and acceptable evidence. But on the other hand the fact of infringement within its meaning against the infringer by usage of the work “Lacto” should be independently proved to the satisfaction of the Court. For these reasons, the said contention made on behalf of the appellant cannot be accepted.
15. The argument of the learned Advocate General is three folded. He contended that the mark “Gold Napoleon Brandy”is a generic/descriptive term used by many of the manufacturers including the international companies and the appellant himself has imitated the mark of the third party. He would further contend that the appellants trade mark is known for his company”IMPERIAL Gold Napoleon Brandy”, whereas the respondents brand is “Brihan’s Gold Napoleon Brandy”, which are not similar and the common consumer would go only by the Company’s name as rest of the term is descriptive and the lay out, writing style, labels are not similar. His further contention is that even assuming that the appellant is a prior user, the learned single Judge is right in not granting injunction as far as Tamil Nadu is concerned, while the appellant has no cause of action.
16. On the contrary, Mr.Satish Parasaran, learned counsel for the appellant submitted that the respondent is not entitled to raise a defence of jus tertii. (right of third party). The learned counsel drew our attention an observation in McCarthy on Trademarks and Unfair Competition, in which it is stated as follows:
“As a matter of policy, jus tertii should not be allowed as a defense in any trademark case. So long as plaintiff proves rights superior to defendant, that is enough. Defendant is no less an infringer because it is brought to account by a plaintiff whose rights may or may not be superior to the whole world. The plaintiff’s speculative dispute with a third party does not concern the defendant.
To permit a jus tertii defense would be unwise judicial policy because it would expand many trademark disputes far beyond a mere two-party conflict. Before plaintiff could prevail, it would have to prove that it was not an infringer of one or more third parties that the defendant can conjure up.”
17. The learned counsel pointed out that the word “Gold Napoleon Brandy” is not a generic term, but exclusively belong to the appellant, who had started manufacturing and marketing his produce as early as 2006. The learned counsel also pointed out that the brand is known only for the mark “Gold Napoleon Brandy”. Prefixing the company name “Imperial or Brihan’s”will not make any difference for a common consumer who would ask for a particular brand. The learned counsel also pointed out that in the eye of common man, the similarity in the colour scheme, writing style, label in the bottle might create a confusion to think that both the products are one and the same.
18. The learned counsel relied on a foreign judgment reported in 867F.2d 22 (Boston Atheltic Association,et al., vs Mark Sullivan etc., et al) , wherein it is held as follows:
“Burden of proof is on party seeking to have registered mark declared generic to show that it has become so”.
The First Circuit has identified eight factors to be weighed in assessing likelihood of confusion.
(1) the similarity of the marks; (2) the similarity of the goods; (3) the relationship between the parties’ channels of trade; (4) the relationship between the parties’ advertising; (5) the classes of prospective purchasers; (6) evidence of actual confusion; (7) the defendant’s intent in adopting its mark; and (8) the strength of the plaintiff’s mark. Astra, 718 F.2d at 1205; Pignons, 657 F.2d at 487. Examining the evidence favourable as it applies to (defendants), we must determine on the whole whether there is any genuine issue as to likelihood o confusion. No one factor is necessarily determinative, but each must be considered. Astra 718 F.2d at 1205; Pignons, 657 F.2d at 487-92.
19. He also relied on a decision reported in 1972 1 SCC 618 (Parle Products (P) Ltd vs J.P. And Co., Mysore, wherein the Supreme Court has held as follows:
9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being is taken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. ”
20. The learned counsel also relied on various foreign judgment relating to generic/descriptive mark like “sandwitch chef” and “burger chef”. “Eveready” and “Ever-Ready”, “Supercuts and “superclips” (shops offering hair care and hair cutting services), Pro-cuts and pro-kut, American paging and American Mobile phone paging etc.. Therefore, the learned counsel submitted that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion.
21. Mr.R. Krishnamoorthy, learned senior counsel who appeared for the 2nd respondent would submit that the 2nd respondent was manufacturing and marketing “Brihan’s Napoleon Brandy” for many years and the 1st respondent is the licencee, who is marketing the same brand under the mark “Brihan’s Gold Napoleon Brandy” in Tamil Nadu and there is no similarity between the two products and relied on AIR 1965 SC 980 (Durga Dutt Sharma vs N.P. Laboratories), wherein the Supreme Court has held as follows:
“28. …….. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant’s mark is likely to deceive, but where the similarity between the plaintiff’s and the defendant’s mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff’s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”
22. We have heard both sides and gave our anxious consideration. It is well settled that in a passing off action, what is to be seen is the similarity not the dissimilarity between the competing marks to determine whether there is deception or likelihood of causing confusion.
23. In 2001 5 SCC 73 (Cadila Health Care Limited vs Cadila Pharmaceuticals Ltd), the Supreme Court referred to Dyechem’s case, (2000 5 SCC 573) which applied three tests, a) Is there any special aspect of common feature which has been copied. b) Mode in which the parts are put together differently i.e., whether dissimilarity of the part or parts is enough to make the whole thing dissimilar. c) whether when there are common elements should one not pay more regard to the parts which are not common while at the same time not disregarding the common parts ., and the Supreme Court held as follows:
“35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e., whether the mars are word marks or label marks or composite marks i.e., both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea
(c) The nature of the goods in respect of which they are used as trade marks
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competent marks”.
24. The arguments of Mr. P.S. Raman, learned Advocate General are based on the following points.According to the learned Advocate General, (i) the word “Napoleon Brandy” is an universally used mark for brandy manufactured by any Company. The word “Gold” is a descriptive term which denotes the quality of the produce and therefore, the appellant cannot claim monopoly over the words “Gold Napoleon Brandy”. There are number of companies manufacturing their liquors either prefixing or suffixing the word “Gold” or “Napoleon” for their product and the appellants cannot claim ownership for “Gold Napoleon”. There is a French liquor in the same name which is already existing in the International Market and available in all duty free shops
(ii) The respondents’ product is “Brihan’s Gold Napoleon Brandy” and the appellant’s product is “Imperial Gold Napoleon Brandy”. Therefore, the important criteria is the name of the company which manufactures the Brandy viz., either Brihan’s or Imperial which are the catchy words. The consumer will identify only by the name of the Company and not by the generic/descriptive word “Gold Napoleon Brandy”.
(iii) The label,colour scheme, writing style and the size of the bottle of the respondents mark is entirely different from that of the appellant. The consumer will not get confused with both the marks.
25. It cannot be disputed that no one can claim as his own the words ” Napoleon” and “Gold” separately. But the word “Gold Napoleon” has been adopted by the appellant. Therefore, “Gold Napoleon Brandy” would indicate that it is an Indian Made Foreign Brandy of the appellants. He is clearly and indisputably the prior user of the name, whereas the 2nd respondent was all along marketing his product “Brihan’s Napoleon Brandy”. The word “Napoleon Brandy’ indicating the descriptive name and the word “Brihan’s” indicating the 2nd respondent’s company name. Therefore, the 1st respondent cannot adopt the word “Gold” for his “Napoleon Brandy”. As far as the similarity between the words are concerned, if the tests as laid down in Cadila case (cited supra) are applied, the adopted words, the resemblance between the marks and the nature of goods are similar. As rightly pointed out by the learned Single Judge, the person who visits an ordinary Liquor Shop may not be able to distinguish the product of the appellants from the product of the respondents and the common man might be under the impression that one and the same Company is selling the brandy in different bottles of various sizes with different colourful labels. The points raised by the learned Advocate General are unacceptable. The difference in the shape of bottles or colour is not relevant in this case, since no one advertise these class of products, so the product gains popularity only by word of mouth. The common man would merely ask for “GOLD NAPOLEON BRANDY”. In such an event, the latter entrant viz., the respondent will clearly be riding on the reputation of the appellant. We are told that the volume of sale of respondents in Tamil Nadu is huge, therefore, irrepairable hardship will be caused to them. This sale includes all the products of the respondents, so we are not persuaded by this fact. Even otherwise, the appellant is the prior user. The learned single Judge having found this issue in favour of the appellant ought to have granted the relief as prayed for.
26. The learned Advocate General even suggested that his clients are ready to increase the font size of their Company’s name “Brihan’s” to differentiate from that of the appellants’ product. Prefixing the Company’s name “Imperial” for the appellants’ product and any change in the font size of the name of the respondents Company “Brihan’s” will not make any difference as we are concerned about the similarities and not the dissimilarities.
The ratiocination adopted by the learned single Judge for refusing to grant injunction so far as Tamil Nadu:
27. Having found that the respondents’ product is deceptively similar to that of the appellants’ product, the learned Single Judge had granted the relief of injunction where the appellant is marketing his product viz., Kerala, Karnataka, Pondicherry and Himachala Pradesh and as far as Tamil Nadu is concerned, the learned single Judge has applied the ratio that it cannot be presumed that the appellants’ product gained reputation in Tamil Nadu in which their brandy is not sold and hence the position of passing off does not arise in Tamil Nadu.
28. Mr. Sathish Parasaran, submitted that the learned single Judge has not taken into consideration that the appellants had already applied for licence from the Government of Tamil Nadu, which is prior to the application made by the respondents. The learned counsel pointed out that the future expansion of the appellants trade cannot be ignored and there cannot be a restricted injunction for one State. While answering to the question raised by the appellants, that if the appellants get permission from the State Government to manufacture and sell his product then what would happen to his position in the market, the learned single Judge answered that it could be decided only at that point of time. The learned counsel pointed out that the appellants are entitled for an injunction for the whole country without any geographical restriction.
29. The present case relates to a passing off action where the respondents’ product is deceptively similar and there is likelihood of causing confusion in the market. The learned single judge has held that the appellants are the prior user of the product , that there is deceptive similarity and there is likelihood of causing confusion in the mind of a common consumer of liqueur, if both products are allowed to be sold in the same counter. It is pertinent to note that in the counter of the respondents it is stated that the 1st respondent is the licensee for the usage of the mark BRIHAN’s GOLD NAPOLEON BRANDY, a derivative of BRIHAN’s NAPOLEON BRANDY for the State of Tamil Nadu. Therefore, it is understood that he is not marketing his product in any other State. However the respondents are injuncted in the states where they are not selling their product.
30. The learned counsel contended that having granted an injunction for passing off action in other States, the learned Single Judge ought not have restricted the same in Tamil Nadu on the surmise that the appellant will not be in a position to obtain a licence to market his product. According to the appellant, there is no geographical restriction once he has established that he is the prior user of his product.
31. In our considered view, the ratiocination of the learned single judge may not be correct for the simple reason that once the appellant has established that he is the prior user of the mark and when the respondent’s mark is found to be deceptively similar and there is a likelihood of causing confusion, the appellant is entitled for the relief of injunction without any geographical restriction and can not be restricted to specified areas. The following paragraphs of the order of the learned single Judge are referred as follows:
“14. It is a common or garden proposition that liquors especially brandy is being sold by one and the same manufacturer in various bottles in various sizes and shapes, just for the purpose of attracting the consumers. The question arises as to whether the person who visits an ordinary liquor shop, without any sophistication, would be able to distinguish the product of the plaintiff from the product of the defendants. Any unwary liquor consumer, among the general public, would tend to think that one and the same manufacturer is selling the Brandy in broad sized bottle as well as in narrow shaped bottle and he may mistake one for the other.
…….
16. Here sophisticated personalities or high class personalities are not consuming, as correctly put forth by the learned counsel for the plaintiff, the ‘brandy’ which is being sold in TASMAC shops or in similar such ordinary liquor shops and by stepping into the shoes of such ordinary person, it should be seen as to whether such a consumer might tend to think that one and the same firm or company is manufacturing and selling both types of brandy. Even the difference in printing the words would not serve the purpose, as now-a-days a typical business man is prone to resort to several methods and manners of printing labels as well as sing containers in selling his one and the same product.
…….
22. No doubt, as suggested by the learned counsel for the defendants, in isolation if the product of the plaintiff is compared with the product of the defendants, the defendants bottle cannot be labelled or dubbed or described or portrayed as a simulacrum of the plaintiff’s product. But yet, so far the psyche of the ordinary consumer of the liquor is concerned, as has been highlighted by me supra, he is not very
particular about the quality, perhaps he may be very careful and conscious about the quantity and he would not be able to distinguish between the two products if the products are sold in one and the same shop, as correctly pointed out by the learned counsel for the plaintiff. As such, in this view of the matter this case relating to liquor cannot be compared with the case relating to selling of medicine by a pharmacist under the prescription of a doctor. Accordingly, I would like to distinguish this case from the earlier case decided by me relating to medicines”.
Therefore, the rationale, that in matters of liquor, which is excisable commodity,the plaintiff who is nowhere in the picture in Tamil Nadu can not get an injunction, cannot be accepted. If the appellant succeeds in obtaining a licence in a later action, there are every chances for the respondents to take a plea that they are the prior user of the mark as far as the State of Tamil Nadu is concerned, though in fact, they adopted the word “GOLD NAPOLEON”, obviously subsequent to the appellant. On the basis of the above findings, the relief ought to have been granted as prayed for.
32. For the reasons stated above, the respondents fail in their appeal and the appellants succeed and O.S.A.No.456 of 2009 is dismissed and O.S.A.No.8 of 2010 stands allowed and the plaintiff is entitled for the injunction for the State of Tamil Nadu also. No costs. Consequently, connected Mps are closed.
(P.S.D.J.,) ( G.M.A.J.,)
23-7-2010
sr
Index:yes
Website:yes
Note:Issue order copy today
To
1. The Official Liquidator,
High Court, Chennai
2. The Sub Assistant Registrar,
(Original Side)
High Court, Madras
PRABHA SRIDEVAN,J.,
AND
G.M. AKBAR ALI,J.,
sr
Pre-Delivery Common Judgment in O.S.A.Nos.456 of 2009 and 8 of 2010
23-07-2010