DIAGEO NORTH AMERICA INC Vs. SHIVA DISTILLERIES LIMITED

JUDGEMENT

(1.) This order shall dispose of IA 1717/2004 filed under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908. The plaintiffs have the filed the suit for permanent and mandatory injunction, passing off, infringement of trade mark, rendition of accounts, delivery up, damages and for unfair competition. The plaintiff no.1 (Diageo North America Inc) is a corporation organised and existing under the laws of the State of Connecticut, USA. The plaintiff no.2 (UDV India Ltd) is an Indian company and has been licensed by plaintiff no.1 to use various brands and trade marks, one of which is the trade mark SMIRNOFF which is in question in the present proceedings.

(2.) The plaintiffs claim to be the registered proprietors of the trade mark SMIRNOFF label under reg. no.189744 dated 31.03.1959; the PIERRE SMIRNOFF label under reg. no. 202251 dated 04.05.1961; the SMIRNOFF mark with eyebrow device under reg. no. 904318 dated 17.02.2000. It is stated by the plaintiffs that while SMIRNOFF is disclaimed in the first registration there is no disclaimer in the other two. In particular, reg. no. 904318 " SMIRNOFF with eyebrow device " according to the plaintiffs, gives the plaintiffs the exclusive right to the use of SMIRNOFF under section 28 of the Trade Marks Act, 1999.

(3.) It is also contended by the plaintiffs that they are admittedly the prior users of SMIRNOFF, internationally since 1930 and in India since 1994. The defendant has adopted the mark BRISNOFF only in July 2003. By way of this application the plaintiffs are seeking an interim injunction restraining the defendant from using the trade mark BRISNOFF and the eyebrow device or any other trade mark or trade marks which are deceptively or confusingly similar to the plaintiffs registered trade mark SMIRNOFF and the eyebrow device in respect of any goods or of manufacturing or authorising the manufacture, sale or offering for sale, marketing, advertising, promoting, displaying or in any other manner whatsoever using the trade marks infringing the plaintiffs rights in and to their registered trade mark SMIRNOFF and/or the eyebrow device. An injunction is also sought in respect of passing off the defendant's goods as those of the plaintiffs'.