{"id":8578,"date":"2007-10-12T00:00:00","date_gmt":"2007-10-11T18:30:00","guid":{"rendered":"https:\/\/www.legalindia.com\/judgments\/khoday-distilleries-limited-vs-the-scotch-whisky-association-on-12-october-2007"},"modified":"2016-12-13T04:05:19","modified_gmt":"2016-12-12T22:35:19","slug":"khoday-distilleries-limited-vs-the-scotch-whisky-association-on-12-october-2007","status":"publish","type":"post","link":"https:\/\/www.legalindia.com\/judgments\/khoday-distilleries-limited-vs-the-scotch-whisky-association-on-12-october-2007","title":{"rendered":"Khoday Distilleries Limited vs The Scotch Whisky Association on 12 October, 2007"},"content":{"rendered":"
Madras High Court<\/div>\n
Khoday Distilleries Limited vs The Scotch Whisky Association on 12 October, 2007<\/div>\n
       \n\n  \n\n  \n\n \n \n           IN THE HIGH COURT OF JUDICATURE AT MADRAS\n                              \n                      Dated: 12.10.2007\n                              \n                            Coram\n                              \n            THE HONOURABLE MR. JUSTICE P.K.MISRA\n                             AND\n           THE HONOURABLE MR. JUSTICE K.MOHAN RAM\n                              \n        Trade Mark Second Appeal (TMSA) No.2 of 1999\n                             and \n        Civil Miscellaneous Petition No.4350 of 1999\n\n\n\nKhoday Distilleries Limited\nA Company incorporated under the Companies Act\nhaving its Registered Office at \nNo.54\nKannayakana Agrahara\nAnekal Taluk\nBangalore District\nKarnataka State                    \t\t\t\t..Appellant\n\n\n           Vs.\n\n\n1.  The Scotch Whisky Association\n    No.20 \n    Atholi Crescent\n    Edinburgh \n    Scotland\n    United Kingdom\n\n2.  John Walker and Sons Limited\n    No.83 \n    St. James Street\n    London SWIA Ind.\n\n3.  The Deputy Registrar of Trade Marks\n    Trade Mark Registry\n    Shastri Bhavan\n    Shastri Bhavan\n    No.35 \n    Haddows Road\n    Chennai 600 006\n    Now at \n    Rajaji Bhavan\n    Besant Nagar\n    Chennai 600 090                    \t\t   \t..Respondents\n\n\n\n\nTMSA  filed under Section109 of Trade and Merchandise  Marks\nAct  1958  against  the judgment dated  25.09.1998  made  in\nT.M.A.No.3 of 1989.\n\n\n\n\n\n\nFor Appellant       :    Mr. Vedantham Srinivasan,\n\t\t\t\t for Mr. C.Hanumantha Rao\n\nFor  Respondents    :    Dr. Veerendra Thulza Purkar,\n                         Assisted by\n                         Mr. Amit Jamsandikan.\n\n                         Mr. Swapail Desan for Mr. N.L.Rajah.\n                             \n\n\n                       J U D G M E N T\n<\/pre>\n
  (Judgment of the Court was delivered by K.Mohan Ram, J.)<\/p>\n
      This  appeal has been filed under Section 109  of  the<\/p>\n
Trade  and Merchandise Marks Act, 1958 (hereinafter referred<\/p>\n
to  as  ‘the  Act’) against the order of the learned  Single<\/p>\n
Judge  dated  25.09.1998 in T.M.A. No. 3 of 1989  and  Cross<\/p>\n
Objections.   The  said appeal has been  filed  against  the<\/p>\n
order   dated  12.05.1989  passed  by  the  learned   Deputy<\/p>\n
Registrar   of   Trade  Marks  allowing  the   Rectification<\/p>\n
application  No.MAS-300 and directing  the  removal  of  the<\/p>\n
Registered  Trade Mark No.273203 of the appellant  from  the<\/p>\n
Register.\n<\/p>\n<\/p>\n
       2.   The   rectification   application   relates   to<\/p>\n
rectification of Registered Trade Mark No.273203 in Class 33<\/p>\n
consisting  of  the words ‘PETER SCOT’  per  se.   The  said<\/p>\n
trade mark was registered with effect from 3rd July 1971  by<\/p>\n
Khoday  Distilleries Private Limited, the appellant  herein,<\/p>\n
on the basis of user claimed since May 1968.  On 21.04.1986,<\/p>\n
rectification application was filed by the respondents 1 & 2<\/p>\n
seeking expunction of the impugned registered trade mark  on<\/p>\n
the ground:\n<\/p>\n<\/p>\n
          (1)  That the registration of impugned trade<\/p>\n
    mark  offends Section 9 of the Act on  the  ground<\/p>\n
    that  the mark was neither distinctive nor capable<\/p>\n
    of   distinguishing  the  registered  proprietors’<\/p>\n
    goods;\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
          (2)  That  the  impugned  registration  also<\/p>\n
    contravenes Section 11 as the impugned  registered<\/p>\n
    trade  mark  contains  the word  ‘SCOT’  which  is<\/p>\n
    likely  to deceive or cause confusion in  as  much<\/p>\n
    as  the word ‘SCOT’ indicates Scottish origin  for<\/p>\n
    the liquors;\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
          (3)  That  the  mark is also disentailed  to<\/p>\n
    protection in a Court of law<\/p>\n
          (4) That in all the foregoing premises,  the<\/p>\n
    mark shall be removed from the register.<\/p><\/blockquote>\n
      3.  The  registered proprietors namely the  appellants<\/p>\n
herein  filed  a counter statement denying all the  material<\/p>\n
averments   in   the   application  for  rectification   and<\/p>\n
ultimately prayed for the exercise of Registrar’s discretion<\/p>\n
to allow the trade mark to remain on the register.<\/p>\n
     4. The respondents 1 & 2 filed an affidavit of IAN Glen<\/p>\n
Barclay  in-house  solicitor  of  the  first  respondent  as<\/p>\n
evidence in support of the application for rectification and<\/p>\n
also  20 third party affidavits have been filed as evidence.<\/p>\n
But  the  appellant  herein did not  file  any  evidence  in<\/p>\n
support of registration.\n<\/p>\n<\/p>\n
      5.  The  Deputy  Registrar of trade Marks,  the  third<\/p>\n
respondent herein framed the following five issues;<\/p>\n
           (1)  Whether  the  Applicants  are  “persons<\/p>\n
     aggrieved” under Section 56;\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
          (2) Whether the Application for rectification<\/p>\n
     is  not  maintainable due to  any  mis-joinder  of<\/p>\n
     Applicants;\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
            (3)  Whether  the  impugned  mark  was  not<\/p>\n
     distinctive   of  the  goods  of  the   registered<\/p>\n
     proprietors   at   the   commencement    of    the<\/p>\n
     rectification proceedings;\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
             (4)Whether   the   impugned   registration<\/p>\n
     contravenes  Section  11 at  the  commencement  of<\/p>\n
     rectification proceedings; and<\/p>\n
            (5)  Whether  the  mark  is  liable  to  be<\/p>\n
     rectified and if so, in what manner.<\/p><\/blockquote>\n
       6.  On  a  careful  consideration  of  the  materials<\/p>\n
available  on  record, the third respondent  held  that  the<\/p>\n
first  respondent association cannot be regarded as a “rival<\/p>\n
in  trade”  to  the registered proprietors and  consequently<\/p>\n
held that the first respondent cannot be considered to be  a<\/p>\n
person aggrieved and accordingly accepted the contentions of<\/p>\n
the  appellant that the first respondent has no locus standi<\/p>\n
to  maintain  the application under Section 56 of  the  Act.<\/p>\n
But  at the same time, upheld the locus standi of the second<\/p>\n
respondent.   As  far as the second issue is concerned,  the<\/p>\n
third respondent held that the mis-joinder of applicants  is<\/p>\n
not  fatal.   As  far as the third issue is  concerned,  the<\/p>\n
third respondent held that the respondents 1 & 2 herein have<\/p>\n
practically admitted that the impugned mark is in use during<\/p>\n
the  last several years and therefore it cannot be held that<\/p>\n
the  impugned  mark is not distinctive of the goods  of  the<\/p>\n
registered   proprietors   at  the   commencement   of   the<\/p>\n
proceedings  and accordingly, decided the issue against  the<\/p>\n
respondents 1 & 2 and in favour of the appellant herein.  So<\/p>\n
far  as  the  issue No.4 is concerned, the third  respondent<\/p>\n
mainly  relying  upon  the  failure  on  the  part  of   the<\/p>\n
appellants  to adduce any evidence to counter  the  evidence<\/p>\n
adduced by the respondents 1 & 2, accepted the case  of  the<\/p>\n
respondents  1  & 2 and held that the impugned  registration<\/p>\n
contravenes  Section  11 on the date  of  the  rectification<\/p>\n
proceedings.  In the absence of contra evidence on the  side<\/p>\n
of  the appellant, the third respondent accepted the plea of<\/p>\n
deceptive element in the impugned mark and also rejected the<\/p>\n
plea of acquiescence put forth by the appellant.<\/p>\n
      7. In the appeal against the order passed by the third<\/p>\n
respondent,  filed  by  the appellant  herein,  the  learned<\/p>\n
Single   Judge  agreed  with  the  findings  of  the   third<\/p>\n
respondent and dismissed the appeal.\n<\/p>\n<\/p>\n
      8.  In his order the learned Singe Judge in paragraphs<\/p>\n
29, 36 and 37 has observed as follows:\n<\/p>\n<\/p>\n
     “29. The reputation and good will earned by Scotch<\/p>\n
     Whisky  has  been set out at great length  in  the<\/p>\n
     affidavit  of  the solicitor to the Scotch  Whisky<\/p>\n
     Association.   The  appellant did  not  choose  to<\/p>\n
     controvert any of the averments in that  affidavit<\/p>\n
     or  in  the other affidavits nor did it offer  any<\/p>\n
     evidence.   The objection statement filed  by  the<\/p>\n
     appellant cannot be treated as evidence.<\/p>\n<\/blockquote>\n
     36.  It  is  unfortunate that  the  appellant  had<\/p>\n
     chosen to refrain from placing any material before<\/p>\n
     the    authority   to   refuse   the   claim   for<\/p>\n
     rectification.  Apparently appellant did not  have<\/p>\n
     great  faith  in the validity of the  registration<\/p>\n
     and  did not consider it worthwhile even to cross-<\/p>\n
     examine the witnesses who had filed the affidavits<\/p>\n
     in  support  of the application for rectification.<\/p>\n
     It  is  evident that adoption of the  mark  ‘Peter<\/p>\n
     scot’   by  the  appellant  was  for  the  reasons<\/p>\n
     mentioned  in  the  affidavit  of  Peter   Jeffery<\/p>\n
     Warren.   The mark was adopted apparently  with  a<\/p>\n
     view to take advantage of the good will associated<\/p>\n
     with  Scotch  whisky by using the word  ‘Scot’  as<\/p>\n
     part of the trade mark for the whisky manufactured<\/p>\n
     by the appellant.\n<\/p><\/blockquote>\n
<\/blockquote>\n
     37. The conduct of the appellant subsequent to the<\/p>\n
     registration  is  not  of much  materiality.   The<\/p>\n
     appellant  has  continued to use that  mark.   The<\/p>\n
     fact  that appellant did not do anything more than<\/p>\n
     use   the  mark  does  not  have  the  effect   of<\/p>\n
     discharging it from the consequences of adopting a<\/p>\n
     mark which should not have been registered.”<\/p><\/blockquote>\n<\/p>\n
      9.  Having  observed  so and  by  applying  the  legal<\/p>\n
principles  applicable  for  deciding  the  application  for<\/p>\n
rectification filed under Section 56 of the Act, the learned<\/p>\n
Single  Judge held that the trade mark that was  adopted  by<\/p>\n
the  appellant  ‘Peter Scot’ was in relation to  whisky  and<\/p>\n
when  so  used, the mark was deceptively similar to ‘Scotch’<\/p>\n
and  was  likely to lead a consumer of whisky into  thinking<\/p>\n
that  the  whisky  manufactured  in  this  country  by   the<\/p>\n
appellant  and  sold under the trade mark ‘Peter  Scot’  was<\/p>\n
also scotch whisky.  The learned Single Judge also held that<\/p>\n
the  registering authority should have declined to  register<\/p>\n
that  mark  notwithstanding the fact that no  objection  had<\/p>\n
been filed.  The learned Single Judge further held that  the<\/p>\n
facts of this case are not such as to warrant the conclusion<\/p>\n
that there has been acquiescence.\n<\/p>\n<\/p>\n
      10.  The  learned Single Judge by applying  the  legal<\/p>\n
principle   that  the  statutory  standard  is  not   actual<\/p>\n
confusion  and deception but likelihood thereof,  held  that<\/p>\n
the term ‘Scot’ when used in association with whisky of non-<\/p>\n
Scottish  origin is inherently capable of and is  likely  to<\/p>\n
cause  confusion  and deception.  The learned  single  Judge<\/p>\n
further  held  that the discretion exercised  by  the  third<\/p>\n
respondent  is not the result of any arbitrary  exercise  of<\/p>\n
power  but  is  based upon the material  placed  before  the<\/p>\n
authorities and does not require interference.  The  learned<\/p>\n
Single   Judge  held  that  simply  because  Scotch   Whisky<\/p>\n
Association   consists  of  manufacturers   by   itself   is<\/p>\n
insufficient  to  enable  the association  to  maintain  the<\/p>\n
action  by  itself but however it can do  so  along  with  a<\/p>\n
member who is prejudicially affected by the registration and<\/p>\n
accordingly allowed the cross-objections.<\/p>\n
      11.  For  proper  appreciation of the contentions  put<\/p>\n
forth  by  the  learned counsel on either side  it  will  be<\/p>\n
useful to refer to the following provisions of the Act viz.:-<\/p>\n
     “Section   11:  Prohibition  of  registration   of<\/p>\n
     certain marks.:\n<\/p><\/blockquote>\n
\n     A mark–\n<\/p><\/blockquote>\n
<\/blockquote>\n
     (a) the use of which would be likely to deceive or<\/p>\n
     cause confusion; or<\/p>\n<\/blockquote>\n
     (b)  the use of which would be contrary to any law<\/p>\n
     for the time being in force; or<\/p>\n<\/blockquote>\n
     (c)  which  comprises  or contains  scandalous  or<\/p>\n
     obscene matter; or<\/p>\n<\/blockquote>\n
     (d)  which comprises or contains any matter likely<\/p>\n
     to  hurt  the  religious susceptibilities  of  any<\/p>\n
     class or section of the citizens of India; or<\/p>\n<\/blockquote>\n
     (e)   which  would  otherwise  be  disentiled   to<\/p>\n
     protection in a Court;\n<\/p><\/blockquote>\n
\n     shall not be registered as a trade mark.<\/p>\n
     Section  32: Registration to be conclusive  as  to<\/p>\n
     validity  after  seven  years:  Subject   to   the<\/p>\n
     provisions  of Section 35 and Section 46,  in  all<\/p>\n
     legal   proceedings  relating  to  a  trade   mark<\/p>\n
     registered  in  Part A of the register  (including<\/p>\n
     applications  under  section  56),  the   original<\/p>\n
     registration  of the trade mark shall,  after  the<\/p>\n
     expiration  of seven years from the date  of  such<\/p>\n
     registration, be taken to be valid in all respects<\/p>\n
     unless it is proved-\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
            (a)  that  the  original  registration  was<\/p>\n
     obtained by fraud; or<\/p>\n<\/blockquote>\n
           (b)  that  the trade mark was registered  in<\/p>\n
     contravention of the provisions of Section  11  or<\/p>\n
     offends against the provisions of that Section  on<\/p>\n
     the date of commencement of the proceedings; or<\/p>\n<\/blockquote>\n
           (c)  that  the trade mark was  not,  at  the<\/p>\n
     commencement  of the proceedings,  distinctive  of<\/p>\n
     the goods of the registered proprietor.”<\/p><\/blockquote>\n<\/p>\n
      12.  Heard  Mr.Vedantham  Srinivasan,  learned  senior<\/p>\n
counsel  for  Mr.C.Hanumantha Rao learned  counsel  for  the<\/p>\n
appellant and Mr.Veerendra Thulza Purkar learned counsel for<\/p>\n
the respondents.\n<\/p>\n<\/p>\n
     13. Mr.Vedantham Srinivasan, learned senior counsel for<\/p>\n
the  appellant submitted that respondents 1 and 2  in  their<\/p>\n
rectification  application  raised  the  following   grounds<\/p>\n
namely:\n<\/p>\n<\/p>\n
     (i) the mark is not distinctive;\n<\/p>\n<\/p>\n
     (ii) it was not capable of distinguishing itself as the<\/p>\n
goods of khodays;\n<\/p>\n<\/p>\n
      (iii)  the  use of the mark is likely  to  deceive  or<\/p>\n
confuse;\n<\/p>\n<\/p>\n
     (iv) non-user of the mark;\n<\/p>\n
and   the  third  respondent  rejected  the  objections   of<\/p>\n
respondents 1 and 2 on distinctiveness, non-user  and  locus<\/p>\n
standi and therefore it is not open to respondents 1  and  2<\/p>\n
to  plead the same in the above appeal and the issue  to  be<\/p>\n
decided  in  the appeal is whether the mark  was  likely  to<\/p>\n
deceive and confuse the consumer.\n<\/p>\n<\/p>\n
      (II)  Learned senior counsel for the appellant further<\/p>\n
submitted   that  the  cause  of  action  for   filing   the<\/p>\n
rectification  petition accrued from the date  of  knowledge<\/p>\n
i.e., 20.09.1974 and the application ought to have been made<\/p>\n
within  three  years  from  the  date  i.e.,  on  or  before<\/p>\n
19.09.1977  as  the  period of limitation  prescribed  under<\/p>\n
Article 137 of the Limitation Act is three years.  Since the<\/p>\n
rectification application has admittedly not been  filed  in<\/p>\n
time,  the same is barred by limitation.  In support of  his<\/p>\n
contentions,  the learned senior counsel based  reliance  on<\/p>\n
the  decision  reported in A.I.R.1977 S.C. 282  =  1976  (4)<\/p>\n
S.C.C.    634   (Kerala   State   Electricity   Board    Vs.<\/p>\n
T.P.Kunhallumma),  wherein it is held that  the  words  “any<\/p>\n
other  application”  will include not only  any  application<\/p>\n
under   Code  of  Civil  Procedure,  but  it  will   include<\/p>\n
applications under any Act and therefore, Article 137 of the<\/p>\n
Limitation Act applies to the applications filed  under  any<\/p>\n
Act.   Learned senior counsel also relied upon the decisions<\/p>\n
reported in 1999 (19) P.T.C. 718 and 2002 (6) Bombay CR  796<\/p>\n
=  2003  (26)  P.T.C. 517 (Bombay) (Rakesh Kumar  Gupta  Vs.<\/p>\n
Goresh Domesztic Appliances and others).<\/p>\n
      (III) Regarding the scope of interference by the  High<\/p>\n
Court  in  an  appeal filed under Clause 15 of  the  Letters<\/p>\n
Patent  Appeal, the learned senior counsel for the appellant<\/p>\n
relied  upon  the  decision of the Apex  Court  reported  in<\/p>\n
A.I.R.  1974  S.C. 2048 (Smt. Asha Devi Vs.  Dukhi  Sao  and<\/p>\n
another).  In the said decision, it is laid down as follows:<\/p>\n
          “The  first  contention urged  before  us  on<\/p>\n
          behalf  of the appellant is that the  Letters<\/p>\n
          Patent  Bench was not authorized  in  law  to<\/p>\n
          reverse  the concurrent findings of  fact  of<\/p>\n
          the  Subordinate Judge and the learned Single<\/p>\n
          Judge  of  the  High Court.  It is  submitted<\/p>\n
          that  a  Letters Patent Appeal stand  on  the<\/p>\n
          same  footing as a second appeal and  it  was<\/p>\n
          therefore  not  open  to the  Letters  Patent<\/p>\n
          Bench  to reverse the concurrent findings  of<\/p>\n
          fact  of  the two courts below.   We  are  of<\/p>\n
          opinion  that this contention is not correct.<\/p>\n
          A  Letters Patent appeal from the judgment of<\/p>\n
          a  learned Single Judge in a first appeal  to<\/p>\n
          the  High Court is not exactly equivalent  to<\/p>\n
          a  second  appeal under Section  100  of  the<\/p>\n
          Code  of  Civil Procedure, and therefore,  it<\/p>\n
          cannot  be held that a Letters Patent  appeal<\/p>\n
          of  this  kind can only lie on a question  of<\/p>\n
          law  and  not  otherwise.  The  matter  would<\/p>\n
          have  been  different if the  Letters  Patent<\/p>\n
          appeal  was  from  a decision  of  a  learned<\/p>\n
          Single  Judge in a second appeal to the  High<\/p>\n
          Court.   In  these circumstances it  will  be<\/p>\n
          open   to  the  High  Court  to  review  even<\/p>\n
          findings  of fact in a Letters Patent  Appeal<\/p>\n
          from  a  first  appeal  heard  by  a  learned<\/p>\n
          Single  Judge, though generally speaking  the<\/p>\n
          Letters   Patent  Bench  would  be  slow   to<\/p>\n
          disturb  concurrent findings of fact  of  the<\/p>\n
          two  courts  below.  But there  is  no  doubt<\/p>\n
          that  in an appropriate case a Letters Patent<\/p>\n
          Bench   hearing  an  appeal  from  a  learned<\/p>\n
          Single  Judge of the High Court  in  a  first<\/p>\n
          appeal  heard  by him is entitled  to  review<\/p>\n
          even  findings  of fact.  The  contention  of<\/p>\n
          the  appellant  therefore  that  the  Letters<\/p>\n
          Patent  Bench  was  not in  law  entitled  to<\/p>\n
          reverse the concurrent findings of fact  must<\/p>\n
          be negatived”.<\/p><\/blockquote>\n
      (IV)  Learned  senior  counsel for  the  appellant  by<\/p>\n
pointing  out  various contradictions  in  the  third  party<\/p>\n
affidavits filed by respondents 1 and 2 submitted that these<\/p>\n
evidence  are  not  worthy  of acceptance.   Learned  senior<\/p>\n
counsel  further contended that, according to respondents  1<\/p>\n
and  2  themselves, 46 brands contain the name of ‘Scot’  as<\/p>\n
part  of  their brand name, but no one has complained  about<\/p>\n
confusion  or deceit in respect of these band name,  because<\/p>\n
the  universal practice is to demand a particular  brand  by<\/p>\n
its  full name in the whisky trade;  therefore there can  be<\/p>\n
no  scope  or  cause  for any sort of  confusion  or  deceit<\/p>\n
particularly  having  in  mind the  kind  of  customers  who<\/p>\n
consume   scotch   whisky  as  also  its  availability   and<\/p>\n
affordability  in  India where the  import  and  trade  were<\/p>\n
severely   restricted  and  regulated;   the   third   party<\/p>\n
affidavits  filed  in  1986 are to  be  rejected  as  false,<\/p>\n
fabricated, contrived, untrue, unbelievable and contrary  to<\/p>\n
the course of common human conduct.\n<\/p>\n<\/p>\n
      (V)  The following submissions have been made  by  the<\/p>\n
learned senior counsel for the appellant regarding the third<\/p>\n
party affidavits, namely:\n<\/p>\n<\/p>\n
           (a)  no deponent states that he has been deceived<\/p>\n
into thinking that “Peter Scot” was a ‘Scotch Whisky’;<\/p>\n
           (b)  all the stamp papers are purchased by Little<\/p>\n
and  Co., the counsel for respondents and hence, they cannot<\/p>\n
be treated as independent witnesses;\n<\/p>\n<\/p>\n
          (c) The vital aspect that the affidavits have been<\/p>\n
procured  by M\/s.Little and Company, the Solicitors  of  the<\/p>\n
respondent  had not been considered by the third  respondent<\/p>\n
and  by the learned Single Judge;  the stamp papers on which<\/p>\n
the  affidavits  have been engrossed stand in  the  name  of<\/p>\n
M\/s.Little and Company;  this shows that the affidavits have<\/p>\n
been  obtained by respondents 1 and 2 for production  before<\/p>\n
the third respondent and hence they are not independent;<\/p>\n
           (d)  Scotch  Whiskey is very  expensive;   it  is<\/p>\n
generally consumed only by rich businessmen, industrialists,<\/p>\n
well  paid  executives  and  successful  professionals  like<\/p>\n
Doctors,  Chartered  Accountants or Lawyers;   there  is  no<\/p>\n
evidence  from  any  such person;   all  the  deponents  are<\/p>\n
ordinary individuals, some even workers and some waiters and<\/p>\n
bar  attendants;   none of them have stated their  financial<\/p>\n
status;  it is unbelievable that they could afford to  drink<\/p>\n
scotch  whisky, which wold have cost at least Rs.60 per  peg<\/p>\n
in bars in respect of IMFL;\n<\/p>\n<\/p>\n
           (e) most of the bar attendants knowing fully well<\/p>\n
that  PETER  SCOT is an Indian Whiskey deliberately  mislead<\/p>\n
their  customers  that  it was Scot Whisky;   this  kind  of<\/p>\n
misrepresentation  could  be made  with  any  Indian  Whisky<\/p>\n
bearing a foreign name or work as brand name e.g., Diplomat,<\/p>\n
Ambassador, McDowell’s and so on;  their evidence  does  not<\/p>\n
prove that a customer without any misrepresentation by  them<\/p>\n
was  deceived  into thinking that “Peter  Scot”  was  scotch<\/p>\n
whisky;  practically,  all the deponents  have  stated  that<\/p>\n
Peter  Scot  was  an Indian Whisky;  none of  the  deponents<\/p>\n
refer  to  the  lion  device;  In  Ex\/”g”  (Price  Lists  of<\/p>\n
liquors)  exhibited  in  brand hotels,  Indian  and  Foreign<\/p>\n
Whiskies  are listed separately;  generally customers  order<\/p>\n
by  brand or after seeking the price list;  hence, there  is<\/p>\n
no likelihood of confusion;\n<\/p>\n<\/p>\n
           (f) there is no evidence given by the respondents<\/p>\n
to  show  that Peter Scot has been used as a trade mark  for<\/p>\n
scotch whisky;  the evidence does not show that the name  of<\/p>\n
any  person has been used as a trade mark for scotch whisky;<\/p>\n
McDonald,  MacAndrews are Scottish names used as brand  name<\/p>\n
for  Indian  Whisky;   the respondents  did  not  raise  any<\/p>\n
objection to this trade mark;  in the menu cards of bars and<\/p>\n
restaurants, the Scottish Whisky and Indian brands of whisky<\/p>\n
are separately listed;\n<\/p>\n<\/p>\n
           (g) the very same persons who have filed evidence<\/p>\n
before the Registrar have also examined themselves in favour<\/p>\n
of  respondents  1 and 2 in Suit No.1352 of  1986  and  that<\/p>\n
itself will show that the deponents are stock witnesses  and<\/p>\n
therefore  no  reliance can be placed upon them;   that  the<\/p>\n
third respondent himself has come to the conclusion that the<\/p>\n
evidence  of the parties are unsatisfactory and as such  the<\/p>\n
third  respondent by invoking the proviso to Section  99  of<\/p>\n
the Act should have recorded evidence;\n<\/p>\n<\/p>\n
           (h)  I.G.Barkley is an In house Solicitor of  the<\/p>\n
first  respondent and he cannot file an affidavit on  behalf<\/p>\n
of  his  client;   in  support of the said  contention,  the<\/p>\n
learned senior counsel relied upon the decision reported  in<\/p>\n
A.I.R.2003  AP  445  (Pasupuleti Subba Rao  Vs.  Nandavarapu<\/p>\n
Anjaneyulu).\n<\/p>\n<\/p>\n
     (VI) Learned senior counsel for the appellant submitted<\/p>\n
that though the affidavit of Mr.Jefrey Warran was filed, the<\/p>\n
same  has been overlooked by the third respondent.   In  the<\/p>\n
said affidavit in paragraph 3 it is averred as follows:<\/p>\n
         “…  While  I  was employed  by  Khoday,  the<\/p>\n
         whisky  we  produced was sold under  at  least<\/p>\n
         two  marks, namely RED KNIGHT and PETER  SCOT.<\/p>\n
         The   brand  name  “PETER  SCOT”  was   coined<\/p>\n
         primarily  with my father in mind  i.e.  using<\/p>\n
         his   forename  “Peter”  and  his  nationality<\/p>\n
         “Scot”.   Another  factor  behind  coining  of<\/p>\n
         this  brand name was the internationally known<\/p>\n
         British  explorer  “Captain  Scott”,  who   is<\/p>\n
         widely  known  as  an artist,  naturalist  and<\/p>\n
         Chariman   of   the   World   Wildlife   Fund.<\/p>\n
         Although  the name “Scott” is spelt  with  two<\/p>\n
         “t’s, it is phonetically the same as “Scot”.<\/p>\n<\/blockquote>\n
but  the  third respondent has not considered the  affidavit<\/p>\n
filed  by Mr.Jefrey Warran which will amount to patent  non-<\/p>\n
application of mind.  Learned senior counsel submitted  that<\/p>\n
the  learned  Single Judge has noticed and stated  that  the<\/p>\n
name  of  the employee cannot be a ground to name  a  brand,<\/p>\n
overlooking the fact that prior to the employment  of  Peter<\/p>\n
Jefrey  Warren and his father Peter Warren, Khoday  did  not<\/p>\n
make  any whisky and therefore the appellant as blender  and<\/p>\n
brewer of this brand ascribed his name to the whisky.<\/p>\n
      (VII) Learned senior counsel for the appellant further<\/p>\n
submitted that under Section 11 of the Customs Act,  imports<\/p>\n
of  goods  is  prohibited except with  the  permission  upon<\/p>\n
import  license given under the Imports and Exports  Control<\/p>\n
Act,  1947;   the distribution and sale of such  liquor  are<\/p>\n
restricted  only  to  Five Star Hotels  and  Tourism  Hotels<\/p>\n
approved  by the Department of Tourism, Government of  India<\/p>\n
Embassies, shops and airlines;  the price of the goods added<\/p>\n
with  230%  customs duty 50% sales tax put it way above  the<\/p>\n
ordinary  consumers of the whisky;  the laws show  that  the<\/p>\n
goods  are not available across the country; Foreign liquors<\/p>\n
have   to   be  specifically  produced  for  and   obtained;<\/p>\n
therefore, the issue of confusion does not arise at all;  in<\/p>\n
addition, the liquor being difficult to procure, it  is  way<\/p>\n
above most of the persons who have filed the affidavits;  in<\/p>\n
fine,  the pricing, quality and regulations remove any  kind<\/p>\n
of doubt over the brands;\n<\/p>\n<\/p>\n
     (VIII) Learned senior counsel for the appellant further<\/p>\n
submitted  that the proper time for rectification was  after<\/p>\n
they had knowledge of the publication of the application for<\/p>\n
registration of the trademark PETER SCOT;  no opposition  or<\/p>\n
objection has been taken from 1968 until 1986 by which time,<\/p>\n
the  appellants has established a reputation for  the  trade<\/p>\n
name and trade mark;  “PETER SCOT” had found acceptance from<\/p>\n
customers  not only in India but throughout the world;   the<\/p>\n
figures from the year 1968 up to date would show the  extent<\/p>\n
of  reputation earned by the Indian company;  the demand  it<\/p>\n
had  created among the discerning liquor customers;  nowhere<\/p>\n
has khoday’s claimed PETER SCOT as Scotch Whisky;  the lable<\/p>\n
and  the  carton clearly indicate then it is  a  product  of<\/p>\n
India  distilled, blended and bottled in India in Bangalore,<\/p>\n
Karnataka  State  as  required by law;  this  satisfies  the<\/p>\n
requirements  of the Trade Marks Rules Part  II  Schedule  4<\/p>\n
Item  43;   there  is,  no likelihood of  any  confusion  or<\/p>\n
deception as contended by the respondents, since the  custom<\/p>\n
of  the  trade is to sell goods by description and by  brand<\/p>\n
name  only and not by the generic name like scotch or whisky<\/p>\n
or brandy or gin or rum or beer or vodka.\n<\/p>\n<\/p>\n
      (IX) Learned counsel further submitted that every wine<\/p>\n
and  every spirit, like cigarettes is only sold by the brand<\/p>\n
name and the customer also asks and demands these goods only<\/p>\n
by  the  brand  name;  this will clearly prove beyond  doubt<\/p>\n
that  the  affidavits filed by the Scotch Whisky  Distillers<\/p>\n
Association  are procured, false, fabricated  contrived  and<\/p>\n
obtained  for the purpose of this litigation;  they  do  not<\/p>\n
deserve any credibility and no reliance can be placed on any<\/p>\n
of them since many of the submissions are self-contradictory<\/p>\n
and  self defeating;  the respondents did not establish  the<\/p>\n
allegation  of deception or confusion;  on the  other  hand,<\/p>\n
some  of the affidavits would reveal that the deponents  are<\/p>\n
fraudulent persons because by their own admission, they have<\/p>\n
cheated the public by giving them something other than  what<\/p>\n
was  sought  by  the customers;  not one of  the  affidavits<\/p>\n
proves the contention of the respondents as to deception  or<\/p>\n
confusion;  those affidavits would amount to offences  under<\/p>\n
Section  191 of the Indian Penal Code and action  should  be<\/p>\n
taken against the deponents and the persons who relied  upon<\/p>\n
them  and filed them into Court for perjury;  the filing  of<\/p>\n
perjured affidavits would amount to sharp practice, fraud on<\/p>\n
court and abuse of process of law.\n<\/p>\n<\/p>\n
      (X)  Learned senior counsel for the appellant  further<\/p>\n
submitted that Section 26 of the Geographical Indication  of<\/p>\n
Goods Act, 1999 protects the trade mark where the rights  of<\/p>\n
such  trademarks are acquired through the use in good faith;<\/p>\n
no  explanation is given by the respondents on the deception<\/p>\n
and  similarity  in  the name of scotch whisky  brands;   at<\/p>\n
pages  118  and  199 of the typed set, the respondents  have<\/p>\n
mentioned more than 44 brands of Scotch whiskeys having  the<\/p>\n
word scott or scot, etc.,;  they have not properly explained<\/p>\n
on  the  phonetic  similarity  as  well  as  the  deception,<\/p>\n
similarity  in  the  name  of the  scotch  whisky  mentioned<\/p>\n
therein;   hence the objection raised by the respondents  in<\/p>\n
use of words “Scot” is not sustainable;  it proves the point<\/p>\n
of   appellant  that  the  customers  of  scotch  whisky  is<\/p>\n
different  to  that  of  the persons consuming  Indian  made<\/p>\n
foreign liquors and Indian whiskeys;  hence the question  of<\/p>\n
confusion or deception in the minds of the consumers as they<\/p>\n
go  by  the brand and not by the name;  there is no phonetic<\/p>\n
similarity with any of the brands of the respondents and  no<\/p>\n
customer  or consumer has been deceived by the trademark  of<\/p>\n
the  appellant;  in Slavid 1977 RPC I PC, the Court  therein<\/p>\n
held that there is no cause for any confusion whatsoever and<\/p>\n
there  is  no  phonetic similarity or confusion between  the<\/p>\n
appellant’s brand name and any other brand and this  is  the<\/p>\n
finding of the Division Bench of the Bombay High Court in 57<\/p>\n
BLR.\n<\/p>\n<\/p>\n
      (XI)  Learned senior counsel for the appellant further<\/p>\n
submitted  that  respondents  1  and  2  filed  a  suit   in<\/p>\n
C.S.No.1729  of  1987 on 17.06.1987 before the  Bombay  High<\/p>\n
Court  stating  that the Whisky sold by the appellant  under<\/p>\n
the  name “Peter Scot” has resulted in passing off the goods<\/p>\n
of  the  appellant as that of the manufacture of  Scotch  in<\/p>\n
Scotland   who   are  well  known  for  the  Scotch   whisky<\/p>\n
manufactured  by  them  and which is  universally  known  as<\/p>\n
Scotch  whisky;  during the pendency of the said  suit  this<\/p>\n
application for rectification was filed and the  same  ought<\/p>\n
to  have  been  stayed in view of the decision  reported  in<\/p>\n
A.I.R. 1999 SC 22 in the case of Whirlpool Corporation;  the<\/p>\n
conduct of the respondent in spite of their knowledge  about<\/p>\n
the alleged likelihood that the use of the trade mark of the<\/p>\n
appellant would deceive or confuse and their failure to  act<\/p>\n
against them as early as 1974 amount to blame worthy conduct<\/p>\n
in  the  relevant sense and referred to GE Trade  mark  case<\/p>\n
1973 RPC 297.\n<\/p>\n<\/p>\n
       (XII)   Learned  senior  counsel  for  the  appellant<\/p>\n
submitted  that  the  word  Scot  has  many  meanings   from<\/p>\n
indicating  whisky;   the word Scot has also  other  meaning<\/p>\n
besides  the  native Scotland;  Scotch  has  more  than  one<\/p>\n
meaning;  as per Black Law Dictionary – 3rd Edition –  Scots<\/p>\n
means in old English Law a text or contribute one share of a<\/p>\n
contribution;   “Scots”  also have more  than  one  meaning;<\/p>\n
there  is  no  reference to “Scot” or  “Scott”;   “Scot”  is<\/p>\n
indicting Scotch whisky;  “Scot” is a rare surname and Scott<\/p>\n
is  a common surname;  Peter Scot is the name of the person.<\/p>\n
Learned  senior counsel further submitted that the consumers<\/p>\n
of  wines  are  aware  of  the distinctive  tastes  of  each<\/p>\n
particular brand and not taken in or deceived by brand  name<\/p>\n
and the same principles apply to whisky also.  In support of<\/p>\n
the  above  said submission, the learned senior counsel  for<\/p>\n
the  appellant  relied upon the Decision of  a  Delegate  of<\/p>\n
Devils Ridge – Devils Lair (Nature of Customers).<\/p>\n
      14.  Per  contra Dr. Veerendra Thulza  Purkar  learned<\/p>\n
counsel for Respondents 1 and 2 submitted as follows:-<\/p>\n
     (I) The present appeal under Section 109 (5) of the Act<\/p>\n
is  in  the  nature of a second appeal and hence  concurrent<\/p>\n
findings  of facts of the Deputy Registrar which  have  been<\/p>\n
confirmed  by  the  learned  Single  Judge  should  not   be<\/p>\n
interfered  with unless it is found that such  findings  are<\/p>\n
capricious or perverse or based on no evidence.<\/p>\n
      (II) The decision of the Deputy Registrar is confirmed<\/p>\n
by  the learned Single Judge by a well reasoned judgment and<\/p>\n
after  proper  appreciation  of evidence  and  applying  the<\/p>\n
settled  principles  of  law;   the  uncontroverted   facts,<\/p>\n
supporting the respondents’ contentions, the failure of  the<\/p>\n
appellant to lead any evidence, the failure of the appellant<\/p>\n
to  dispute  the  contents of the affidavits  filed  by  the<\/p>\n
respondents and the existence of evidence adduced before the<\/p>\n
Deputy Registrar and which evidence have been appreciated by<\/p>\n
the  learned  Single  Judge show that the  decision  of  the<\/p>\n
Deputy  Registrar and confirmed by the learned Single  Judge<\/p>\n
cannot be termed as arbitrary or capricious or unsustainable<\/p>\n
or based on no evidence, or was reached by wrong application<\/p>\n
of principles of law.\n<\/p>\n<\/p>\n
      (III)  Since the appellant had not raised the question<\/p>\n
of  limitation before the Registrar or in the first  appeal,<\/p>\n
the  same  cannot  be  raised  in  the  above  appeal;   the<\/p>\n
appellant   has  conceded  the  non-applicability   of   the<\/p>\n
provisions of the Limitation Act, 1963 as could be seen from<\/p>\n
paragraph 11 of the judgment rendered in the appeal  wherein<\/p>\n
the learned Judge has observed as follows:<\/p>\n
          “The  long  user  by the appellant,  it  was<\/p>\n
          submitted,  shows  the acquiescence  on  the<\/p>\n
          part   of  the  respondents  and  therefore,<\/p>\n
          despite   the   fact  that  no   period   of<\/p>\n
          limitation is prescribed in Sec. 56  of  the<\/p>\n
          Act,   the  application  should  have   been<\/p>\n
          rejected.”<\/p><\/blockquote>\n
       (IV)   Learned  counsel  for  respondents  1  and   2<\/p>\n
alternatively submitted that considering the objects of  the<\/p>\n
Act  i.e., to maintain the purity of the Register and in the<\/p>\n
absence of any express provision for limitation in the  Act,<\/p>\n
no Section or Article in the Limitation Act can apply so far<\/p>\n
as  the  application for rectification under Section  56  is<\/p>\n
concerned;   in  support  of  his  contentions  the  learned<\/p>\n
counsel  relied  upon  the following decisions  reported  in<\/p>\n
A.I.R.  1969 S.C. 1335 (Town Municipal Council Vs. Presiding<\/p>\n
Officer,  Labour Court), A.I.R. 1970 SC 209 at 210 (para  3)<\/p>\n
(Nityanand   M.Joshi  &  another  Vs.  The  Life   Insurance<\/p>\n
Corporation of India and Others), A.I.R. 1977 S.C. 282 @ 285<\/p>\n
(para   18)   (The  Kerala  State  Electricity   Board   Vs.<\/p>\n
T.P.Kunhaliumma) and A.I.R. 1985 S.C. 1279 at  1280  (Sakuru<\/p>\n
Vs. Tanaji).\n<\/p>\n<\/p>\n
      (V)  Learned counsel for respondents 1 and  2  further<\/p>\n
submitted  that Article 137 of the Limitation Act  does  not<\/p>\n
apply   to  the  rectification  application  filed  by   the<\/p>\n
respondents before the Registrar.  Learned counsel submitted<\/p>\n
that  the decision relied upon by the appellant namely  2002<\/p>\n
(6)  Bombay CR 796 = 2003 (26) P.T.C. 517 (Bombay) (referred<\/p>\n
to  supra) is not applicable to the facts of this case since<\/p>\n
in  the  above  case  the application for rectification  was<\/p>\n
filed  before  the High Court and it has been  clearly  laid<\/p>\n
down by the Apex Court that Article 137 is applicable to any<\/p>\n
petition\/applicantion  filed before the  Civil  Court  only;<\/p>\n
similarly,  the  decision reported in 1999 (19)  P.T.C.  718<\/p>\n
(referred  to  supra) is also not applicable since  in  that<\/p>\n
case also the application was filed before the High Court.<\/p>\n
      (VI) Learned counsel for respondents 1 and 2 submitted<\/p>\n
that  the  contentions of the appellant that the respondents<\/p>\n
have not made out a case for rectification under Section  11<\/p>\n
of  the  Act  is not sustainable;  the first respondent  has<\/p>\n
specifically  pleaded that the application  has  been  filed<\/p>\n
under  Sections 11 (a) and (e) of the Act.  Learned  counsel<\/p>\n
for  respondents 1 and 2 submitted that under Section 11 (a)<\/p>\n
of the Act, a mark, the use of which is likely to deceive or<\/p>\n
cause  confusion  is prohibited from being registered  as  a<\/p>\n
trade  mark,  the  law does not require the  respondents  to<\/p>\n
establish  actual deception and confusion;  as  regards  the<\/p>\n
entry in respect of registered trade mark made under Section<\/p>\n
11 (a) of the Act, it is submitted that the use of the words<\/p>\n
“Scot”  as  part of the registered trade mark  is  not  just<\/p>\n
likely  to  deceive  or  cause confusion  but  has  actually<\/p>\n
resulted  in  causing deception and confusion  in  believing<\/p>\n
such  a whisky to be Scotch Whisky as the word “Scot”  is  a<\/p>\n
abbreviation  of \/synonymous to \/ evocative of Scotland  and<\/p>\n
when  used  in relation to a whisky is indicative that  such<\/p>\n
whisky  is  distilled and matured in Scotland and is  Scotch<\/p>\n
Whisky;  the fact that the word ‘Scot’ is indicative of\/  an<\/p>\n
abbreviation  of\/ synonymous to \/ evocative of  Scotland  is<\/p>\n
admitted  by  the  appellants in the affidavit  of  Mr.Peter<\/p>\n
J.Warren  which was filed by the appellants while  reasoning<\/p>\n
the  adoption of the mark Peter Scot;  the reason given  for<\/p>\n
adoption  of the word Scot as contained in the affidavit  of<\/p>\n
Peter  Warren  (page 112) is that the word  ‘Scot’  was  the<\/p>\n
nationality  of  Peter Warren which clearly shows  that  the<\/p>\n
appellants admit that the word ‘Scot’ in the mark Peter Scot<\/p>\n
is suggestive of Scotland;  it is further submitted that the<\/p>\n
use  of the mark ‘Peter Scot’ containing the word ‘Scot’  in<\/p>\n
connection  with  the  appellant’s  whisky  is  matured  and<\/p>\n
distilled  in Scotland and therefore is Scotch  Whisky;   in<\/p>\n
order  to establish the same, the first respondent contended<\/p>\n
that  Scotch  Whisky  is  a whisky which  is  distilled  and<\/p>\n
matured in Scotland and that it was available in India;  the<\/p>\n
material  produced by the respondents in  the  form  of  the<\/p>\n
first affidavit of Ian Barclay dated 20.10.1987 showed  that<\/p>\n
whisky  distilled  and  matured in Scotland  can  be  called<\/p>\n
“Scotch  Whisky”;   as  regard the  availability  of  Scotch<\/p>\n
Whisky  in  India, the first affidavit of Ian Barclay  dated<\/p>\n
20.10.1987 at pages 114, 116, 117, 120, 137 and 138  of  the<\/p>\n
paper  book  as also in second affidavit of Ian  Barclay  at<\/p>\n
page  147  of  the  paper  book and the  affidavits  of  the<\/p>\n
consumers  and shopkeepers at pages 148 to 208 of the  Paper<\/p>\n
Book  contain  materials which clearly  establish  that  the<\/p>\n
Scotch Whisky was available in India;  the contention of the<\/p>\n
appellant that there were import restrictions till 1999  and<\/p>\n
that, therefore, Scotch Whisky was not available in India is<\/p>\n
contrary  to  the  evidence on record  which  has  not  been<\/p>\n
controverted by the appellant.\n<\/p>\n<\/p>\n
      (VII)  Learned counsel for respondents  1  and  2,  as<\/p>\n
regards  deception and confusion, submitted that it  is  for<\/p>\n
the  Tribunal  to ultimately arrive at a conclusion  whether<\/p>\n
there was likelihood of deception or confusion;  in deciding<\/p>\n
that question, it is not necessary to refer to or apply  any<\/p>\n
abstruse  principle but a common-sense approach is  required<\/p>\n
to  be applied;  the question of likelihood of deception  or<\/p>\n
confusion arises in,<\/p>\n
            (a)   opposition  proceedings   i.e.   when   an<\/p>\n
application for registration is based and Section 11 of  the<\/p>\n
Act is pleaded by the opponent;\n<\/p>\n<\/p>\n
            (b)  in  rectification  proceedings  where   the<\/p>\n
registration  is challenged on the ground of Section  11  of<\/p>\n
the Act;\n<\/p>\n<\/p>\n
          (c) in a passing-off action.\n<\/p>\n
      (VIII) Learned counsel for respondents 1 and 2  relied<\/p>\n
upon  the  decision  reported in the  case  of  Parker-knoll<\/p>\n
Limited Vs. Knoll International Limited reported in 1962 RPC<\/p>\n
265, Lord Morris of Borth-y-Guest at page 278 wherein it  is<\/p>\n
stated as follows:\n<\/p>\n<\/p>\n
         “My  Lords, in the interests of fair  trading<\/p>\n
         and  in the interests of all who may wish  to<\/p>\n
         buy  or to sell goods the law recognises that<\/p>\n
         certain  limitations upon freedom  of  action<\/p>\n
         are   necessary  and  desirable.    In   some<\/p>\n
         situations  the law has had to  resolve  what<\/p>\n
         might at first appear to be conflicts between<\/p>\n
         competing  right.   In solving  the  problems<\/p>\n
         which  have arisen there has been no need  to<\/p>\n
         resort to any abstruse principles but rather,<\/p>\n
         I  think,  to  the straightforward  principle<\/p>\n
         that trading must not only be honest but must<\/p>\n
         not even unintentionally be unfair”.<\/p>\n<\/blockquote>\n
In  the  instant case, the affidavits of the consumers  were<\/p>\n
filed  by  the respondents at pages 148 to 208 of the  paper<\/p>\n
book.   It is submitted that the appellant did not file  any<\/p>\n
affidavit in reply disputing or doubting the contents of the<\/p>\n
said  affidavits.  It is not now open for the  appellant  to<\/p>\n
level  any criticism that they are procured affidavits.   It<\/p>\n
is  pertinent to note that some of the deponents had in fact<\/p>\n
given  evidence in the Bombay High Court Suit, and who  were<\/p>\n
cross-examined  and the suit was decreed by Justice  Pendse.<\/p>\n
The  contention of the respondents is that whisky  distilled<\/p>\n
and  matured  in  Scotland alone is entitled  to  be  called<\/p>\n
“Scotch   Whisky”.   Any  other  whisky  if  called  “Scotch<\/p>\n
Whisky”,  or  by  any  word such as “Scot”,  or  “Scott”  or<\/p>\n
“Scottish”  or  any trade mark, emblem or device  suggesting<\/p>\n
Scottish  origin  is likely to deceive or  cause  confusion.<\/p>\n
This  contention is based on the extended principles of  law<\/p>\n
relating  to  unfair trading.  Till 1960, the classic  cases<\/p>\n
relating to deception and confusion were confined to the use<\/p>\n
of  or  in  connection with his goods by one trader  of  the<\/p>\n
trade,  name  or a trade mark so as to induce any  potential<\/p>\n
purchaser to believe that his goods were those of the  rival<\/p>\n
trader.\n<\/p>\n<\/p>\n
      (IX)  The aforesaid principle was extended by  Justice<\/p>\n
Danckwerts in the case of Bollinger, J., and Ors. Vs.  Costa<\/p>\n
Brava  Wine  Coy., Ld, reported in 1960 RPC 16 to  deception<\/p>\n
and confusion caused by a person attached to his product,  a<\/p>\n
name or description with which it has no natural association<\/p>\n
so  as to make use of the reputation and goodwill which  has<\/p>\n
been gained by a product genuinely indicated by the name  or<\/p>\n
description.   The learned senior counsel  relied  upon  the<\/p>\n
following passage from the above decision viz.:<\/p>\n
         “There seems to be no reason why such licence<\/p>\n
         should  be  given to a person,  competing  in<\/p>\n
         trade,  who seeks to attach to his product  a<\/p>\n
         name  or  description with which  it  has  no<\/p>\n
         natural association, so as to make use of the<\/p>\n
         reputation and goodwill which has been gained<\/p>\n
         by  a product genuinely indicated by the name<\/p>\n
         or  description.  In my view, it ought not to<\/p>\n
         matter  that  the persons truly  entitled  to<\/p>\n
         describe   their  goods  by  the   name   and<\/p>\n
         description are a class producing goods in  a<\/p>\n
         certain   locality,  and   not   merely   one<\/p>\n
         individual.  I do not believe that the law of<\/p>\n
         passing-off,  which arose to  prevent  unfair<\/p>\n
         trading, is so limited in scope.  In my view,<\/p>\n
         the  decision in the Pilsbury Washburn  Flour<\/p>\n
         Mills  case is good sense, and I find nothing<\/p>\n
         in   the  English  cases  which  is  at   all<\/p>\n
         inconsistent  with  the  reasoning   of   the<\/p>\n
         Americal Court, except possibly some  of  the<\/p>\n
         remarks  of  Buckley J. in  Whistable  Oyster<\/p>\n
         Fishing  Company Vs. Hayling  Fisheries  Ld.,<\/p>\n
         which,  I  think, related to  the  particular<\/p>\n
         circumstances  of  the trade  in  oysters  in<\/p>\n
         those cases.”\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
The  aforesaid  decision was applied in  the  case  of  Wine<\/p>\n
Products Limited and others Vs. Mackenzie & Co. Ltd., & Ors.<\/p>\n
reported in 1969 RPC Page 1.  The same principle was applied<\/p>\n
to Scotch Whisky in the case of John Walker & Ors. Vs. Henry<\/p>\n
Ost  &  Co.  Ltd. & Anr. reported in 1970 RPC  489  and  the<\/p>\n
aforesaid decisions were approved by the House of  Lords  in<\/p>\n
the  case of Erven Warnink B.V. & Anr. Vs. J.Townend &  Sons<\/p>\n
(Hull)  Ltd. & Anr. reported in 1980 RPC 31, wherein it  was<\/p>\n
observed as follows:\n<\/p>\n<\/p>\n
         “I  would hold the champagnes case to have bee<\/p>\n
         rightly  decided and in doing so  would  adopt<\/p>\n
         the  words  of Danckwerts J., where  the  said<\/p>\n
         (at [1960] R.P.C. 31):\n<\/p><\/blockquote>\n
\n
            “There  seems  to be no reason  why  such<\/p>\n
            licence  (sc.  To  do  a  deliberate  act<\/p>\n
            which  causes damage to the  property  of<\/p>\n
            another  person) should  be  given  to  a<\/p>\n
            person, competing in trade, who seeks  to<\/p>\n
            attach   to   his  product  a   name   or<\/p>\n
            description with which it has no  natural<\/p>\n
            association,  so as to make  use  of  the<\/p>\n
            reputation  and goodwill which  has  been<\/p>\n
            gained  by  a product genuinely indicated<\/p>\n
            by  the name or description.  In my view,<\/p>\n
            it  ought not to matter that the  persons<\/p>\n
            truly  entitled to describe  their  goods<\/p>\n
            by  the name and description are a  class<\/p>\n
            producing  goods  in a certain  locality,<\/p>\n
            and   not  merely  one  individual.   The<\/p>\n
            description  is  part of  their  goodwill<\/p>\n
            and  a  right  of  property.   I  do  not<\/p>\n
            believe  that  the  law  of  passing-off,<\/p>\n
            which  arose  to prevent unfair  trading,<\/p>\n
            is so limited in scope”.\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
In  the  same case, Lord Fraser of Tyllybelton in his speech<\/p>\n
observed as follows at page 105:\n<\/p>\n<\/p>\n
          ”  …  As I have already said, I think  that<\/p>\n
          the   case  went  rather  further  than   the<\/p>\n
          previous  decisions in passing-off cases.   I<\/p>\n
          would   respectfully  adopt  the   words   of<\/p>\n
          traditional  legal theory used  by  Cross  J.<\/p>\n
          (as  he  then was) in the Sherry case,  (1969<\/p>\n
          RPC   1  at  23,  where  he  said  that   the<\/p>\n
          Champagne  case “uncovered a piece of  common<\/p>\n
          law  or  equity which had till  then  escaped<\/p>\n
          notice”.   But the decision is in my  opinion<\/p>\n
          soundly  based  on  the principle  underlying<\/p>\n
          the  earlier  passing-off  actions,  which  I<\/p>\n
          take to be that the plaintiff is entitled  to<\/p>\n
          protect   his  right  of  property   in   the<\/p>\n
          goodwill   attached  to  a  name   which   is<\/p>\n
          distinctive   of  a  product  or   class   of<\/p>\n
          products  sold  by him in the course  of  his<\/p>\n
          business”.\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
The  same principle was applied in India in Suit No.1352  of<\/p>\n
1986 before the Bombay High Court, wherein in the said case,<\/p>\n
the  suit was filed by the Scotch Whisky Association &  Anr.<\/p>\n
against Mohan Meakin Ltd. for passing off, complaining  that<\/p>\n
by  the  use of the mark Royal Scot, the defendant  in  that<\/p>\n
case was passing off their whisky as scotch whisky.  In  the<\/p>\n
same decision, it is held as follows:\n<\/p>\n<\/p>\n
         “It   is   obvious  that  the  use   of   the<\/p>\n
         expressions  “SCOT”, “SCOTS”,  “SCOTTISH”  or<\/p>\n
         “Scotch  Whisky” is bound to cause  confusion<\/p>\n
         in  the  mind  of the customers who  are  not<\/p>\n
         regularly  drinking  or  who  are  not   well<\/p>\n
         educated  that the Whisky with such  a  brand<\/p>\n
         name is a Scotch Whisky”.\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
The  suit was decreed granting an injunction against use  of<\/p>\n
the word “Scot” as part of the trade mark Royal Scot.<\/p>\n
      (X)  Learned counsel for respondents 1 and 2 therefore<\/p>\n
submitted  that the decision of the Registrar and  confirmed<\/p>\n
by the learned Single Judge is based on correct appreciation<\/p>\n
of  evidence  and correct application of the  principles  of<\/p>\n
law.   In view of the aforesaid settled position in  law,  a<\/p>\n
case  was also made under Section 11(e) of the Act viz. that<\/p>\n
the use of the words “Peter Scot” containing the word “Scot”<\/p>\n
could  be  injuncted in a passing off action and, therefore,<\/p>\n
the  use  of  the  mark  “Peter Scot”  was  dis-entitled  to<\/p>\n
protection  in  a  Court of law.  It is submitted  that  the<\/p>\n
decision of the learned Registrar and of the learned  Single<\/p>\n
Judge  cannot  be faulted on any ground whatsoever.   It  is<\/p>\n
further  to be seen from the first affidavit of Ian  Barclay<\/p>\n
that  many brands of genuine Scotch Whisky include the words<\/p>\n
“Scot” or “Scott” or “Scottish” as part of their brand names<\/p>\n
and  around  50  such  examples were referred  to.   In  the<\/p>\n
circumstances, it is submitted that sufficient material  was<\/p>\n
produced  to show the likelihood of deception and  confusion<\/p>\n
and,  therefore,  decisions  of the  learned  Registrar  and<\/p>\n
confirmed  by the learned Single Judge cannot be faulted  on<\/p>\n
any  ground  whatsoever.  The use  of  the  device  of  lion<\/p>\n
Rampant and the description “Distilled from the finest  malt<\/p>\n
and  blended  with the choicest whiskies by  Scotch  experts<\/p>\n
under Government Supervision” made by the respondents was to<\/p>\n
confirm  deception and confusion.  The device  used  by  the<\/p>\n
appellant  (see page 66 of the paper book for the image)  is<\/p>\n
an  exact replica of the Royal Standard of Scotland which is<\/p>\n
a  wellknown emblem of Scotland.  This is clear from Ex.-21,<\/p>\n
which  is a copy of the booklet entitled Scotland Kings  and<\/p>\n
Queens  which  states that the Lion Rampant was  adopted  as<\/p>\n
Royal  arms  of  Scotland by William the Lion  in  the  13th<\/p>\n
Century  which is referred to in paragraph 40 of  the  first<\/p>\n
affidavit  of  Ian Barclay dated 20.10.1987 (pages  130  and<\/p>\n
131).  The description, “Distilled from the finest malt  and<\/p>\n
blended with the choiciest whiskies by Scotch Experts  under<\/p>\n
Government  Supervision” used by the appellant referring  to<\/p>\n
the  words “Scotch Experts” it is submitted, is intended  to<\/p>\n
lead  consumers  to believe that the appellant’s  whisky  is<\/p>\n
Scotch  Whisky which is referred to in paragraph 40  of  the<\/p>\n
first  affidavit  of Ian Barclay dated 20.10.1987.   In  the<\/p>\n
circumstances, the learned senior counsel submitted that the<\/p>\n
use of the Lion Rampant and the description by the appellant<\/p>\n
additionally  results  in the likelihood  of  deception  and<\/p>\n
confusion and, therefore, decisions of the learned Registrar<\/p>\n
and  confirmed by the learned Single Judge cannot be faulted<\/p>\n
on any ground whatsoever.\n<\/p>\n<\/p>\n
      (XI)  Learned senior counsel for respondents 1  and  2<\/p>\n
submitted  that  the  adoption  of  the  mark  “Peter  Scot”<\/p>\n
containing  the  word  “Scot” by the  appellant  itself  was<\/p>\n
dishonest;   the reason given for adoption as  contained  in<\/p>\n
the  affidavit of Peter Warren and which was  filed  by  the<\/p>\n
appellants clearly show that the reason for adoption of  the<\/p>\n
word “Scot” as a part of the trade mark ‘Peter Scot” was  to<\/p>\n
suggest  Scottish  connection;  it is  not  a  case  of  the<\/p>\n
appellants making any mistake of its rights so as to warrant<\/p>\n
application  of  the  principles of acquiescence;   in  this<\/p>\n
connection, the learned senior counsel relied upon  Willmott<\/p>\n
Vs.  Barber  reported in 15 Ch. D. 96 at 105,  where  it  is<\/p>\n
observed as follows:\n<\/p>\n<\/p>\n
         “It  has been said that the acquiescence which<\/p>\n
         will  deprive a man of his legal  rights  must<\/p>\n
         amount  to  fraud, and in my view that  is  an<\/p>\n
         abbrevated   statement   of   a   very    true<\/p>\n
         proposition.  A man is not to be  deprived  of<\/p>\n
         his  legal rights unless he has acted in  such<\/p>\n
         a  way as would make it fraudulent for him  to<\/p>\n
         set  up  those  rights.  What, then,  are  the<\/p>\n
         elements    or    requisites   necessary    to<\/p>\n
         constitute fraud of that description?  In  the<\/p>\n
         first  place  the plaintiff must have  made  a<\/p>\n
         mistake  as  to  his legal rights.   Secondly,<\/p>\n
         the  plaintiff must have expended  some  money<\/p>\n
         or  must  have done some act (not  necessarily<\/p>\n
         upon  the  defendant’s land) on the  faith  of<\/p>\n
         his  mistaken belief.  Thirdly, the defendant,<\/p>\n
         the  possessor of the legal right,  must  know<\/p>\n
         of  the  existence of his own right  which  is<\/p>\n
         inconsistent  with the right  claimed  by  the<\/p>\n
         plaintiff.  If he does not know of  it  he  is<\/p>\n
         in  the  same  position as the plaintiff,  and<\/p>\n
         the  doctrine of acquiescence is founded  upon<\/p>\n
         conduct   with  a  knowledge  of  your   legal<\/p>\n
         rights.    Fourthly,   the   defendant,    the<\/p>\n
         possessor  of  the legal right, must  know  of<\/p>\n
         the   plaintiff’s  mistaken  belief   of   his<\/p>\n
         rights.   If  he  does not, there  is  nothing<\/p>\n
         which  calls  upon  him  to  assert  his   own<\/p>\n
         rights.   Lastly, the defendant, the possessor<\/p>\n
         of  the legal right, must have encouraged  the<\/p>\n
         plaintiff  in his expenditure of money  or  in<\/p>\n
         the  other  acts  which he  has  done,  either<\/p>\n
         directly  or by abstaining from asserting  his<\/p>\n
         legal  right.  Where all these elements exist,<\/p>\n
         there  is  fraud  of such  a  nature  as  will<\/p>\n
         entitle  the  Court to restrain the  possessor<\/p>\n
         of  the  legal right from exercising it,  but,<\/p>\n
         in  my  judgment, nothing short of  this  will<\/p>\n
         do.”\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
It  is  therefore submitted that the adoption  itself  being<\/p>\n
dishonest,  there is no question of the plea of acquiescence<\/p>\n
being raised.  Further, it is stated in the affidavit of Ian<\/p>\n
Barclay  that  the  appellant  was  aware  that  the   first<\/p>\n
respondent  was  objecting  to  the  applications   of   the<\/p>\n
appellant  for  registration of the  marks  having  Scottish<\/p>\n
connection.   Further,  it is submitted  that  the  plea  of<\/p>\n
acquiescence has no application to the case of rectification<\/p>\n
as the registration confers rights in rem and the conduct of<\/p>\n
an applicant for rectification is irrelevant considering the<\/p>\n
nature  of the proceedings.  The contention of the appellant<\/p>\n
that  in  view  of the TRIPS agreement and in  view  of  the<\/p>\n
Geographical  Indications  Act,  the  respondents  are   not<\/p>\n
entitled  to  maintain an application for  rectification  is<\/p>\n
required  to  be  stated  to  be  rejected.   The  aforesaid<\/p>\n
contentions  were not raised either before the Registrar  or<\/p>\n
the  learned Single Judge and the appellant is not  entitled<\/p>\n
to  raise  the  same.   In  any  event,  neither  the  TRIPS<\/p>\n
agreement  nor the provisions of the Geographical Indication<\/p>\n
Act,  prevent the operation of Section 56 of the  Act.   The<\/p>\n
rights  created  under  the TRIPS  agreement  or  under  the<\/p>\n
Geographical   Indication  Act  are  in  addition   to   the<\/p>\n
provisions  of  the Trade Marks Act.  Article  22  of  TRIPS<\/p>\n
requires  member  states to make provisions  for  protecting<\/p>\n
geographical indications and make provisions for  preventing<\/p>\n
the acts resulting in unfair competition.<\/p>\n
      15.  We have carefully considered the submissions made<\/p>\n
by  the learned senior counsel on either side, the materials<\/p>\n
available  on  record and perused the order of  the  learned<\/p>\n
Single Judge.\n<\/p>\n<\/p>\n
      16. At the outset, we would like to first take up  for<\/p>\n
consideration the submission made by the learned counsel  on<\/p>\n
either  side  regarding the scope of  interference  of  this<\/p>\n
Court  in an appeal filed under Section 109 of the Act  read<\/p>\n
with Clause 15 of the Letters Patent.\n<\/p>\n<\/p>\n
     17. Mr.V.Thulza Purka, learned senior counsel appearing<\/p>\n
for  the respondents contended that the above appeal  is  in<\/p>\n
the  nature of second appeal and the concurrent findings  of<\/p>\n
fact  of the learned Deputy Registrar and confirmed  by  the<\/p>\n
learned Single Judge should not be interfered with unless it<\/p>\n
is  found that the said findings are arbitrary or capricious<\/p>\n
or  unsustainable or based on no evidence or was reached  by<\/p>\n
wrong application of principles of law.\n<\/p>\n<\/p>\n
     18. Per contra, Mr.Vedantham Srinivasan, learned senior<\/p>\n
counsel appearing for the appellant relied upon the decision<\/p>\n
of  the Hon’ble Apex Court reported in A.I.R. 1974 S.C. 2048<\/p>\n
(Smt.  Asha  Devi  Vs.  Dukhi Sao and another)  referred  to<\/p>\n
supra,  contended that it will be open to the High Court  to<\/p>\n
review  even  findings of facts in a Letters  Patent  Appeal<\/p>\n
from  a first appeal heard by a learned Single Judge and  is<\/p>\n
entitled to reverse the concurrent findings of fact.  In the<\/p>\n
light of the law laid down by the Hon’ble Apex Court in  the<\/p>\n
above  said  decision,  it is clear that  this  Court  while<\/p>\n
hearing the above appeal is entitled to review even findings<\/p>\n
of  fact  and  reverse concurrent findings of fact  and  the<\/p>\n
above  appeal  is not exactly equivalent to a second  appeal<\/p>\n
under Section 100 of the Code of Civil Procedure.<\/p>\n
      19. Coming to the question of limitation raised by the<\/p>\n
learned senior counsel appearing for the appellant,  we  are<\/p>\n
unable  to  accept  the contentions of  the  learned  senior<\/p>\n
counsel for the following reasons:\n<\/p>\n<\/p>\n
      (a) The Hon’ble Apex Court in the decision rendered in<\/p>\n
the  case of Sakur Vs. Tanaji reported in AIR 1985  SC  1279<\/p>\n
has observed at page 1280 as follows:\n<\/p>\n<\/p>\n
     “It  was  well  settled by the decision  of  this<\/p>\n
     Court  in  Town  Municipal  Council,  Athani  Vs.<\/p>\n
     Presiding  Officer, Labour Court,  (AIR  1969  SC<\/p>\n
     1335),  Nithyanand M.Joshi & Anr.  Vs.  The  Life<\/p>\n
     Insurance  Corporation of India & Ors. (AIR  1970<\/p>\n
     SC  209)  and  Sushila Devi v. Ramanandan  Prasad<\/p>\n
     (AIR<\/a>  1976  SC  177) that the provisions  of  the<\/p>\n
     Limitation Act, 1963 apply only to proceedings in<\/p>\n
     “Courts”  and  not  to  appeals  or  applications<\/p>\n
     before  bodies other than Courts such  as  quasi-<\/p>\n
     judicial   Tribunals  or  executive  authorities,<\/p>\n
     notwithstanding  the  fact that  such  bodies  or<\/p>\n
     authorities may be vested with certain  specified<\/p>\n
     powers  conferred on Courts under  the  Codes  of<\/p>\n
     Civil or Criminal Procedure.”\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
Therefore, the contentions of the learned senior counsel for<\/p>\n
the  appellant that the rectification application  filed  by<\/p>\n
the  respondents 1 & 2 before the third respondent is  bared<\/p>\n
by limitation is unsustainable.\n<\/p>\n<\/p>\n
      (b)  The  decision relied upon by the  learned  senior<\/p>\n
counsel  appearing for the appellant viz., 2003 (26)  P.T.C.<\/p>\n
517  (Bombay)  (Rakesh  Kumar  Gupta  Vs.  Goresh  Domesztic<\/p>\n
Appliances)  and   2002  (6)  Bombay  Cases  Reporter    796<\/p>\n
(Bhagwandas  G.  Agrawal  Vs. Brijwasi  Dughdhalaya  Private<\/p>\n
Limited & Anr.) = (2002) Bombay Law Reporter 335 are clearly<\/p>\n
distinguishable on the ground that the said  decisions  have<\/p>\n
been  rendered  in applications made to the High  Court  for<\/p>\n
rectification.  The  Gujarat  High  Court  in  the  decision<\/p>\n
reported  in 1999 PTC 718 (Patel Field Marshal Agencies  vs.<\/p>\n
P.M.Diesels Ltd. has observed as under:\n<\/p>\n<\/p>\n
     “the   dichotomy   noticed  is   that   when   an<\/p>\n
     application is made before the Registrar, Article<\/p>\n
     137  does  not  apply but when an application  is<\/p>\n
     made to the Court for rectification, Article  137<\/p>\n
     will apply.”\n<\/p><\/blockquote>\n
\n<\/blockquote>\n
Further  the  Gujarat  High Court  after  referring  to  the<\/p>\n
decision of the Hon’ble Apex Court reported in AIR  1977  SC<\/p>\n
282,  has observed in paragraph 21 as follows:<\/p>\n
     “21……..   with  this  change   in   law,   all<\/p>\n
     applications which are required to be made to  the<\/p>\n
     High   Court  became  amenable  to  the   law   of<\/p>\n
     limitation,  while the applications, made  to  any<\/p>\n
     authority which is not constituted as a court  did<\/p>\n
     not attract the provisions of the Limitation Act.”<\/p>\n<\/blockquote>\n
Therefore,  the  contention of the  learned  senior  counsel<\/p>\n
appearing   for   the   appellant  that  the   rectification<\/p>\n
application  filed by the respondents 1 & 2  was  barred  by<\/p>\n
limitation is unsustainable.\n<\/p>\n<\/p>\n
      20.  As  far  as the contention of the learned  senior<\/p>\n
counsel  appearing  for the appellant  regarding  the  Locus<\/p>\n
Standi of the first respondent to maintain the rectification<\/p>\n
application before the third respondent is concerned, we  do<\/p>\n
not agree with the contention of the learned counsel for the<\/p>\n
appellant for the following reasons:\n<\/p>\n<\/p>\n
      (a)  The  learned  senior counsel  for  the  appellant<\/p>\n
submitted that though the Deputy Registrar has rejected  the<\/p>\n
application   field   by  the  first   respondent   as   not<\/p>\n
maintainable  on the ground of locus standi,  as  the  first<\/p>\n
respondent  failed  to  file any  appeal  against  the  said<\/p>\n
finding  and decretal order  and the said finding  has  been<\/p>\n
confirmed by the learned single judge, the filing  of  cross<\/p>\n
objection  in the TMA would not amount to filing  an  appeal<\/p>\n
and  therefore the finding of the Registrar as to the  locus<\/p>\n
standi  of the first respondent has become final and amounts<\/p>\n
to  resjudicata.   But it will be useful  to  refer  to  the<\/p>\n
observation of the learned Single Judge in para  40  of  the<\/p>\n
judgment while dealing with the cross objections namely,<\/p>\n
     “40…….  Having  regard  to  that   fact,   the<\/p>\n
     authority below was in error in holding  that  the<\/p>\n
     association  had  no  standing  to  maintain   the<\/p>\n
     application   along   with   one   who   had   the<\/p>\n
     standing…………It   would   be   within   the<\/p>\n
     competence  of  the  association  to  support  the<\/p>\n
     action of its members and join them in the action,<\/p>\n
     but  the association cannot replace a member in  a<\/p>\n
     statutory action unless the statue permits it.”<\/p>\n
Thus it is clear that the learned Single Judge has held that<\/p>\n
it  would  be  within the competence of the  association  to<\/p>\n
support  the  action of its members and  join  them  in  the<\/p>\n
action  and has held that the third respondent was in  error<\/p>\n
in  holding that the association had no standing to maintain<\/p>\n
the application along with one who had the standing.  It  is<\/p>\n
pertinent  to point out that the learned senior counsel  has<\/p>\n
not advanced any submission regarding the above said finding<\/p>\n
of  the  learned Single Judge.  We are in complete agreement<\/p>\n
with the above said decision of the learned Single Judge.<\/p>\n
      21.  The  learned  senior counsel  appearing  for  the<\/p>\n
appellant strenuously contended that the averments contained<\/p>\n
in  the  affidavits filed by  IAN Glen Barclay  and  by  the<\/p>\n
third  parties numbering 20 ought not to have been  accepted<\/p>\n
by  the  third  respondent and by the learned Single  Judge.<\/p>\n
The submissions made by the learned senior counsel appearing<\/p>\n
for  the  appellant and the submissions made by the  learned<\/p>\n
senior  counsel  appearing  for  the  respondents  1   &   2<\/p>\n
countering  the  said submissions have been elaborately  set<\/p>\n
out in the proceedings paragraphs.\n<\/p>\n<\/p>\n
      22.  It is true that the third respondent in his order<\/p>\n
has observed that all the affidavits, evidence of applicants<\/p>\n
is  not  too  satisfactory.  But the  third  respondent  has<\/p>\n
further observed as follows:\n<\/p>\n<\/p>\n
     “Unfortunately, there is absolutely  no  evidence<\/p>\n
     whatever  from  the  registered  proprietors   to<\/p>\n
     assail  or  counteract or rebut  the  Applicant’s<\/p>\n
     evidence.   In  the absence of  any  material  or<\/p>\n
     evidence in rebuttal or reply from the registered<\/p>\n
     proprietors,  the  evidence of Applicants  stands<\/p>\n
     unquestioned,  unrebutted,  unassailed  and  even<\/p>\n
     unmitigated  and  I have no other  go  except  to<\/p>\n
     receive  the voluminous affidavit and documentary<\/p>\n
     evidence  filed by Applicants on its fact  value.<\/p>\n
     I   am  accordingly  constrained  to  uphold  the<\/p>\n
     Applicants’  plea that the impugned  registration<\/p>\n
     contravenes   Sec.11   on   the   date   of   the<\/p>\n
     rectification proceeding.”<\/p><\/blockquote>\n
      23.  We  have  already  extracted  in  the  proceeding<\/p>\n
paragraphs the observations made by the learned Single Judge<\/p>\n
in  paragraphs  29  and  36 of the  Judgment  regarding  the<\/p>\n
failure on the part of the appellant to lead contra evidence<\/p>\n
in rebuttal of the evidence adduced by the respondents 1 & 2<\/p>\n
and  the  failure  on  the part of the  appellant  to  cross<\/p>\n
examine the deponents of the affidavits.\n<\/p>\n<\/p>\n
      24.  The  learned  senior counsel  for  the  appellant<\/p>\n
referring to Section 99 of the Act submitted that  when  the<\/p>\n
third   respondent  has  observed  that  the   evidence   is<\/p>\n
unsatisfactory,  he  ought to have summoned  the  witnesses.<\/p>\n
But  we  are  unable to understand as to what prevented  the<\/p>\n
appellant from summoning the deponents of the affidavits and<\/p>\n
cross  examine them.  Having failed to summon the  deponents<\/p>\n
of  the  affidavits  and cross examine them  and  failed  to<\/p>\n
adduce  evidence in support of its case.,  it  is  a  futile<\/p>\n
attempt  on the part of the appellant to try to persuade  us<\/p>\n
to  reject the evidence adduced by the respondents 1 & 2  by<\/p>\n
merely  pointing out certain discrepancies in the affidavits<\/p>\n
filed by the third parties.\n<\/p>\n<\/p>\n
      25.  The  learned counsel appearing for the respondent<\/p>\n
vehemently  contended  that all the deponents  are  ordinary<\/p>\n
individuals,  some  even workers and some  waiters  and  bar<\/p>\n
attendants and none of them has stated about their financial<\/p>\n
status  and  it  is unbelievable that they could  afford  to<\/p>\n
drink  scotch whisky, which would have cost atleast  Rs.60\/-<\/p>\n
per  peg in bars in respect of IMFL.  These facts now  urged<\/p>\n
by  the learned senior counsel ought to have been put to the<\/p>\n
deponents  of the affidavits in their cross examination  and<\/p>\n
their  veracity  should have been tested.  When  admittedly,<\/p>\n
the  appellant had not chosen to cross examine the deponents<\/p>\n
of  the  affidavits, the said contention put  forth  by  the<\/p>\n
learned senior counsel appearing for the appellant cannot be<\/p>\n
accepted.   Only  for  the  above said  reasons,  the  third<\/p>\n
respondent  and the learned Single Judge have  accepted  the<\/p>\n
affidavit evidence tendered by the respondents 1  &  2.   We<\/p>\n
find   absolutely  no  infirmity  or  error  in  the   third<\/p>\n
respondent  and  the  learned  Single  Judge  accepting  the<\/p>\n
evidence adduced by the respondents 1 & 2.\n<\/p>\n<\/p>\n
      26. It is the contention of the learned senior counsel<\/p>\n
for  the  appellant  that no case  has  been  made  out  for<\/p>\n
rectification under Section 11 of the Act.   It  has  to  be<\/p>\n
pointed   out   that  the  respondents  pleaded   that   the<\/p>\n
application has been filed under Section 11 (a) and  (e)  of<\/p>\n
the  Act.    Under Section 11(a) of the Act, a mark, the use<\/p>\n
of which would be likely to deceive or cause confusion shall<\/p>\n
not  be registered as a trade mark; the law does not require<\/p>\n
the  respondent to prove actual deception or confusion.   As<\/p>\n
rightly  contended  by the learned senior  counsel  for  the<\/p>\n
respondents  1  &  2  as regards the  entry  in  respect  of<\/p>\n
registered trade mark made under Section 11(a) of  the  Act,<\/p>\n
it  has  to be noted that the use of word ‘SCOT’ as part  of<\/p>\n
the  registered trade mark is not just likely to deceive  or<\/p>\n
cause   confusion  but  has  actually  resulted  in  causing<\/p>\n
deception and confusion in believing such a whisky as Scotch<\/p>\n
Whisky  as  the  word  ‘SCOT’  is  an  abbreviation  of    \/<\/p>\n
synonymous  to  \/  evocative of Scotland and  when  used  in<\/p>\n
relation  to  a  whisky is indicative that  such  whisky  is<\/p>\n
distilled and matured in Scotland and is Scotch Whisky.<\/p>\n
      27.  As  rightly  pointed out by  the  learned  senior<\/p>\n
counsel  for the respondents 1 and 2 the fact that the  word<\/p>\n
‘SCOT’ is indicative of \/ an abbreviation of \/ synonymous to<\/p>\n
\/  evocative of Scotland is admitted by the appellant in the<\/p>\n
affidavit  of  Peter  J.  Warren  which  was  filed  by  the<\/p>\n
appellant  while reasoning the adoption of the  mark  ‘Peter<\/p>\n
Scot’.  The reason given for adoption of the word ‘SCOT’  as<\/p>\n
contained  in the affidavit of Peter J. Warren is  that  the<\/p>\n
word  ‘SCOT’  was  the  nationality of  Peter  Warren  which<\/p>\n
clearly shows that the appellant admitted the word ‘SCOT’ in<\/p>\n
the  mark  ‘Peter  Scot’ is suggestive  of  Scotland.    The<\/p>\n
material  produced by the respondents in  the  form  of  the<\/p>\n
first  affidavit  of  Ian Barclay dated 20th  October,  1987<\/p>\n
clearly showed that whisky distilled and matured in Scotland<\/p>\n
can be called ‘Scotch Whisky’ and is available in India.  As<\/p>\n
regards the availability of Scotch Whisky in India it is not<\/p>\n
only  stated  in the first affidavit of Ian Barclay  but  is<\/p>\n
also  stated  in  his  second  affidavit  and  further   the<\/p>\n
affidavit   of  the  consumers  and  shop  keepers   contain<\/p>\n
materials which clearly establish that the Scotch Whisky was<\/p>\n
available  in India.  The averments contained in  the  above<\/p>\n
said   affidavits  as  pointed  out  above  have  not   been<\/p>\n
controverted by the appellant.  Therefore, the contention of<\/p>\n
the appellant that there was import restrictions in the year<\/p>\n
1969  and that therefore Scotch Whisky was not available  in<\/p>\n
India is contrary to the evidence on record.<\/p>\n
      28.   The  learned  senior counsel for  the  appellant<\/p>\n
submitted  that there is, no likelihood of any confusion  or<\/p>\n
deception as contended by the respondents, since the  custom<\/p>\n
of  the  trade is to sell goods by description and by  brand<\/p>\n
name  only and not by the generic name like scotch or whisky<\/p>\n
or brandy or gin or rum or beer or vodka.\n<\/p>\n<\/p>\n
      29.  The  learned  senior counsel  appearing  for  the<\/p>\n
respondents  1 & 2 countered the above said submissions  and<\/p>\n
the  submissions have already been set out in the  preceding<\/p>\n
paragraphs.\n<\/p>\n<\/p>\n
       30.    The  learned  senior  counsel  appearing   for<\/p>\n
respondents 1 and 2  further submitted that it  is  for  the<\/p>\n
Hon’ble  Tribunal  to  ultimately  arrive  at  a  conclusion<\/p>\n
whether there was likelihood of deception or confusion.   In<\/p>\n
deciding that question, it is not necessary to refer  to  or<\/p>\n
apply any abstruse principle but a common sense approach  is<\/p>\n
required to be applied.\n<\/p>\n<\/p>\n
      31.  The learned senior counsel further submitted that<\/p>\n
in  the  instant case, the affidavits of the consumers  were<\/p>\n
filed by the respondents  and analysis of affidavits of  the<\/p>\n
consumers  and waiters and shopkeepers will show that  there<\/p>\n
was likelihood of deception and confusion.<\/p>\n
      32.  The learned senior counsel further submitted that<\/p>\n
the  appellant did not file any affidavit in reply disputing<\/p>\n
or  doubting the contents of the affidavit filed on the side<\/p>\n
of  the  respondents.   The learned senior  counsel  further<\/p>\n
submitted  that  the contention of the respondents  is  that<\/p>\n
whisky  distilled and matured in Scotland alone is  entitled<\/p>\n
to  be  called “Scotch Whisky”.  Any other whisky if  called<\/p>\n
“Scotch  Whisky”, or by any word such as “Scot”, or  “Scott”<\/p>\n
or “Scottish” or any trade mark, emblem or device suggesting<\/p>\n
Scottish  origin  is likely to deceive or  cause  confusion.<\/p>\n
This  contention is based on the extended principles of  law<\/p>\n
relating  to  unfair  trading.  The learned  senior  counsel<\/p>\n
further submitted that till 1960, the classic cases relating<\/p>\n
to deception and confusion were confined to the use of or in<\/p>\n
connection with his goods by one trader of the trade name or<\/p>\n
a  trade  mark  so as to induce any potential  purchaser  to<\/p>\n
believe that his goods were those of the rival trader.   The<\/p>\n
learned  senior  counsel further relied  upon  the  decision<\/p>\n
reported  in  1960 RPC 16 and 1969 RPC Page  1  referred  to<\/p>\n
supra.\n<\/p>\n<\/p>\n
      33.  The  learned senior counsel also relied upon  the<\/p>\n
unreported decision of Pendse J. dated 17th, 18th  and  19th<\/p>\n
November,  1986  in the Bombay High Court  Suit  No.1352  of<\/p>\n
1986.   In  the said case, the suit was filed by The  Scotch<\/p>\n
Whisky  Association  & Anr. Agaisnt Mohan  Meakin  Ltd.  for<\/p>\n
passing  off, complaining that by the use of the mark  Royal<\/p>\n
Scot,  the  Defendant  in that case was  passing  off  their<\/p>\n
whisky as “scotch whisky”.  In the above case also a similar<\/p>\n
contention that is put forth before us was raised and  while<\/p>\n
considering  the  same  the learned Judge  has  referred  to<\/p>\n
several English decisions like Champagne Case, Sherry  Case,<\/p>\n
Scotch  Whisky  case and Advacaat case and several  passages<\/p>\n
from  Kerly’s Law of Trade Marks and Trade Names and deduced<\/p>\n
the  following principle viz., the question whether one name<\/p>\n
is  likely to cause confusion with another is a matter  upon<\/p>\n
which  the Judge must make up his mind and which, he and  he<\/p>\n
alone,  must decide.  The Court cannot abdicate the decision<\/p>\n
in  that matter to witnesses, but on the other hand, he must<\/p>\n
be  guided by the evidence produced.  By applying the  above<\/p>\n
said   principle  to  the  facts  of  that  case  and  after<\/p>\n
considering  the evidence on record rejected the contentions<\/p>\n
put forth by the defendants in that case and has observed as<\/p>\n
follows:\n<\/p>\n
 “It  is  obvious that the use of the expressions  “SCOT”,<\/p>\n
 “SCOTS”, “SCOTTISH” or “Scotch Whisky” is bound to  cause<\/p>\n
 confusion  in  the  mind  of the customers  who  are  not<\/p>\n
 regularly drinking or who are not well educated that  the<\/p>\n
 Whisky with such a brand name is a Scotch Whisky”.<\/p>\n
As  rightly  contended  by the learned  senior  counsel  for<\/p>\n
respondents  1  and 2 the following persons who  have  filed<\/p>\n
their   affidavits  in  this  case  namely  Shri.Maha   Rao,<\/p>\n
Shri.Chavan,   Shri.Rao,   Shri.Pujari,   Shri.Repwate   and<\/p>\n
Shri.Sansare  were examined as witnesses in  that  case  and<\/p>\n
were   subjected  to  cross  examination  and  only   on   a<\/p>\n
consideration  of  such evidence the above  observation  has<\/p>\n
been  made.  In this case admittedly the averments contained<\/p>\n
in  the affidavits filed by third parties have not only  not<\/p>\n
been  controverted by the appellant but no rebuttal evidence<\/p>\n
has  been adduced.  Therefore, we agree with the above  said<\/p>\n
observation  of the learned Judge of the Bombay  High  Court<\/p>\n
and  reject the contentions put forth by the learned  senior<\/p>\n
counsel for the appellant.\n<\/p>\n<\/p>\n
      34. Learned senior counsel appearing for the appellant<\/p>\n
submitted that the rectification application is also  barred<\/p>\n
under   law  by  reason  of  estoppel  by  conduct,  waiver,<\/p>\n
acquiescence,  delay  and  laches.  Learned  senior  counsel<\/p>\n
further submitted that the present rectification application<\/p>\n
has  been filed as late as on 21.04.1996 i.e. 15 years after<\/p>\n
the  registration of the mark and 18 years after initial use<\/p>\n
of  the impugned mark and thus there is a lot of unexplained<\/p>\n
and  unreasonable delay on the part  of respondents 1 and  2<\/p>\n
in filing rectification proceedings and thereby allowing the<\/p>\n
impugned  mark  to  be used and circulated  in  the  market.<\/p>\n
According  to  the learned senior counsel,  the  conduct  of<\/p>\n
respondents  1  and 2 would amount to acquiescence.  Learned<\/p>\n
senior  counsel further submitted that even failure  of  the<\/p>\n
appellant to rebut the evidence adduced by respondents 1 and<\/p>\n
2  ought  not  to  be  taken as a ground for  rejecting  the<\/p>\n
contention  of the appellant that respondents 1 and  2  have<\/p>\n
acquiesced in the user of the trade mark of the appellant.<\/p>\n
      35.  Per  contra, Dr.Veerendra Thulza Purkar,  learned<\/p>\n
senior  counsel  for respondents 1 and  2  referred  to  the<\/p>\n
following passage from the decision of the House of Lords in<\/p>\n
Advocaat’s case:\n<\/p>\n
 “As  far  as  laches and acquiescence are concerned  the<\/p>\n
 position in my judgment is as follows:\n<\/p>\n
 To  avoid any possibility of confusion in any subsequent<\/p>\n
 case, it is important always to remember that there  may<\/p>\n
 be  a  case  of acquiescence which does not depend  upon<\/p>\n
 delay  at all, although we are not dealing with  such  a<\/p>\n
 case, nor was this Court in the case of Electrolux Ltd.,<\/p>\n
 Vs. Electrix Ltd., (1954) 71 R.P.C. 23.\n<\/p>\n<\/p>\n
      ……….\n<\/p>\n
\n Apart  from this, acquiescence arising from delay  poses<\/p>\n
 two problems when one is dealing with a right at law and<\/p>\n
 a  continuing breach. One has to consider first, whether<\/p>\n
 the right has been wholly lost, and, if not, whether the<\/p>\n
 Court  should  withhold  the  equitable  remedy  of   an<\/p>\n
 injunction and award damages.\n<\/p>\n
\n ……..\n<\/p>\n
\n It  seems  to me, therefore, that the true test  whether<\/p>\n
 equitable  relief should be withheld in the  case  of  a<\/p>\n
 continuing  legal wrong on the ground of  delay  by  the<\/p>\n
 plaintiff in enforcing his rights is that the facts must<\/p>\n
 be  such  that  the owner of the legal  right  has  done<\/p>\n
 something  beyond mere delay to encourage the  wrongdoer<\/p>\n
 to believe that he does not intend to rely on his strict<\/p>\n
 rights,  and  the  wrongdoer  must  have  acted  to  his<\/p>\n
 prejudice  in  that  belief; that is  to  say  the  case<\/p>\n
 approximates to what would totally destroy his right.”<\/p>\n
     36. Learned senior counsel by relying upon the decision<\/p>\n
in  Electrolux Ltd., Vs. Electrix Ltd., and Another  ((1954)<\/p>\n
RPC  Vol.71 page 23) submitted that mere delay can be no bar<\/p>\n
to the exercise of the owner of a registered trade mark of a<\/p>\n
statutory  right.  Learned senior counsel further  submitted<\/p>\n
that  the  adoption of the mark ‘Peter Scot” containing  the<\/p>\n
word  ‘Scot”  by  the  appellant itself was  dishonest.  The<\/p>\n
reason  given for adoption as contained in the affidavit  of<\/p>\n
Peter  Warren  and which was filed by the appellant  herein,<\/p>\n
show  that the reason for adoption of the word ‘Scot”  as  a<\/p>\n
part   of  the  trade  mark  “Peter  Scot”  was  to  suggest<\/p>\n
Scottish’s  connection. It is not a case  of  the  appellant<\/p>\n
making  a mistake of its rights so as to warrant application<\/p>\n
of the principles of acquiescence. Learned senior counsel by<\/p>\n
relying  upon the decision in Willmott Vs. Barber (15  Ch.D.<\/p>\n
96) submitted that acquiescence which will deprive a man  of<\/p>\n
his legal rights must amount to fraud and a man is not to be<\/p>\n
deprived of his legal rights unless he has acted in  such  a<\/p>\n
way  as  would  make it fraudulent for him  to  set  up  its<\/p>\n
rights.  Learned  senior  counsel  further  submitted   that<\/p>\n
respondents  1  and 2, possessors of the legal  right,  must<\/p>\n
have encouraged the appellant in his expenditure of money or<\/p>\n
in  the other acts which he has done, either directly or  by<\/p>\n
abstaining from asserting his legal rights, then only  fraud<\/p>\n
can  be  inferred  and  the  plea  of  acquiescence  can  be<\/p>\n
accepted. Learned senior counsel further submitted that  the<\/p>\n
appellant  has  miserably failed not only to controvert  the<\/p>\n
evidence  adduced by respondents 1 and 2 but have failed  to<\/p>\n
adduce  any  evidence whatsoever to establish  the  plea  of<\/p>\n
acquiescence. In the absence of any evidence, both the third<\/p>\n
respondent  and  the  learned  single  judge  have   rightly<\/p>\n
negatived  the  plea  of  acquiescence  put  forth  by   the<\/p>\n
appellant.\n<\/p>\n<\/p>\n
      37.  We  have  carefully  considered  the  above  said<\/p>\n
submissions of the learned senior counsel.<\/p>\n
      38.  The  principles laid down in the decision  relied<\/p>\n
upon  by the learned senior counsel for respondents 1 and  2<\/p>\n
clearly  lay  down  that the owner of legal  right,  in  the<\/p>\n
instant  case,  respondents 1  and  2  ought  to  have  done<\/p>\n
something  beyond mere delay to encourage the  appellant  to<\/p>\n
believe  that  they do not intend to rely  on  their  strict<\/p>\n
legal  rights  and  the appellant must  have  acted  to  its<\/p>\n
prejudice in that belief. But as rightly pointed out by  the<\/p>\n
learned  senior counsel for respondents 1 and  2,  there  is<\/p>\n
total lack of evidence on the part of the appellant to  show<\/p>\n
that respondents 1 and 2 encouraged the appellant to believe<\/p>\n
that the respondents do not intend to rely upon their strict<\/p>\n
legal  rights.  It  has to be pointed out that  the  learned<\/p>\n
single Judge, at length, has dealt with the legal principles<\/p>\n
to be applied while considering the question of acquiescence<\/p>\n
and  has observed that the facts of the instant case are not<\/p>\n
such  as  to  warrant  the conclusion that  there  has  been<\/p>\n
acquiescence. Therefore, in our considered view, the plea of<\/p>\n
acquiescence put forth by the appellant cannot be  accepted.<\/p>\n
We are in complete agreement with the finding of the learned<\/p>\n
single Judge that there has been no acquiescence on the part<\/p>\n
of respondents 1 and 2.\n<\/p>\n<\/p>\n
      39. Learned senior counsel for the appellant submitted<\/p>\n
that Section 26 of the Geographical Indication of Goods Act,<\/p>\n
1999  protects  the  trade mark where  the  rights  to  such<\/p>\n
trademarks  are  acquired through the  use  in  good  faith.<\/p>\n
Countering the said submission, Dr.Veerendra Thulza  Purkar,<\/p>\n
learned  senior  counsel for respondents 1 and  2  submitted<\/p>\n
that  since the said contention was not raised either before<\/p>\n
the third respondent or before the learned single Judge, the<\/p>\n
appellant  is  not entitled to raise the same in  the  above<\/p>\n
appeal.\n<\/p>\n<\/p>\n
      40.  We  have  considered the above rival contentions.<\/p>\n
When  admittedly the appellant had not raised any such  plea<\/p>\n
either  before  the third respondent or before  the  learned<\/p>\n
single  Judge,  as rightly contended by the learned  counsel<\/p>\n
for respondents 1 and 2, it is not open to the appellant  to<\/p>\n
raise  the  plea at this stage and accordingly  we  are  not<\/p>\n
inclined to entertain the above said submission.<\/p>\n
     41. Mr.Vedantham Srinivasan, learned senior counsel for<\/p>\n
the  appellant submitted that respondents 1 and  2  filed  a<\/p>\n
suit  in C.S.No.1729 of 1987 on 17.06.1987 before the Bombay<\/p>\n
High Court stating that the whiskey sold by the appellant in<\/p>\n
the  name  “Peter Scot” has resulted in passing off  of  the<\/p>\n
goods  of the appellant as that of the manufacture of scotch<\/p>\n
in  Scotland  who  are  well known for  the  scotch  whiskey<\/p>\n
manufactured  by  them  and which is universally   known  as<\/p>\n
scotch  whiskey. During the pendency of the said  suit,  the<\/p>\n
present  application for rectification was filed before  the<\/p>\n
third  respondent and the same ought to have been stayed  in<\/p>\n
view  of the decision of the Apex Court reported in AIR 1999<\/p>\n
SC 22. Countering the said statement, learned senior counsel<\/p>\n
for  respondents 1 and 2 submitted that the  learned  single<\/p>\n
Judge  has  considered  the above said  contention  and  has<\/p>\n
rejected  the  same. As rightly pointed out by  the  learned<\/p>\n
senior counsel for respondents 1 and 2, learned single Judge<\/p>\n
in  para  41  of  the  judgment considered  the  above  said<\/p>\n
submissions and has observed that on the facts of this case,<\/p>\n
having  regarding to the inherent inappropriateness  of  the<\/p>\n
use of the word “Scot” in relation to whiskey made in India,<\/p>\n
the exercise of the discretion of the Court in this case has<\/p>\n
to  be  in  favour  of  the respondents.  We  are  in  total<\/p>\n
agreement  with  the  above said observations  made  by  the<\/p>\n
learned single Judge.\n<\/p>\n<\/p>\n
     42. Learned senior counsel appearing for the appellant<\/p>\n
submitted that there is no evidence to show that the device<\/p>\n
of  Rampant  Lion is brought so is indicative  of  Scottish<\/p>\n
origin  and there is no evidence to show that the consumers<\/p>\n
have   been  deceived  into  believing  that  “Peter  Scot”<\/p>\n
whiskey was scotch whiskey because of the presence  of  the<\/p>\n
device  Rampant  Lion  on the label.  Countering  the  said<\/p>\n
submission, learned senior counsel for respondents 1 and  2<\/p>\n
submitted that the Lion Rampant has been used on the  label<\/p>\n
of  scotch whiskey as can be seen from the second affidavit<\/p>\n
of  Ian  Barclay dated 19.11.1987. According  to  him,  the<\/p>\n
device  used  by the appellant is an exact replica  of  the<\/p>\n
Royal Standard of Scotland which is a well known emblem  of<\/p>\n
Scotland and the same is clear from Ex.21, which is a  copy<\/p>\n
of  the  booklet entitled Scotland Kings and  Queens  which<\/p>\n
states  that the Lion Rampant was adopted as Royal Arms  of<\/p>\n
Scotland  by William the Lion in the 13th century which  is<\/p>\n
referred  to  in  para  40 of the first  affidavit  of  Ian<\/p>\n
Barclay  dated 20.10.1987.  Learned senior counsel  further<\/p>\n
submitted  that the description “Distilled from the  Finest<\/p>\n
Malt  and  Blended  with the Choicest  Whiskeys  by  Scotch<\/p>\n
Experts under Government Supervision” used by the appellant<\/p>\n
referring to the words “Scotch Experts” is intended to lead<\/p>\n
consumers to believe that the appellant’s whiskey is scotch<\/p>\n
whiskey and the same has been referred to in para 40 of the<\/p>\n
first  affidavit of Ian Barclay dated 20.10.1987. According<\/p>\n
to  the learned senior counsel, the above said averments in<\/p>\n
the  said  affidavit have not been controverted by adducing<\/p>\n
rebuttal evidence by the appellant. Therefore, the  learned<\/p>\n
senior  counsel submitted that the use of Lion Rampant  and<\/p>\n
the   description by the appellant additionally results  in<\/p>\n
the likelihood of deception and confusion and therefore the<\/p>\n
decision  of  the  third  respondent\/Deputy  Registrar  and<\/p>\n
confirmed by the learned single Judge cannot be faulted  on<\/p>\n
any ground whatsoever.\n<\/p>\n<\/p>\n
      43.  We  have  carefully  considered  the  above  said<\/p>\n
submissions  made  by  the counsel on either  side.  In  our<\/p>\n
considered  view ,the use of the device “Lion  Rampant”  and<\/p>\n
the   above  said  description  especially  the  description<\/p>\n
“Distilled  from  the  Finest  Malt  and  Blended  with  the<\/p>\n
Choicest   Whiskeys  by  Scotch  Experts  under   Government<\/p>\n
Supervision” is definitely intended to lead the consumers to<\/p>\n
believe  that  the whiskey manufactured by the appellant  is<\/p>\n
scotch whiskey. Though specific averments as above said have<\/p>\n
been made in the affidavit of Ian Barclay, the same have not<\/p>\n
been   rebutted  by  the  appellant  by  adducing   rebuttal<\/p>\n
evidence. The appellant has also not chosen to cross-examine<\/p>\n
Ian  Barclay  on  the averments contained in the  affidavit.<\/p>\n
Therefore, we are of the considered view that both the third<\/p>\n
respondent and the learned single Judge have considered  all<\/p>\n
the   relevant  materials  available  on  record  and   have<\/p>\n
exercised  their discretion properly and as such we  do  not<\/p>\n
find  any  reason  to  interfere with the  judgment  of  the<\/p>\n
learned single Judge.\n<\/p>\n<\/p>\n
      44.  For the foregoing reasons, the above appeal fails<\/p>\n
and  the same is dismissed. However, there will be no  order<\/p>\n
as to costs.\n<\/p>\n
mmi\/kk\/srk<\/p>\n","protected":false},"excerpt":{"rendered":"
Madras High Court Khoday Distilleries Limited vs The Scotch Whisky Association on 12 October, 2007 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 […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_lmt_disableupdate":"","_lmt_disable":"","_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[8,13],"tags":[],"class_list":["post-8578","post","type-post","status-publish","format-standard","hentry","category-high-court","category-madras-high-court"],"yoast_head":"\nKhoday Distilleries Limited vs The Scotch Whisky Association on 12 October, 2007 - Free Judgements of Supreme Court & High Court | Legal India<\/title>\n<meta name=\"robots\" content=\"index, follow, max-snippet:-1, max-image-preview:large, max-video-preview:-1\" \/>\n<link rel=\"canonical\" href=\"https:\/\/www.legalindia.com\/judgments\/khoday-distilleries-limited-vs-the-scotch-whisky-association-on-12-october-2007\" \/>\n<meta property=\"og:locale\" content=\"en_US\" \/>\n<meta property=\"og:type\" content=\"article\" \/>\n<meta property=\"og:title\" content=\"Khoday Distilleries Limited vs The Scotch Whisky Association on 12 October, 2007 - 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