Full Judgment Text
$~20
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
Date of decision: 13 July, 2023
+ CS (COMM) 103/2022 & I.A.2452/2022
ALLIED BLENDERS AND DISTILLERS PVT. LTD. ..... Plaintiff
Through: Mr. Pravin Anand, Mr. Shrawan
Chopra & Mr. Achyut Tewari, Advs.
(M: 8604633567)
versus
ASHOK KUMAR CONDUCTING ACTIVITIES
THROUGH WEBPAGE ..... Defendant
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
2. The present suit was filed by the Plaintiff-M/s Allied Blenders and
Distillers Pvt. Ltd. seeking injunction against unauthorized use of the mark
“OFFICER’S CHOICE”, the bottle, the label and the product itself in a
Facebook page by the Defendant-Ashok Kumar.
3. The Court had perused the said Facebook page and had passed the
following order dated 14th February, 2022.
“19. The plaintiff is the registered proprietor of the
mark "Officer's Choice" since 1988. Furthermore, the
mark "Officer's Choice" has been declared as a "well
known trade mark" by this Court vide judgment dated
16th January, 2017 in CS (COMM) 1227/2016 titled
Allied Blenders and Distillers Pvt. Ltd. Vs. Surya
Rao Trading as Leo Foods & Beverages.
20. On 9th February, 2022, the plaintiffs representative
came across the impugned web page on Facebook
being
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:17.07.2023
18:23:22
CS (COMM) 103/2022 Page 1 of 12
https://www.facebook.com/officerchoice1 , which
contains obscene, vulgar and derogatory social media
posts and which page has dishonestly adopted the
mark
the image
the
name "Officer's Choice" and the description
"@officerchoicel. Wine/Spirits".
21. Issue notice to the defendant John Doe, whose
identity is not known, through all permissible modes.
22. Reply be filed within four weeks.
23. Rejoinder thereto, if any, be filed within two weeks
thereafter.
24. I have gone through the impugned web page on
Facebook, which contains obscene posts along with the
plaintiffs trade mark.
25. In my view, the plaintiff has been able to establish
a prima facie case in its favour for grant of ex-parte ad
interim injunction. Balance of convenience is in favour
of the plaintiff. Irreparable harm and injury would be
caused to the plaintiff’s reputation and posting of such
content is diluting the trade mark of the plaintiff.
26. Consequently, the defendant is directed to
immediately take down the impugned webpage being
https://www.facebook.com/officerchoicel and
restrained from using the plaintiffs trade mark as
detailed in paragraph 8 of the plaint.
27. The Grievance Officer of Facebook is directed to
immediately take down the impugned web page and
provide all available details about the defendant to the
plaintiff. ”
4. In view of the fact that the Defendant’s identity was not known,
Facebook had given effect to the order and removed the reference to the
Signature Not Verified
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By:DHIRENDER KUMAR
Signing Date:17.07.2023
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CS (COMM) 103/2022 Page 2 of 12
Plaintiff’s product. The Defendant has not entered appearance in the matter.
5. Since the objectionable post and the Facebook page have been
removed by Facebook, upon the service of the order being effected, no
further purpose would be served in continuing the suit.
6. The Defendant is proceeded against ex-parte .
7. Following the rationale of the judgment of a ld. Single of this Court in
Disney Enterprises Inc. & Anr. v. Balraj Muttneja &Ors. [CS (OS)
3466/2012 decided on 20th February, 2014] , no ex- parte evidence would
be required in this matter.
8. The Plaintiff’s rights in the mark “OFFICER’S CHOICE” have been
repeatedly recognised in various decisions as mentioned below.
9. The operative portion of CS (COMM) 1227/2016 ‘Allied Blenders
and Distillers Pvt. Ltd. vs. Surya Rao’[Decided on: 16.01.2017] wherein
the mark “ OFFICER’S CHOICE” was held to be a well-known mark , is
extracted hereinbelow:-
“17. In this context, PW1 has deposed to the effect
that:
"i. the plaintiff (through its predecessor) is using the
mark "Officer's Choice"
continuously and extensively since the year 1988;
ii. the plaintiff's sales of the products bearing the
trademark "Officer's Choice" and other related marks
have increased from 1.13 million cases in the year
1994 to 30.18 million in the year 2014-15 (Ex Pw1/46
and Ex Pw1/123);
iii. the plaintiff's expenditure on advertisement and
brand promotion of
"Officer's Choice" has increased from ' 6.35 crores in
the year 1993-94 to '
264.59 crores in 2014-2015 (Ex Pw1/125);
iv. the exports "Officer's Choice" have arisen from
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By:DHIRENDER KUMAR
Signing Date:17.07.2023
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CS (COMM) 103/2022 Page 3 of 12
80,900 cases in 2006-07 to 10,02,456 in the year 2010-
11 [Ex Pw1/83 (Colly)];
v. the plaintiff's whiskey "Officer's Choice" was
reported to be the largest
selling whiskey in the world by the newspaper, The
Times of India in an article dated 11.08.2014 (Ex
Pw1/85);
vi. the plaintiff's whiskey "Officer's Choice" is
described as the largest selling whiskey in the world by
The Millionaires' Club 2014 (Ex Pw1/87);
vii. that "Officer's Choice" whiskey is world's No. 1
whiskey in the world in
terms of volume as per an article in the IWSR
Magazine, August, 2014 edition (ExPw1/88); and
viii. "Officer's Choice" has been presented with several
awards including
"World's Greatest Brand & Leaders 2015- Asia and
GCC" by URS International. [Ex pw1/124(Colly)]."
18. Tested on the parameters as indicated in section
11(6) and 11(7) of the Act, it is plainly evident that
the mark "Officer's Choice" has become a "well
known" mark.
19. In view of the above, the plaintiff is entitled to a
decree of permanent injunction restraining the
defendant from using the mark "Officere's" or any
other mark deceptively similar to the mark of the
plaintiff. Accordingly, the decree is granted in terms of
prayers made in paragraph 26 (i), (ii) and (iii) of the
plaint, which read as under:
"i. an order for permanent injunction restraining the
Defendant, its directors, principal officers,
wholesalers, distributors, partners or proprietors, as
the case may be, its officers, servants and agents from
manufacturing, selling, exporting, importing, offering
for sale, distributing, advertising, directly or indirectly
dealing in alcoholic beverages, especially IMFL or
goods of any description bearing the trade mark
and/or trade name "Officere's" or any identical or
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:17.07.2023
18:23:22
CS (COMM) 103/2022 Page 4 of 12
deceptively similar mark/label to the Plaintiffs
trademarks/label marks "Officer", 'Officer's Club'
and/or "Officer's Choice" as also other "Officer"
formative marks, amounting to infringement of the
Plaintiff's registered trademarks as enumerated in the
Plaint;
ii. an order for permanent injunction restraining the
Defendant, its directors, principal officers,
wholesalers, distributors, partners or proprietors, as
the case may be, its officers, servants and agents from
manufacturing, selling, exporting, importing, offering
for sale, distributing, advertising, directly or indirectly
dealing in alcoholic beverages, especially IMFL or
goods of any description bearing the trade mark
and/or trade name "Officere's" or any identical or
deceptively similar mark/label to the Plaintiffs trade
marks/label marks "Officer", 'Officer's Club' and/or
"Officer's Choice" as also other "Officer" formative
marks, amounting to infringement of the Plaintiffs
registered copyright as enumerated in the Plaint;
iii. an order for permanent injunction restraining the
Defendant, its directors, principal officers,
wholesalers, distributors, partners, or proprietor as the
case may be, its officers, servants and agents from
manufacturing, selling, exporting, importing, offering
for sale, distributing, advertising, directly or indirectly
dealing in IMFL or other goods bearing trade mark
"Officere's" or any deceptively similar mark/label(s)
including, but not limited to "Officer's Choice" and
"OC, including any identical/similar logo as that of the
Plaintiff's "Officer's Club" and "Officer's Choice" so as
to misrepresent their products as those of the Plaintiff
and from doing any other thing as may cause confusion
or deception leading to passing off of the Defendant's
goods and business as those of the Plaintiff;"
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:17.07.2023
18:23:22
CS (COMM) 103/2022 Page 5 of 12
10. The operative portion of CS (COMM) 115/2022 ‘Allied Blenders &
Distillers Pvt. Ltd. vs. SNJ Distillers Private Limited & Anr.’ [Decided on :
19.04.2023] wherein the status of “ OFFICER’S CHOICE” as a well- known
mark was reiterated is extracted hereinbelow:
“34. I have heard learned Senior Counsels for the
Plaintiff and the Defendants and examined their rival
contentions.
35. Plaintiff is the registered proprietor and prior user
of the trademarks Officer's Choice, Officer's Choice
Blue, Officer's Choice Black and Choice albeit
registration for the word 'Choice' is in Class 32 for
Mineral Water. It is an undisputed position that
Plaintiff's trademark Officer's Choice has been
declared as a well-known mark by this Court in Surya
Rao (supra). Plaintiff has placed on record details of
its registrations in the trademark 'Officer's Choice'
word per se and the label, which are valid and
subsisting. Sales turnover under the trademark
'Officer's Choice' is shown as Rs. 2,698.48 crores for
the year 2013-14 which has increased to Rs. 4,573.78
crores in
2019-20 and for 'Officer's Choice Blue' from Rs.
437.54 crores to Rs.2,019.70 crores. The expenses
incurred on promotion and advertising as mentioned in
the plaint and prima facie supported by the documents
are to the tune of Rs. 14.90 crores in 1994-95 to Rs.
52.72 crores in 2019-20. The impugned mark of the
Defendants, on the other hand, is also a device mark
with the words 'Green Choice' and indisputably, the
rival products are identical i.e., whisky.
xxx xxx xxx
42. Coming back to the case in hand, it is undisputed
that Plaintiff's registered trademark Officer's Choice
has been the subject matter of several litigations in this
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By:DHIRENDER KUMAR
Signing Date:17.07.2023
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CS (COMM) 103/2022 Page 6 of 12
Court. It is relevant to refer to some of the cases only
to see the journey of the trademark 'Officer's Choice'
over the years. One of the first few judgments that call
for a reference are in respect of two separate suits filed
by the Plaintiff herein against Shree Nath Heritage
Liquor Pvt. Ltd. in CS(OS) No. 2589/2013 and Sentini
Bio Products Pvt. Ltd. in CS(OS) No. 247/2009, where
the impugned marks were 'Collector's Choice' and
'Officer's Special' respectively. Suits were filed by the
Plaintiff seeking permanent injunction against the
respective Defendants and in both cases the products
in question of the Plaintiff and the Defendants were
identical i.e. IMFL. The learned Single Judge in 2014
M/s. Allied Blenders (supra) confirmed the ex-parte
injunction, restraining the Defendant from advertising,
distributing, selling etc. their goods bearing a mark or
label similar or deceptively similar to 'Officer's
Choice' and/or passing off their goods. A few passages
from this judgment are relevant and are as follows:-
"11. Having recently dealt with in Mohan Meakin Ltd.
(supra) in the context of principles applicable to the
question of infringement/passing off in the trade of
alcoholic beverages, rather than dealing afresh with
the subject, it is deemed appropriate to reproduce what
was observed therein. It was held:
"the test of similarity/dissimilarity is to be applied in
the light of the product/goods or services in
consideration and may be different for different
category of products, goods or services, depending not
only upon the nature and character of the product, its
use by consumers but also the trade channels. The
products of both the plaintiff and the defendant in the
present case are alcoholic beverages. Though the
Supreme Court in Khoday Distilleries Limited supra
was concerned with the same product but the alcoholic
beverages with which this judgment is concerned, as
distinct from the high end alcoholic beverages with
which the Supreme Court was concerned, are on the
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By:DHIRENDER KUMAR
Signing Date:17.07.2023
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CS (COMM) 103/2022 Page 7 of 12
contrary at the lower if not lowest rung of price range,
the purchasers whereof are often described as tipplers
and who often purchase the same not in the highest
form of awareness, as distinct from connoisseurs in
whose context the observations relied upon by the
defendant were made by the Supreme Court.
The use by the defendant of the trademark "TOLD
MOM" if found to be similar or deceptively similar to
the trademark "OLD MONK" of the plaintiff is likely to
affect the goodwill attached to the trademark of the
plaintiff. A trademark which distinguishes the goods of
one person from those of the other is infringed not only
when a average consumer thereof is led into buying the
goods of the latter presuming the same to be of the
former but also when such consumer by consuming the
goods of the latter, under the impression that they are
of the former forms an impression/opinion of the
quality of the said goods and which impression/opinion
guides the further purchases by the customer of the
said goods and the reputation which the customs
propagates of the goods.
xxx xxx xxx
46. The next station on this journey is an important
landmark where the trademark 'Officer's Choice' was
declared as a 'well-known trademark' under Section
2(1)(zg) of 1999 Act in Surya Rao (supra). Needless to
state that having been declared as a well-known mark,
'Officer's Choice' is entitled to protection not just qua
identical/ similar goods in same class but across all
classes, including classes in respect of which it holds
no registration and/or for goods or services it has yet
to enter in. [Ref. Disney Enterprises, Inc. v. Rajesh
Bharti & Ors., MANU/DE/0454/2013]. The strength of
the mark 'Officer's Choice' is thus evident from its
status as a 'well-known' and 'arbitrary mark' and it
needs no emphasis that if law protects such a mark
Signature Not Verified
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By:DHIRENDER KUMAR
Signing Date:17.07.2023
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CS (COMM) 103/2022 Page 8 of 12
across classes and dissimilar goods, it cannot permit
use of a deceptively similar mark for identical goods.
47. Additionally, over a period of time Plaintiff has
obtained numerous interim orders in its favour from
this Court injuncting third parties from use of the
trademarks identical/deceptively similar to 'Officer's
Choice', 'Officer's Choice Blue' and its variants
including marks which contain the word 'Choice' even
without the word 'Officer' and as an illustration
Plaintiff has referred to interim orders where
Defendants' marks are 'Emperor's Choice' 'Master
Choice', 'Our Choice' 'Your Choice', 'Sailor's Choice'
and 'Spinner's Choice'. This Court, while referring to
the aforesaid interim orders, is conscious of the fact
that interim orders do not have a binding force, yet the
very fact that different Courts in different matters have
exercised the discretion to grant interim injunctions,
restraining third parties from using impugned marks
comprising of the word 'Choice' with other prefixes
without the word 'Officer', is a pointer to the strength
of the trademark 'Officer's Choice', implying that even
use of the word 'Choice' has the potential to cause
confusion, a finding rendered in 2014 M/s. Allied
Blenders (supra).
48 . Therefore, seen holistically, the trademark
'Officer's Choice' has travelled its journey from
adopting and registering the mark in 1988 to being
recognised as an 'arbitrary' mark in the year 2015 by
this Court and finally being declared by the Court as a
'well-known' mark in 2017. Plaintiff has stepped into
introducing several variants of the mark during these
years and boasts of being a registered proprietor of
marks such as 'Officer's Choice Blue', 'Officer's Choice
Black' etc. as a part of its stable. Wholesale sales
(cases containing 9 litres) in millions of the product
bearing the mark 'Officer's Choice' has grown from
9.55 millions in 2008-09 to 30.10 millions in 2019-20
and the expenses incurred on advertisement and
Signature Not Verified
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Signing Date:17.07.2023
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CS (COMM) 103/2022 Page 9 of 12
promotions were to the tune of Rs. 52.72 crores in
2019-20 alone. Plaintiff has earned a reputation of
being the highest selling whisky as widely reported in
reputed magazines such as IWSR and Millionaire's
Club. With all this in the backdrop, the question that
begs an answer is whether any party can be permitted
to use a trademark identical/deceptively similar to
Officer's Choice or even come close to it and the
answer is in the negative.
49. The next issue, which is the heart of the dispute is,
whether the rival marks are identical/deceptive similar.
The rival marks in the present case are admittedly not
identical and the narrow controversy therefore is with
regard to the 'deceptive similarity'. Before examining
the marks in question from this perspective, it would be
useful to refer to a few judgments. In Playboy
Enterprises, Inc v. Bharat Malik & Anr.,
MANU/DE/0313/2001, Plaintiff was the registered
proprietor of the trademark 'PLAYBOY' under which it
was publishing an Indian magazine and had sought
permanent injunction against the Defendant, who was
publishing a magazine titled 'Playway'. Case of the
Plaintiff was that it was one of the largest business
houses of the world and the mark 'PLAYBOY' had
become a household name in the relevant circles on
account of extensive sales and advertisements and the
word 'PLAY' was so important to the Plaintiff that any
use by a third party was bound to lead to association
with the Plaintiff's product and blur its mark. It was
also contended that the adoption of the impugned mark
by the Defendant was merely to exploit and gain undue
advantage of Plaintiff's reputation, generated by sale
of its popular magazine in India under the well- known
mark and attract the same market of consumers,
besides diluting the mark and damaging the reputation
and goodwill.
xxx. xxx. xxx
69. The judgments cited by the Defendants, in my view,
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Signing Date:17.07.2023
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CS (COMM) 103/2022 Page 10 of 12
do not aid them or enure to their advantage and are
distinguishable for reasons I shall advert to
hereinafter. In John Distillers (supra), the rival marks
were 'Officer's Choice' and 'Original Choice' and the
IPAB observed that Choice was a popular word on the
Trade Marks Registry especially amongst alcoholic
manufacturers as also that when taken as a whole, the
two marks are not identical and therefore, there is no
likelihood of confusion and even the target consumers
not fluent in English, would know the difference. First
and foremost, as rightly argued by the Plaintiff, much
water has flown from 2013, when the judgment was
delivered by IPAB. Plaintiff has expanded manifolds
over the years and in 2015, the Division Bench in
Shree Nath Heritage Liquor Pvt. Ltd. (supra), held that
the mark 'Officer's Choice' is 'arbitrary' and
subsequently, the mark has been declared as a well-
known mark by this Court. This Court has already
rendered a prima facie finding in the earlier part of the
judgment that majority of the marks cited by the
Defendants with respect to 'Choice' as common to
trade, are registered by the Plaintiff, besides the fact
that as a matter of record, Plaintiff has several interim
orders of this Court granting injunctions against third
parties where 'Choice' has been used as a suffix in
marks such as 'Master Choice', 'Your Choice',
'Banker's Choice', etc. Additionally, in the litigation in
2008, this Court had observed that there was a delay of
7 years on part of the Plaintiff
in coming to the Court and that 'Original Choice' had
extensive sales, which is not the case here. Another
crucial fact that distinguishes the present case is that
in the present case, the Court has prima facie found
dishonest adoption by Defendant No. 2, who is
admittedly a former bottler of the Plaintiff and had
extensive knowledge of its repute and sales.
xxx. xxx xxx
78. Accordingly, the ex parte ad interim order dated
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:17.07.2023
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CS (COMM) 103/2022 Page 11 of 12
17.02.2022 is made absolute till the final adjudication
of the suit and Defendants, their affiliates, subsidiaries,
directors, wholesalers, distributors, partners, or
proprietors as the case may be, their officers, servants
and agents and all others acting for and on their behalf
from are restrained from using, manufacturing, selling,
exporting, importing, offering for sale, distributing,
advertising, directly or indirectly dealing in alcoholic
beverages, especially Country Spirits and IMFL, or
goods of any description and from using the impugned
mark 'Green Choice' or any identical/deceptively
similar mark to that of the Plaintiff's trademarks
'Officer's Choice', 'Officer's Choice Blue' and 'Choice'
in any manner whatsoever, amounting to trademark
infringement of the Plaintiff's trademarks or to cause
confusion or deception leading to passing off of the
Defendants' products as those of the Plaintiff or
associated with the Plaintiff or to cause dilution and
tarnishment of the Plaintiff's well-known trademarks.
11. Considering the rights of the Plaintiff in the mark “OFFICER’S
CHOICE”, label, product and logos, permanent injunction is issued against
the Defendant and anyone else acting for and on behalf of the Defendant
from using the mark “OFFICER’S CHOICE” label, logos etc., or making
any reference to the Plaintiff’s product on any social media platform.
12. The suit is decreed accordingly. Decree sheet be drawn up.
PRATHIBA M. SINGH
JUDGE
JULY 13, 2023/ dk/rp
Signature Not Verified
Digitally Signed
By:DHIRENDER KUMAR
Signing Date:17.07.2023
18:23:22
CS (COMM) 103/2022 Page 12 of 12