Austin Nichols & Co Inc & Anr v. Gwalior Distilleries Private Ltd & Anr

NAVIN CHAWLA, J. AUGUST 18, 2022/AB

* IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on:21.07.2022 Date of decision:18.08.2022 + CS(OS) 250/2010 & I.A. 1806/2010 & 463/2022 AUSTIN NICHOLS & CO INC & ANR ..... Plaintiffs Through: Ms.Mamta Jha, Mr.Abhijeet Rastogi & Mr.Vishesh Kumar, Advs. versus GWALIOR DISTILLERIES PRIVATE LTD ..... Defendant Through: None. CORAM: HON'BLE MR. JUSTICE NAVIN CHAWLA 1. The plaintiffs have filed the present suit praying inter-alia for a decree of permanent injunction restraining the defendant, its directors, assigns in business, distributors, licensees and dealers from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in whiskey or any other alcoholic beverages under the impugned trade mark/logo/label SEAGRAM'S and/or ROYAL CHAMP or any other trade mark/logo/label as may be deceptively similar to the trade marks of the plaintiffs that is SEAGRAM'S or SEAGRAM'S logo or ROYAL STAG or its label amounting to infringement of trade marks registrations of the plaintiffs, passing off, unfair competition, as also infringement of copyright of the plaintiffs. The plaintiffs also pray for rendition of accounts of profits earned by the defendant or in the alternative, a decree of Rs. 20 Lakh (Rupees Twenty Lakh only) and the costs of the suit. SEAGRAM'S 2. The plaintiff no. 2 was originally known as 'Seagram India Pvt. Ltd.' before the change of name to the present one with effect from 23.04.2007. (Exh. PW-1/4). 3. The plaintiffs assert that their predecessor in the business was 'The Seagram Company Ltd.', a company incorporated under the laws of Canada, and was the ultimate holding company of the Seagram Group through its various subsidiaries and group companies, having presence in many countries of the world. 4. It is asserted that 'Pernod Ricard S.A.' (the parent company of the plaintiffs) acquired a part of the Seagram Group in December 2001. The Seagram Company Ltd. assigned their various trade marks, service marks, trade names and logos along with the goodwill of the business to 'Pernod Ricard S.A.' Alcoholic beverages under various brands of Pernod Ricard Group continue to use the trade mark 'SEAGRAM'S' and 'SEAGRAM'S CREST DESIGN' (hereinafter referred to as 'the SEAGRAM Marks') along with the respective brands, such as 'Seagram's Blenders Pride', 'Seagram's Imperial Blue' etc. 5. The plaintiffs assert that the plaintiff nos. 1 and 3 and their predecessors have been carrying on the business of bottling and marketing of alcoholic beverages in India through the plaintiff no. 2 under the name of 'Seagram India Pvt. Ltd.' since the year 1995 with the trade mark SEAGRAM being the key and distinguishing feature. Though the name of plaintiff no. 2 changed in 2007, however, it continued to use the SEAGRAM Marks. 6. It is asserted that the plaintiff no. 3 is the proprietor of the SEAGRAM Marks and the plaintiff no. 2 is the licensed user of the SEAGRAM Marks under the name of 'Seagram India Pvt. Ltd.' since the year 1995. The SEAGRAM Marks have been used by the plaintiffs internationally since 1940 and in India since 1995. 7. The plaintiffs state that the SEAGRAM Marks are registered worldwide and also in India. The Certificates for Use in Legal Proceedings for trade mark registration nos. 105507, 634730 and 854323 under Class 33 are Exh. PW-1/10, Exh. PW-1/11 and Exh. PW-1/12 respectively. It is asserted that these registrations are valid and subsisting. It is further asserted that though these registrations are in the name of Lawrenceburg Distillers and Importers LLC (the erstwhile name of the plaintiff no. 3), the plaintiff no. 3 has taken steps to record the change of name to 'Pernod Ricard USA LLC' and the same has been accepted by the Trade Marks Registry. The Certificates for Use in Legal Proceedings for trade mark registration nos. 105507, 634730 and 854323 under Class 33 recording the plaintiff no. 3 as the subsequent proprietor of the SEAGRAM Marks are Exh. PW-1/23 (Colly.) 8. It is the case of the