Robert A. Merry And Co. Ltd. vs Piccadily Agro Industries Ltd

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
% Judgment Reserved on: 08 April, 2026
th
Date of Decision: 29 May, 2026

+ CS(COMM) 1164/2025
ROBERT A. MERRY AND CO. LTD. .....Plaintiff
Through: Mr. Jayant Mehta and Mr. Kunal
Tandon, Senior Advocates with Mr. Chetan Roy,
Mr. Amandeep Singh, Mr. Pawan Kant Singh and
Mr. Prakhar Sah, Advocates.

versus

PICCADILY AGRO INDUSTRIES LTD .....Defendant
Through: Mr. J. Sai Deepak, Senior Advocate
with Mr. Siddharth Bambha, Mr. Luv Virmani and
Mr. Aakash Nair, Advocates.

+ CS(COMM) 9/2026
PICCADILY AGRO INDUSTRIES LTD .....Plaintiff
Through: Mr. J. Sai Deepak, Senior Advocate
with Mr. Siddharth Bambha, Mr. Luv Virmani and
Mr. Aakash Nair, Advocates.

versus

ROBERT A MERRY AND CO LTD & ANR. ....Defendants
Through: Mr. Jayant Mehta and Mr. Kunal
Tandon, Senior Advocates with Mr. Chetan Roy,
Mr. Amandeep Singh and Mr. Pawan Kant Singh,
Advocates for D-1.
Mr. Rishav Ambastha, Advocate for D-2.

CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH

Signature Not Verified
Digitally Signed
By:KAMAL KUMAR
Signing Date:05.06.2026
20:55:46
CS(COMM) 1164/2025 & connected matter Page 1 of 66

JUDGMENT
JYOTI SINGH, J.
I.A. 26995/2025 (u/O XXXIX Rules 1 and 2 r/w Section 151 CPC) in
CS(COMM) 1164/2025
I.A. 414/2026 (u/O XXXIX Rules 1 and 2 r/w Section 151 CPC) in
CS(COMM) 9/2026

1. This judgment will dispose of two applications seeking ad interim
injunctions, one filed by Robert A. Merry and Co. Ltd. in CS (COMM)
1164/2025 and the other by Piccadily Agro Industries Ltd. in CS (COMM)
9/2026. For the sake of convenience and to avoid confusion, Robert A.
Merry and Co. Ltd. is referred to as Plaintiff and Piccadily Agro Industries
Ltd. as Defendant, hereinafter.
CS (COMM) 1164/2025
2. This suit is filed by the Plaintiff inter alia seeking a decree of
permanent injunction restraining the Defendant and all others acting on its
behalf from selling, offering for sale, soliciting etc. its Whistler Barrel Aged
Blended Malt Whiskey under the trademark WHISTLER and/or any other
trademark/label which may be identical/deceptively similar to Plaintiff’s
THE WHISTLER and WHISTLER trademarks in relation to impugned
product, amounting to passing off.
CS (COMM) 9/2026
3. This suit is filed by the Defendant seeking inter alia decree of
permanent injunction restraining the Plaintiff and all others acting on its
behalf from selling, offering for sale, advertising and/or promoting its Irish
whiskey, using the trademarks WHISTLER/THE WHISTLER, which are
identical/deceptively similar to Defendant’s registered trademark
WHISTLER for identical product, amounting to infringement of trademark
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and passing off.
4. Case set up by the Plaintiff is that it is a Private Limited Company
incorporated under the Irish Company Law and has filed the suit against the
Defendant alleging passing off and predicates its case on confusion
owing to use of WHISTLER mark by the Defendant for IMFL whiskey.
Plaintiff is engaged in business of manufacturing, production and
trading of wide range of Irish whiskey, Gin and other alcohol-based
drinks etc. for more than two decades and is an industry leader in the
field. By virtue of continuous innovation, investments and extensive
research and development in relation to evolution of whiskey, Plaintiff has
acquired immense goodwill and reputation in the whiskey industry
worldwide and its products are recognized for their superior quality and
market leadership.
5. It is stated that the trademark WHISTLER was first registered on
12.05.2005 in United Kingdom and was later assigned by the original
creator/adopter of the mark to the sister concern of the Plaintiff i.e. Boann
Distillery Limited (erstwhile Harvest Distilling and Brewing Limited) in
2015 and was transferred to the Plaintiff in 2017. Hence, Plaintiff inherited
all rights, benefits and goodwill associated with the mark from the date of its
first registration. Plaintiff and Boann Distillery Limited are 100%
subsidiaries of Nacuana Holdings Limited. In course of trade and sometimes
in the year 2016, Plaintiff also adopted the mark THE WHISTLER, which
was embossed on its products to identify that they originate from the
Plaintiff. To acquire statutory rights in the marks WHISTLER and THE
WHISTLER, Plaintiff filed and obtained several registrations internationally
as follows:-
Signature Not Verified
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6. It is stated that the registrations are legal, valid and subsisting. This
apart, Plaintiff has also obtained registrations in mark THE WHISTLER in
Brazil and Nigeria and application is pending in Australia, however,
Plaintiff does not have registration in India for any of the two marks.
Plaintiff asserts its market presence globally as follows:-

7. It is stated that Plaintiff has registered the following domain names
incorporating the words WHISTLER and THE WHISTLER, which
enhances its popularity and reputation:-

Signature Not Verified
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Signing Date:05.06.2026
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8. It is stated that Plaintiff is deemed to have bona fidely adopted the
trademark WHISTLER in 2005 through its predecessor and THE
WHISTLER was honestly adopted in 2016 and the marks have been used
continuously and extensively since their adoption and are a source identifier
of its products. Reputation and goodwill accrued due to use of the marks has
become synonymous with the Plaintiff and both the marks are indelibly
associated in the mind of the consuming public with the Plaintiff and
Plaintiff alone. Plaintiff’s marks WHISTLER and THE WHISTLER are
well known and substantial goodwill and reputation has accrued owing to
relentless adherence to unmatched standards of quality and marketing
strategies by the Plaintiff. Global repute and valuable trade attached to the
marks is evident from the year-wise sales from 2011-2012 to 2023-2024 as
follows:-

9. It is stated that the turnover data is supported by financial statements
from 2013 till 2024 and invoices from 2016 onwards and due to extensive
sales and huge investments in advertisements and promotions on various
platforms, the marks WHISTLER and THE WHISTLER have acquired a
secondary meaning and the goodwill has reached a threshold where
consumers easily recall these marks as associated with the Plaintiff. By
virtue of Plaintiff’s long-standing presence and quality of the products,
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Plaintiff has earned the faith and trust of people and many established liquor
distributors even in India such as Radico Khaitan, Oberoi Spirits, Globus
Spirits Ltd. etc., have approached the Plaintiff to market, distribute and sell
its whiskey brands in India and this is corroborated by communications
exchanged between 2014 to 2025, copies of which have been filed with the
plaint.

10. It is stated that goodwill acquired by the Plaintiff by itself and through
its predecessors and/or subsidiaries is not limited to the countries where
goods are physically available and freely sold but has spilled over to other
countries including India through media and publications/magazines etc. and
recently Plaintiff has sold some stock to a leading distributor in India
namely, M/s HS Oberoi Spirits operating widely in Delhi NCR region.
Plaintiff has been consistently recognized for the superior quality of its Irish
whiskey and has received several awards such as the ‘World’s Best Honey
for The Whistler Irish Whiskey & Honey Liqueur’ at the World Liqueur
Awards (2020); ‘World’s Best Grain’ for Plaintiff’s Whistler Mosaic
Marsala Single Grain whiskey (2022); and ‘World Whiskey Awards’, to
name a few.
11. It is stated that Plaintiff was compelled to file the suit for permanent
injunction against the Defendant, who is also engaged in manufacture,
trading and distribution of liquor in India and has illegally, dishonestly and
unauthorizedly adopted the mark WHISTLER, which is identical to
Plaintiff’s registered trademark WHISTLER and deceptively similar to
THE WHISTLER and even the artistic features of the labels have been
copied for sale of its IMFL whiskey. It was also learnt that Defendant was
re-launching the whiskey sold under the name ‘Whistler Barrel Aged
Blended Malt Whiskey’ with a view to encash on Plaintiff’s goodwill and
Signature Not Verified
Digitally Signed
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Signing Date:05.06.2026
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reputation garnered over decades, despite being aware of Plaintiff’s
reputation in the mark, both globally and in India. Defendant’s mark
WHISTLER is deceptively similar to Plaintiff’s mark THE WHISTLER and
products being whiskey, there is likelihood of confusion amongst members
of public and potential consumers as also dilution of Plaintiff’s brand.
Plaintiff has not authorized or licensed the Defendant to use the impugned
mark. Adoption of the mark WHISTLER by the Defendant is dishonest and
with an intent to gain mileage and encash on the enviable reputation and
goodwill of the Plaintiff by misrepresenting to the public that its goods
originate from or have some affiliation with the Plaintiff, which is causing
damage to Plaintiff’s goodwill and amounts to passing off.
CONTENTIONS OF THE PLAINTIFF IN ITS SUIT FOR PASSING
OFF:

12. Plaintiff’s mark WHISTLER was adopted and first registered in UK
in 2005 and THE WHISTLER was adopted in 2016 and its earliest
registration goes back to 29.10.2020 in Russian Federation. The marks are
registered across several foreign jurisdictions albeit not in India. Both marks
have been continuously and extensively used since adoption and
documents such as international sales invoices reflecting commercial use,
advertisements, commercial engagements, awards and recognitions earned
etc. show prior user of the mark WHISTLER from its inception i.e. 2005
and it is a settled law that prior use prevails over registration. In S. Syed
Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 , the Supreme Court held
that rights of a prior user override the rights of the other party emanating
from statutory registrations. There can be no dispute that Plaintiff was first
to enter the international market in 2005 and even by this yardstick it is
entitled to seek a restraint against the Defendant from selling its whiskey
Signature Not Verified
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By:KAMAL KUMAR
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under the mark WHISTLER. Reference was made to the judgment in
Milmet Oftho Industries and Others v. Allergan Inc., (2004) 12 SCC 624 ,
wherein the Supreme Court held that the ‘first in the world market’ is
entitled to protection against a subsequent adopter in India. Reliance was
also placed on the judgment in Neon Laboratories Limited v. Medical
Technologies Limited and Others, (2016) 2 SCC 672.

13. Defendant has taken a shifting and inconsistent stand with respect to
the user claim of the mark WHISTLER to mislead the Court. Defendant’s
earliest registration application filed in 2008 claims user from 01.01.2007,
however, in the subsequent application filed in 2021, the user is claimed on
‘proposed to be used’ basis. Still again in the correction application filed in
2023, the user claim has been altered to 01.04.2018 and this is supported by
an affidavit. The sales invoices and the CA Certificate filed by the
Defendant show user only from 2018 and not 2007. In fact, in the pleadings,
Defendant has admitted that its whiskey was commercially launched only in
2018. The shifting stand demonstrates lack of bona fides and dishonest
adoption and disentitles the Defendant to the equitable relief of injunction.
14. Defendant’s stand that the whiskey under the mark WHISTLER was
launched in 2018 is also in fact uncorroborated, as only one invoice has been
filed for the year 2018 and rest of the sales invoices are for period post-
2020. Moreover, Defendant’s own social media handle on 05.08.2021 shows
that its product was ‘ Coming soon’ . Defendant has not placed on record any
material to show use of the mark WHISTLER prior to 2005 when Plaintiff’s
mark WHISTLER was adopted and registered internationally and there is no
proof of use from 2007 to 2018. Arguendo, even if Defendant shows its use
from 2018 or even earlier from 2008 or 2007, it will be of no avail since the
first foreign registration and user of the Plaintiff dates back to 2005, which
Signature Not Verified
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Signing Date:05.06.2026
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pre-dates any credible claim of the Defendant regarding prior adoption of
the mark WHISTLER. Plaintiff’s 2005 registration can be trumped only by
showing use prior to 2005, which Defendant has failed to establish even
prima facie .
15. Plaintiff has continuously and extensively used the marks
WHISTLER and THE WHISTLER and the global revenues earned and huge
investments made reflect the tremendous goodwill and reputation acquired
by the Plaintiff in the international market. Owing to superior quality of the
products, regular innovations in whiskies by research and development,
reach in the global markets etc. the marks WHISTLER and THE
WHISTLER are associated with the Plaintiff alone and have a high recall
value. Plaintiff can boast of international market presence in many parts of
the world such as in Asia, Europe, North and South America, UK etc. Due
to well known and substantial goodwill and reputation earned through
relentless adherence to unmatched standards of quality and excellent
marketing strategies, Plaintiff’s enviable global reputation has spilled into
India also and relevant segment of the public associates the marks with the
Plaintiff only. Several known and established distributors across India have
requisitioned the Plaintiff to market, distribute and sell its whiskey brands
and this is corroborated by email communications placed on record. Plaintiff
finally accepted the request of M/s Oberoi Spirits and sold stock worth
approximately Rs. 75,82,669/- in the recent past. Consistent requests from
well-meaning Indian distributors and industry participants clearly evidences
the commercial recognition, distinctiveness and widespread acceptance of
association of the marks with the Plaintiff. Considerable spillover of
Plaintiff’s transborder reputation in India is amply substantiated by
documents on record reflecting active commercial engagement in the Indian
Signature Not Verified
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market through distributor negotiations, price communications, sample
requests, extensive global sales, domain presence, worldwide advertising
and international market reach and an inventory showing actual sale of
whiskey. Liquor is a regulated industry where direct advertisement is legally
restricted and hence, reputation necessary travels through industry
publications, international awards, trade channels and discerning consumer
awareness rather than mass media campaigns. Therefore, the mere absence
of mass advertising cannot be construed against the Plaintiff to come to a
conclusion that there is no spillover of the reputation in India. This Court in
MAC Personal Care Pvt. Ltd. & Anr. v. Laverana GMBH and Co. KG &
Anr., 2016 SCC OnLine Del 530 , has recognized that transborder reputation
can be established through commercial level activity, unless trivial. The
marks WHISTLER and THE WHISTLER are valuable assets of the Plaintiff
and by virtue of statutory and common law rights, Plaintiff is entitled to use
them exclusively and restrain the Defendant from passing off its product,
even if there was no sale of Plaintiff’s product in India. In N.R. Dongre and
Others v. Whirlpool Corporation and Another, (1996) 5 SCC 714 , the
Supreme Court recognized protection of transborder reputation even in
absence of actual sales in India.
16. Defendant has adopted and copied Plaintiff’s marks with an intent to
misrepresent to the public that its whiskey emanates from the house of the
Plaintiff or has some association with the Plaintiff, only to encash on
Plaintiff’s formidable goodwill and reputation, which is causing irreparable
harm and amounts to passing off and thus violates the common law rights of
the Plaintiff. Defendant was well aware of Plaintiff’s marks and the
goodwill and reputation when it adopted the mark WHISTLER and the
resemblance in the rival marks is so close that it can only be a deliberate
Signature Not Verified
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imitation. Defendant has also imitated the entire shape, manner and
placement of the registered mark of the Plaintiff on the bottle so as to come
as close as possible.
17. Whistler whiskey is produced under strict legislative rules of
European Geographic Identity (GI) to be able to call itself Irish whiskey.
Ingredients of Plaintiff’s ‘ Whistler Whiskey ’ are Matured Grain Spirits and
Malt, whereas Defendant’s ‘ Whistler Barrel Aged Blended Malt Whiskey’
cannot be called whiskey under GI rules and is a misleading description and
moreover, comparatively the quality is far inferior and thus not only the
public is being misled by sales under a deceptively similar mark, but also
Plaintiff’s mark is being diluted and its image is getting tarnished. Plaintiff
is thus entitled to seek protection and Defendant is liable to be restrained
from passing off the impugned product as that of the Plaintiff and harm its
formidable reputation and goodwill garnered over the years. During the
pendency of these proceedings, approval has been obtained by Defendant
No. 2 from the Excise Department for sale in Delhi and Maharashtra and the
stocks are lying ready for sale.
CONTENTIONS OF THE PLAINTIFF IN RESPONSE TO
DEFENDANT’S CLAIM OF INFRINGEMENT AND PASSING OFF:

18. Defendant’s claim of infringement and passing off in the separate suit
filed by it against the Plaintiff is wholly misconceived. Plaintiff is the prior
user and adopter of the marks WHISTLER and THE WHISTLER and has
international registrations through predecessors dating back to 2005 together
with extensive global sales, commercial presence and worldwide goodwill
and reputation owing to market presence in Asian countries, Europe, North
and South America, United Kingdom etc. WHISTLER has been associated
with the Plaintiff much prior to Defendant’s registration application in India
Signature Not Verified
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Signing Date:05.06.2026
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in 2008 and admitted user from 01.04.2018 and thus Defendant’s
registration in India in 2008 is irrelevant. Plaintiff’s transborder reputation
has spilled over in India and it is a settled law that prior user trumps
registration and hence, Defendant cannot claim infringement of its mark
basis its registration in 2008.
19. Defendant has dishonestly adopted an identical, earlier registered and
earlier used mark of the Plaintiff and is passing off its goods as those of the
Plaintiff for unlawful commercial gains and has no legitimate right to blame
the Plaintiff for infringement and/or passing off. Defendant’s stand that it
has adopted the mark WHISTLER inspired by Whistler Warbler, a vibrant
song bird indigenous to Indian sub-continent known for its rich, deliberate
and melodic whistling songs, is preposterous to say the least and clearly
Defendant has adopted the mark from Plaintiff’s mark, which has
international recognition for decades.
20. In any event, Defendant has failed to set out even a prima facie case
of infringement against the Plaintiff as required by Section 29(2)(b) of the
Trade Marks Act, 1999 (‘1999 Act’), which provides that a registered
trademark is infringed by a person who, not being a registered proprietor or
person using by way of permitted use, uses in the course of trade, a mark
which because of its similarity to registered mark and identity or similarity
of goods/services covered by such trademark, is likely to cause confusion on
part of public or have an association with the registered trademark. The
underlying principle is thus likelihood of confusion on part of the public or
likelihood of association with the registered trademark. There is no
likelihood of confusion in the instant case for multiple reasons. Plaintiff’s
product is Irish whiskey, specifically single malt, which is protected under
EU GI norms and recognized distinctly as a product of origin. All Plaintiff’s
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products prominently bear the label ‘Irish whiskey’ beneath ‘THE
WHISTLER’. Defendant’s product, on the other hand, is IMFL and blended
whiskey and Defendant admits that its Whistler is an accessible IMFL
product and distinct from its premium single malt brand ‘INDRI’. FSSAI
Regulations, 2018 clearly differentiate between Single Malt Whiskey and
Blended Malt/Grain Whiskey, establishing a clear distinction in composition
and classification. For ready reference, comparative of the rival products is
as follows:-

21. Defendant has always represented its product as a ‘Blended Malt
Whiskey’, which by definition is one that is produced exclusively by
blending two or more single malt whiskies sourced from different
distilleries, without addition of any grain whiskey or grain spirits. Essential
characteristic of a blended malt lies in the absence of grain-based alcohol
and a bare perusal of Defendant’s label indicates that the product contains
grain spirits, which fundamentally disqualifies the product from being
categorized as ‘blended malt whiskey’. Such misdescription by the
Defendant amounts to misbranding and misleading representation,
calculated to induce customers into believing that the product possesses
qualities and compositions of a genuine blended malt whiskey and the
confusion is artificially created and does not exist. In fact, it is the Defendant
Signature Not Verified
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which is indulging in unfair practice and taking unfair commercial
advantage of Plaintiff’s brand.
22. Even otherwise, there is no scope of confusion to lead to a claim of
infringement as there exists a substantial price difference between the rival
products. Plaintiff’s products retail in India in the price range of Rs. 2800/-
to Rs. 11,000/- per bottle, whereas Defendant’s products retail at an average
of Rs. 780/- per bottle. In Radico Khaitan Limited v. Carlsberg India
Private Limited, 2011 SCC OnLine Del 3925 , this Court held that price,
composition, classification and consumer base are relevant considerations in
disputes pertaining to alcoholic beverages. In Pernod Ricard India Private
Limited and Another v. Karanveer Singh Chhabra, 2025 SCC OnLine SC
1701 , the Supreme Court once again affirmed that consumers of ultra-
premium whiskies are discerning consumers and exercise a high degree of
care. The stark difference in price points in the instant case as also product
positioning indicates distinct consumer classes. Plaintiff caters to premium
and discerning consumers of imported Irish single malt whiskey, whereas
Defendant targets the IMFL segment at an accessible price point. The
consumer base and trade channels would therefore be distinct and
unquestionably, there is no likelihood of confusion and the claim of
infringement by the Defendant must fail, disentitling it to injunction. The
look and distinct design of the bottles, packaging, artistic features on the
label, mention of the words ‘Irish whiskey’ on the label etc. are enough to
distinguish the rival products and no case of passing off is made out by the
Defendant. In fact, it is the Plaintiff, which is suffering due to the sale of
demonstrably inferior quality whiskey by wilful misrepresentation to the
public by the Defendant resulting in passing off and Defendant ought to be
restrained. Balance of convenience lies in favour of the Plaintiff as
Signature Not Verified
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Defendant can suffer no legitimate prejudice by being restrained from using
a deceptively mark, whereas Plaintiff stands to suffer irreparable harm to
reputation and goodwill and commercial loss. If Defendant is not restrained,
the harm caused to the goodwill and reputation, which is intangible and
incalculable will not be compensated in terms of money. Plaintiff relied on
the following judgments in the context of its defence to infringement:-

(a) White Horse Distillers Ltd. v. The Upper Doab Sugar Mills
Ltd. and Another, 1984 SCC OnLine Del 317;
(b) Asia Pacific Breweries Ltd. v. Superior Industries Limited,
2005 SCC OnLine Del 1445;
(c) Carlsberg India Pvt. Ltd. v. Radico Khaitan Ltd., 2011 SCC
OnLine Del 5497;
(d) Real House Distillery Pvt. Ltd. & Anr. v. Pernod Ricard S.A.
& Anr., 2014 SCC OnLine Del 977;
(e) M/s. GUFIC Ltd. & Another v. Clinique Laboratories, LLC &
Anr, 2010 SCC OnLine Del 2322;
(f) Shree Nath Heritage Liquor Pvt. Ltd. v. M/s. Allied Blender &
Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164; and
(g) Intex Technologies (India) Ltd. & Anr. v. M/s AZ Tech
(India) & Another, 2017 SCC OnLine Del 7392.
CONTENTIONS ON BEHALF OF THE DEFENDANT IN DEFENCE
TO PASSING OFF AND ITS CLAIMS OF INFRINGEMENT AND
PASSING OFF AGAINST THE PLAINTIFF:

23. Defendant is a listed Public Limited Company incorporated in 1994
and is India’s premier independent producer and distributor of malt spirits.
Its portfolio includes single malt whiskey and variety of IMFL brands as
well as Single Malt Whiskies, Blended Malt Whiskies, Cask Aged Rum,
Vodka, Country Liquor, Potable Alcohol etc. Defendant has positioned itself
as manufacturer of premium, luxury and refined products, which has taken
India to the world stage winning numerous accolades and for the first time
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putting the country on the podium of best whiskies. Plaintiff is the market
leader in premium high-quality spirits with its INDRI being No.1 selling
Indian Single Malt in India and overseas. At present, Defendant sells its
product in at least 27 countries and also has distinction of being the owner of
top-selling Indian single malt in India as well as globally. Defendant also
won the Company of the Year Award at Spiritiz Achiever’s Awards 2024.

24. In 2007, Defendant conceived the trademark WHISTLER and in 2008
filed an application for registration. Brand story behind WHISTLER draws
inspiration from whistle-worthy craftsmanship and this celebratory
expression is represented by the likeness of the elusive Whistler Warbler, a
vibrant song bird indigenous to Indian sub-continent which is known for its
rich and melodic songs. The mark was registered in 2008 and Defendant
worked on the project for nearly a decade and finally launched the whiskey
under WHISTLER in 2018. Whistler whiskey became an instant hit upon
launch and went on to become a bigger sensation with relaunch in 2025 with
a varied blend along with new and improved packaging. Whisler’s brand
presentation, including its name, label, design and storytelling, positions it
as a premium lifestyle product with and superior quality expected of
Piccadilly’s malt making legacy.
25. Defendant’s Whistler whiskey has been granted requisite approval by
State Excise Department in more than 15 States, including Delhi, U.P., Goa,
Rajasthan etc. A 750ml pack of Defendant’s Whistler whiskey is priced in
the range of Rs. 980/- to Rs. 1500/-. Albeit goodwill in the context of
alcoholic beverages rides on the coattails of the house mark, in the instant
case, independent of the house mark PICCADILY, Defendant’s product
under the brand name WHISTLER has met a huge success in the market and
many of the publications and articles published on this aspect are referred to
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in the pleadings. The growing goodwill and reputation of the Whistler
whiskey is reflected from the annual sales measured in number of cases as
well as rupees and the details are as follows:-


26. The goodwill earned by the Defendant is also corroborated by email
communications with third parties from 2019 onwards appreciating the
brand; awards and recognitions bestowed for the brand; screenshots from
Instagram account; and ledgers of third party, namely, Kuse from 2017
onwards for the work done by it for Defendant’s product. Defendant’s foray
into branded Alco-Bev products marks a strategic evolution from bulk
production to consumer-facing premium brand development. Defendant’s
products enjoy immense reputation and goodwill and its state-of-the-art
manufacturing facilities comply with stringent requirements and
accreditations from different authorities. Defendant’s INDRI was the first
ever single malt brand in the world to cross sales of one lakh in 2023-2024,
capturing 35% of export market share from India in its category with
presence in 27 countries.
27. Defendant is the lawful, bona fide, rightful and honest adopter, user
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and registered proprietor of the trademark WHISTLER and its variants/
labels in multiple classes, including Class 33 and is entitled to its exclusive
use as also statutory protection from third parties infringing the same.
Details of registrations are as follows:-



28. In August, 2025, Defendant learnt that Plaintiff was attempting to
export, distribute and market whiskey under the mark WHISTLER to India
through M/s HS Oberoi Spirits despite being well aware of the existence of
Defendant’s mark WHISTLER. Defendant issued objection letters to various
Excise Departments in September, 2025 as also legal notice to M/s HS
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Oberoi Spirits, however, Plaintiff took a stand in the reply that it was the
exclusive owner and proprietor of the trademark WHISTLER and on the
same day on which the reply was sent i.e., 27.10.2025, filed CS (COMM)
1164/2025. The stand that Plaintiff is the registered proprietor of the marks
WHISTLER and THE WHISTLER internationally can be of no aid to the
Plaintiff as admittedly, it has no registration in India and conscious of this
fact, it has only claimed passing off, which is also a misconceived claim in
the absence of any spillover of transborder reputation in India.
29. Plaintiff has no case against the Defendant as it has no statutory or
common law rights in the marks WHISTLER and THE WHISTLER.
Defendant on the other hand has secured registration in the mark
WHISTLER way back in 2008, which is unchallenged till date. Rival marks
being visually, structurally and phonetically identical/deceptively similar
and products being identical, confusion is inevitable amongst members of
public, even assuming they are discerning consumers. In the alcoholic
beverages industry, where advertisement is prohibited, manufacturers have
very limited consumer engagement or brand promotion and in the regulated
framework, the distinctiveness of the brand name becomes the single most
critical element of brand identity and consumer recall. Thus the ability to
create a lasting impression through a unique and memorable name is
essential to establish goodwill. The retail structure, particularly, sale through
vendors is an additional constraint. In majority of such outlets, the sale
process is through minimalistic counter based ‘hand-in/hand-out’ model,
where consumer does not have the option to browse or visually access the
products and the decision is largely on oral articulation of the brand name.
Thus with such close identity in the WHISTLER marks, there is no doubt
that there will be customer confusion as the name will operate as the
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determining factor. Infringement is based on mark to mark comparison and
any added matter is of no consequence and by using identical/similar marks,
Plaintiff is infringing Defendant’s WHISTLER mark for identical product.
30. Apart from infringing the registered mark of the Defendant, Plaintiff
is also violating the common law rights by misrepresenting that its product
has an association with the Defendant, so as to encash on the reputation,
amounting to passing off. Brazen misrepresentation is likely to cause
deception amongst members of public and Defendant will suffer irreparable
harm to its reputation. In fact, curiously, the case of the Plaintiff is self-
contradictory inasmuch as it approached this Court alleging confusion and
hence passing off by the Defendant but in Defendant’s suit for infringement,
it has taken a diametrically opposite stand that owing to distinct brands of
whiskey and price variation, there can be no confusion. A party cannot
approbate and reprobate at the same time.
31. In response to a suit for infringement, the only defence that a party
can have is either a registration in India or a defence Section 34 of 1999 Act.
Admittedly, Plaintiff does not have registration in India and is unable to
demonstrate a case of prior, continuous use i.e., prior to either the date of
application of the Plaintiff for registration i.e., 03.04.2008 or prior to launch
i.e., in April, 2018. One can also claim a right by a spillover reputation into
India as held by the Supreme Court in Toyota Jidosha Kabushiki Kaisha v.
Prius Auto Industries Limited and Others, (2018) 2 SCC 1 , however, in the
present case, Plaintiff has miserably failed in establishing significant
spillover reputation through documents despite being offered multiple
opportunities. The only desperate argument made by the Plaintiff is that the
requirement of proving spillover reputation as determined in Toyota Jidosha
(supra) will not apply to products pertaining to alcohol industry. This
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position is wholly untenable in law and there is no carve out by the Supreme
Court in the said judgment for any particular category of product.
32. Plaintiff has failed to establish spillage of transborder reputation/
goodwill in India. Apart from there being no actual sales shown in India, the
documents showcased by the Plaintiff pertaining to some advertisements,
emails, publications, awards, social media presence etc., do not even
remotely show that its goodwill has spilled into India. Documents No. 2-9
filed by the Plaintiff are trademark registrations in other countries but not in
India and hence do not entitle protection for the mark WHISTLER in India.
Documents No. 10-14 are the domain names containing the mark
WHISTLER, out of which two websites www.thewhistlerwhiskey.ie and
www.thewhistler.ie are not accessible in India and moreover, even if
accessible, this cannot be equated to market presence to generate the kind of
goodwill required for protecting the mark THE WHISTLER. There is no
material to show how many times, if at all, these websites have been
accessed from India and by how many people. Document No. 11 contains
the alleged financial statements, which do not pertain to ‘Whistler’ products
and do not show any sales in India. Document No. 12 are the invoices of
sales of products bearing the mark WHISTLER but these do not pertain to
India, save and except, one invoice, which shows sales to M/s HS Oberoi
Spirits. The said invoice is a pro forma invoice and is dated 02.05.2025,
which is much later than Defendant’s prior use and registration and
commercial launch of Whistler whiskey.
33. None of the other documents relied upon also aid the Plaintiff.
Document No. 15 are screenshots of Plaintiff’s social media handles, such as
Instagram, LinkedIn, Spotify etc., which do not show any use or spillover
reputation or goodwill in India as no data is provided with respect to
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engagement counts, viewership statistics or liked post statistics in India.
Document No. 16 are journals featuring Defendant’s product bearing the
mark WHISTLER but these documents are much later in origin, for
example, Journal dated 17.08.2021 does not seem to be originating in India
as the prices are not INR; Journal dated 13.01.2021 pertains to US market;
Journal dated 16.05.2025 is listed on Irish website www.retailnews.ie ;
Journal given at page 436 does not indicate price in Indian rupee and there is
nothing to indicate that it is pertaining to India; and Journal dated
22.08.2021 is not for Indian market and similar is the position with Journal
dated October, 2024. The awards relied upon are not from India and in any
event, are much subsequent to Defendant’s commercial launch in 2018.
Likewise, emails which form part of Document No. 18 are of no relevance
for establishing transborder reputation. The older emails do not mention the
Whistler product and the ones which mention the mark are post-2021 and
even these only discuss the prospect of Plaintiff entering India. The lone
document mentioning WHISTLER in 2017 is an email dated 05.05.2017,
which at the highest shows that there was some confidential discussion
between a third party and the Plaintiff for some products. Document No. 28
is an article dated 27.10.2025 and interestingly, it is on the same day that
Plaintiff filed its suit in this Court and was created as a self-serving evidence
for the present litigation. Document No. 29 are excise approvals granted to
M/s HS Oberoi Spirits for selling Whistler in Delhi and Maharashtra and are
dated 08.01.2026 and 09.01.2026 respectively, which are subsequent to the
filing of the suit by the Plaintiff. Document No. 30 are documents issued by
Indian Custom Department for import of Plaintiff’s Whistler products and in
fact, these documents coupled with excise approvals destroy any claim of
the Plaintiff that its goodwill and reputation travelled to Indian market
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before Defendant launched its Whistler whiskey, since Plaintiff had not
imported any goods in India before August, 2025 and there is no sale of
WHISTLER until January, 2026.
34. Defendant is the registered proprietor of the mark WHISTLER in
India in many classes including in Class 33 and the trademark registration
has not been challenged by the Plaintiff. Excise approvals, sale figures,
invoices and other documents filed by the Defendant evidence launch of
Whistler whiskey by the Defendant in 2018 and even till date, Plaintiff has
not even applied for registration of its mark THE WHISTLER in India and
the actual physical products have not entered the Indian market.
35. It is absolutely wrong to contend that only because there is a ban on
advertisements for alcohol, Plaintiff suffers from a limitation to prove the
cross-border reputation. Despite ban on advertisements, there are several
brands which have successfully established reputation in India through other
means such as organising events, sponsorship, actual sales etc. The only
reason for taking this desperate position is because none of the documents
filed by the Plaintiff on record establish spillover reputation prior to 2018
and the sole document, which relates to this period does not reflect spillover
reputation since it shows that the party which reached out to the Plaintiff
came to know of it through a fair in Germany. In Toyota Jidosha (supra) ,
the Supreme Court elucidated the parameters required to establish spillover
of transborder reputation and the Division Bench of this Court in Sumit
Vijay and Another v. Major League Baseball Properties Inc. and Another,
2026 SCC OnLine Del 2 , applied these principles and set aside the
impugned judgment holding that Respondent held no valid registration in
the BLUE JAYS mark on the day Appellant applied for registration of the
said mark and acquisition of global reputation was irrelevant, unless the
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same percolated into India and that sans any substantial sales of
merchandise bearing the mark in India, mere accessibility of websites on
which Respondent’s mark figured or merchandise was available, would not
make out even a prima facie case of goodwill or reputation.
36. The argument of the Plaintiff that there is no likelihood of confusion
since the rival products are different kind of whiskies as also that nature of
consumers are different has no merit. Both parties admittedly deal in
whiskey and therefore, trade channels and consumer base are common and
rival goods are identical. Alcoholic beverage industry operates on a hand-in-
hand-out model, where products are displayed together at retail counters,
served across bars and ordered orally. In such an environment, verbal
ordering, phonetic identity and brand recall play a decisive role rather than
product differentiation and any co-existence will defeat the statutory and
common law rights of the Defendant in the trademark WHISTLER.
Moreover, Plaintiff itself has pleaded in CS (COMM) 1164/2025 that if
competing products are allowed to be sold in the market, confusion is bound
to occur. There is also no merit in the alternate argument that as an interim
measure, Plaintiff be permitted to sell its existing stock worth Rs. 70 lakhs.
On the date of institution of the suit by the Plaintiff on 23.12.2025, it did not
possess the requisite excise approvals to sell the goods in India, which were
granted subsequently and hence, no equities can be claimed. Any permission
to sell will infringe Defendant’s statutory rights and will be counter-
productive to its reputation.
37. Plaintiff has relied on several judgments in support of its case, but
none of them come to its rescue. In White Horse (supra) , there is no
discussion on transborder reputation. Court found the competing marks to be
dissimilar and there was delay in approaching the Court. In the instant case,
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rival marks and goods are identical. In Asia Pacific (supra) , Plaintiff, which
was a foreign based company, had failed to establish transborder reputation
in India despite producing invoices evidencing sale in India and does not
help the Plaintiff herein. In Radico Khaitan (supra) , the competing marks
‘8PM’ and ‘Palone 8’ were held to be dissimilar and it was observed that
prominent feature of the mark i.e., numeral ‘8’ was non-distinctive and
several third parties had used the numeral in relation to alcoholic beverages
and moreover, the competing products were whiskey and beer.
38. Judgment in Real House (supra) is distinguishable as the competing
marks were REAL and RICARD, which were clearly dissimilar and the case
was primarily based on alleged similarity in label/packaging. In GUFIC Ltd.
(supra) , competing marks were Clinique vs Skinclinique and this judgment
reinforces the anti-dissection rule for comparing two competing marks. The
judgment of the Supreme Court in S. Syed Mohideen (supra) , in fact,
supports the Defendant inasmuch as it holds that a prior user has superior
rights over a registered proprietor. In the instant case, Defendant is the prior
user as also prior registered owner of WHISTLER in India. The judgment
also lays down that passing off is a common law right which protects
goodwill and in the instant case, Plaintiff is unable to show any goodwill in
WHISTLER in India. Judgment of the Supreme Court in Neon Laboratories
(supra), lays down the ‘first in the market’ test, which the Defendant herein
satisfies and not the Plaintiff. In Milmet Oftho (supra) , the Supreme Court
has re-affirmed the necessity of establishing transborder reputation as earlier
held in the case of N.R. Dongre (supra) . The Supreme Court also factored
the peculiar nature of pharmaceutical products, where reputation may be
established through literature and advertisement. The law on transborder
reputation is authoritatively settled by the Supreme Court in Toyota Jidosha
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(supra) and Plaintiff has failed to meet the threshold. Similar is the position
with the judgment of this Court in MAC Personal Care (supra) . In Shree
Nath Heritage (supra) , the mark ‘Collector’s Choice’ was held to be
deceptively similar to the mark ‘Officer’s Choice’ and the fact that
advertisement for alcoholic products is banned in India had weighed in
favour of the Respondent. The judgment in Pernod Ricard (supra) , recently
passed by the Supreme Court does not help the Plaintiff as the competing
marks were ‘LONDON PRIDE’ and ‘BLENDERS PRIDE’, which were
held to be dissimilar and the word ‘PRIDE’ was held to be laudatory.
39. Heard learned Senior Counsels for the parties and examined their rival
submissions.
40. CS (COMM) 1164/2025 has been filed by the Plaintiff asserting rights
in the trademarks WHISTLER and THE WHISTLER and alleging passing
off by the Defendant by selling its IMFL Whiskey using the mark
WHISTLER. Indisputably, Plaintiff’s mark WHISTLER was adopted by the
Plaintiff in 2005 and the earliest registration was also in 2005 in United
Kingdom in Class 33 and THE WHISTLER was registered on 29.10.2020 in
the Russian Federation in the same class, with adoption and user since 2016.
Plaintiff has secured registrations in other parts of the world in the marks in
Class 33, details of which have been given in the earlier part of the judgment
but the marks are not registered in India. Setting up a case of immense
global reputation and the same transcending into India, Plaintiff filed the suit
alleging that Defendant was unlawfully using the mark WHISTLER and
passing off its IMFL whiskey encashing on the reputation and goodwill of
the Plaintiff. Defendant asseverates that it had registered the mark
WHISTLER in 2008 and the product thereunder was commercially launched
in 2018 and till then Plaintiff had no sales in India to establish any goodwill
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and reputation in India and global goodwill had not spilled over to make out
a case of passing off.
41. It needs no reiteration that in the absence of registration in India,
Plaintiff cannot assert any statutory rights in the marks and consequently, it
cannot allege infringement of the marks WHISTLER/THE WHISTLER
against the Defendant and also for the reason that Defendant is the registered
proprietor of the mark WHISTLER since 03.04.2008. Law is fairly well
settled that one registered proprietor cannot sue the other registered
proprietor for infringement in respect of goods/services for which the marks
are registered. In S. Syed Mohideen (supra), the Supreme Court held that
the rights of two registered proprietors of identical or nearly resembling
marks shall not be enforced against each other as provided in Section 28(3)
of 1999 Act albeit the rights of passing off will remain unaffected due to
overriding effect of Section 27(2). Conscious of this position of law,
Plaintiff predicates its case for injunction on common law rights alleging
passing off.
42. Section 34 of 1999 Act provides that nothing in the said Act shall
entitle the registered proprietor or user to interfere with the rights of a prior
user. It is settled that rights of a prior user generating a goodwill are superior
to one holding registration. In N.R. Dongre (supra), it was held that
registration is not an indefeasible right and is subject to rights of a prior user.
In S. Syed Mohideen (supra), also it was held that conjoint reading of
Sections 27, 28 and 34 shows that prior user’s rights are superior to those
arising from registration and even traditionally, passing off in common law
is considered to be a right for protection of goodwill in the business against
misrepresentation caused in course of trade and resultant damage on account
of the same. Thus the passing off action is essentially an action in deceit
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where the common law rule is that no person is entitled to carry on his or her
business on pretext that the said business is that of another. Passing off
action is thus embedded in generating a goodwill by use of the mark in
course of business and the right to protect the same. The three ingredients of
passing off are: (a) goodwill; (b) misrepresentation; and (c) damage to
goodwill. These ingredients are considered to be the classical trinity under
the law of passing off as per the speech of Lord Oliver laid down in Reckitt
& Colman Products Ltd. v. Borden Inc & Ors, MANU/UKHL/0012/1990.
Thus, the action of passing off is essentially an action in deceit and is meant
to prevent mischief where one carries on business by misrepresentation and
encashing on someone else’s goodwill and the Supreme Court has given its
imprimatur to this common law principle in Laxmikant V. Patel v.
Chetanbhai Shah and Another, (2002) 3 SCC 65 . The other reason is that
registration merely recognises the rights that are already pre-existing in
common law and does not create any new rights.
43. The moot question that arises for consideration is whether the Plaintiff
has made out a prima facie case of passing off against the Defendant.
Plaintiff claims that it has extensive goodwill and reputation globally and
had set foot in the Indian market well before the launch of its product by the
Defendant in 2018 and the immense transborder goodwill and reputation has
spilled over to India. Defendant strenuously refutes this position and urges
that Plaintiff has no reputation and goodwill in India as it has never sold its
Irish whiskey in India under the Whistler marks and there is no material on
record to show spillover of transborder reputation.
44. Before finding an answer to this question, it is both essential and
relevant to look at the law on the subject. The celebrated judgment of the
Supreme Court on transborder reputation is N.R. Dongre (supra), where
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Whirlpool Corporation had sued N.R. Dongre for manufacturing and selling
washing machines under the trademark WHIRLPOOL, alleging confusion
amongst the buyers on the ground that they were being misled into believing
that washing machines were being sold by the Whirlpool. The Supreme
Court upheld the decision of the Division Bench of this Court injuncting
N.R. Dongre on the ground that Whirlpool although located outside India
had the necessary transborder reputation which had spilled into India. In
2004, the Supreme Court applied the ‘first-in-the-market’ test in Milmet
Oftho (supra). In 2018, the Supreme Court authoritatively pronounced the
judgment in Toyota Jidosha (supra), which reflected a paradigm shift from
the universality doctrine to the territoriality principle which means that
existence of goodwill and reputation must be shown to exist in India and
global goodwill and reputation, sans any evidence of territorial goodwill and
reputation will not be enough to succeed in a claim of passing off and
therefore, the yardstick to determine a claim of passing off will be ‘prior
user’ in India. Relevant paragraphs of the judgment are as follows:-
“28. Whether a trade mark is to be governed by the territoriality
principle or by universality doctrine? Prof. Cristopher Wadlow in his
book The Law of Passing-Off [The Law of Passing-Off 5th Edn., Sweet
& Maxwell, 1990] has analysed the problem and its possible resolution
in the following words:
“in the worst case, an international company seeking to expand
into a new territory may find itself blocked by a small business
already trading under the same name or style, perhaps on a
minuscule scale; and perhaps having been set up for the very same
purpose of blocking anticipated expansion by the claimant or
being bought out for a large sum. On the other hand, a rule of law
dealing with this situation has to avoid the opposite scenario of
bona fide domestic traders finding themselves open to litigation at
the suit of unknown or barely-known claimants from almost
anywhere in the world. Some of the more radical proposals for
changing the law to assist foreign claimants ignore the need for
this balancing exercise, without which the opportunities for abuse
are simply increased, and further uncertainty created.”
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29. The view of the courts in UK can be found in the decision of the UK
Supreme Court in Starbucks (HK) Ltd. v. British Sky Broadcasting
Group [Starbucks (HK) Ltd. v. British Sky Broadcasting Group, (2015)
1 WLR 2628 : 2015 UKSC 31] wherein Lord Neuberger observed as
follows: (WLR p. 2643 E-G, para 52)
“52. As to what amounts to a sufficient business to amount to
goodwill, it seems clear that mere reputation is not enough…. The
claimant must show that it has a significant goodwill, in the form
of customers, in the jurisdiction, but it is not necessary that the
claimant actually has an establishment or office in this country. In
order to establish goodwill, the claimant must have customers
within the jurisdiction, as opposed to people in the jurisdiction
who happen to be customers elsewhere. Thus, where the claimant's
business is carried on abroad, it is not enough for a claimant to
show that there are people in this jurisdiction who happen to be its
customers when they are abroad. However, it could be enough if
the claimant could show that there were people in this jurisdiction
who, by booking with, or purchasing from, an entity in this
country, obtained the right to receive the claimant's service
abroad. And, in such a case, the entity need not be a part or
branch of the claimant: it can be someone acting for or on behalf
of the claimant.”
xxx xxx xxx
32. Prof. Cristopher Wadlow's view on the subject appears to be that the
test of whether a foreign claimant may succeed in a passing-off action is
whether his business has a goodwill in a particular jurisdiction, which
criterion is broader than the “obsolete” test of whether a claimant has a
business/place of business in that jurisdiction. If there are customers for
the claimant's products in that jurisdiction, then the claimant stands in
the same position as a domestic trader.
33. The overwhelming judicial and academic opinion all over the globe,
therefore, seems to be in favour of the territoriality principle. We do not
see why the same should not apply to this country.
34. To give effect to the territoriality principle, the courts must
necessarily have to determine if there has been a spillover of the
reputation and goodwill of the mark used by the claimant who has
brought the passing-off action. In the course of such determination it
may be necessary to seek and ascertain the existence of not necessarily a
real market but the presence of the claimant through its mark within a
particular territorial jurisdiction in a more subtle form which can best
be manifested by the following illustrations, though they arise from
decisions of courts which may not be final in that particular jurisdiction.
35. In LA Societe Anonyme Des Anciens Etablissements
Panhard v. Panhard Levassor Motor Co. Ltd. [LA Societe Anonyme Des
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Anciens Etablissements Panhard v. Panhard Levassor Motor Co. Ltd.,
(1901) 2 Ch 513] , the plaintiffs were French car manufacturers who
had consciously decided to not launch their cars in England
(apprehending patent infringement). Nevertheless, some individuals had
got them imported to England. It was seen that England was one of the
plaintiff's markets and thus, in this case, permanent injunction was
granted. Similarly in Grant v. Levitt [Grant v. Levitt, (1901) 18 RPC
361] , a Liverpool business concern trading as the Globe Furnishing
Company, obtained an injunction against the use of the same name in
Dublin as it was observed that advertisements by the plaintiff had
reached Ireland and there were Irish customers.
36. C&A Modes v. C&A (Waterford) Ltd. [C&A Modes v. C&A
(Waterford) Ltd., 1976 IR 198 (Irish)] , was a case where the plaintiffs
operated a chain of clothes stores throughout the UK and even in
Northern Ireland but not in the Republic of Ireland where the defendants
were trading. The Court held that,
“a very substantial and regular custom from the Republic of
Ireland was enjoyed by this store. Up to that time an excursion
train travelled each Thursday from Dublin to Belfast, and so great
was the influx of customers from the Republic as a result of that
excursion that the store ordinarily employed extra part-time staff
on Thursday on the same basis as it did on Saturday which were
normally the busiest shopping days.”
The said view has since been upheld by the Irish Supreme Court.
37. Whether the second principle evolved under the trinity test i.e. triple
identity test laid down in Reckitt & Colman Ltd. [Reckitt & Colman
Products Ltd. v. Borden Inc., (1990) 1 WLR 491 : (1990) 1 All ER 873
(HL)] would stand established on the test of likelihood of confusion or
real/actual confusion is another question that seems to have arisen in
the present case as the Division Bench of the High Court has taken the
view that the first test i.e. likelihood of confusion is required to be
satisfied only in quia timet actions and actual confusion will have to be
proved when the suit or claim is being adjudicated finally as by then a
considerable period of time following the initiation of the action of
passing-off might have elapsed. Once the claimant who has brought the
action of passing-off establishes his goodwill in the jurisdiction in which
he claims that the defendants are trying to pass off their goods under the
brand name of the claimant's goods, the burden of establishing actual
confusion as distinguished from possibility thereof ought not to be
fastened on the claimant. The possibility or likelihood of confusion is
capable of being demonstrated with reference to the particulars of the
mark or marks, as may be, and the circumstances surrounding the
manner of sale/marketing of the goods by the defendants and such other
relevant facts. Proof of actual confusion, on the other hand, would
require the claimant to bring before the Court evidence which may not
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be easily forthcoming and directly available to the claimant. In a given
situation, there may be no complaints made to the claimant that goods
marketed by the defendants under the impugned mark had been
inadvertently purchased as that of the plaintiff claimant. The onus of
bringing such proof, as an invariable requirement, would be to cast on
the claimant an onerous burden which may not be justified. Commercial
and business morality which is the foundation of the law of passing-off
should not be allowed to be defeated by imposing such a requirement. In
such a situation, likelihood of confusion would be a surer and better test
of proving an action of passing-off by the defendants. Such a test would
also be consistent with commercial and business morality which the law
of passing-off seeks to achieve. In the last resort, therefore, it is
preponderance of probabilities that must be left to judge the claim.
38. The next exercise would now be the application of the above
principles to the facts of the present case for determination of the
correctness of either of the views arrived at in the two-tier adjudication
performed by the High Court of Delhi. Indeed, the trade mark “Prius”
had undoubtedly acquired a great deal of goodwill in several other
jurisdictions in the world and that too much earlier to the use and
registration of the same by the defendants in India. But if the
territoriality principle is to govern the matter, and we have already held
it should, there must be adequate evidence to show that the plaintiff had
acquired a substantial goodwill for its car under the brand name
“Prius” in the Indian market also. The car itself was introduced in the
Indian market in the year 2009-2010. The advertisements in automobile
magazines, international business magazines; availability of data in
information-disseminating portals like Wikipedia and online Britannica
Dictionary and the information on the internet, even if accepted, will not
be a safe basis to hold the existence of the necessary goodwill and
reputation of the product in the Indian market at the relevant point of
time, particularly having regard to the limited online exposure at that
point of time i.e. in the year 2001. The news items relating to the
launching of the product in Japan isolatedly and singularly in The
Economic Times (issues dated 27-3-1997 and 15-12-1997) also do not
firmly establish the acquisition and existence of goodwill and reputation
of the brand name in the Indian market. Coupled with the above, the
evidence of the plaintiff's witnesses themselves would be suggestive of a
very limited sale of the product in the Indian market and virtually the
absence of any advertisement of the product in India prior to April 2001.
This, in turn, would show either lack of goodwill in the domestic market
or lack of knowledge and information of the product amongst a
significant section of the Indian population. While it may be correct that
the population to whom such knowledge or information of the product
should be available would be the section of the public dealing with the
product as distinguished from the general population, even proof of such
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knowledge and information within the limited segment of the population
is not prominent.
39. All these should lead to us to eventually agree with the conclusion of
the Division Bench of the High Court that the brand name of the car
Prius had not acquired the degree of goodwill, reputation and the
market or popularity in the Indian market so as to vest in the plaintiff
the necessary attributes of the right of a prior user so as to successfully
maintain an action of passing-off even against the registered owner. In
any event the core of the controversy between the parties is really one of
appreciation of the evidence of the parties; an exercise that this Court
would not undoubtedly repeat unless the view taken by the previous
forum is wholly and palpably unacceptable which does not appear to be
so in the present premises.
40. If goodwill or reputation in the particular jurisdiction (in India) is
not established by the plaintiff, no other issue really would need any
further examination to determine the extent of the plaintiff's right in the
action of passing-off that it had brought against the defendants in the
Delhi High Court. Consequently, even if we are to disagree with the
view of the Division Bench of the High Court in accepting the
defendant's version of the origin of the mark “Prius”, the eventual
conclusion of the Division Bench will, nonetheless, have to be sustained.
We cannot help but also to observe that in the present case the plaintiff's
delayed approach to the courts has remained unexplained. Such delay
cannot be allowed to work to the prejudice of the defendants who had
kept on using its registered mark to market its goods during the
inordinately long period of silence maintained by the plaintiff.”

45. In the aforesaid judgement, the Supreme Court held that the
overwhelming judicial and academic opinion globally was in favour of
territoriality principle and to give effect to the said principle, Courts must
necessarily determine if there was a spillover of the reputation and goodwill
of the mark used by the claimant who had brought the passing off action.
Once the claimant establishes his goodwill, the burden of establishing actual
confusion as distinguished from possibility thereof ought not to be fastened
on the claimant. In the said case, the trademark in question was Prius in
which Plaintiff had registration in different countries but not in India, when
the car was released in 2009 and when according to the Plaintiff, it had
discovered that the Defendant had got the mark registered in 2002 for auto
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parts and accessories. Plaintiff approached the Registry of Trade Marks for
cancellation of the mark and also filed a suit claiming passing off. Trial
Court granted ex parte ad interim injunction restraining the Defendants but
later vacated the same. Aggrieved, Plaintiff filed an appeal before the
Division Bench which permitted the Defendants to use the mark subject to
some conditions. After conclusion of the trial, Trial Court ruled that
Defendants were guilty of passing off the goods under the trademark Prius
on the ground that although they had registration in 2002, Plaintiff was the
first user from 1997. Division Bench on appeal took the view that the
injunction was not justified and set aside the order and held that prior use of
the trademark Prius in one jurisdiction would not ipso facto entitle its owner
or user to claim exclusive rights in another dominion and it was necessary
for Plaintiff to establish that its reputation had spilled over to Indian market
prior to April, 2001 i.e., the first date of the use of the mark by the
Defendants in India. The Supreme Court upheld the order of the Division
Bench and held that the Court must determine if there was a spillover of
reputation and goodwill of the mark used by the claimant in the jurisdiction
in which it brings an action for passing off and the appeal was dismissed.
46. Following this judgment, this Court in BPI Sports LLC v. Saurabh
Gulati and Another, (2023) 3 HCC (Del) 164, culled out the following
principles:-
“39. The following principles emerge:
(i) The territoriality principle applies; not the universality
doctrine. Existence of goodwill and reputation has, therefore, to be
shown to exist in India. Universal or worldwide goodwill and
reputation, sans any evidence of territorial goodwill and
reputation, is not sufficient.
(ii) Mere reputation is not enough. The claimant plaintiff must
show that it has significant goodwill.
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(iii) The actual existence of an office of the plaintiff in the country
of the defendant is not necessary.
(iv) However, the claimant must have customers within the country
of the defendant, as opposed to persons in the defendant's country
who are customers elsewhere. Thus, where the claimant's business
is carried on abroad, it is not enough for the claimant to show that
there are people in the defendant's country who happen to be its
customers when they are abroad.
(v) However, it would be enough if the claimant could show that
there were people in the defendant's country who, by booking with,
or purchasing from an entity in the defendant's country, obtained
the right to receive the claimant's service abroad. The person from
whom such booking or purchase took place could be the claimant,
or its branch office, or someone acting for or on behalf of the
claimant.
(vi) The claimant must be “present through its mark in the
territorial jurisdiction” of the country of the defendant, though the
existence of a “real market” was not necessary.
(vii) Such presence could, for instance, be shown by extensive
advertisements which had been circulated and seen, or read, in the
country of the defendant.
(viii) Once the existence of transborder reputation and goodwill
was thus established, the claimant was not required, further, to
prove the existence of actual confusion. The likelihood of the
customer of average intelligence and imperfect recollection being
confused, by the use of the impugned mark of the defendant, that
the goods or services of the defendant were those of the claimant-
plaintiff, was sufficient.”

47. Recently, Division Bench of this Court in VIP Industries Limited v.
Carlton Shoes Limited and Another, 2025 SCC OnLine Del 4620, has
again held that existence of goodwill and reputation has to be shown to exist
in India and mere worldwide or global goodwill and reputation will has not
spilled over, will be insufficient to succeed in a claim of passing off. Of
course, mere priority of use in India may not be sufficient to sustain a claim
of passing off unless the Plaintiff is able to establish that prior use that it
seeks to assert has resulted in accumulation of goodwill and reputation in the
market. In the said case, the issue was comparative goodwill of Carlton
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Shoes Limited and VIP in the CARLTON mark in India. The Single Judge
held that for deciding the claim of passing off, existence of goodwill and
reputation in India will have to be assessed and as corollary worldwide and
global goodwill and reputation alone will not suffice. In other words,
Plaintiff will have to establish its presence within the jurisdiction of
Defendant’s country, which can be through advertisement and promotions
and not necessarily by real market but with a rider that the spillage is so
considerable as to confuse or deceive a customer into believing that the
goods of the Defendant are those of the Plaintiff and therefore, both VIP and
Carlton will have to establish their existence through their marks in India
applying the territoriality principle. From the material on record, Court
found that VIP’s predecessor had no existence in the Indian market till 2004,
when VIP acquired the trademark rights and consequentially, the goodwill
albeit there were some advertisements or price lists but there was no
supporting material to show their awareness amongst customers in India or
to evidence sales. Court prima facie concluded that none of the documents
evidenced user of the mark CARLTON by VIP prior to the user by Carlton,
which, on the other hand, was able to establish that it was first in the Indian
market in respect of bags and allied goods under Class 18 sold under the
trademark CARLTON and was thus a prior user. Carlton established the
enviable exposure of its bags under the mark CARLTON from several
documents on record. Accordingly, the Court granted injunction to Carlton
against VIP holding that prima facie VIP failed to establish spillover of
transborder reputation in India prior to Carlton and stepped into the market
under the mark CARLTON well after Carlton and knowing the presence and
existence of Carlton in bags in India, adopted phonetically identical and
visually similar trademarks for similar goods leading to likelihood of
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confusion amongst unwary purchasers that bags were in fact sold by
Carlton. Upholding the decision, the Division Bench held as follows:-
“E. Trans-border reputation
115. Insofar as the aspect of trans-border reputation is concerned, Mr
Sibal did not seriously question the correctness of the legal principles
employed by the learned Single Judge in that regard. His submission is
that, in employing the principles to the facts of the present case, the
learned Single Judge has erred.
116. The principle of trans-border reputation, in a passing off action,
now stands authoritatively delineated by the following passages
from Toyota Jidosha Kabushiki Kaisha case [Toyota Jidosha Kabushiki
Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1 : (2018) 1 SCC
(Civ) 567] , on which the learned Single Judge has correctly placed
reliance: (SCC pp. 17-19, paras 29-37)
“29. The view of the courts in UK can be found in the decision of
the UK Supreme Court in Starbucks (HK) Ltd. v. British Sky
Broadcasting Group [Starbucks (HK) Ltd. v. British Sky
Broadcasting Group, (2015) 1 WLR 2628] , wherein Lord
Neuberger observed as follows: (WLR p. 2643, para 52)
‘52. As to what amounts to a sufficient business to amount to
goodwill, it seems clear that mere reputation is not
enough,… The claimant must show that it has a significant
goodwill, in the form of customers, in the jurisdiction, but it is
not necessary that the claimant actually has an establishment
or office in this country. In order to establish goodwill, the
claimant must have customers within the jurisdiction, as
opposed to people in the jurisdiction who happen to be
customers elsewhere. Thus, where the claimant's business is
carried on abroad, it is not enough for a claimant to show that
there are people in this jurisdiction who happen to be its
customers when they are abroad. However, it could be enough
if the claimant could show that there were people in this
jurisdiction who, by booking with, or purchasing from, an
entity in this country, obtained the right to receive the
claimant's service abroad. And, in such a case, the entity need
not be a part or branch of the claimant: it can be someone
acting for or on behalf of the claimant.’
30. It seems that in Starbucks (HK) Ltd. v. British Sky
Broadcasting Group [Starbucks (HK) Ltd. v. British Sky
Broadcasting Group, (2015) 1 WLR 2628] , the Supreme Court of
UK had really refined and reiterated an earlier view in Athletes'
Foot Mktg. Associates Inc. v. Cobra Sports Ltd. [Athletes' Foot
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Mktg. Associates Inc. v. Cobra Sports Ltd., 1980 RPC 343] to the
following effect:
‘… no trader can complain of passing off as against him in any
territory … in which he has no customers, nobody who is in
trade relation with him. This will normally shortly be
expressed by stating that he does not carry on any trade in that
particular country … but the inwardness of it will be that he
has no customers in that country….’
31. A passing reference to a similar view of the Federal Court of
Australia in Taco Bell v. Taco Co. of Australia [Taco Bell v. Taco
Co. of Australia, (1981) 60 FLR 60] , may also be made.
32. Prof Cristopher Wadlow's view on the subject appears to be
that the test of whether a foreign claimant may succeed in a
passing-off action is whether his business has a goodwill in a
particular jurisdiction, which criterion is broader than the
“obsolete” test of whether a claimant has a business/place of
business in that jurisdiction. If there are customers for the
claimant's products in that jurisdiction, then the claimant stands in
the same position as a domestic trader.
33. The overwhelming judicial and academic opinion all over the
globe, therefore, seems to be in favour of the territoriality
principle. We do not see why the same should not apply to this
country.
34. To give effect to the territoriality principle, the courts must
necessarily have to determine if there has been a spillover of the
reputation and goodwill of the mark used by the claimant who has
brought the passing-off action. In the course of such
determination it may be necessary to seek and ascertain the
existence of not necessarily a real market but the presence of the
claimant through its mark within a particular territorial
jurisdiction in a more subtle form which can best be manifested by
the following illustrations, though they arise from decisions of
courts which may not be final in that particular jurisdiction.
35. In LA Société Anonyme Des Anciens Établissements Panhard
Et Levassor v. Panhard Levassor Motor Co. Ltd. [LA Société
Anonyme Des Anciens Établissements Panhard Et Levassor v.
Panhard Levassor Motor Co. Ltd., [1901] 2 Ch. 513] , the
plaintiffs were French car manufacturers who had consciously
decided to not launch their cars in England (apprehending patent
infringement). Nevertheless, some individuals had got them
imported to England. It was seen that England was one of the
plaintiff's markets and thus, in this case, permanent injunction was
granted. Similarly, in Grant v. Levitt [Grant v. Levitt, (1901) 18
RPC 361] , a Liverpool business concern trading as the Globe
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Furnishing Company, obtained an injunction against the use of the
same name in Dublin as it was observed that advertisements by the
plaintiff had reached Ireland and there were Irish customers.
36.C&A Modes v. C&A (Waterford) Ltd. [C&A Modes v. C&A
(Waterford) Ltd., 1976 IR 198 (Irish)] was a case where the
plaintiffs operated a chain of clothes stores throughout the UK and
even in Northern Ireland but not in the Republic of Ireland where
the defendants were trading. The court held that:
‘a very substantial and regular custom from the Republic of
Ireland was enjoyed by this store. Up to that time an excursion
train travelled each Thursday from Dublin to Belfast, and so
great was the influx of customers from the Republic as a result
of that excursion that the store ordinarily employed extra part-
time staff on Thursday on the same basis as it did on Saturday
which were normally the busiest shopping days.’
The said view has since been upheld by the Irish Supreme Court.
37. Whether the second principle evolved under the trinity test i.e.
triple identity test laid down in Reckitt & Colman Products Ltd.
case [Reckitt & Colman Products Ltd. v. Borden Inc., (1990) 1
WLR 491 : [1990] RPC 341] would stand established on the test of
likelihood of confusion or real/actual confusion is another
question that seems to have arisen in the present case as the
Division Bench of the High Court has taken the view that the first
test i.e. likelihood of confusion is required to be satisfied only in
quia timet actions and actual confusion will have to be proved
when the suit or claim is being adjudicated finally as by then a
considerable period of time following the initiation of the action of
passing off might have elapsed. Once the claimant who has
brought the action of passing off establishes his goodwill in the
jurisdiction in which he claims that the defendants are trying to
pass off their goods under the brand name of the claimant's goods,
the burden of establishing actual confusion as distinguished from
possibility thereof ought not to be fastened on the claimant. The
possibility or likelihood of confusion is capable of being
demonstrated with reference to the particulars of the mark or
marks, as may be, and the circumstances surrounding the manner
of sale/marketing of the goods by the defendants and such other
relevant facts. Proof of actual confusion, on the other hand, would
require the claimant to bring before the Court evidence which may
not be easily forthcoming and directly available to the claimant. In
a given situation, there may be no complaints made to the claimant
that goods marketed by the defendants under the impugned mark
had been inadvertently purchased as that of the plaintiff claimant.
The onus of bringing such proof, as an invariable requirement,
would be to cast on the claimant an onerous burden which may not
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be justified. Commercial and business morality which is the
foundation of the law of passing off should not be allowed to be
defeated by imposing such a requirement. In such a situation,
likelihood of confusion would be a surer and better test of proving
an action of passing off by the defendants. Such a test would also
be consistent with commercial and business morality which the law
of passing off seeks to achieve. In the last resort, therefore, it is
preponderance of probabilities that must be left to judge the
claim.”
(emphasis supplied)
117. We have already reproduced, supra, the tests of passing off which
we have found to emerge from a cohesive reading of the various
authorities on the point, in the decision of this Court in FDC case [FDC
Ltd. v. Faraway Foods (P) Ltd., 2021 SCC OnLine Del 1539] . Without
reiterating the said principles, it is clear that, where a plaintiff is
seeking to establish goodwill, in the territory in which it alleges the tort
of passing off to have been committed, on the basis of a mark or name
which is otherwise used outside that territory, it has to show actual
percolation of reputation and goodwill in that mark or name into the
territory in which it alleges passing off to have taken place. While it may
not be necessary for the plaintiff to have an office in that particular
territory or country, it must have customers within such territory. Those
customers must purchase the goods of the plaintiff, or avail the services
of the plaintiff, rendered under such mark or name, when situated within
that territory. It is not enough to show that such customers, when they
proceeded abroad, were customers of the plaintiff. Thus, the plaintiff
must be “present through its mark in the territorial jurisdiction” of the
country of the defendant, even if the existence of a “real market” in that
country is not necessary. This “presence” may be merely by reputation
also, as in a situation in which the mark or name is extensively
advertised in that country.
118. The concept is actually elementary, when one keeps in mind the
basic principle of passing off. Passing off takes place when a defendant,
by using the mark or name of the plaintiff, seeks to pass of his goods, or
services as the goods, or services, of the plaintiff. The issue of trans-
border reputation arises where the plaintiff is situated outside the
territorial jurisdiction in which the defendant is located. Even in such a
case, if the reputation and goodwill which is commanded by the
plaintiff's mark is of such a degree that it has percolated into the
territory of the defendant, and is “well-known” in that territory, the
defendant is still seeking to capitalise on the reputation of the mark or
name. This is because, if consumers within the defendant's territory are
consciously aware of the reputation of the mark or name in question,
even though it is exclusively, or even essentially, used outside the
territory, they may presume, when such mark or name is used by the
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defendant, that the plaintiff has now established a presence in that
territory. When dealing with India, for example, many reputed brands,
and names, which earlier had no presence in India, though they
commanded a global reputation, have now established a presence within
India.
119. One may, for example, consider a mark such as Burger King. Till a
decade or so ago, Burger King had no presence in India. Even so, it had
a global reputation, and many consumers in India, who were fond of
burgers, were aware of the existence of the Burger King franchise. If,
therefore, some adventurous entrepreneur, in India, decided to set up a
Burger King outlet, before Burger King officially established a presence
in this country, it might have amounted to passing off, given the fact that
Burger King had a global reputation, and that reputation had
percolated into India, through promotional material, literature,
advertisements, and the like, even if there was no physical Burger King
outlet within this country. Of course, if Burger King were to bring a
passing off action against such entrepreneur, the onus would be on
Burger King to prove that its global reputation had percolated into
India so that it could be said to enjoy trans-border reputation within this
country.
120. We, therefore, entirely agree with the learned Single Judge that
“the existence of goodwill and reputation has to be shown to exist in
India and worldwide or global goodwill and reputation, sans any
evidence of territorial goodwill and reputation, will be insufficient to
succeed in a claim of passing off and thus yardstick to judge the claim of
passing off will be “prior user” in India”. Of course, mere priority of
user in India may not be sufficient to sustain a claim of passing off
unless the plaintiff ascertaining the claim is able to establish that such
prior user has resulted in accumulation of goodwill and reputation in
the mark that it seeks to assert.
121. These principles, as we have already noted, have not been
questioned by Mr Sibal.
122. Having returned the aforenoted findings on law, the impugned
judgment proceeds to apply these principles to the facts. The learned
Single Judge has, in this context, held that:
(i) neither CSL, nor VIP, was able to make out a case of trans-
border reputation, prior to the commencement of the use, by them,
of the CARLTON mark in India;
(ii) within India, CSL had priority of user, of the CARLTON mark;
and
(iii) CSL had been able to prove, prima facie, existence of
sufficient goodwill and reputation as would justify injuncting VIP
from use of the CARLTON mark in respect of goods covered by
Class 18.
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123. These are pure findings of fact, and are fundamentally
discretionary in nature. The scope of interference, with such findings, in
appeal, has to be circumscribed by the following exordium, contained in
the judgment of the Supreme Court in Wander Ltd. case [Wander
Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727] : (SCC p. 733, para
14)
“14. The appeals before the Division Bench were against the
exercise of discretion by the Single Judge. In such appeals, the
appellate court will not interfere with the exercise of discretion of
the court of first instance and substitute its own discretion except
where the discretion has been shown to have been exercised
arbitrarily, or capriciously or perversely or where the court had
ignored the settled principles of law regulating grant or refusal of
interlocutory injunctions. An appeal against exercise of discretion
is said to be an appeal on principle. Appellate court will not
reassess the material and seek to reach a conclusion different from
the one reached by the court below if the one reached by that court
was reasonably possible on the material. The appellate court
would normally not be justified in interfering with the exercise of
discretion under appeal solely on the ground that if it had
considered the matter at the trial stage it would have come to a
contrary conclusion. If the discretion has been exercised by the
trial court reasonably and in a judicial manner the fact that the
appellate court would have taken a different view may not justify
interference with the trial court's exercise of discretion. After
referring to these principles Gajendragadkar, J. in Printers
(Mysore) (P) Ltd. v. Pothan Joseph [Printers (Mysore) (P)
Ltd. v. Pothan Joseph, 1960 SCC OnLine SC 62] : (SCC OnLine
SC para 9)
‘9. … These principles are well established; but, as has been
observed by Viscount Simon L.C. in Charles Osenton &
Co. v. Johnston [Charles Osenton & Co. v. Johnston, 1942 AC
130] “the law as to the reversal by a Court of Appeal of an
order made by a Judge below in the exercise of his discretion is
well established, and any difficulty that arises is due only to the
application of well settled principles in an individual case”.’ ”
We would not, therefore, interfere with the exercise of subjective
discretion, by the learned Single Judge, on issues of fact, unless the
exercise is capricious, perverse, or such as no reasonable man would
undertake on the facts before him.
124. VIP alone is in appeal before us. CSL has not challenged the
impugned judgment, or preferred any cross-objection in VIP's appeal.
As such, we are required to consider the findings of the learned Single
Judge, only insofar as they are adverse to VIP.
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125. The learned Single Judge holds in paras 57 to 61 (reproduced in
para 37 supra) of the impugned judgment [Carlton Shoes Ltd. v. VIP
Industries Ltd., (2023) 6 HCC (Del) 741] , that VIP has not been able to
make out a case of sufficient trans-border reputation, prior to the
commencement of the use, by it, in India, of the CARLTON mark. In so
holding, the learned Single Judge notes that:
(i) there was nothing to indicate that the promotional material,
relied upon by VIP, was extensively and widely published or
circulated in India, so as to result in spillover of the goodwill and
reputation of the CARLTON mark, as used by CIPLC, into India;
(ii) prior to the use, by VIP, of the CARLTON mark for travel
luggage in 2006, there was no material to indicate that any goods
bearing the CARLTON mark, manufactured by VIP or CIPLC, had
a customer base in India;
(iii) nor was there any indication that CIPLC or, prior thereto,
Raxvale, had any presence in India or in the Indian market;
(iv) VIP had referred to certain advertisements and price lists
dating back to the 1980s and 1990s, but there was no material to
show that customers in India were aware of these advertisements
or price lists; and
(v) there were no documents to evidence sales, in India, by CIPLC
or Raxvale, of goods bearing the mark CARLTON, such as
invoices, bills, delivery documents or photographs of stores.
The learned Single Judge observes that the earliest sales invoice placed
on record by VIP, is dated 11-8-2006. She also notes that the invoices of
2006 and 2007 make no observation or reference to CARLTON. Even if
VIP's stand that the AIRTEC Mark was a sub-brand of CARLTON, was
to be accepted, it would indicate goodwill only as of 22-12-2006.
Inasmuch as the use, by CSL, of the CARLTON mark was of 1992-1993
vintage, the learned Single Judge holds that there was no evidence, led
by VIP, to show accumulation of any trans-border reputation or
goodwill, in the CARLTON mark, prior to 1992-1993. Thus, she
concludes, “absence or negligible presence of VIPs goods in question
under the trademark CARLTON in the Indian market space when
Carlton started to occupy the space, defeats VIPs claim of passing off
against Carlton”.
126. We have already set out Mr Sibal's submissions hereinbefore, and
we do not find any submission which would serve to dent these findings
of the learned Single Judge in the impugned judgment [Carlton Shoes
Ltd. v. VIP Industries Ltd., (2023) 6 HCC (Del) 741] .
127. There is, therefore, no factual or legal irregularity or illegality in
the finding of the learned Single Judge, in the impugned judgment
[Carlton Shoes Ltd. v. VIP Industries Ltd., (2023) 6 HCC (Del) 741] ,
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that, prior to 2004, the CARLTON mark, for any goods, as used by VIP,
did not have any reputation or goodwill in India. No case of trans-
border reputation having been earned by the mark, prior thereto, was
forthcoming.
F. Priority of user, and goodwill, established by CSL
128. As against this, the impugned judgment [Carlton Shoes Ltd. v.
VIP Industries Ltd., (2023) 6 HCC (Del) 741] holds, in para 62
(reproduced in para 37), that CSL had placed material on record to
indicate accumulation of goodwill of the CARLTON mark, as used
by it in India, prior to the commencement of user of the CARLTON
mark by VIP in 2006. The learned Single Judge refers, in this context,
to:
(i) sale invoices of the years 2003 to 2005 along with the list
of 24 outlets of CSL, across Delhi, Gurgaon, Noida and
Chandigarh;
(ii) certificates of sales figures of the revenue earned by use, by
CSL, of the CARLTON mark in India during the period 1993 to
2018;
(iii) articles extensively figuring in high-profile magazines
and newspapers widely published and circulated in India
such as Cosmopolitan, Femina, Fashion Bloom, Apparel, Society,
Outlook, The Tribune, The Pioneer, HT City, Business Standard,
The Hindu, etc, dating back to March 2004;
(iv) presence on various e-commerce platforms;
(v) VAT registrations dating back to 1993; and
(vi) master data of production under the CARLTON marks by CSL
from 2003.
129. In response thereto, Mr Sibal submits that the material, to which
the impugned judgment [Carlton Shoes Ltd. v. VIP Industries
Ltd., (2023) 6 HCC (Del) 741] alludes in para 62, reference the use of
the CARLTON mark, by CSL, for footwear or, at the best, handbags and
purses, which were not allied, cognate or similar to travel luggage. The
submission would apply, equally, to the master data, in which Mr Sibal
submits that there is a sole entry pertaining to luggage, which, too, is of
Chinese origin and is of 2010.
130. In view of our finding, earlier in this judgment, that the goodwill
that is required to be established in order to sustain a claim of passing
off is goodwill in the mark, and not goodwill in the mark as used for any
particular goods or services, the submission of Mr Sibal must, of
necessity, fail. Even if CSL had established goodwill, in respect of the
CARLTON mark, for footwear, that by itself would suffice to maintain a
plea for injunction against VIP using the CARLTON mark, even if it was
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for travel luggage.
131. We, moreover, are not in agreement with Mr Sibal that handbags
and purses are not allied and cognate, or similar goods, vis-à-vis travel
luggage. There is no real basis for this submission, except Mr Sibal's
insistence that handbags and purses are fashion accessories. To our
mind, handbags and purses are also receptacles in which persons carry
items for use by them, though on a much smaller scale than travel
luggage. Not everyone, it is obvious, uses a handbag as a fashion
accessory, nor are all handbags, for that matter, capable of, or even
meant for, such use. At least at a prima facie stage, keeping in mind the
circumspection which the judgment of the Supreme Court in Wander
Ltd. case [Wander Ltd. v. Antox India (P) Ltd., 1990 Supp SCC 727]
requires us to maintain while sitting in appeal, we certainly cannot set
aside the judgment of the learned Single Judge by accepting Mr
Sibal's contention that handbags and purses are not allied and cognate
to luggage. Even on merits, the submission appears to be highly
debatable.
132. The finding of CSL having proved the existence of goodwill and
reputation of the CARLTON mark, as used by it for more than 13 years
prior to the commencement of user of the CARLTON mark by VIP for
travel luggage, therefore, does not brook interference.
G. Balance of convenience
133. The learned Single Judge has also examined whether the balance of
convenience lies, in the present case. She notes that CARLTON is the
house mark of CSL, and is the only mark used by it. As against this, VIP
has at least six marks other than CARLTON, which it uses. Keeping in
mind the reputation that the CARLTON mark, as used by CSL, has
earned since 1993 even in India, the learned Single Judge holds that the
balance of convenience was in favour of grant of injunction, to CSL,
against VIP, restraining VIP from using the CARLTON mark for goods
which fall in Class 18, pending disposal of the suit.
134. On facts, these findings are not disputed by Mr Sibal. His
contention is that the balance of convenience was in favour of VIP,
rather than CSL, as VIP had, to its credit, 13 years' accumulated
goodwill and reputation, from 2006 to 2019, before the cross-suits were
filed by VIP and CSL against each other. Mr Sibal repeatedly
emphasised that the incongruous consequence of the impugned
judgment is that CSL, which never used the CARLTON mark for
luggage, has now been permitted to do so, while VIP, which was using
the mark for 13 years, for travel luggage, even prior to institution of the
suit by CSL, has been restrained from further doing so.
135. Insofar as the last submission of Mr Sibal is concerned, the
restraint that the learned Single Judge has placed on Mr Sibal is but a
legal consequence of her finding that VIP is guilty of passing off its
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product as the product of CSL, by using an identical CARLTON mark.
Though Mr Sibal submits that the use was innocent, as CSL was never
using the CARLTON mark for travel luggage, we are not inclined to
interfere with the opinion, expressed by the learned Single Judge in the
impugned judgment [Carlton Shoes Ltd. v. VIP Industries Ltd., (2023) 6
HCC (Del) 741] , that it was not. We are in agreement with the learned
Single Judge that it would be hard to believe that VIP was unaware of
the prior existence of the CARLTON mark, in India, as used by CSL
since 1993. The CARLTON mark in fact stands registered, under the
Trade Marks Act, for Class 18 goods, in favour of CSL, since 1986.
CARLTON is not a word of ordinary usage, or one which would readily
come to the mind of a manufacturer of travel luggage. If, therefore, the
learned Single Judge has come to a conscious and subjective finding
that the adoption of the CARLTON mark, by VIP, for travel luggage in
2006, was not innocent but deliberate, we do not find that any case to
interfere with that finding, within the peripheries of the appellate
jurisdiction which vests in us, exists.
136. While, therefore, adopting the CARLTON mark for travel luggage,
VIP undertook, upon itself, the risk of suffering an injunction at a later
point of time. It cannot, therefore, complain, now that an injunction has
been granted.
137. We, therefore, are unable to accept Mr Sibal's submission that the
balance of convenience, insofar as grant of injunction is concerned, was
not in favour of CSL. We sustain the findings of the learned Single Judge
in that regard.
xxx xxx xxx
Conclusion
140. No case is, therefore, made out for interference with the impugned
judgment of the learned Single Judge [Carlton Shoes Ltd. v. VIP
Industries Ltd., (2023) 6 HCC (Del) 741] , which is affirmed in its
entirety.”

48. The issue of spillover of transborder reputation also came up before
the Division Bench in Sumit Vijay (supra), albeit in the context of
rectification of a mark in the Register of Trade Marks under Section 57(2) of
1999 Act. The judgment arose from the decision of the learned Single Judge
striking of the mark BLUE JAYS from the Register of Trade Marks, in a
petition filed by the Respondents seeking rectification, claiming priority in
adoption, long continuous and uninterrupted use worldwide and spillover of
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global reputation of the mark into India. Appellants before the Division
Bench contended that at best, the mark BLUE JAYS was used by the
Respondents in US and Canada and there was no evidence of spillover of
transborder reputation in India. Agreeing with the Appellants, the Division
Bench allowed the appeal and setting aside the order striking the mark, held
as follows:-
“12.8. Re: trans-border goodwill and reputation
12.8.1. The learned Single Judge has, in paragraph 26 of the impugned
judgment, observed, firstly, that the respondent's trademark BLUE JAYS
has a worldwide presence since its adoption in 1976, and, secondly, that
the consistent use of the BLUE JAYS mark on the uniforms of the TBJ
club, as well as on goods and services associated with the club, had
resulted in the BLUE JAYS mark acquiring “substantial, irrefutable and
insurmountable” global goodwill and reputation.
12.8.2. Acquisition of global goodwill and reputation is entirely
irrelevant, while examining an allegation of passing off. It is goodwill
and reputation in India that matters. The Court has to assess whether
the “global” goodwill, assuming it exists, has percolated into India.
Before arriving at any finding that the BLUE-JAY mark could be
cancelled under Section 11(3)(a), therefore, the Court would have to
satisfy itself that respondent's BLUE JAYS mark enjoyed goodwill, not
merely globally, but also within India, before August 1998 when the
appellants adopted the BLUE-JAY mark.
12.8.3. The impugned judgment does not, in fact, return any specific
finding to the effect that the respondent's BLUE JAYS mark enjoyed any
goodwill or reputation in India. In paragraph 26, after first observing
that the mark had global goodwill and reputation, the learned Single
Judge has proceeded to hold that (i) the applications, by the respondent,
for registration of the BLUE JAYS trademark in India prior to adoption
of the BLUE-JAY mark by the appellants, (ii) the presence of the
respondent's BLUE JAYS mark on its websites which were accessible in
India since 1996, (iii) the availability of products bearing the BLUE
JAYS mark of the respondent in India since 1996 and (iv) the
broadcasting of the MLB matches in India at least since 1997, were
sufficient to prove “use”, by the respondent, of the BLUE JAYS mark in
India prior to 1998.
12.8.4. We have already found the finding that the respondent was using
the BLUE JAYS mark in India prior to 1998 to be unsustainable. We,
however, proceed to examine whether the factors noted by the learned
Single Judge in paragraph 26 of the impugned judgment, even read
cumulatively with the other material on which the respondent sought to
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rely before the learned Single Judge, as enumerated in para 6.1.3 supra,
would make out a case of trans-border reputation of the BLUE JAYS
mark in India prior to 19 August 1998.
12.8.5. The answer, to our mind, has necessarily to be in the negative.
12.8.6. The law with respect to trans-border reputation and goodwill in
a passing off action are the judgments of the Supreme Court in N.R.
Dongre v. Whirlpool Corporation, Milmet Oftho Industries v. Allergan
Inc and Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd
xxx xxx xxx
12.8.8.4. The following three important features of this decision merit
mention:
(i) Firstly, it is necessary to note that, even in this case, the
Supreme Court upheld the necessity of the existence of trans
border reputation which has spilled over into India as a
prerequisite for grant of relief. Given the peculiar nature of
pharmaceutical products, the Supreme Court held that, by dint of
extensive literature and advertisements, with which doctors were
necessarily conversant, existence of worldwide reputation could be
presumed.
(ii) Secondly, the Supreme Court, even in such a case and with full
consciousness of the overwhelming public interest involved,
deemed it necessary to enter a cautionary caveat, by holding that
“multinational corporations, which have no intention of coming to
India or introducing their product in India should not be allowed
to throttle an Indian company by not permitting it to sell a product
in India, if the Indian company has genuinely adopted the mark
and developed the product and is first in the market”.
(iii) Thirdly, the Supreme Court was also obviously influenced by
the fact that the rival marks were identical, i.e. OCUFLOX. The
case was, therefore, one of clear imitation.
xxx xxx xxx
12.8.9.9. Toyota , thus, holds that facts such as (i) the accessibility of
Toyota's websites in India, (ii) several visits to Toyota's websites by
many Indians seeking information about Prius' products, (iii) exhibitions
of the Prius product in India and other countries, (iv) advertisements
and cover stories in magazines and availability of information regarding
the “Prius” mark and products in various internet portals, even seen
cumulatively, did not make out a case of trans border reputation and
goodwill.
12.8.10. In paragraph 26 of the impugned judgment, however, the
learned Single Judge has practically relied on identical, or even lesser,
material, to hold that use of the BLUE JAYS mark in India by the
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respondent, prior to August 1998, stood established.
xxx xxx xxx
12.8.12. Firstly, there is no presumption that a mark, howsoever wide or
global its reputation might otherwise be, has trans border reputation in
India. Trans border reputation in India has to be positively proved. This
is especially shown in the case of marks which may be associated with
activities which are not popular or well known in India. Invoking this
principle, the appellants have sought to contend that baseball, as a
sport, is not followed in India by any substantial part of the populace.
The respondent's BLUE JAYS mark is exclusively associated with the
TBJ Club, which is a baseball Club located in Canada. Mr. Lall submits
that the mark might, therefore, have considerable goodwill and
reputation in Canada, perhaps in the US and, perhaps, also in other
countries which play baseball or where baseball is a popular sport. In a
country like India, where baseball is not played and is hardly followed,
it is contended by the appellants that the mark of the TBJ Club cannot be
said to have any goodwill or reputation. Baseball, in India, is not
cricket.
12.9. Secondly, the availability of a mark on websites can again be no
indicator of trans-border goodwill or reputation percolating into a
particular country such as India. Websites are globally accessible. If the
principle that accessibility of a mark on a website is to be treated as an
indicator of trans-border reputation, every mark of every entity would
have trans border reputation in every country in the world. It is not
enough, therefore, to aver that a particular mark is available on a
website which is accessible within India, to substantiate a contention
that the mark enjoys trans-border reputation in India. Positive
assertions regarding the number of times the websites has been accessed
in India would have also to be pleaded.
12.10. Similarly, the availability of goods bearing a particular mark, for
sale on websites, whether they belong to the owner of the mark or are e-
commerce websites, can also be no evidence of percolation of the
reputation of the mark into India. As in the case of websites in general,
e-commerce websites may be accessible within India, even if they are
not hosted from within the country. Similarly, there is no necessity that
every product which is available on an e-commerce website commands
reputation or goodwill within India. Mere availability of products
bearing a mark for sale on an e-commerce website, or on the website of
the owner of the mark, would not, however, suffice as proof of trans-
border goodwill or reputation. It would further have to be shown that
orders were actually placed or purchases effected, to a considerable
existent, of the goods bearing the mark, from within India.
12.11. The same principle applies to publication of marks in periodicals,
magazines, etc. With the proliferation of the internet, most magazines,
periodicals and the like are now available globally. Every mark which
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figures in such magazines or periodicals cannot, therefore, be said to
have trans-border reputation within India. There would have to be
positive assertions regarding the readership or subscription of such
magazines among Indians. Besides, such assertions cannot be merely in
the nature of bald statements, but would also have to be supported by
disclosure of the material on which the assertion is made, even if
positive evidence in that regard may be deferred to the stage of trial. In
the case of newspapers or periodicals, empirical material should also be
forthcoming that the newspapers or periodicals are widely circulated in
the country. Offices of professionals often stock magazines, to occupy
the time of that those who are awaiting an appointment. The mere fact
that some of them may be sports magazines does not ipso facto indicate
that every sport, with reference to which an article may be contained in
the magazines, has goodwill or reputation.
12.12. Goodwill and reputation, it has to be remembered, is a two-way
street. One cannot claim to have goodwill and reputation, unless others
feel the same. Thumping one's own chest, and claiming to be famous, is
mere false hope, and nothing more. Goodwill and reputation are
positive attributes, relative to others. The purpose of requiring
establishment of goodwill and reputation, in passing off actions, has to
be remembered. They are not empty incantations. Passing off, in its very
essence, involves misleading the consumer public into believing one's
goods or services, to be those of another. If the other has no goodwill or
reputation, the very raison d’ etre of alleging passing off fails. Why
would one pass off one's goods as those of another, if the other has no
goodwill or reputation? Ergo, questions Mr. Lall, “Why on earth would
my client adopt a mark which belongs to a baseball club based out of
Canada?”
12.13. The submission has weight, and merit.
12.14. We have to examine the issue of whether the material, on which
the respondent has placed reliance to make out a case of trans border
reputation does, or does not, do so, keeping in mind the above
principles.
12.15. Additionally, the Court is also to keep in mind the fact that the
appellants had applied for registration of the BLUE-JAY mark on 19
August 1998. Existence of sufficient goodwill or reputation in the
respondent's BLUE JAYS mark would, therefore, have to be established
as on 19 August 1998, in order to sustain a case of passing off. This
follows from the judgment in Toyota, in which the Supreme Court has
clearly held that a plaintiff can succeed in a claim of passing off against
the defendant only if the plaintiff can establish the existence of sufficient
goodwill or reputation in its mark prior to the adoption of the mark by
the defendant. Material which pertains to any period after 19 August
1998 is, therefore, of no relevance in assessing the existence of goodwill
or reputation, in India, of the respondent's BLUE JAYS mark in the
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present case and cannot, therefore, constitute a basis to strike the
appellants' BLUE-JAY mark off the register in exercise of the power
conferred by Section 11(3)(a) of the Trade Marks Act.
12.16. Thus viewed, there is no material, whatsoever, which can indicate
the existence of any - much less substantial - goodwill or reputation of
the BLUE JAYS mark in India, before August 1998.
12.17. The observations and findings of the learned Single Judge in para
26 of the impugned judgment are clearly contrary to the extant legal
position. The learned Single Judge has returned positive findings of
goodwill, in favour of the BLUE JAYS mark of the respondent, on the
ground that (i) the mark is “used/consistently depicted on the uniform of
the MLB franchise/Club for the city of Toronto as well as on goods and
services associated with the Club”, (ii) the mark had, thereby, acquired
a “substantial, irrefutable and insurmountable reputation and
goodwill globally, (iii) the respondent was the “holder of the trademark
‘BLUE JAYS’ in India under various Class(s), a few of which were
applied well before the respondent nos. 1 and 2 applied for registration
of the impugned mark”, (iv) the respondent had placed “sufficient
material like (a) the presence of ‘BLUE JAYS’ mark on its
websites, which are accessible in India since the year 1996, (b) proof of
its products under the ‘BLUE JAYS’ marks being available in India
since the year 1996 and (c) broadcasting of the MLB matches in India
since the year 1997”.
12.18. We are unable to sustain these findings.
12.19. In the first place, the finding that the respondent was
the holder of the trade mark BLUE JAYS in India under various Classes,
for some of which the respondent had applied well before the appellant
applied for registration of the BLUE-JAY mark, is, with respect,
incorrect. The only two applications filed by the respondent for the
BLUE JAYS mark were in 1983 and 1988, for registering the TORONTO
BLUE JAYS word marks, both of which were abandoned much before
the appellants applied for registering its BLUE-JAY mark. The
respondent was never, therefore, the “holder” of the said marks.
12.20. In fact, in the rejoinder filed before the learned Single Judge, the
respondent has admitted that “at least till 1995”, the respondent owned
one or more valid registration of the BLUE JAYS marks. It is undisputed
that, on 19 August 1998, when Appellant 1 applied for registration of the
BLUE-JAY mark - which the impugned judgment has removed from the
Register - there was no valid registration, held by the respondent, of any
BLUE JAYS mark, in word or device form.
12.21. Secondly, acquisition of global reputation is irrelevant, unless
said reputation has percolated into India.
12.22. Thirdly, merely accessibility of websites, on which the
respondent's mark figured, or availability of merchandise bearing the
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said mark for sale in India, would not make out even a prima facie case
of goodwill or reputation. No reference is made to any transaction of
sale and purchase - except one solitary invoice. Significantly, the
respondent does not seek to contend that goods or merchandise, bearing
the BLUE JAYS mark, was physically available for sale anywhere in
India, or that there is any franchisee, or any brick and mortar store,
which sells the said products.
12.23. The documents on which the respondent places reliance, to make
out a case of goodwill and reputation, too, do not advance its case. To
wit,
(i) Document 12, as filed by the respondent, relates to articles and
photographs available in the Sports Illustrated magazine of 2
November 1999. It cannot, therefore, constitute a basis to plead
existence of goodwill or reputation, of the respondent's BLUE
JAYS mark prior to 19 August 1998.
(ii) Document 25 contains printouts of news and media reports,
around the world, featuring the respondent's BLUE JAYS mark.
The only periodicals cited in these documents are the New York
Times and the Baltimore Sun. There is no material to indicate that
these periodicals had any circulation in India, at any point of time,
much less prior to August 1998.
(iii) Document 27 refers to an article which adverts to the BLUE
JAYS Club. However, the article itself is from a magazine which
was launched only in 2016.
(iv) Document 27 further adverts to references of the BLUE JAYS
Club in the “Friends” sitcom. This, again, is irrelevant as the
“Friends” sitcom was first aired, in India, in 1999.
(v) Document 23 contains printouts from the Wayback Machine
site, and the respondent's website, evidencing international
broadcasts of MLB games in India. Mere reference, in news
articles, of broadcast of MLB games in India, cannot constitute a
basis for asserting trans-border reputation. There is no reference,
in the petition, to the viewership of such games within India.
Moreover, as the appellants point out, the screen shots do not refer
to the TBJ Club but only to baseball in general. It has to be
remembered that the respondent is required to establish the
existence of goodwill and reputation, not in baseball as a sport,
but in the BLUE JAYS trade mark.
(vi) Document 26 contains screen shots from the respondent
websites between 1996 and 1997 showing use of the respondent
BLUE JAYS mark and availability of products bearing the
respondent's BLUE JAYS mark online. As we have already noted,
mere accessibility to websites is no proof of trans-border
reputation. Equally, mere availability of goods online is also no
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evidence in that regard unless there is positive material relating to
sale and purchase of the said goods, to a substantial extent. No
such material is forthcoming.
(vii) Similarly, Document 29 refers to excerpts from the
respondent's website, indicating that the respondent's goods
bearing the BLUE JAYS mark are available for purchase
in India. In the absence of any material indicating actual sale or
purchase, or at least interest, in the Indian consuming public, to
purchase such goods, the mere availability of goods online
cannot constitute positive material to indicate trans-border
reputation.
(viii) Document 13 refers to excerpts from the respondent's website
showing sale of licensed goods bearing the respondent's BLUE
JAYS mark. There is no evidence that any such sale took place in
India or that any consumer from India purchased the products.
The petition does not make any reference to any person or outlet in
India which is licensed to sell goods bearing the respondent BLUE
JAYS mark.
(ix) Document 16 again contains printouts of the respondent
websites evidencing availability of MLB products in India, and
invoices showing shipping of MLB licensed products by the
respondent to India. None of this material pertains to the period
prior to August 1998 and is, therefore, of no significance.
12.24. Given the principles relating to trans-border reputation
elucidated earlier in this judgment, and the law as it emerges from the
decision in Toyota , it is clear that the material cited by the respondent in
its petition does not make out any case of trans border reputation of the
BLUE JAYS mark, in India. There is, in any case, certainly no material
to indicate that the BLUE JAYS mark enjoyed trans-border goodwill and
reputation in India prior to 19 August 1998.
12.25. In the absence of any evidence of trans-border goodwill or
reputation of the respondent's mark in India prior to 19 August 1998, it
is clear that no case of passing off, by the appellants of its products or
services as those of the respondent, by using the BLUE-JAY mark can be
said to exist.
12.26. Resultantly, no case for removal of the appellants' BLUE-JAY
mark from the register of Trade Marks under Section 11(3)(a) of the
Trade Marks Act is made out.”

49. In my view, the present case is covered on all four corners by these
judgments and Plaintiff has to establish that its transborder goodwill and
reputation has spilled over to India to succeed in claim for passing off
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against the Defendant and mere global reputation will not suffice. Testing
this case on the anvil of the aforesaid judgments and after examining the
documents on record, I am of the prima facie view that the material on
record does not disclose spillover of Plaintiff’s transborder reputation and
goodwill in India prior to launch of Defendant’s whiskey in 2018. As rightly
pointed out by the Defendant, Documents 2-9 are trademarks registrations of
the Plaintiff in other countries but not in India. Documents 10 and 14 are
domain names of the Plaintiff containing the mark WHISTLER and out of
the three, two websites are not accessible in India, which in any case cannot
be a yardstick, inasmuch as Plaintiff must show how many times and by
whom in India the websites were accessed, which it has failed to
demonstrate. Document 11 contains financial statements, which do not
pertain to the WHISTLER product and moreover, reflect no sales in India.
Document 12 are invoices of sales concerning the mark WHISTLER but in
other countries only, save and except, one invoice which shows sale to M/s
HS Oberoi Spirits in India but this is a pro forma invoice and importantly, is
dated 02.05.2025. Screenshots filed as Document 15 of social media handles
of the Plaintiff do not indicate engagement counts or viewership statistics or
liked post statistics pertaining to India. Copies of journals have been filed in
which Plaintiff’s products bearing the mark WHISTLER have been listed,
however, each of these journals are post-2021. The awards reflected as part
of Document 17 have no connection with any activity or transaction in India.
Several emails have been filed by the Plaintiff to claim transborder
reputation, however, some of the earliest emails find no mention of the mark
WHISTLER and the emails where the mark has reference are post-2021.
The only document mentioning WHISTLER is an email dated 05.05.2017,
which at the highest shows some correspondence inter se the Plaintiff and a
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third-party and cannot be evidence enough of spillover of transborder
reputation.
50. Defendant is also right in its stand that the documents filed by the
Plaintiff demonstrate that even till the filing of the suit by the Plaintiff there
was no substantial use of the marks by the Plaintiff in India, except for some
stray sale to M/s Oberoi as claimed in the plaint, which too is in 2025. The
documents pertaining to excise approvals and those issued by the Indian
Customs Department for import of Plaintiff’s whiskey in India are self-
destructive of the claim that Plaintiff’s whiskey came into India prior to
2018 inasmuch as the excise approvals for Delhi and Maharashtra are dated
08.01.2026 and 09.01.2026, respectively and the documents of the Customs
Department pertain to the year 2025. Plaintiff has prima facie failed to
substantiate its sales in India in the form of invoices, bills, delivery
documents and/or otherwise demonstrate through awards/fairs/events etc.
that the mark THE WHISTLER was known and popular at least amongst the
discerning and elite members of the society, when Defendant launched its
whiskey in 2018. As held in BPI Sports (supra), it is not enough to show
that people in India were customers of the Plaintiff when they travelled
abroad but what is required, is to demonstrate the presence of the mark
within Indian boundaries. In Roland Corporation v. Sandeep Jain and
Others, 2021 SCC OnLine Del 3482 , this Court held that in light of the
judgment of the Supreme Court in Toyota Jidosha (supra), in an action for
passing off the factum of the Plaintiff being first in the world is irrelevant,
without the Plaintiff establishing goodwill and reputation in India. Court
found that while the Plaintiff claimed an exclusive distributorship in India
since 1993, but the same was not proved and therefore, as far as India was
concerned, Defendants were the first user and held that the action for
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passing off must fail. Relevant paragraphs are as follows:-
“34. The first question to be adjudicated is, the test to be applied to
determine passing off i.e. whether the appropriate test is that of first in
the market, wheresoever in the world, as contended by the counsel for the
plaintiff, relying primarily on Neon Laboratories Ltd. supra and Milmet
Oftho Industries supra, or of first in the market in India and/or even if
not first in the market in India, having goodwill and reputation in India,
as contended by the defendant/counter claimant, relying on Toyota
Jidosha Kabushiki Kaisha supra.
35. All the three judgments are of Benches of two Hon'ble Judges of the
Supreme Court. Having examined all the three judgments minutely, in my
view, in the facts of the present case, the law as laid down in Toyota
Jidosha Kabushiki Kaisha supra would apply and not the law laid down
in Neon Laboratories Ltd. supra and Milmet Oftho Industries supra.
Though Milmet Oftho Industries supra unequivocally lays down that the
mere fact that the mark had not been used in India would be irrelevant if
the mark was first used in the world market but holds so in the context of
drugs and medicinal products, and after holding (i) that nowadays the
field of medicine is of an international character; (ii) that doctors,
particularly eminent doctors, medical practitioners and persons or
companies connected with medical field, keep abreast of latest
developments in medicine and preparations worldwide; (iii) that medical
literature is freely available in this country; (iv) that doctors, medical
practitioners and persons connected with the medical field regularly
attend medical conferences, symposiums, lectures etc; and, (v) that
nowadays goods are widely advertised in newspapers, periodicals,
magazines and other media which is available in the country, leading to
a product acquiring a worldwide reputation and all of which increase the
possibility of likelihood of deception or confusion and the possibility, that
with the passage of time, some conflict may occur between the use of the
mark by the Indian company and the use of the mark by the overseas
company and the Court must ensure that public interest is in no way
imperiled. The Supreme Court, after holding so, also cautioned that
multinational corporations which have no intention of coming to India or
introducing their product in India, may not attempt to throttle Indian
companies by not permitting it to sell a product in India, if the Indian
company has genuinely adopted the mark and developed the product and
is first in the market. I am afraid, the said reasoning cannot be
extrapolated to apply with respect to musical instruments and public
address system and their parts. Moreover, Supreme Court in Milmet
Oftho Industries supra was concerned with an application for interim
injunction. The stage at which the Supreme Court was approached
in Neon Laboratories Ltd. supra was also at the stage of application for
interim relief. Though the said judgment also holds that the “‘first in the
market’ test has always enjoyed pre-eminence” but again has observed
so in the context of manufacture and marketing of pharmaceutical
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products and medicinal preparations and after finding, (a) that though
the defendant-appellant therein had applied for registration on
th th
19 October, 1992 and was granted registration on 14 September, 2001
th
but commenced use of the mark only from 16 October, 2004 onwards
and that the mark had remained dormant for 12 years; and, (b) that by
the time, the defendant-appellant therein commenced use of the mark, the
plaintiff-respondent therein was already in the market and was thus first
in the market with the subject trademark. Again, this distinguishing fact
is enough for what is laid down in the said judgment not to be blindly
followed. DW-1 Arun Jain, partner of the defendant, in his affidavit by
way of examination-in-chief unequivocally deposed use of the mark since
1979. Though he was cross-examined at length but a dissection thereof
does not show the plaintiff to have challenged the use of the mark by the
defendant since 1979, as deposed by DW-1 Arun Jain in examination-in-
chief. The plaintiff, in its written arguments, has contended that there is
no documentary evidence on record of use of the mark by the defendant,
in 1979. Plaintiff, in its written arguments has further contended that
evidence of first use of the mark by the defendant is of the year 1996.
However, in the face of no challenge in cross-examination to the
deposition of DW-1 Arun Jain, of use since 1979, the plaintiff is found to
have admitted the same. The emphasis of the plaintiff, even otherwise has
been on establishing that some international registrations of the mark in
favour of the plaintiff are of prior to 1979, when the defendant claims
first use of the mark in India. I may notice, that in Neon Laboratories
Ltd. supra relied upon by the counsel for the plaintiff herein, the
plaintiff Neon Laboratories Ltd. was the first user of the mark in the
Indian market, despite earlier registration in favour of the defendant
therein who was ultimately injuncted from using the mark subject matter
of that case. Here, the defendant/counter claimant is the first user of the
mark in the Indian market.
36. Supreme Court, in Toyota Jidosha Kabushiki Kaisha supra was
concerned with a final decree in a suit for permanent injunction
restraining passing off. The plaintiff therein claimed to be the first
worldwide user of the mark ‘PRIUS’. However, the defendants therein
were the first user of the mark in India. The Single Judge of this Court,
relying on Milmet Oftho Industries supra, granted a decree for injunction
in favour of the plaintiff therein, restraining the defendants from use of
the mark ‘PRIUS’. In appeal, the Division Bench of this Court reversed
the decree, holding (i) that the first use by the plaintiff outside India, of
the mark, though widely reported and advertised, did not have much
reportage in India; (ii) that the Territoriality Doctrine (a trade mark
being recognized as having a separate existence in each sovereign state
and hence the rights in the trade mark do not extend beyond the territory
of the sovereign state which has granted the rights) holds the field; (iii)
that prior use of the trade mark in one jurisdiction would not ipso
facto entitle its owner or user to claim exclusive rights to the said mark
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in another dominion; (iv) that it is necessary for the plaintiff to establish
that its reputation had spilled over to Indian market prior to
commencement of the use of the mark by defendant in India; (v) that
internet penetration in India in 1997 was lean and it could not be said
that prior to April 2001, the plaintiff had established its goodwill and
reputation in the Indian market, which the defendants had taken
advantage of; and, (vi) that the test of possibility/likelihood of confusion
would be valid at the stage of quia timet action and not at the stage of
final adjudication of the suit, particularly when the defendants had used
the impugned mark for a long period—the test would be one of actual
confusion and no evidence with respect whereto was led by the plaintiff
in that case. The Supreme Court, while affirming the order of the
Division Bench of this Court, further held that, (a) to prove and establish
an action of passing off, three ingredients are required to be proved by
the plaintiff, i.e., his goodwill, misrepresentation by the defendant and
damage; (b) the test, of whether a foreign claimant may succeed in a
passing-off action, is whether his business has a goodwill in a particular
jurisdiction, which criterion is broader than the “obsolete test” of
whether a claimant has a business/place of business in that jurisdiction;
if there are customers for the plaintiff's products in that jurisdiction, then
the plaintiff stands in the same position as a domestic trader; (c) the
overwhelming judicial and academic opinion all over the globe,
therefore, seems to be in favour of the territoriality principle which
should apply to this country also; (d) to give effect to the territoriality
principle, the Courts must necessarily have to determine if there has been
a spillover of the reputation and goodwill of the mark used by the
claimant who has brought the passing off action; and, (e) if goodwill or
reputation in the particular jurisdiction i.e. in India is not established by
the plaintiff, no other issue really would need any further examination to
determine the extent of the plaintiff's right in the action of passing off.
37. In my view, in the light of the aforesaid judgment, in an action for
passing off, as the present suit is, the factum of the plaintiff being first in
the world is irrelevant, without the plaintiff establishing goodwill and
reputation in India and which the plaintiff has failed to prove. Though
the plaintiff has claimed having an exclusive distributor in India since
1993 but the same also remained to be proved. Thus, as far as India is
concerned, defendants are the first user and that being the position, the
action for passing off has to fail.”

51. Plaintiff is unable to establish its ‘presence’ within the jurisdiction of
Defendant’s country of the threshold required and at the relevant time when
Defendant began to occupy the space. It needs no reiteration that passing off
is a tort premised on misrepresentation and deceit and involves an element
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of confusion among and deception of a mythical customer and for this,
Plaintiff’s reputation is a sine qua non and is indispensable element. Sans
sufficient evidence of spillover reputation in India, the claim of the Plaintiff
for passing off cannot sustain. At the cost of repetition, the excise approvals
in favour of the Plaintiff came only in January, 2026 and this itself defeats
any claim of spillover of goodwill and reputation into India prior to 2018.
Hence, one of the three essential ingredients of passing off i.e. goodwill, is
not established and Plaintiff’s claim fails at this stage.
52. Defendant, on the other hand, has prima facie established that it was
first in the Indian market in respect of Whistler whiskey under Class 33 as it
launched its product in 2018. Documents evidencing promotion,
advertisement and sales have been placed on record by the Defendant, which
include sales invoices from 2018, excise approvals from 2017-18, CA
Certificate reflecting sales for the period 2018-19 to 31.10.2025, social
media posts, awards and recognitions as also Articles by renowned
magazines such as Business Standard writing that the Defendant targets
1 million cases of Whistler whiskey in the next three years in its elevated
blend and bold new identity and is poised to disrupt the mid-premium
segment.
53. Plaintiff has relied upon the judgments in N.R. Dongre (supra); S.
Syed Mohideen (supra); Neon Laboratories (supra); Milmet Oftho
(supra) ; and MAC Personal Care (supra), but none of these decisions
favour the Plaintiff. In S. Syed Mohideen (supra), it is held that rights of
prior user are superior to those of a registered proprietor, which in this case
is the Defendant. In Toyota Jidosha (supra), the Supreme Court has held
that reputation must exist in India and therefore the prior user will have to be
seen in Indian market, where again the Defendant is the prior user. In
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Neon Laboratories (supra), the test laid down is ‘first in the market’,
which in this case is the Defendant. In Milmet Oftho (supra), the emphasis
is on establishing transborder reputation which now has to follow the
territoriality principle and Plaintiff has failed on this score and for this
reason, even the judgment in MAC Personal Care (supra) does not help the
Plaintiff. Therefore, in my view, Plaintiff has failed to make out a prima
facie case of passing off against the Defendant and is not entitled to ad
interim injunction.
54. Defendant claims infringement by the Plaintiff of its registered
trademark WHISTLER as also passing off. Defendant has multiple
registrations for the mark WHISTLER and its formatives in Classes 32, 33
and 41 and the earliest registration in the mark WHISTLER in Class 33
dates back to 03.04.2008 in India. The registrations are stated to be valid and
subsisting. The present case concerns one of its products i.e., IMFL
Whiskey. Defendant claims to have drawn inspiration for its mark from the
elusive Whistler Warbler, a vibrant song bird indigenous to Indian sub-
continent known for rich and melodic whistling sounds. The old packaging
did not have the Whistler bird, however, the new packaging from 2025 has
the depiction of the bird.
55. Defendant claims infringement by the Plaintiff owing to a statutory
right in the mark WHISTLER due to its registration in India. It is asserted
that Plaintiff is using a nearly identical mark THE WHISTLER with no
registration in the mark in India for identical goods and hence, confusion is
inevitable even to a discerning consumer, given the regulatory regime of
sale of whiskey and limitations on advertisement. It is asserted that owing to
the registration in the mark WHISTLER, Defendant has the exclusive right
to use the mark as also to restrain third-parties from infringing the same and
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that by adopting an identical mark for identical product, Plaintiff has acted
in bad faith.
56. Plaintiff, on the other hand, contested the claim of infringement by
arguing that the trademarks WHISTLER and THE WHISTLER have been
long associated with the Plaintiff and the earliest registration of the mark
WHISTLER goes back to 2005. In fact, it is the Defendant who has imitated
Plaintiff’s marks, which were well within his knowledge over the years. The
mark WHISTLER was bona fidely adopted in 2005 and has become a source
identifier for the Plaintiff. It was contended that there is no scope of
confusion amongst the consumers of the rival whiskies owing to the huge
price difference inasmuch as Plaintiff’s whiskey sells in the range of
Rs.2,800/- to Rs.11,000/- per bottle, whereas Defendant’s retail price is
Rs.780/- per bottle and there is a world of difference in the quality of the
products and Courts have recognised that in liquor industry, the consumers
are discerning and easily distinguish between one product and the other.
57. There is no dispute on two crucial facts: (a) Defendant has registration
in the mark WHISTLER in India in Class 33 from 2008; and (b) Plaintiff
does not have registration in the marks WHISTLER and THE WHISTLER
in India. Plaintiff asserts strenuously that Defendant has dishonestly copied
its prior adopted and registered marks but there is no challenge to
registration of Defendant’s WHISTLER till date. In response to a claim of
infringement, the only defence available with the Plaintiff is either
registration of its marks in India or a defence of prior use under Section 34
of 1999 Act in India or a spillover of transborder reputation and goodwill.
Plaintiff is not a registered proprietor of the marks in India and international
registrations cannot come to its rescue as in India, trademark rights are
territorial. Hence, this defence is not available. As for prior use, as noted
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above, Plaintiff has been unable to show prior use in India and/or spillover
of transborder reputation into India. Therefore, even these defences are not
available to the Plaintiff.
58. Plaintiff’s mark THE WHISTLER is nearly identical/deceptively
similar to Defendant’s registered mark WHISTLER. The rival products are
whiskies and significantly, Plaintiff has itself pleaded and urged that
confusion is bound to occur as rival marks and products are similar. In fact,
Plaintiff’s suit is predicated entirely on confusion amongst members of
public, owing to spillover of goodwill and reputation and misrepresentation,
its claim being one of passing off. In alcohol industry, where direct and
surrogate advertising is strictly prohibited, manufacturers have extremely
limited means of consumer engagement or brand promotion and the
distinctiveness of the brand name becomes the singular element of brand
identity and consumer recall. Retail sales as also sales through licensed
vendors present additional constraints as in a vast majority of retail outlets,
the sale process is carried out through minimalistic, counter-based ‘hand-in-
hand-out’ model, where consumers may not have much option to browse or
visually assess the products and the decision to purchase is often based
solely on oral articulation of the brand name. With the identity in the rival
trademarks and the products, there is bound to be confusion amongst the
members of public and potential consumers. There can be no debate on the
proposition that in case of liquor products, especially, the high-end
segments, the consumers are discerning and one who consumes whiskey
priced in higher range is not likely to purchase one in the lower price bracket
or quality and vice versa , but where the rival marks are near identical,
visually, structurally and phonetically, as in the instant case, even most
discerning consumers are likely to be confused and therefore, in the
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present case, this sole factor is not enough to defeat Defendant’s
infringement claim.
59. In the case of Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and
Others, (2022) 5 SCC 1 , albeit not in the context of liquor products,
the Supreme Court found the threshold of similarity in the marks
RENAISSANCE and SAI RENAISSANCE so high that it was held that the
case fell within the ambit of Section 29(2)(c) read with 29(3) of 1999 Act
and injunction granted by the Trial Court and High Court was upheld.
Addition of the word ‘SAI’ did not save the mark RENAISSANCE and
applying the same principle, Plaintiff’s mark THE WHISTLER and
Defendant’s mark WHISTLER can only be termed as nearly
identical/deceptively similar and going by Plaintiff’s own case, are bound to
cause confusion.
60. Section 28 of 1999 Act gives exclusive right to the registered
proprietor of the trademark to use the mark exclusively in relation to the
goods/services for which it is registered and to obtain relief in respect of
infringement thereof. Section 29(2)(b) provides that a registered trademark
is infringed by a person who, not being a registered proprietor or person
using by way of permitted use, uses in the course of trade, a mark which
because of its similarity to registered mark and identity or similarity of
goods/services covered by such trademark, is likely to cause confusion on
part of public or have an association with the registered trademark. It needs
no reiteration that infringement analysis is a mark to mark comparison and
use of the mark by the Defendant in a given case is the sine qua non. It is
settled that action for infringement is a statutory remedy for vindication of
registered proprietor’s right to exclusive use of a registered mark and if the
essential features of the trademark are adopted by a third party and Court
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reaches a conclusion of imitation, no further evidence is required to establish
that registered holder’s rights are violated. Of course, action for
infringement is dependent on validity of registration and subject to other
restrictions in Sections 30, 34 and 35 of 1999 Act.
61. Plaintiff’s trademark THE WHISTLER is structurally, visually and
phonetically nearly identical/deceptively similar to Defendant’s WHISTLER
and rival goods are whiskey. In Shree Nath Heritage (supra) , the Division
Bench of this Court found the rival marks ‘Officer’s Choice’ and
‘Collector’s choice’ to be deceptively similar and it was held that the impact
of different trade dress would not rule out consumer confusion, especially
since consumers expect manufacturers of alcoholic beverages to churn out
variants. In the present case, the argument of the Plaintiff that factors such as
the difference in quality of the rival whiskies, price difference and
discerning consumers are enough to obviate any confusion, cannot be
accepted. This runs counter to Plaintiff’s own consistent stand of confusion
being inevitable due to similarity of marks and it cannot aprobate and
reprobate to suit its convenience. Importantly, this is really the heart of the
dispute. Rival marks ‘THE WHISTLER’ and ‘WHISTLER’ are so nearly
identical that even a discerning consumer may be confused and/or may
expect these to be variants of one and the same seller. In none of the
judgments cited on behalf of the Plaintiff, Courts have held the rival marks
to be identical/deceptively similar and yet denied relief to a registered
proprietor in a claim for infringement. Plaintiff’s mark WHISTLER is
identical to Defendant’s mark WHISTLER and products being identical,
Section 29(2)(c) will be attracted and under Section 29(3) confusion is
presumed.
62. The judgements cited by the Plaintiff are distinguishable on facts. In
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Pernod Ricard (supra), the Supreme Court held that the marks BLENDERS
PRIDE and LONDON PRIDE were not deceptively similar, comparing
BLENDER and LONDON and PRIDE was held to be laudatory and hence
the observation that consumers in liquor industry are discerning will have to
be read in that context. In White Horse (supra), the competing marks
WHITE HORSE and FLYING HORSE were found to be dissimilar for
many reasons recorded in the judgment. In Radico Khaitan (supra) and
Carlsberg India (supra), the competing marks were ‘8PM’ and ‘Palone 8’
and Court found the mark numerical ‘8’ to be inherently non-distinctive as
several third parties were found to be using ‘8’ in relation to alcoholic
beverages. In Real House (supra) the competing marks were ‘REAL’ and
‘RICARD’ which were found to be dissimilar unlike in the present case
where the rival marks THE WHISTLER and WHISTLER are nearly
identical. The decision in GUFIC Ltd. (supra), has no application to the
present case as the said case was primarily related to examination of the
competing marks ‘Clinique’ and ‘Skinclinique’ on the touchstone of anti-
dissection law for comparing marks.
63. In my view, Defendant has made out a prima case of infringement
and balance of convenience also lies in favour of the Defendant, which has
been selling its IMFL whisky from 2018 under the mark WHISTLER, its
registered trademark. Irreparable injury will be caused to the Defendant if
ad interim injunction is not granted in the facts of this case, also considering
that Plaintiff is yet to launch its Irish whiskey in India. The interim relief for
sale of existing stock cannot be granted in favour of the Plaintiff for the
simple reason that it had filed the suit in December, 2025 and knew that
there was serious contest on its proprietary right to sell under the marks
WHISTLER and THE WHISTLER. Yet the Plaintiff chose to bring the
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goods for sale after excise approvals in January, 2026, which was a
calculated risk, for which no one can be blamed.
64. For all the aforesaid reasons, IA 414/2026 is allowed and Plaintiff and
all those acting on its behalf are restrained from selling the Irish whiskey in
India under the marks THE WHISTLER and/or WHISTLER and/or any
other mark deceptively similar to Defendant’s registered mark WHISTLER
during the pendency of the suit. IA 26995/2025 is dismissed as Plaintiff is
unable to make out a prima case of passing off.
65. Finally, the usual mantra. Nothing stated in this judgment will be a
final expression on merits in both the suits and is only a prima facie view,
which will have no bearing on the final adjudication of the suits.
66. Both the applications stand disposed of.


JYOTI SINGH, J.
MAY 29 , 2026 /YA/S.Sharma
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