UNITED DISTILLERS PLC Vs. JOGDISH JOSHI

JUDGEMENT

(1.) Whereas I.A. No. 5178/97 is an application for interim stay and I.A. 5338/97 for vacation of the stay granted by this Court on 30th May, 1997.

(2.) The plaintiff's case is that the plaintiff is the owner of the trademark Johnnie Walker' for a Scotch Whisky which according to the plaintiff has acquired a transborder reputation on account of extensive and continuous user all over the world since 1959. The name Johnnie Walker is derived from the name of the founder of John Walker and Sons Company which is the predecessor-in-title of the plaintiff in respect of the said product. The advertisement in respect of said Whisky with a distinctive striding figure have appeared in Indian Publications as far back as 1960 and the products sold and consumed in India. The learned Senior Counsel for the plaintiff Mr. Sudhir Chandra has submitted that the Johnnie Walker's Scotch Whisky packaging bears a distinctive trade dress featuring a label characterised by two tone colour combination comprising of black and gold, red and gold, and blue and gold in respect of the black, red and blue label whiskey. The centre label is deliberately slanted and contains a distinctive golden outline. Within the outline, there is another rectangle in the centre of which the brand name Johnnie Walker appears in bold and distinctive golden lettering. The plantiff has also referred to the distinctive feature of a striding figure and a bowler hatted man in its trade dress. It has been averred that the defendant has adopted and indeed usurped the device of the striding figure and the slanting label in relation to their products and the said labels are deceptively similar and copy the trade dress and the name of the plaintiff's product. It is submitted that a bare look at two competing marks would suggest that the mark of the defendant is an imitation of the plaintiff's label. The plaintiff has relied upon judgments of the American Courts to contend that the plaintiff's is a famous trademark for whisky. The plaintiff has complained about the use of the mark 'Johnnie Walker' by the defendants in respect of Gutkha with or without tobacco which is being manufactured by the defendants with the trade name 'Johnnie Walker'. The plaintiff's complaint is that the user of the trade mark Johnnie Walker, the logo and the get up of the trade dress employed by the defendant clearly infringes on the rights of the plaintiff and the defendants have attempted to derive unfair advantage of the goodwill generated and enjoyed for long by the plaintiff's product.

(3.) The defendants have contended that apart from the preliminary objections as to the maintainability of the plaint, the product of the defendant falls in Class 34 relating to tobacco in respect of Gutkha with tobacco and Gutkha without tobacco falls in Class 31 of the schedule whereas the product of the plaintiff falls in Class 33, i.e. wines, spirit and liquors and is a totally different product. The learned Senior Counsel for the defendants Mr. R.K. Anand, contended that there is no common factor or link between the plaintiff's product and the defendants' product and no association is discernible or suggested between the two products. The defendants submit that they have made no attempt to pass off their product as that being made by the plaintiff. It is also contended by the defendants that the plaintiff's product is a highly priced product and is available only in Five Star Hotels and Duty Free Shops and not available at the market place. The defendants also submit that at the time of the filing of the written statement one litre bottle of Johnnie Walker cost about Rs. 1.600.00 whereas the defendants' products were available only for an amount ofRs. 2.00 and Rs. 2.50 per pouch. The defendants cater to a lower economic strata of the society and a vast majority of the consumers are either tetotallers or those who do not have the financial capacity to purchase the plaintiff's products. Furthermore the advertisement of the plaintiff's product is prohibited by law in India whereas the defendants' products can be advertised with the suffixation of the statutory warning that 'chewing of tobacco and betlenuts is injurious to health'.