Madan B. Lokur, J.

By this order, I propose to decide two interlocutory applications, I.A. No. 999 of 2005 and I.A. No. 1313 of 2005. Both these applications were very hotly contested, in fact much more than I had imagined when the hearing started The applications were heard on 8th, 13th to 15th, 21st, 26th and 27th July, 2nd and 4th August when judgment was reserved.

3. It was agreed with learned counsel for the parties that it might be appropriate to first decide I.A. No. 1313 of 2005 and then I.A. No. 999 of 2005 may be decided, if need be. I propose to proceed as agreed.

I.A. No. 1313 of 2005

4. Section 10 CPC reads as under:-

Explanation.—The pendency of a suit in a foreign court does not preclude the Courts in India from trying a suit founded on the same cause of action.

5. A plain reading of the above provision would show that the requirements of Section 10 CPC would be met (and trial of this suit should be stayed) if The matter in issue in the Jalandhar suit and this suit is directly and substantially the same The Court in Jalandhar can grant the reliefs prayed for in this suit, and The parties in the Jalandhar suit and this suit are the same.

This position was accepted (for our purposes) by learned counsel for the parties in view the decision of the Supreme Court in Manohar Lal Chopra v. Rai Bahadur Rao Raja Seth Hiralal, AIR 1962 SC 527 [LQ/SC/1961/365] . (See also Escorts Construction Equipment Ltd. v. Action Construction Equipment Pvt. Ltd., 77 (1999) DLT 276).

2. I.A. No. 999 of 2005 is an application filed by the Plaintiffs seeking an injunction restraining the Defendants from directly or indirectly dealing in alcoholic beverages or any other allied goods under the trade mark ‘Blenders Pride’, while I.A. No. 1313 of 2005 is an application filed by Defendant No.2 under Section 10 of the Code of Civil Procedure (CPC) for staying trial of this suit since this Defendant had earlier instituted Suit No. 2105 of 2005 in the District Court at Jalandhar, Punjab (for short the Jalandhar suit) against Seagram Manufacturing Pvt. Ltd. which ‘‘as per the averments made by the Plaintiffs in this Court, has merged with the Plaintiff No. 2. The identity of the contesting parties in both the suits is substantially the same.’‘ Defendant No. 2 has also alleged in its application that the other requirements of Section 10 CPC have been made out.

10. Stay of suit.—No Court shall proceed with the trial of any suit in which the matter in issue is also directly and substantially in issue in a previously instituted suit between the same parties, or between parties under whom they or any of them claim litigating under the same title where such suit is pending in the same or any other Court in India having jurisdiction to grant the relief claimed, or in any Court beyond the limits of India established or continued by the Central Government and having like jurisdiction, or before the Supreme Court.

6. The first question that is asked by Section 10, and which needs an answer, is whether the issues in the Jalandhar suit and this suit are the same.

7. The reliefs claimed in the Jalandhar suit are:

‘‘a) That this Honble Court by a perpetual order and injunction be pleased to restrain the Defendants by themselves, their servants, representatives, agents, printers, stockists and distributors from in any manner using the trademark ‘‘Blenders Pride’‘ or any other deceptively similar word/name so as to infringe the Plaintiffs registered trademark ‘‘Blenders Pride’‘.

b) That this Honble Court by a perpetual order and injunction be pleased to restrain the Defendants by themselves, their servants, representatives, agents, printers, stockists and distributors from in any manner using the trademark ‘‘Blenders Pride’‘ or any other deceptively similar word/name so as to pass of or enable others to pass of the Defendants products as the products of the Plaintiff.’‘

8. The reliefs claimed in this suit are:

‘‘a) A decree for permanent injunction restraining the defendants, their directors, assigns in business, distributors, dealers and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in alcoholic beverages or any other allied goods under the trade mark BLENDERS PRIDE or any other trade mark as may be deceptively similar with the trade mark BLENDERS PRIDE of the plaintiffs, as may be likely to cause confusion or deception leading to passing off of the goods and/or business of the defendants for those of the Plaintiffs;

b) An order for delivery up of the infringing goods of the defendants including all offending labels, cartons, packagings, blocks, dies, printed and advertising material, etc. to an authorised representative of the Plaintiffs for destruction/ erasure;

c) An order for rendition of accounts of profits earned by the defendants from sale of impugned goods and a decree for the amount so found due, or in the alternative, a decree for damages in excess of Rupees 20 lakhs, as may be ascertained, be passed in favour of the Plaintiffs;’‘

9. In the Jalandhar suit, the two prayers are based on a claim of the plaintiff therein that its trademark is being infringed or is sought to be passed off by the defendants therein. In the present suit, the Plaintiffs base their claim against the Defendants on passing off the trademark. Without going into any great detail in respect of the averments made in the plaint, a bare perusal of the prayers made in the two suits, makes it quite clear that the broad controversy, or the subject matter, relates to the use of the trademark ‘Blenders Pride’. In the Jalandhar suit, Defendant No. 2 claims exclusive entitlement to use the trademark (at least as against the opposite party, who is allegedly infringing the trademark or passing it off as its own) and in this suit, the Plaintiffs claim exclusive entitlement to use the trademark (at least as against the opposite party, who is allegedly passing it off as its own). Under these circumstances, a decree passed in the Jalandhar suit would clearly have a direct and substantial impact on this suit, and I doubt if there can be much debate about this. It is for this reason (and also in view of the settled legal position) that I do not think it necessary to traverse the various averments made in both the suits.

10. The law on this subject was broadly crystallized recently in National Institute of Mental Health and Neuro Sciences v. C. Parameshwara, (2005) 2 SCC 256 [LQ/SC/2004/1412 ;] ">(2005) 2 SCC 256 [LQ/SC/2004/1412 ;] [LQ/SC/2004/1412 ;] . The Supreme Court held in paragraph 8 of the Report,

‘‘The object underlying Section 10 is to prevent courts of concurrent jurisdiction from simultaneously trying two parallel suits in respect of the same matter in issue. The object underlying Section 10 is to avoid two parallel trials on the same issue by two courts and to avoid recording of conflicting findings on issues which are directly and substantially in issue in previously instituted suit. The language of Section 10 suggests that it is referable to a suit instituted in the civil court and it cannot apply to proceedings of other nature instituted under any other statute. The object of Section 10 is to prevent courts of concurrent jurisdiction from simultaneously trying two parallel suits between the same parties in respect of the same matter in issue. The fundamental test to attract Section 10 is, whether on final decision being reached in the previous suit, such decision would operate as res judicata in the subsequent suit. Section 10 applies only in cases where the whole of the subject-matter in both the suits is identical. The key words in Section 10 are ‘‘the matter in issue is directly and substantially in issue’‘ in the previous instituted suit. The words ‘‘directly and substantially in issue’‘ are used in contradistinction to the words ‘‘incidentally or collaterally in issue’‘. Therefore, Section 10 would apply only if there is identity of the matter in issue in both the suits, meaning thereby, that the whole of the subject-matter in both the proceedings is identical.’‘

11. Applying the law laid down by the Supreme Court, it can be said that to this extent, the final decision in the Jalandhar suit would operate as res judicata in this suit.

13. As regards the second ingredient of Section 10 CPC, namely, the jurisdiction of the Jalandhar Court to grant the relief prayed for, there was no dispute between learned counsels for the parties. The third ingredient, however, did cause some debate.

17. From the above discussion, it follows that the parties in the Jalandhar suit and the present suit are not the same. Since one of the vital ingredients of Section 10 CPC is missing, there is no reason for me to stay the trial in this suit as prayed by the Defendants.

ECHO is on.

20. The view expressed by the Supreme Court is not only explicit, but is obviously binding. No contrary decision having been shown to me by learned counsel for the Defendants, it must be held that even if the Section 10 CPC application were to be allowed, the injunction application filed by the Plaintiffs could be heard and decided by me.

12. Learned counsel for the Plaintiffs contended that if the Jalandhar suit were dismissed, it would not necessarily result in a decree against Defendant No. 2 in this suit. In the face of such a possibility, would it still be correct to say that the matter in issue in the Jalandhar suit and this suit are directly and substantially the same I am of the view that this question does not really arise. It is not for the Court to anticipate or guess what decree would be passed in an earlier suit and what would be the consequences thereof. As long as the issue in an earlier suit has a direct and substantial impact on a suit subsequently filed, this requirement of Section 10 CPC would be met. This view is merely an extension or application of what I believe the Supreme Court has suggested in Manohar Lal Chopra. Although this decision is different on facts, yet it is important to note that the Supreme Court has taken a view that even if an earlier suit is vexatious, remedial steps are still available under the law. I think the necessary corollary of this is that if an earlier suit were bona fide, as it appears to be in the case of the Jalandhar suit, the provisions of Section 10 CPC would most certainly be applicable, even if it were assumed that the Jalandhar suit would ultimately be not decreed. The question raised by learned counsel for the Plaintiffs in this context, even if it did arise, must be answered in the negative.

14. The plaintiff in the Jalandhar suit is Defendant No.2 in the present suit, while the defendants in the Jalandhar suit are M/s Seagram Manufacturing Private Limited and M/s Seagram Distilleries Pvt. Ltd. who are said to be ‘‘…. engaged in the manufacture, and distribution of liquor and sell and export alcoholic beverages under various labels including inter alia the label ‘‘Blenders Pride’‘….’‘ and two of their dealers in Jalandhar city. The Plaintiffs in the present suit are Austin Nichols and Co. and Seagram India Private Limited. Quite clearly, the Plaintiffs in the present suit are not parties in the Jalandhar suit.

15. However, learned counsel for the Defendants pointed out that the fact that Seagram Manufacturing Private Limited has been made a party in the Jalandhar suit (and not Seagram India Private Limited) is really a technical defect that ought to be overlooked because Seagram Manufacturing Private Limited ‘‘is now merged with Plaintiff No.2 M/s Seagram India Pvt. Ltd.”. I do not think the matter is as simple as that. For one, in the Jalandhar suit the Defendants have filed some documents, including a carton of ‘Seagram’s Blenders Pride Rare Premium Whisky’ (a photocopy of which is on record here). The carton states that the whisky is blended and bottled by Seagram India Private Limited. Under the circumstances, with due diligence the Defendants could have known the interest of Seagram India Private Limited in the controversy and ought to have made it a party in the Jalandhar suit. Secondly, the relationship between these two entities is not a recent phenomenon. In the plaint filed in the present suit, it is stated by the Plaintiffs in paragraph 8 thereof that, ‘‘Pursuant to order dated 03.09.2003, passed by the Hon’ble High Court of Delhi in Company Petition Nos. 233-234 of 2003 under section 391(2) and 394 of the Companies Act, 1956, Seagram Manufacturing Pvt. Ltd, a wholly owned subsidiary of Plaintiff No.2 has since merged with Seagram India Pvt. Ltd, plaintiff No.2.” The Defendants in their written statement do not deny this. Although the actual date of merger is not stated in the plaint, one can safely assume it to be pretty close to the date of the order passed by this Court in September, 2003, while the Defendants filed the Jalandhar suit over a year later on 14th January 2005. Again, with due diligence, the Defendants could have certainly come to know the true state of affairs vis-a-vis the relationship between Seagram Manufacturing Private Limited and Seagram India Private Limited, particularly in the light of the aforementioned carton filed by them. Consequently, I am of the view that the defect is not technical, as submitted by learned counsel for the Defendants, but in the given circumstances, it is quite substantial; even if it were not so, the Defendants must face the consequences of the so-called technical defect.

18. It was then contended by learned counsel for the Defendants that Plaintiff No.2 is really the only necessary party to the proceedings both in Jalandhar and here because it is the licensee of Plaintiff No.1 and is the only party likely to be affected by the outcome of the proceedings in both places. It was submitted that since Plaintiff No.2 is a party both in the Jalandhar suit and in the present suit, the third ingredient of Section 10 CPC is met. I am afraid it is not possible to agree with learned counsel. Plaintiff No.1 is the proprietor of the trademark ‘Blenders Pride’ in India (and as it appears, even worldwide) and I do not think that it can be said with any degree of seriousness that the proprietor of the trademark is not vitally interested or perhaps concerned with the proceedings in the Jalandhar suit. This argument merits immediate rejection.

19. Learned counsel for the Plaintiffs also contended that even if the Section 10 CPC application were to be allowed, at best only the trial of the present suit could be stayed and the injunction application filed by the Plaintiffs could be proceeded with. Reliance was placed, and I think rightly, on Indian Bank v. Maharashtra State Co-operative Marketing Federation Ltd., AIR 1998 SC 1952 [LQ/SC/1998/561] . In this decision the Supreme Court has lucidly explained what the word ‘trial’ means in the context of Section 10 CPC. It is stated in paragraph 8 of the Report,

‘‘Therefore, the word ‘‘trial’‘ in Section 10 will have to be interpreted and construed keeping in mind the object and nature of that provision and the prohibition to ‘proceed with the trial of any suit in which the matter in issue is also directly and substantially in issue in a previously instituted suit’. The object of the prohibition contained in Section 10 is to prevent the courts of concurrent jurisdiction from simultaneously trying two parallel suits and also to avoid inconsistent findings on the matters in issue. The provision is in the nature of a rule of procedure and does not affect the jurisdiction of the court to entertain and deal with the latter suit nor does it create any substantive right in the matters. It is not a bar to the institution of a suit. It has been construed by the courts as not a bar to the passing of interlocutory orders such as an order for consolidation of the latter suit with the earlier suit, or appointment of a receiver or an injunction or attachment before judgment. The course of action which the court has to follow according to Section 10 is not to proceed with the ‘trial’ of the suit but that does not mean that it cannot deal with the subsequent suit any more or for any other purpose. In view of the object and nature of the provision and the fairly settled legal position with respect to passing of interlocutory orders it has to be stated that the word ‘trial’ in Section 10 is not used in its widest sense.”(Emphasis given).

21. Learned counsel for the Plaintiffs also referred to MTNL and Ors v. Tata Press, 1994 (28) DRJ 541 wherein an application under Section 10 CPC was allowed and yet, in paragraph 10 of the Report, it was observed,

‘‘By the stay of the suit under Section 10 of CPC the jurisdiction of court to entertain and deal with interim applications seeking urgent relief in the interest of justice is not taken away. The Court can hear such applications and pass such interim orders as may be deemed appropriate……”

16. As regards Austin Nichols and Co. (Plaintiff No.1), the case of the Defendants is on a more slippery wicket. The plaint in the present suit states that Pernod Ricard S.A. (by itself and through its subsidiaries) is engaged in the business of manufacturing and marketing a variety of alcoholic beverages worldwide. As a part of its global acquisition of Seagram Spirits and Wines business (which includes The Seagram Company Limited, Canada), the Canadian company assigned the trademark ‘Blenders Pride’ alongwith its goodwill and pending registration applications associated with it to Pernod Ricard S.A. by a Deed of Assignment dated 21st December, 2001. Simultaneously, Pernod Ricard S.A. the ultimate holding company of Austin Nichols and Co. (Plaintiff No.1) assigned the trademark ‘Blenders Pride’ and all pending registration applications associated with it to Plaintiff No.1 by a Deed of Assignment also dated 21st December, 2001. On these facts, it is averred that Plaintiff No. 1 is the proprietor of the trademark ‘Blenders Pride’ in India and Plaintiff No.2 is its licensee. None of these broad facts have been denied by the Defendants in their written statement except to say that the Plaintiffs are put to strict proof thereof. I suppose the Plaintiffs will, in good time, be required to prove their averments, but until then, in the absence of any specific denial by the Defendants, I must assume them to be correct. Proceeding on this basis, there can be no doubt that Plaintiff No.1 would be vitally interested in the outcome of the Jalandhar suit and, to my mind, would also be a necessary party in that suit. Since Plaintiff No.1 is not a party to the Jalandhar suit, despite its being a necessary party (in my opinion) I must conclude that the third ingredient of Section 10 CPC is absent.

Learned counsel for the Plaintiffs also referred to Escorts Construction Equipment Ltd. but in this case, even though the Section 10 CPC application was allowed, the hearing of the interim injunction application was taken up on a concession made by learned counsel. The decision is not, therefore, a precedent for our purposes.

22. In view of the above discussion, IA No. 1313 of 2005 is dismissed with costs.

I.A. No. 999 of 2005

23. In this application, the Plaintiffs pray for an injunction, essentially against the Defendants, restraining them from directly or indirectly dealing in alcoholic beverages or any other allied goods under the trademark ‘Blenders Pride’.

24. Broadly, it is stated by the Plaintiffs that The Seagram Company Limited, Canada (hereinafter referred to as Seagram Canada) coined and adopted the trademark ‘Blenders Pride’ in relation to whisky produced by it, sometime in 1973. This whisky has since been sold in over 50 countries worldwide and relevant details thereof, including volume of sales, have been mentioned in the injunction application. It is stated that ‘Blenders Pride’ whisky enjoyed a spillover and transborder reputation in India in the late 1980s and early 1990s through millions of travelers coming to India from different countries who were exposed to the sale and promotion of this whisky. It is also stated that in this era of instant communication, brands promoted outside India are instantly noticed in India on account of various foreign satellite television channels and Internet.

25. After the opening up of our economy, Seagram Canada applied to the Government of India (through the Foreign Investment Promotion Board [FIPB]) on 1st April, 1993 to set up a wholly owned subsidiary to manufacture and market whisky, amongst other things. Permission to do so was granted to Seagram Canada on 20th July, 1993 pursuant to which it set up and incorporated Plaintiff No. 2, that is, Seagram India Private Limited (Seagram India) on 3rd September, 1993. Thereafter, Seagram India set up a wholly owned subsidiary called Seagram Manufacturing Private Limited (SMPL) to produce alcoholic beverages, including whisky under the trademark ‘Blenders Pride’.

26. On 6th March, 1995 SMPL applied to the concerned excise authorities to register its label and trademark ‘Blenders Pride’ with the intention of commencing its bottling operations. Approval for this was granted on 25th March, 1995. Since then, SMPL has been manufacturing and selling whisky under the trademark ‘Blenders Pride’ till its merger with Seagram India (Plaintiff No. 2) pursuant to an order dated 3rd September, 2003 passed by this Court in Company Petition Nos. 233-234 of 2003 under Sections 391(2) and 394 of the Companies Act, 1956. The details of sales and promotional expenses incurred by SMPL and Seagram India in marketing the whisky have been mentioned in the injunction application.

27. In the meanwhile, on 25th March, 1994 Seagram Canada applied to the concerned authorities for registration of the trademark and label ‘Blenders Pride’ vide application No. 623364 and 623365 on 8th December, 1994 Seagram Canada licensed use of this trademark to Seagram India. The terms of this agreement are of some importance and will be discussed a little later.

28. Sometime in 2001-2002, Pernod Ricard S.A. a French entity (the ultimate holding company of Plaintiff No. 1) appears to have acquired the business operations of Seagram Canada. By a Deed of Assignment dated 21st December, 2001 Seagram Canada assigned the trademark ‘Blenders Pride’ alongwith the goodwill therein and the pending registration applications to Pernod Ricard. It is stated in the injunction application that simultaneously Pernod Ricard assigned the trademark ‘Blenders Pride’ and the pending registration applications to Austin Nichols and Co. (Plaintiff No.1) by a Deed of Assignment dated 21st December, 2001. It is also stated that effectively Plaintiff No.1 is the proprietor of the trademark ‘Blenders Pride’ and it took steps on 17th May, 2002 to seek its substitution as the applicant in the pending registration applications. It is also stated that Plaintiff No.2 is the licensee authorized to use the trademark ‘Blenders Pride’.

29. Interestingly, the Plaintiffs application No. 623365 for registration of the trademark ‘Blenders Pride’ and the Defendants application No. 618414 for registration of the same trademark (claiming user since 1st January, 1994) came to be advertised in the Trade Marks Journal dated 25th August 2003. Both parties filed a Notice of Opposition against each other’s application, but it appears that despite this, the Registrar of Trade Marks issued a registration certificate in favour of the Defendants (on 13th January, 2004 but effective from 2nd February, 1994, the date of the application). According to the Plaintiffs, they came to know in early February, 2005 that the Defendants have introduced their whisky in the market under the trademark ‘Blenders Pride’ which led to institution of the present proceedings (on 7th February, 2005) on the allegation that the Defendants are passing off their whisky as that of the Plaintiffs contrary to Section 27(2) of the Trade Marks Act, 1999. They say, as did Iago in Othello (III.iii.163), though not so dramatically,

‘‘But he that filches from me my good name Robs me of that which not enriches him And makes me poor indeed.”

31. Before dealing with the contentions urged by learned counsels for the parties on the broad facts outlined above, I must point out two facts that strike me as rather odd.

30. The Defendants in their written statement deny the averments made by the Plaintiffs and add that they had made an application on 18th October, 1993 seeking approval of the label bearing the mark ‘Blenders Pride’ and such approval was granted by the Excise and Taxation Commissioner of the State of Punjab on 10th November, 1993. The Defendants say that they have been selling their whisky under the trademark ‘Blenders Pride’ since 1993-94 but temporarily discontinued production thereafter. On 27th July, 2004 the Excise and Taxation Commissioner, Punjab again granted approval to Defendant No.2 for sale of its whisky in the State of Punjab. In sum and substance, the Defendants claim entitlement to use the trademark ‘Blenders Pride’ which they say they have been doing since 1994.

32. Firstly, the Defendants claim (in their Jalandhar suit) to be,

‘‘… one of the largest, most reputed and well established manufacturers and distributors of liquor including Indian Made Foreign Liquor, Brandy, Gin, Wine, Whisky, Rum, Vodka and other alcoholic beverages since past several years. The Plaintiff has invented and adopted a number of well known brands such as ‘‘Aristocrat Whisky’‘, ‘‘Aristocrat Premium Malt Whisky”…. etc.’”

In spite of their being in the same business as the Plaintiffs and despite being a large, reputed and well established manufacturer of liquor, how is it that the Defendants were not aware of the existence of ‘Blenders Pride’ whisky all over the world for about two decades if not more Or is it that the Defendants are feigning ignorance I find it hard to accept the lack of knowledge of the Defendants and am inclined to believe that they knew the existence of ‘Blenders Pride’ whisky in the international market.

33. Secondly, the Plaintiffs have stated on affidavit in their injunction application that they have held as many as 20 promotional events for ‘Blenders Pride’ (a fact not specifically denied by the Defendants). These promotional events were held and advertised in different cities in India from January 2001 onwards. Since the Defendants are in the same business as the Plaintiffs, how is it that they were unaware of these events, or if they were aware, what steps did they take to prevent the Plaintiffs from exploiting the trademark ‘Blenders Pride’ The supposed absence of knowledge and lack of awareness of the Defendants to what is going on in their trade, virtually right under their nose, appears to me to be strikingly odd. I need only recall the observations of the Supreme Court (though in an entirely different context) that ‘‘There is no rule of law that commonsense should be put in cold storage…” (See Prakash Chandra Mehta v. Commissioner and Secretary, Government of Kerala, 1985 (Supp) SCC 144) [LQ/SC/1985/126] . But be that as it may, I suppose the contentions urged by learned counsels for the parties have to be dealt with on merits despite the curious aspects noted above.

34. The primary contention of learned counsel for the Plaintiffs (to establish a prima facie case) was that his clients were the first and prior users of the trademark ‘Blenders Pride’. It has been stated in the plaint as well as in the injunction application that the trademark ‘Blenders Pride’ was coined and adopted by the predecessors in interest of Plaintiff No. 1 (that is Seagram Canada) way back in 1973 and that this trademark has been registered in as many as 50 countries worldwide. The Plaintiffs have filed a representative list of registrations obtained in a large number of countries alongwith the plaint and have separately filed copies of several registration certificates. Similarly, the Plaintiffs have given the volume of sales of ‘Blenders Pride’ whisky in a few countries over the last two decades.

35. The Defendants have not specifically denied any of these averments made by the Plaintiffs or the contents of the documents filed by them. All that they have to say in reply is that the Plaintiffs are put to strict proof of the averments made by them and that the Defendants have manufactured and sold whisky under the trademark ‘Blenders Pride’ in the State of Punjab during the financial year 1993-94. The Defendants have mentioned no date, although in paragraph 21 of the reply to the injunction application it is stated that Defendant No.2 had introduced their alcoholic beverage in January, 1994. To support their averment, the Defendants have annexed a few unsigned invoices without any excise gate pass number (or other relevant particulars) for the period 27th November, 1993 till 27th March, 1994. Learned counsel for the Plaintiffs challenged the authenticity of these invoices, but I need not go into that question at this stage. Even assuming the invoices to be genuine, they do not show that the Defendants were concerned with or marketing ‘Blenders Pride’ whisky prior to November, 1993. On the basis of these facts placed before me by learned counsels for the parties, I must conclude that the Plaintiffs (or their predecessors in interest) manufactured and sold ‘Blenders Pride’ whisky, at least internationally, well before the Defendants.

ECHO is on.

36. As far as ‘Blenders Pride’ whisky in India is concerned, learned counsel for the Plaintiffs contended that his clients were prior users of the trademark. I am afraid the facts do not substantiate this contention, unless one accepts the submission of learned counsel for the Plaintiffs that the invoices relied on by the Defendants are bogus and fabricated, an allegation that will be decided at the trial of the suit and which I am not prepared to decide at this stage.

37. The reason for rejecting the contention of learned counsel for the Plaintiffs will be apparent from a few facts. The predecessors in interest of the Plaintiffs (Seagram Canada) applied to the Government of India on 1st April, 1993 for setting up a wholly owned subsidiary for manufacturing alcoholic beverages. Permission for this was granted to Seagram Canada on 20th July, 1993. Pursuant to this, Plaintiff No. 2 was incorporated on 3rd September, 1993. Thereafter, on 25th March, 1994 Seagram Canada applied for registration of the trademark ‘Blenders Pride’ and then on 8th December, 1994 it licensed Plaintiff No. 2 to use the trademark. Plaintiff No. 2 set up its own subsidiary, that is, SMPL, which then applied to the excise authorities on 6th March, 1995 for permission to bottle and manufacture whisky under the trademark ‘Blenders Pride’. This permission was granted on 25th March, 1995 after which Plaintiff No. 2 began manufacturing and selling ‘Blenders Pride’ whisky. These facts, derived from the plaint filed by the Plaintiffs show that they began producing ‘Blenders Pride’ whisky in India only in March, 1995 or thereabouts. They certainly had the intention to manufacture and sell in the Indian market since April, 1993 but could do so only in March, 1995. On the other hand, as already mentioned above, the Defendants began manufacturing and selling whisky under the trademark ‘Blenders Pride’ with effect from sometime in November, 1993. In other words, in India the Defendants were first past the post, as it were, in the manufacture and sale of ‘Blenders Pride’ whisky.

What is the effect of the Plaintiffs being the first and perhaps the only manufacturers of ‘Blenders Pride’ whisky internationally and the second in India

41. Applying the law laid down by the Supreme Court to the facts of the present case, it must be held that,

38. To answer this question, learned counsel for the Plaintiffs drew my attention to N.R. Dongre and Ors. v. Whirlpool Corporation and Anr., (1996) 5 SCC 714 [LQ/SC/1996/1396] and Milmet Oftho Industries and Ors. v. Allergan Inc., (2004) 12 SCC 624 [LQ/SC/2004/712] . On the other hand, learned counsel for the Defendants contended that the important question to ask is who gets past the post first – the length of user of the trademark being immaterial. For this he relied on Gaw Kan Lye v. Saw Kyone Saing, AIR 1939 Rangoon 349, Consolidated Foods Corporation v. Brandon and Co. Pvt. Ltd. AIR 1965 Bombay 35 and Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd, AIR 2001 SC 2083 [LQ/SC/2001/1184] . Learned counsel for the Defendants also contended that since the Plaintiffs did not have a presence in India prior to the Defendants entering the Indian market, his clients would be the prior user of the trademark ‘Blenders Pride’ for all intents and purposes. I think the development of the law is to the contrary.

39. In Milmet, the appellant therein was an Indian pharmaceutical company manufacturing Ocuflox while the respondent, apparently a foreign company, was also manufacturing Ocuflox, both being a medicinal preparation relating to the eyes. According to the respondent, it first used the mark on 9th September, 1992 after which it marketed the product in several countries across the world but had still not entered the Indian market. The appellant was granted registration by the Food and Drug Control Administration on 25th August, 1993 and had also applied for registration of the mark Ocuflox in September, 1993, that is, almost a year after the respondent. On these broad facts, the respondent filed a suit for injunction for passing off against the appellant and an ex parte ad interim injunction was granted by a learned Single Judge. The ad interim injunction was subsequently vacated on the ground that the product of the respondent was not sold in India and that the appellant was the first to introduce the product in India. A Division Bench allowed an appeal filed by the respondent and thereafter the matter came to be considered by the Supreme Court.

40. The Supreme Court observed in paragraph 8 of the Report that now a days goods are widely advertised in newspapers, periodicals, magazines and other media available in the country resulting in a product acquiring a worldwide reputation. It was observed that if a mark were associated worldwide with a particular product, it would lead to an anomalous situation if similar goods with an identical mark were allowed to be sold in India. The Supreme Court, however, sounded a note of caution when it observed 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.’‘ In paragraph 9 of the Report, the Supreme Court gave its conclusions, which are of considerable importance in so far as the present case is concerned. It was held as follows:-

‘‘In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere fact that the respondents have not been using the mark in India would be irrelevant if they were first in the world market. The Division Bench had relied upon material which prima facie shows that the respondents product was advertised before the appellants entered the field. On the basis of that material the Division Bench has concluded that the respondents were first to adopt the mark. If that be so, then no fault can be found with the conclusion drawn by the Division Bench.” (Emphasis given).

‘Blenders Pride’ whisky manufactured by the Plaintiffs had a worldwide reputation, being available for sale in a large number of countries since 1973 onwards. It cannot be said that the product was unknown in India.

The predecessor in interest of the Plaintiffs had an intention of directly exploiting the Indian market. In fact, they had applied for permission from the Government of India to manufacture ‘Blenders Pride’ whisky, which was granted, and they have been manufacturing ‘Blenders Pride’ whisky in India since 1995.

The Plaintiffs are not using their worldwide reputation to throttle an Indian company by not permitting it to sell a particular product in India. The Plaintiffs are only trying to defend their worldwide reputation in ‘Blenders Pride’ whisky.

On the contrary, it appears from the material on record that the Defendants manufactured ‘Blenders Pride’ whisky for a couple of months in 1993-94 only so as to be the first to enter the Indian market, and thereby gain an advantage over the Plaintiffs, and perhaps prevent them from manufacturing ‘Blenders Pride’ whisky in India.

The admitted position is that after March, 1994, the Defendants did not manufacture Blenders Pride whisky till some time in 2005, that is, for a period of almost eleven years. Without commenting on this conduct of the Defendants, I have no doubt that the conduct of the Plaintiffs has been completely bona fide and that their actions are only intended to protect and prevent damage to their reputation. The Plaintiffs were the first in the world market with ‘Blenders Pride’ whisky and as held by the Supreme Court, even if they were not manufacturing ‘Blenders Pride’ whisky in India, it would be irrelevant, although such a situation has not arisen in the present case because the Plaintiffs are in fact manufacturing ‘Blenders Pride’ whisky in India.

42. I am of the view that the decision of the Supreme Court in Milmet is fully applicable to the facts of the present case and merely being first past the post in India is not enough. The Plaintiffs were first past the post worldwide and this is of crucial importance.

43. This issue was also exhaustively dealt with by a Division Bench of this Court in an illuminating discussion in N.R. Dongre v. Whirlpool Corporation, AIR 1995 Del 300 [LQ/DelHC/1995/385] , where the concept of trans-border reputation was also discussed. In paragraph 14 of the Report, it was said as follows:-

‘‘The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinema etc. Even though there may not be availability of the product in those countries because of import restrictions or other factors. In todays world it cannot be said that a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit and disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of the information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market.” (Emphasis given).

While arriving at the above conclusions, the Division Bench referred to the conclusions arrived at by the Calcutta High Court in J.N. Nichols (Vimto) Ltd. v. Rose and Thistle, 1994 PTC 83 ( paragraph 20) and Consolidated Foods Corporation (which was, incidentally, relied on by learned counsel for the Defendants).

44. The Division Bench also referred to a decision of the High Court of Australia in The Seven Up Company v. O.T. Ltd., (1947) 75 CLR 203 wherein it was observed as follows:-

‘‘The Court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia.”(Emphasis given).

So far as the present case is concerned, the alcoholic beverage bearing the trademark ‘Blenders Pride’ has been sold by the Plaintiffs in huge quantities internationally since 1973 and in large quantities in India since 1995 and, therefore, it is not necessary for me to seize ‘‘upon a very small amount of use of the foreign mark’‘ in coming to a conclusion that they are likely to be victims of injurious falsehood by the actions of the Defendants.

45. Finally, it was observed by the Division Bench in paragraph 23 of the Report as follows:-

‘‘Thus a product and its trade name transcends the physical boundaries of a geographical region and acquires a transborder or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial.’‘ (Emphasis given).

The Supreme Court in N.R. Dongre and Ors v. Whirlpool Corporation and Anr., (1996) 5 SCC 714 [LQ/SC/1996/1396] ( followed in Milmet) affirmed the view expressed by the Division Bench.

46. Learned counsel for the Plaintiffs also drew my attention to Rainforest Cafe, Inc v. Rainforest Cafe and Ors., 2001 PTC 353 (Delhi) wherein a learned Single Judge of this Court rejected the contention that the plaintiff therein was not entitled to an injunction because of non-user and non-activity in India. I am in respectful agreement with the view expressed by the learned Single Judge, but in any case since it appears to me that the matter is now conclusively settled by the decision of the Supreme Court in Milmet it is not necessary to discuss Rainforest.

47. In view of the above decisions and because of the huge advances made in information and communication technology over the years, I think it is too late for the Defendants to seriously urge that the regular sale of a product in one or more foreign countries would be unknown to persons living in India. I would, therefore, hold that the Plaintiffs having come out with ‘Blenders Pride’ whisky first in the international market were first past the post; even though the Defendants were the first do so in India. The fact that the product of the Plaintiffs was not manufactured or sold in India from 1973 (when it first entered the market) till 1995 when it became freely available in India, is of no consequence.

48. Learned counsel for the Plaintiffs also contended that prior use of the trademark ‘Blenders Pride’ by the Defendants was sporadic, experimental or intermittent and not substantial, continuous or evidencing genuine commercial use. Reference was made to the invoices of sale filed by the Defendants, which as mentioned above, were alleged to be procured documents and to the insignificant sales evidenced by these documents. According to learned counsel for the Plaintiffs, such use by the Defendants could not be described as ‘‘prior use’‘. Reliance was placed upon a few decisions of this Court, notably Century Traders v. Roshan Lal Duggar and Co., AIR 1978 Del 250 [LQ/DelHC/1977/59] , Bimal Govindji Shah v. Pannalal Chandulal, 1997 (2) Arb.LR 76, and East African (I) Remedies Pvt. Ltd. v. Wallace Pharmaceuticals Ltd., 105 (2003) DLT 293. [LQ/DelHC/2003/419]

50. Learned counsel for the Plaintiffs contended that the manufacture of ‘Blenders Pride’ whisky by the Defendants was not bona fide and could be ignored since it was intended to block the entry of the Plaintiffs into India. In this context, learned counsel relied upon Imperial Group Ltd. v. Phillip Morris and Co. Ltd., 1982 FSR 73, Bimal Govindji Shah Trading as Acme Industries v. Pannalal Chandulal, 1997 (2) Arb.LR 76 and Peshawar Soaps and Chemicals Ltd. v. Godrej Soaps Ltd., 2001 PTC 1. For the reasons given by me above, I need not deal with this contention or these decisions, more particularly in view of the fact that the Plaintiffs were first in the world market with ‘Blenders Pride’ whisky.

52. The general proposition canvassed by learned counsel for the Defendants has not been accepted by this Court in Apple Computer Inc. v. Apple Leasing and Industries, 1993 IPLR 63. Even otherwise, he is not supported by the facts of the case. But first, in Apple Computer a distinction has been made between the concept of goodwill in revenue laws and in a case of passing off. After discussing the case law in jurisdictions like Canada, Australia and USA and contrasting it with the law in England as laid down in Muller and Co. it was held,

53. On the other hand, the view expressed by the Ontario Supreme Court in Orkin Exterminating Co. Inc. v. Pestco Co. of Canada Ltd., 50 Ontario Reports 76 was accepted in Apple Computer in the following words,

‘‘I am in agreement with the view expressed by the Ontario Supreme Court with respect to the need to carry on business in the jurisdiction in a particular territory as also regarding the meaning of goodwill in passing-off matters. In other words, it is not necessary in the context of the present day circumstances, the free exchange of information and advertising through newspapers, magazines, video, television, movies, freedom of travel between various parts of the world, to insist that a particular plaintiff must carry on business in a jurisdiction before improper use of its name or mark can be restrained by the court. Similarly, I am also in agreement with the view expressed regarding the meaning of goodwill in passing-off cases. In passing-off cases, the main consideration is the likelihood of confusion and consequential injury to the plaintiff, and the need to protect the public from deception, deliberate or otherwise. Where such confusion or deception is prima facie shown to exist, protection should be given by courts to the name or mark or goodwill of the plaintiff.’‘ (Emphasis given).

57. In view of the above discussion, I would hold that ‘Blenders Pride’ whisky produced by the Plaintiffs had an international reputation that had spilled over to India and that the Plaintiffs had a right to protect that reputation, which they have exercised in these proceedings.

59. The Supreme Court also adverted to Salmond and Heuston in Law of Torts (28th Edition, page 95) wherein it is said that this sort of an injury is really an injurious falsehood which is awkwardly termed as passing off one’s goods or business as the goods or business of another. It is then stated.

49. I do not think it necessary to go into this issue at all given the fact that the Plaintiffs have even otherwise made out a strong case for the grant of an injunction in their favour. Therefore, even if the contention of learned counsel were rejected, it would make no difference to the ultimate conclusion. But, one cannot lose sight of the fact that even according to the Defendants, they manufactured ‘Blenders Pride’ whisky only for a few months in 1993-94 and thereafter stopped its manufacture for as long as eleven years till some time in 2005. During this period, the Plaintiffs sold ‘Blenders Pride’ whisky all over the world, including India, and even held a large number of events promoting ‘Blenders Pride’. The Plaintiffs have filed documents to show that that they advertised the trademark ‘Blenders Pride’ on television, particularly in 2002-03 and issued advertisements in newspapers and magazines containing the trademark ‘Blenders Pride’. The Defendants could not have been ignorant of this wealth of material, particularly since they are in the same business as the Plaintiffs; yet, the Defendants chose to keep silent for as long as eleven years. This is certainly a factor that cannot be ignored or disregarded (notwithstanding the observations in Gaw Kan Lye and Consolidated Foods) while considering the application for grant of an injunction filed by the Plaintiffs. At this stage, I may mention that learned counsel for the Defendants construed this submission of learned counsel for the Plaintiffs to mean that the Defendants had abandoned the manufacture of their ‘Blenders Pride’ whisky. Since learned counsel for the Plaintiffs later clarified that this was not his submission, I need not dwell on the issue of abandonment.

51. Learned counsel for the Defendants vehemently contended that the Plaintiffs had no trans-border reputation to protect. Reliance was placed on the Deeds of Assignment dated 21st December, 2001 between Seagram Canada and Pernod Ricard, and between Pernod Ricard and Plaintiff No. 1. The submission of learned counsel was that Seagram Canada still retained its worldwide and Indian business, which was not passed on to Pernod Ricard or to Plaintiff No. 1. It was submitted that Plaintiff No. 1 did not have any trans-border reputation in ‘Blenders Pride’ and was merely trafficking in the trademark. It was further submitted that in any event Pernod Ricard or Plaintiff No. 1 could not purchase only the international reputation of Seagram Canada without purchasing its business in India. Learned counsel placed reliance on Messrs. S. C. Cambatta and Co. Pvt. Ltd v. Commissioner of Excess Profits Tax, AIR 1961 SC 1010 [LQ/SC/1960/304] , Commissioner of Income tax v. B. C. Srinivasa Setty, (1981) 2 SCC 460 [LQ/SC/1981/96] , Star Industrial Co. Ltd v. Yap Kwee Kor, [1976] FSR 256, Commissioners of Inland Revenue v. Mullers and Cos Margarine Ltd., (1901) AC 217 and Pinto v. Badman, 8 RPC 181 to contend that goodwill has no independent existence but is inextricably linked or attached to a business. Therefore, if a business is not transferred, then its goodwill alone cannot be transferred. It was contended that in the present case the business associated with the unregistered trademark ‘Blenders Pride’ was not transferred to Plaintiff No. 1, which in any event did not carry on any business in India and so could not maintain an action for passing off.

‘‘In my view, the concept of goodwill as enunciated for the purposes of income-tax, should not be bodily lifted and applied to the goodwill, which is invoked in passing off action. Whereas in case income-tax, goodwill has to be assigned a monetary value for the purposes of the revenue laws, there is no such need in the case of passing off actions. Whereas in case of revenue laws question of goodwill would arise only when business is carried on, in cases of taxation, whether upon dissolution of a partnership or purchase of goodwill as a commercial transaction, there is a revenue relevance. In passing off action what is consequential is unauthorised use of a name of a business, or a successful product. The requirement to actually carry on business, in India would be unfair and ought not to be applied to the case of passing off. One must remember that in the case of passing off what one producer of goods or service is trying to do is to stop another trader from usurping his name and reputation as attached to the goods, or as attached to the services which are rendered by him. There is no such thing in the matters dealing with the revenue. In matters of revenue, it is assumed that business is actually being carried on. However, in the case of goods which are produced in another jurisdiction, which have acquired a name and reputation either through publicity in journals or newspapers, such publicity itself may create a demand for the product, especially when coupled with information gathered from various sources by a prospective purchaser as to how a particular article performs, how durable it is, and how particular services are more satisfactory compared to others. As such, requirement of carrying on trade, in a particular jurisdiction, has not been accepted as sine qua non for a passing off action in jurisdiction other than England. In England, there is continued insistence on actual business being carried on, and unless actual business is carried on, an injunction in passing off cases is not granted.’‘ (Emphasis given).

54. In Baker Hughes Ltd. v. Hiroo Khushalani, 1998 PTC 18, a learned Single Judge of this Court specifically disagreed with Star Industrial. It was held that ‘‘The grafting of the concept of user to the requirement of reputation in the definition of the tort of passing off cannot be accepted in view of the decisions of the Supreme Court in Ruston and Hornby Ltd. v. Zamindars Engineering Co. [AIR 1970 SC 1649 [LQ/SC/1969/330] ] and N.R. Dongre v. M/s Whirlpool Corporation Ltd.” It may be mentioned that Baker Hughes was set aside by a Division Bench on some other point but was upheld by the Supreme Court in Baker Hughes Ltd. v. Hiroo Khushalani, 2004 (29) PTC 153 (SC) [LQ/SC/2004/749] . I am in respectful agreement with the views expressed by the two learned Judges of this Court and see no reason to follow a different path. Consequently, the decisions relied upon by learned counsel for the Defendants are either distinguishable or not applicable.

55. On facts also, it may be noted that there is no serious dispute that Seagram Canada set up and incorporated a subsidiary company in India being Seagram India. By an agreement dated 8th December, 1994 Seagram Canada licensed the trademark ‘Blenders Pride’ to Seagram India and permitted it to manufacture alcoholic beverages under that trademark. Seagram India set up a wholly owned subsidiary called SMPL. It is this company that bottled and manufactured whisky under the trademark ‘Blenders Pride’ owned by Seagram Canada. This whisky has been in the Indian market since 1995. It is true that by Deeds of Assignment dated 21st December, 2001 Seagram Canada assigned the trademark ‘Blenders Pride’ to Pernod Ricard, which then assigned it to Plaintiff No.1, but it has been specifically stated in paragraph 15 of the injunction application that Pernod Ricard, the ultimate holding company of the Plaintiffs acquired the Indian business operations of Seagram Canada. The Defendants in their reply have not denied this. Therefore, the argument advanced by learned counsel for the Defendants cannot be accepted on these undisputed facts.

60. In Ciba Ltd. v. M. Ramalingam, AIR 1958 Bombay 56, emphasis was placed on the harm caused to a consumer when goods are sought to be passed off as those of somebody else. It was held in paragraph 3 of the Report that

56. Moreover, I think learned counsel for the Defendants is taking a rather narrow view of the issues involved. There is no doubt that some goodwill or reputation is attached to the trademark ‘Blenders Pride’. Alcoholic beverages under that trademark are being sold worldwide since 1973 and in India since 1995. Plaintiff No. 1 is entitled to exploit the trademark ‘Blenders Pride’ in India, its holding company Pernod Ricard having acquired all business operations in relation to that trademark from Seagram Canada, while Plaintiff No. 2 which is ultimately held by Pernod Ricard is licensed to use that trademark in relation to alcoholic beverages and has been doing so since 1995. As far back as in 1959, the Supreme Court held in Corn Products Refining Co. v. Shangrila Food Products, AIR 1960 SC 142 [LQ/SC/1959/182] in paragraph 11 of the Report,

‘‘It seems clear to us that what is necessary is that the reputation should attach to the trade mark; it should appear that the public associated that trade mark with certain goods. The reputation with which we are concerned in the present case is the reputation of the trade mark and not that of the maker of the goods bearing that trade mark. A trade mark may acquire a reputation in connection with the goods in respect of which it is used though a buyer may not know who the manufacturer of the goods is. (Emphasis given).

The trademark ‘Blenders Pride’ has been associated with whisky worldwide since 1973 and the Defendants are apparently trying to cash in on this reputation. It hardly matters (in this case) to the consumer of whisky who is the manufacturer of ‘Blenders Pride’ whisky, as long as the product is genuine. To appreciate what the Supreme Court had in mind, one may take, as an example, ‘Dettol’, which is a widely used antiseptic in India - it would hardly make any difference to anyone who manufactures it, as long as the product is genuine. On the other hand, there could be a specific product whose name is unknown but it is sold on the reputation of the manufacturer because the consumer knows that that manufacturer will produce only quality goods. Internationally recognized manufacturers of sports equipment such as Nike or Adidas who manufacture a variety of sports goods including different types of sports shoes, come immediately to mind.

58. In this context, it is also important to appreciate the meaning of passing off, which is what this case is all about. In Laxmikant V. Patel v. Chetanbhat Shah, AIR 2002 SC 275 [LQ/SC/2001/2807] , a reference was made to Kerly (Law of Trade Marks and Trade Names, 12th Edition, Para 16.49) wherein it was said that an action for passing off will lie wherever the defendant companys name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. It was further noted that where there is a probability of confusion in business, an injunction would be granted even though the defendant adopted the name innocently. In paragraph 10 of the Report, it was observed,

‘‘A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith.’” (Emphasis given).

‘‘The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.”(Emphasis given).

‘‘When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion.” (Emphasis given).

61. A learned Single Judge of this Court took the same view in M/s Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., AIR 1990 Delhi 19 (paragraphs 28 and 29 of the Report).

62. In view of the above, there is little doubt that the effect of the Defendants marketing their whisky under the trademark ‘Blenders Pride’ tends to give an impression to the unwary purchaser that it is the same product that has been in the market since 1973 and is an internationally recognized product. An innocent purchaser may buy and consume whisky manufactured by the Defendants under this mistaken impression. It is only when the consumer comes to know that the quality of both the products is different, that he would realize that he has been fooled by the product of the Defendants. This injurious falsehood not only damages the reputation of ‘Blenders Pride’ manufactured by the Plaintiffs (and earlier by their predecessor in interest) but also causes loss of business to them. The Plaintiffs require to be protected against this as prayed for by their learned counsel.

63. How big is the problem facing the Plaintiffs In paragraph 12 of the plaint, they have stated that since 1995, they have a total turnover (excluding duties and taxes) of Rs.208 crores and their marketing expenses have been as high as Rs.50 crores. Their annual sales for the year 2004 were in the region of Rs.60 crores. In view of these large figures, which are applicable only to India, it is quite clear that the Plaintiffs have built up a formidable reputation within India and must have an equally formidable international reputation. An attempt by anyone, including the Defendants, to dent that reputation or cause loss of business to the Plaintiffs must be taken serious note of and ought not to be overlooked. Given the above facts and figures, I am of the view that the Plaintiffs have made out more than a substantial case of irreparable loss and injury being caused to their reputation and business if they are denied an injunction. The balance of convenience lies in favour of the prayer of the Plaintiffs being granted.

70. Needless to say, any observation made is only for disposal of the applications before me and will not bind either party during trial in the case.