Mohan Meakin Ltd. v. A.B. Sugars Ltd.
CS(OS) No. 2335 of 2010 before the Hon’ble High Court of Delhi
Decided on: 10th October, 2013
The Plaintiff filed a suit against the Defendant seeking permanent injunction restraining the Defendant from using the mark/label ‘TOLD MOM’ and or/any other mark deceptively similar to the plaintiff’s trademark ‘OLD MONK’ and ‘OLD MONK’ Label.
- The Plaintiff is engaged in the selling of vatted Rum under the Trade Mark ‘OLD MONK’ since 1959.
- ‘OLD MONK’ is the largest selling Rum in India.
- Plaintiff has common law rights as well as statutory rights in the mark ‘OLD MONK’ and the Label. Plaintiff has 15 Registrations for the mark ‘OLD MONK’.
- The Label of the Plaintiff is an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 and is thus protected as a Trade Mark as well as a Copyright.
- The sales of the Plaintiff for the year 2009-2010 were approximately Rs. 114.84 Crores/1148 Millions.
- Defendant is using the mark ‘TOLD MOM’ and ‘TOLD MOM’ Label since 2009 in respect of Country Liquor and the Plaintiff’s mark is being used for manufacturing and selling IMFL and thus there cannot be any confusion as both products cannot be sold though same trade channels/shops.
- The mark and the label of the Defendant and the Plaintiffs are entirely dissimilar.
- The price is different, while the product of the Plaintiff is sold for Rs. 260/- that of the Defendant is sold for Rs. 110/-.
- The Defendant heavily relied on Kalindi Medicure Pvt. Ltd. v. Intas Pharmaceuticals Ltd. 2006(33) PTC 477 (Del.) where the Hon’ble High Court of Delhi vacated the injunction in respect of use of the mark ‘LOPARIN’ where the registered Trade Mark of the Plaintiff was ‘LOPRIN’ in respect of Pharmaceutical Products.
- Defendant is a fast growing company and has a vast distribution in North India and high IMFL bottling capacity.
- The Defendant describes it’s product as ‘rare old rum’.
- Class 33 of the Trade Mark Rules does not distinguish between country liquor and IMFL.
- The use of a deceptively similar mark by the Defendant will affect the goodwill and image of the Plaintiff.
The Hon’ble Court gave the decision in favour of the Plaintiff on the following grounds:
- The case of Kalindi Medicure Pvt. Ltd. v. Intas Pharmaceuticals Ltd. 2006(33) PTC 477 (Del.) and the reasons provided therein for not granting an injunction can be distinguished from the present case because:
- The drug of the Plaintiff in that case was a preventive drug and the drug of the Defendant was a curative drug; and
- Plaintiff’s product was to be administered orally and was sold as a pill and the Defendant’s product was to be injected by a syringe; and
- The suffix PARIN was taken from the name of the molecule Exoparin; and
- The price difference between the two products was 52 times; and
- The Defendant had a good market and thus there was balance of convenience in favour of the Defendant.
- On the question of different trade channels, the Hon’ble Court was of the opinion that there was no embargo in any relevant/concerned law that the product of the Plaintiff and Defendant cannot be sold through same vends.
- Additionally, as per the Defendant’s own case it is not restricted to marketing of country liquor only and these vends/shops for country liquor and IMFL are in close proximity to each other on the highways/small towns.
- In the present case there is a likelihood that a consumer after consuming the Defendant’s product, may form an impression that it is Plaintiff’s product and that impression guides his/her future purchase.
- Both the product are alcoholic beverages, both bear the description rum and consumers are not prudent enough, thus the difference that one is country liquor and the other is IMFL is unlikely to distinguish the products.
- The Defendant was unable to immediately answer the query, that if their product was country liquor how they were describing it as rum.
- No explanation by Defendant towards adoption of ‘TOLD MOM’ and the only probable reason could be to ride upon the goodwill of the Plaintiff.
- On difference in price, the Hon’ble Court ruled that the difference of some hundred rupees is not much to distinguish the product in liquor trade. In alcoholic beverages different products in different price range are not unknown.
- The marks ‘OLD MONK’ and ‘TOLD MOM’ are very similar phonetically and the labels used in respect of both the products are similar as per the test of comparison of essential and prominent features of the mark.
Author: Ankit Rastogi