The case, Khoday Distilleries Limited v. Scotch Whisky Association & Ors 2008 (36) PTC 315 (Mad.) (DB), is the result of an appeal filed under Sec. 109 of the Trade and Merchandise Marks Act, 1958 against the order of the learned Single Judge in T.M.A No.3 of 1989; and also the order passed by the learned deputy Registrar of Trade Marks allowing the Rectification application No. MAS-300 which directed the removal of the Registered Trade Mark No. 273203 of the appellant consisting of the words PETERSCOT', which was registered with effect from 3rd July 1971, from the Register. The rectification application was filed on the primary ground that the impugned registration contravenes Sec. 11 as the trade mark contains the word SCOT' which is likely to deceive as the word SCOT' indicates Scottish origin of liquour.
The appellants prayed for the Registrar's discretion to allow continuance of trademark. The respondents filed an affidavit from IAN Glen Barclay and 20 other affidavits as evidence in support of application. The appellant failed to file any evidence in support of registration. The Registrar ruled that the registration contravenes Sec. 11 and accepted the plea of deceptive element thus effectively rejecting the appellants' plea of acquiescence.
The subsequent appeal before the learned Single Judge was also dismissed in light of absence of evidence produced by the appellants which affirmed to the judiciary that the appellant had no great faith in the registration of its trademark. The Judge held that the trademark PETERSCOT' on a product like whisky has the likelihood of easily confusing or deceiving a consumer as to the same being Scotch whisky. He further held that the registering authority should not have registered it in the first place despite their being no objections. [Parker-knoll Ltd. v. Knoll International Ltd., 1962 RPC 265, whisky manufactured in Scotland can solely be called Scotch Whisky' further substantiated by the House of Lords in Erven Warnink B.V. and Anr. V. J.Townene & Sons (Hull) Ltd. and Anr., 1980 RPC 31.; Scotch Whisky Association & Anr. V. Mohan Meakin Ltd., suit no. 1352 of 1986 before the Bombay High Court had similar facts and injunction against using the name SCOT' was granted]
Subsequently, the appellants made the following submissions before the Division Bench:
- The objection is subject to the Limitation Act and should
have been raised within 3 years of registration [GE
Trademark case 1973 RPC 297]
- All the affidavits are of the same party as the stamp
paper has been bought by the same people, Little & Co. -
counsels for the respondents, and hence cannot be
allowed.
- Khodays employee Peter Jefrey Warren's affidavit
stating that the whisky was named after his father and his
nationality because it was they who brewed the whisky
initially for the appellants as Khodays had not manufactured
whisky until then.
- Khodays has never claimed PETERSCOT' to be Scotch
whisky. The trademark is famous worldwide and is distinctive.
PETERSCOT is among 44 other IMFL brands with the name
SCOT'. Liquour is always brought by price or brand;
separate menus for indian & foriegn liquor in hotels;
foreign liquor is expensive due to high taxes thus little
chance for confusion.
The Division Bench joined the learned Single Judge in wondering as to why the appellants never gave any evidence in support of their registration or bothered to counter the evidence produced by the respondents. All the objections against the respondents' affidavits should have been put across using cross examination to check the veracity of the deponents. Moreover, the presence of something similar to the Lion Rampant, which is peculiar to Scotch whiskies, on the device used by the appellant and the description "Distilled from the Finest Malt and Blended with the Choicest Whiskeys by Scotch Experts under Government supervision" are a blatant attempt to deceive and confuse the consumer into believing the product to be Scotch whisky. Therefore, the Division Bench did not see any reason to interfere with the findings of the Registrar or the learned Single Judge. Appeal was dismissed by the Court.
Conclusion
This is a classic case of a manufacturer passing of' his product to willfully deceive the consumer into thinking that it is, in fact, another popular product, thus plagiarizing the popularity and goodwill of such product for his own illicit gain. The peculiarity in the instant case is that this charade had gone on unrestricted/unobjected for too long thus providing quantum leaps to the illicit profits that the manufacturer must have unabashedly made during the period. This leads us to wonder whether the entire procedural machinery involved in the registration of the Peter Scot' trademark, right from 1971, has been flawed as no notice of the aberration was taken till the Scotch Whisky Association filed for rectification in 1989. The decision of the Registrar in the issue is appreciable although it is ironical that his office was responsible for granting the trademark in the first place. This error was evident, right from the inclusion of the term SCOT' in the mark, that it was meant to take advantage of the popularity of Scottish whisky, in which case, according to Sec. 11 of the Trade Marks Act, the application for registration should have been rejected outright . The affidavit of Peter Jeffrey Warren that the whisky was named after his father who helped Khodays brew it is acceptable. But, his contention that the term SCOT' was merely meant to refer to his nationality is quite dubious as the question remains whether the same would have been done had he been from a country which is not famous for producing the most favoured and most expensive whisky in the world.
This is a landmark judgment, not only because of the above inferences, but also because of the fact that the product under question was one of national and international acclaim for a number of years.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
