Scotch Whisky Association & Anr. v. Pravara Sahakari Shakar Karkhana Ltd.

Relevant Acts and provisions

Trade and Merchandise Marks Act, 1958

Section 27(2)

Provisions considered: Common law passing off, read with the saving for unregistered marks in Section 27(2) of the Trade and Merchandise Marks Act, 1958.

Brief facts

The Scotch Whisky Association, a body representing Scotch whisky distillers, and a co-plaintiff sued an Indian sugar cooperative that manufactured and sold whisky under a label depicting a kilted Scottish drummer and bearing words suggesting a Scotch blend. The plaintiffs alleged that the label falsely suggested the defendant's whisky was Scotch whisky or contained genuine Scotch whisky imported from Scotland, when in fact it was an Indian-made spirit, and sought an interim injunction restraining use of the label pending trial.

Issues before the Court

1. Does the name of a whisky class denote a protectable geographical reputation even without a registered trade mark in India?
2. Did the defendant's label misrepresent the geographical origin of its whisky so as to deceive average consumers?

Court's findings

The Court held that the class name identifies whisky distilled in a particular country, and that the reputation and goodwill attaching to that name belonged collectively to the genuine producers of that class of goods, who could maintain a passing off action even without any of them individually holding an Indian trade mark registration.

The Court found that the defendant's label, depicting a Scottish drummer in a kilt and carrying words suggesting a Scotch blend, was calculated to convey to a customer of average intelligence and imperfect recollection that the product was, or was associated with, genuine Scotch whisky. It held that such get-up amounted to a misrepresentation as to geographical origin sufficient to found an action for passing off in its extended form.

The Court rejected the contention that added descriptive material on the label removed any likelihood of confusion, and concluded that the plaintiffs had made out a strong prima facie case.

Decision

Interim injunction granted restraining the defendant from using the impugned label and description pending trial.

Keywords

Deceptive Similarity Extended Passing Off Geographical Indication Passing Off Transborder Reputation