Allowed

M/S. Brima Sagar Maharashtra Distilleries Ltd. v. Radico Khaitan Ltd.

Delhi HC13 Jan 2016FAO(OS)/20/2015

Case brief

AI extract

What is this about?

Division Bench disposed of cross appeals and stay applications after recording a joint settlement filed by the plaintiff and defendant under Order XXIII Rule 3 CPC. Court decreed the suit based on settlement terms and declared prior tentative observations on geographical names non-binding.

What did the court decide?

Suit decreed on terms of settlement; cross appeals and stay applications disposed of; parties bear own costs.

M/S. Brima Sagar Maharashtra Distilleries Ltd. Vs Radico… — Intellectual Property | Delhi HC (2016)

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Signature Not Verified Digitally Signed By:AM UL YA

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Q .09

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CORAM:

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HON'BLE MR. JUSTICE PRADEEP NANDRAJOG

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HON'BLE MS. JUSTICE MUKTA GUPTA

ORDER

13.01.2016

I.A.N0. /2016 in CS (OS) No.1572/2013

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Joint applicationfiled by Radico Khaitan Ltd. and M/s Brima Sagar MaharashtraDistilleriesLtd. under Order XXIII Rule 3 ofthe Code of Civil Procedureis takenon record. Registryto numberthe application.

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The two cross appeals were admitted on May 19, 2015. They have reached for hearing today. File of CS (OS) No.1572/2013 has been summonedin Court for the reasonthe two cross appeals concernan interim order dated October 15, 2014 disposing of, amongst others, I.A.No.12710/2013 filed by Radico Khaitan Ltd. praying for an interim injunctionto restrain M/s Brima Sagar MaharashtraDistilleriesLtd. from sellingalcoholicbeveragesbearingthe trademark/label:BRIHAN'SDANZ NO.l WHISKY, BRIHAN'S PREMIUM BLUE WHISKY, GOA, NOVA GOA, BRIHAN'SORIGINALDOCTORBRANDY. 3. The case ofRadicoKhaitanLtd. was premisedon itbeing a registered proprietor of various trademarks duly registered with the Registrar of Trademarks including: GOA DRY GIN AND LIME, BRIHAN S GOA, BRIHAN'S NO.l WHISKY, BRIHAN'S PREMIUM BLUE WHISKY, BRIHAN'S DOCTOR BRANDY. 4. Variousissues croppedup for considerationincludingtrade dress. At the heart of the debate, became the word GOA, a well loiown tourist destinationin India; internationallyrenownedplace.

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FAO (OS) 458/2014&20/2015

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Radico Khaitan Ltd. substantially succeeded for the reason concerning its proprietaryinterest in the trademarks and copyright in the trade dress the learnedSingle Judge concludedin para 121 of the impugned order dated October 15, 2014 as under;

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"(i) BRIHAN'S DANZ NO. 1 WHISKY: The Defendant is restrained by way of an ad-interim injunction from directly or indirectlyselling, manufacturing,offeringfor sale or in any manner dealing in any Alcoholic Beverage bearing the mark/label BRIHAN'S DANZ NO.l WHISKY/BRIHAN'S NO.l WHISKY or from adopting/usingany other identicalor deceptivelysimilar trademark/label. The Defendant however, is not restrained from using the words DANZ and/or NO 1 and/or WHISKYwithout theprefix or suffixBRIHAN'S in a getup, trade dress, style and label that is neither identical nor deceptivelysimilar to that of the Plaintiff;

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(ii) BRIHAN'SPREMIUMBLUE WHISKY: The Defendantis restrained by way of an ad-interim injunction from directly or indirectlyselling, manufacturing, offeringfor sale or in any manner dealing in any Alcoholic Beverage bearing the mark/label BRIHAN'S PREMIUM BLUE WHISKY/BRIHAN'S PREMIUM WHISKY or from adopting/usingany other identical or deceptivelysimilar trademark/label The Defendant however, is not restrained from using the words PREMIUM and/or BLUE and/or WHISKY without the prefix or suffix BRIHAN'Sin a getup, trade dress, style and label that is neither identical nor deceptively similar to that of the Plaintiff;

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(Hi) BRIHMA'S GOA: The Defendantis restrained by way of an ad-interim injunction from directly or indirectly selling, manufacturing,offeringfor sale or in any manner dealing in any Alcoholic Beverage bearing the mark/label BRIHAN'S GOA/BRIHMA'S GOA or from

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FAO (OS) 458/2014&20/2015

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adopting/using any other identical or deceptively similar trademark/label and also the trade dress, getup of layout similar to that of the Plaintiff. The Defendant however, is not restrained from using the word GOA without the prefix or suffix BRIHAN'S and/or BRIHMA'S in a getup, trade dress, style and label that is neither identical nor deceptively similar to that of the Plaintiff;

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(iv) NOVA GOA: TheDefendant, is not restrained from using the trademark NOVA GOA without the prefix or suffix BRIHAN'S and/or BRIHMA'S in a getup, trade dress, style and label that is neither identical nor deceptively similar to that of the Plaintiff; and

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(v) BRIHMA'S ORIGINAL DOCTOR BRANDY: The Defendant is restrained by way of an ad-interim injunction from directly or indirectly selling, manufacturing, offering for sale or in any manner dealing in any Alcoholic Beverage bearing the mark/label BRIHAN'S DOCTOR BRANDY or BRIHMA'S ORIGINAL DOCTOR BRANDY or from adopting/using any other identical or deceptively similar trademark/label. The Defendant however, is not restrained from using the words DOCTOR and/or BRANDYwithout the prefix or suffix BRIHAN'S and/or BRIHMA'S in a getup, trade dress, style and label that is not deceptively similar to that of the Plaintiff "

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While discussing on the word GOA, the learned Single Judge noted that it was the geographical name of the territory in India. The learned Single Judge, in paragraph 100, prima-facie recorded an opinion of law concerning the word being in public domain and in particular the word representinga geographicalterritoryin India as follows: ''The word GOA by itselfmaynot be capable ofprotection as a trademark'. 1. Learned counsel for the parties state that the dispute has been

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FAO (OS) 458/20U & 20/2015

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Page4 of6

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amicably resolved between Radico Khaitan Ltd. and M/s Brima Sagar MaharashtraDistilleriesLtd. and have jointly filed an applicationunder Order XXIII Rule 3 read with Section 151 of the Code of Civil Procedure. The applicationis proposedto be filed in CS (OS) No.1572/2013. 8. The applicationbears the signatures of the director and authorised signatory of M/s Brima Sagar Maharashtra DistilleriesLtd. as also the authorised signatory of Radico Khaitan Ltd. The two signatories have deposed affidavitsin supportof the application. The applicationhas been signedby learnedcounselfor the two parties. 9. The terms of the settlement between the parties concerning the offending label and the offending trademark have been recorded in -the settlement. We are satisfiedthat a bona-fidesettlementhas been arrived at betweenthe parties. 10. With consent of the parties we have issued directionthat the suit be listedbeforeDivisionBench. The Registryhas listedthe suit beforeus. 11. The applicationunder Order XXIII Rule 3 read with Section 151 of the Code of Civil Procedure is taken on record. Registry is directed to numberthe same. The applicationhas been kept in the recordofthe suit. 12. In tenns of the settlement between the parties the suit is decreed directing that the decree shall annex therewith the settlementapplication, terms whereofwould form part of the decree. 13. The partieswould be boundby the consentdecreepassedin the suit. 14. Concerning the observation made by the learned Single Judge in paragraph 100 of the impugned decision, relevant para whereofhas been noted by us in paragraph6 above, lest it causes any prejudiceto M/s Radico Khaitan Ltd. we declare that the said observationwould not be binding on

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FAO (OS) 458/2014 6^ 20/2015

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M/s Radico Khaitan Ltd. for the reason it finds an expression in a tentative opinion formed by the learned Single Judge while deciding an application for injunction. It cannot be equated as a determinative finding of law against the appellant.

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FAQ (OS) 458/2014, FAQ (OS) 20/2015 and CS (OS) No.1572/2013 1. The suit is decreed in terms above while disposing of the application under Order XXIII Rule 3 of the Code of Civil Procedure filed jointly by the parties. The two appeals are disposed of in terms above.

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Parties shall bear their own costs all throughout. 3. Copy of this order be supplied dasti to learned counsel for the parties within 2 days.

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CM No.18011/2014 (Stay) in FAO (OS) 458/2014 CM No.634/2015 (stay) in FAO (OS) 20/2015 LA. Nos.12710/2013, 12712, 16926/2013, 25607/2014, 3761/2015 and 6524/2015 in CS (OS) No.1572/2013

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Applicationsare dismissedas infructuous.

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PRADEEPNANBeSjOG,J. MUKTA GUPTA, J.

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JANUARY 13, 2016 'vn'

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FAO (OS) 458/2014&20/2015

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M/S. Brima Sagar Maharashtra Distilleries Ltd. v. Radico Khaitan Ltd.

Case brief

What is this about?

What did the court decide?

M/S. Brima Sagar Maharashtra Distilleries Ltd. v. Radico Khaitan Ltd.

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Statutes considered

Parties & counsel

Coram

Case details

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