AN ATTEMPT TO STEAL THE IDENTITY OF LIQUOR BRAND “OFFICER’S CHOICE”

Introduction

The present suit is filed in the High Court of Delhi, wherein the plaintiff seeks permanent injunction; restraining infringement of trademark, copyright, passing off and so on among other reliefs.

Plaintiff:

The plaintiff is said to be in the business of, among other things, producing and marketing alcoholic beverages, including Indian Made Foreign Liquor (or “IMFL”), under a number of recognisable trademarks and labels, including “OFFICER’S CHOICE,” “LORD AND MASTER,” and other names.The predecessor in rights, title, and interest of the plaintiff created and registered the trademark “OFFICER’S CHOICE” in the year 1988. The trademark was then transferred to the plaintiff together with the company’s goodwill. This Court determined in CS(COMM) 1227/2016 on January 16, 2017, that the trademark “OFFICER’S CHOICE” qualifies as a well-known trademark under the Trade Marks Act, 1999 since it has been used openly, continuously, extensively, and exclusively by the Plaintiff and his predecessors. The product of the plaintiff “OFFICER’S CHOICE” is also the second largest selling whisky product in the world.

Defendant:

Rajasthan Liquors. Ltd., the first defendant, is a business that produces both drinkable and industrial spirits (including IMFL). The second defendant, Rajwada Breweries and Bottlings Pvt. Ltd., engages in a related line of business as that of plaintiff.Defendant No. 3 viz. Mr. Tilak Raj Sharma is the Managing Director of Defendant No. 1.

Dispute:

The plaintiff’s grievance is with respect to the infringement of the trademark “OFFICER’S CHOICE” as well as passing off. In the month of June 2018, Plaintiff first learnt that Unnao Distilleries and Breweries Limited, where defendant no. 3 was the Managing Director, had in the year 2008 filed certain trademark applications viz. ‘High Choice Deluxe XXX Rum With Label’ (TM No. 1700170); ‘High Choice Whisky With Label’ (TM No. 1700171); and ‘High Choice With Label’ (TM No. 1700172). The same was also applied for in the year 2004.None of these registrationswere granted and while TM Application No. 1314670 has been refused, TMApplication Nos. 1700170, 1700171, and 1700172 have been abandoned.

Undertakings:

Due to their business relationship, Unnao Distilleries and Breweries Limited and Plaintiff exchanged an undertaking on August 25, 2018, in which the latter committed to not using or allowing anyone else to use a mark that is identical to or confusingly similar to Plaintiff’s trademarks and defendant further promised to withdraw trademark application 1314670 for the registration of the mark “High Choice” in Class 33 and to refrain from reviving the abandoned trademark applications 1700170, 1700171, and 1700172 for the registration of labels under Class 33. Additionally, this commitment was made enforceable against the successors of Unnao Distilleries and Breweries Limited. It is claimed that Plaintiff learned in October 2020 that Defendant No. 3, who is currently the Managing Director of Defendant No. 1, had submitted a trademark application carrying the number 4518696 in order to register the name “High Choice.”

Plaintiff was only recently made aware of the product launch by Defendants Nos. 1 and 2 and the trademark use of “High Choice”. According to the plaintiff, the adoption of the contested mark and label was done dishonestly and maliciously with the intention of capitalising on the plaintiff’s enormous and enviable reputation with regard to its trademarks, as previously stated. According to the argument, the competing trademarks are misleadingly similar, and the defendants have slavishly replicated the plaintiff’s trade dress and released the product in August 2022 in an effort to capitalise on the plaintiff’s goodwill. Comparing the competing trademarks and trade dress, among other things, demonstrates that the defendants have a clear motivation to deceive consumers and industry participants into believing that their product originates from the plaintiff or is somehow related to or associated with it. This is obviously intended to harm the plaintiff’s reputation as well as muddy and obscure the well-known trademark of the plaintiff.

The Court:

The Court held that the Plaintiff has made out a prima facie case for grant of an ex-parte and if injunction not granted, the plaintiff will suffer irreparable loss. Defendants and anyone working on their behalf are prohibited from using, producing, selling, exporting, importing, and other related activities injunction. It is, however, made clear that present order will not impact the goods already manufactured by the Defendants till the passing of this order.