Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of Decision: 21 May, 2019
+ CS (COMM) 1213/2018
M/S ALLIED BLENDERS AND DISTILLERS
PVT. LTD. ..... Plaintiff
Through: Mr. Sanjay S. Chhabra, Mr. Shrawan
Chopra, Mr. Vibhav Mithal, Mr.
Bobby Jain and Ms. Vijay Laxmi
Mewana, Advocates. (9717172611)
versus
RANGAR BREWERIES LTD. ..... Defendant
Through: Mr. Dushyant K. Mahant and Mr. Ajit
Pathak, Advocates. (9899996299)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. The Plaintiff, M/s. Allied Blenders and Distillers Pvt. Ltd. is a
manufacturer and seller of whisky under the trademark ‘ Officer‟s Choice‟ .
The same is registered in the name of the Plaintiff and has been in use since
1988. The case of the Plaintiff is that Officer‟s Choice is the largest selling
whisky in the world in terms of volumes. The Plaintiff has placed on record
several orders which have been passed in various proceedings protecting the
trademark ‘ Officer‟s Choice‟ . The registrations for the mark, ‘ Officer‟s
Choice ’ have also been set out in paragraph 14 of the plaint.
2. The present suit has been filed against Defendant - M/s. Rangar
Breweries Ltd., which sells country made liquor under the brand name
‘ Rangar da Santra ’ among others. The Plaintiff has raised a grievance that
the Defendant’s products are being sold with the label of the Defendant.
However, the said bottles have embossings of the trademark ‘ Officer‟s
Choice ’ on them. The bottles could be recycled bottles of the Plaintiff but
CS (COMM) 1213/2018 Page 1 of 5
the Defendant has no right to be using the same for the purpose of
manufacture and sale of their own product ` Rangar da Santra‟ .
3. The Plaintiff has instituted proceedings against the Defendant in the
past being CS (OS) No. 1198/2012. At that time, the Defendant was selling
country made liquor under the mark/label ‘ Lal Quila‟ . In the said suit, the
Defendant had given an undertaking to the following effect:
“(a) The defendant will not use the bottles on which
"Officer's Choice" has been embossed, for selling
liquor in any other manner;
(b) The defendant will not use the bottles having
designs identical or similar to the plaintiff‟s design
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Registration no. 223751 dated 10 July, 2009 under
class “09-01”;
(c) The bottles, if any, which infringe the registered
design of the plaintiff and/ or on which "Officer's
Choice" has been embossed would be destroyed by the
defendant Company within two weeks.”
4. Thereafter, the Plaintiff traced infringing activity of use of ‘ Officer‟s
Choice ’ bottles by the Defendant and addressed letters to the Defendant,
th
including letter dated 6 April, 2015. The Defendant, vide its reply dated
th
11 April, 2015, confirmed that it had withdrawn all the bottles bearing the
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name „Officer‟s Choice‟ and that it would abide by the decree dated 18
September, 2012.
5. The present suit has, thereafter, been filed on the premise that the
Plaintiff again found bottles under the mark, which were being sold bearing
the Defendant’s label by embossing the mark ‘ Officer‟s Choice‟ . One such
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bottle was purchased by the Plaintiff on 30 June, 2018, from M/s. Daya
Nand Tyagi & Co., Beli Bangla, Teh. Nalagarh, Ramshehar Unit. The
Plaintiff has produced the original bottle which has the embossing of
CS (COMM) 1213/2018 Page 2 of 5
‘ Officer‟s Choice‟ and on the front side bears the yellow and black ‘ Rangar
da Santara ’ label. The label also bears the printed excise batch number and
the date of manufacturing. The Plaintiff also claims that it has a registered
design in respect of the said bottle. The registration certificate of the design
no. 221521 has also been placed on record. In view of these submissions,
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vide order dated 31 October, 2018 the Defendant was restrained from using
the said glass bottles bearing the mark ‘ Officer‟s Choice. ’ The said order
reads as under:
“13. It appears that the Defendant is sourcing these
bottles from the market and fixing its own label and
mark with whisky in the said bottle. The same
constitutes not just infringement of the registered
trademark but also constitutes falsification of the mark
of Plaintiff. Defendant is well aware of the Plaintiffs
mark owing to earlier proceedings, which have been
filed against it. Plaintiff has made out a prima facie
case in its favour. Balance of convenience rests in
favour of the Plaintiff and irreparable harm would be
caused to the Plaintiff if the Defendant is not injuncted.
Accordingly, it is ordered that till the next date the
Defendant is restrained from marketing its
liquor/whisky or any other products in glass bottles,
which bear name 'Officer's Choice' in any form
including embossed bottles. Compliance of Order
XXXIX Rule 3 CPC be made within three days.”
6. The Defendant thereafter entered appearance and made a categorical
statement that it does not use glass bottles bearing the mark ‘ Officer‟s
Choice‟ for its alcoholic beverages. Injunction was accordingly made
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absolute on 9 January, 2019. On 6 February, 2019, counsel for the
Plaintiff submitted that the Plaintiff does not wish to give up the relief of
damages in view of the history of litigation with the Defendant.
CS (COMM) 1213/2018 Page 3 of 5
7. Today, the matter is listed for case management hearing. Ld. Counsel
for the Defendant, Mr. Dushyant K. Mahant, submits that there is no dispute
in respect of the issues raised by the Plaintiff. Defendant does not wish to
use the ‘ Officer‟s Choice‟ bottles or trademark in any manner, whatsoever.
In fact, he submits that the Defendant has itself been proactive and lodged a
th
criminal complaint on 29 January, 2019 in Nalagarh Police Station,
Himachal Pradesh for investigating the matter as to how the bottles bearing
the mark/name ` Officer‟s Choice‟ are passing through the production line of
the Defendant. The status of the said criminal complaint is that the
investigation is pending in the same. He submits that in view of the fact that
the Defendant does not dispute the Plaintiff’s rights in the bottle and in the
trademark, there is no issue that arises to adjudicate in the present suit.
8. Learned counsel for the Plaintiff submits that the Defendant is a
repeated defaulter and is deliberately using their glass bottles bearing the
mark ‘ Officer‟s Choice‟ so that it can piggy-back its country made liquor on
the strength of the Plaintiff’s trademark. He submits that seeing the past
violations by the Defendant, it should pay damages or costs should be
imposed on them.
9. The Court has heard the counsels for the parties. Under the
Commercial Courts, Commercial Division and. Commercial Appellate
Division of High Courts Act, 2015, it is clear that the Court needs to frame
issues only if there is a contested issue arising between the parties. A perusal
of Order XVA Rule 2 shows that it is only when issues of fact and law arise
that the court needs to frame issues. The necessary corollary is that, if there
are no issues to be tried, the court need not frame issues in every suit.
10. In the present suit, the Defendant has agreed to suffer an injunction
CS (COMM) 1213/2018 Page 4 of 5
and has also undertaken not to use glass bottles bearing the mark ‘ Officer‟s
Choice‟ with the infringing design. The Plaintiff has produced the original
infringing bottle bearing the embossed mark ` Officer‟s Choice‟ as also the
label of ‘ Rangar da Santra‟ . The Court is satisfied that bottles bearing the
mark ‘ Officer‟s Choice‟ are being used in some manner for sale of ‘ Rangar
da Santra ’. Under these circumstances, permanent injunction as prayed
would be liable to be granted against the Defendant. The Defendant’s
arguments that the bottles are counterfeit bottles of the Defendant, depends
on the outcome of the complaint, which is pending investigation and unless
and until some other party is found to be indulging in the counterfeiting, the
Defendant cannot escape liability. Under these circumstances, suit is liable
to be decreed in terms of Paragraph (i) and (ii) of the prayer clause.
11. The fact that the Plaintiff is being repeatedly forced to institute
proceedings, including the filing of the earlier suit, issuance of legal notice
and filing affidavits, the Defendant is directed to pay costs of Rs.3 lakhs to
the Plaintiff. If in the investigations, it is revealed that some third party was
involved in the counterfeiting or the misuse of the ‘ Officer‟s Choice‟ bottles
and any charge sheet is filed by the police in this regard, the Plaintiff agrees
to refund 50% of the amount to the Defendant.
12. With these orders, the suit and all pending I.A.s are disposed of. Let
the costs be paid in four weeks. Remaining reliefs are not pressed. Original
bottle has been returned to counsel for the Plaintiff. Decree sheet be drawn.
PRATHIBA M. SINGH
JUDGE
MAY 21, 2019/ sk
CS (COMM) 1213/2018 Page 5 of 5