Diageo Brands B.V. and Ors. v. Khoday Breweries Ltd. & Ors.
In the High Court of Delhi
Plaintiff filed a suit for permanent and mandatory injunction for infringement of registered trademarks, for passing off, unfair competition and damages
Plaintiffs are the owners of the world’s best known brands such as JOHNNIE WALKER RED LABEL, JOHNNIE WALKER BLACK LABEL, JOHNNIE WALKER GREEN LABEL, JOHNNIE WALKER GOLD LABEL, JOHNIE WALKER BLUE LABEL, CAPTAIN MORGAN, VAT 69, SMIRNOFF, BLACK and WHITE, BAILEYS, BELL’S, J and B and GUINNES and several others.
Defendants are dealing in alcohol and beverage products similar to those of Plaintiffs.
Defendants have filed trademark applications and to which the Plaintiffs are aware that they are confusingly and deceptively similar to the trademarks of Plaintiffs.
Defendants cannot insist and compel the Plaintiffs to keep a watch on every trade mark applied for registration which is similar or deceptively similar to the trademark of the Plaintiffs. The Plaintiffs cannot be forced to always file an application for opposition and if the Defendants are aware that they are applying for a similar or deceptively similar trademark as that of the Plaintiffs, they should be restrained from lodging any such application with the Trade Marks Registry.
Plaintiffs have sought a blanket injunction to restrain the Defendants from filing applications seeking registration of trademarks which is not permissible and will tantamount to pre- empting the Defendants even from applying for a trademark based on the subjective and biased evaluation of the Plaintiffs rather than the Registrar of Trade Marks.
Prayer for ad interim injunction made by the Plaintiffs can be divided in five parts, that is, restraint order restraining the Defendants either jointly or severely from (i) using or attempting to use or (ii) asserting any right to use or (iii) applying to register or (iv) to maintain the applications, or (v) to register any of the trademarks mentioned in paragraph 20 of the application.
As far as prayer (v) is concerned, these marks have already been registered by Defendant no. 1. The Plaintiffs can take appropriate proceedings for cancellation of the marks as may be advised irrespective of their action for passing off against the Defendants. Thus, a restraint order against registering any trade mark which is already registered by Defendant no. 1 cannot be granted at this stage.
If such an injunction as prayed in prayer (iii) and (iv), is granted, same will lead to absurdity because there will be nobody to decide whether the trademark, which a person wants to adopt, is liable to be registered or not. A party may think a trademark not to be deceptively or confusingly similar and may bonafidely apply for registration of the same and then face contempt if the Court holds that the mark applied by the said person was deceptively or confusingly similar to the one being used and registered by the Plaintiff. He may unwittingly face contempt of the Court. In any case, simply because the Plaintiff should not be compelled to oppose every application for registration of the trademark, the Defendants cannot be injuncted from applying to register or to maintain the application itself.
With regard to prayers (i) and (ii), the plaint clearly reveals that the Defendants want to ride on the goodwill and reputation of the Plaintiffs and that is why as many as 20 marks are sought to be registered which prima facie, are similar to the Plaintiffs’ mark JOHNNIE WALKER. It is apparent that the Defendants have malafidely not only used the word WALKER, but have taken similar alphabets from first word JOHNNIE. Similarly, Defendant got a mark VAT 999 registered as against the registered trademark VAT 69 of the Plaintiffs.
Defendant got registration of some of the marks which were deceptively similar to the registered trademark of the Plaintiffs. As stated above, Defendant no. 1’s mark KHODEY BLACK and WHITE, VAT 999, GUDNESS and BOND’S GREEN LABEL are similar or confusingly or deceptively similar to the Plaintiffs’ mark BLACK and WHITE, VAT 69, GUINNES and GREEN LABEL respectively. Hence, the Plaintiffs have established a strong prima facie case in their favour.
Because of the use of the deceptively or confusingly similar trademarks to those of the Plaintiffs, the Defendants are not only causing financial loss to the Plaintiffs but have also caused immense loss to the Plaintiffs’ reputation.
Balance of convenience also tilts in favour of the Plaintiffs as the Plaintiffs are entitled to the protection of their trademarks so that the same are not diluted by unwarranted use by the Defendants or third parties.
“The Plaintiffs, therefore, have been able to make out a case for grant of ad interim injunction in their favour. The application is disposed of with grant of ad interim injunction in favour of the Plaintiffs and against the Defendants restraining them from:
(i) either jointly or severally using or asserting any right to use any of the trademarks mentioned in paras 5 to 16 of the plaint or any other trademark specifically mentioned in para 20 of the plaint or any other trademark similar to any trademark of any of the Plaintiffs, till the disposal of the suit; and
(ii) from passing of the goods as the goods of the Plaintiffs with the trademark KHODEY BLACK and WHITE, VAT 999, GUDNESS, BOND’S GREEN LABEL, CAPTAIN WALKER, PETEWALKER, PETEWALKR and NOF specifically mentioned in para 20 of the application (I.A. No. 16758/ 2010) or any other trademark similar to the trademarks of the Plaintiffs as mentioned in paras 5 to 16 of the plaint, till the disposal of the suit.”