SNJ DISTILLERIES LTD Vs. IMPERIAL SPIRITS PRIVATE LTD

JUDGEMENT

(1.) Both the appeals are directed against the order dated 1.12.2009 I.A. No. 1102 of 2009 in C.S. No. 955 of 2009 of the learned single Judge in a "passing off" action, granting an injunction in favour of the Plaintiff against the Defendants only in respect of the areas where already the Plaintiff established his business, namely, Karnataka, Kerala, Goa, Pondicherry and Himachal Pradesh and not in respect of Tamil Nadu, where the Defendants are selling their product. The learned Single Judge made it clear that the Defendants could sell their product "Brihan's Gold Napoleon Brandy' in Tamil Nadu with the said name, but the Defendants are injuncted from selling their product with the trade mark 'Brihan's Gold Napoleon Brandy' in the areas namely, Karnataka, Kerala, Goa, Pondicherry and Himachala Pradesh and in those areas the Defendants could sell their product without using the word "Gold" before the word "Napoleon".

(2.) The facts leading to the "passing off" action is as follows:

(3.) The application was resisted by the Defendants on various grounds. It is contended that the second Plaintiff is one of the India's premier manufacturer of IMFS and their trade mark "Brihan's Napoleon Brandy" is exceptionally famous throughout the country. The first Defendant is the licensee for the usage of "Brihan's Gold Napoleon Brandy", a derivative product of "Brihan's Napoleon Brandy" for the State of Tamil Nadu. According to the Defendants, the word "Napoleon" and its variant/derivatives including prefixes and suffixes such as "Gold" is used by hundreds of Companies in the International and National market. According to them, the word "Gold" is used to signify a certain higher quality of a brand and the Plaintiff cannot claim any exclusive right in the generic word "Gold" or "Napoleon". It is also contended that as far as Tamil Nadu is concerned, the 1st Defendant has already obtained licence to manufacture "Brihan's Gold Napoleon Brandy" and the sales turn over is in crores. It is further contended that the Defendants mark "Brihan's Gold Napoleon Brandy" is different from the applicant's mark "Imperial Gold Napoleon Brandy". The shape, colour scheme, style of writing are completely different and the shape of the bottles are also different. According to the Defendants the customers of spirits and alcoholics, beverages are knowledgeable and would not be confused or misled merely on the basis of presence of common descriptive/generic words such as "Gold" and "Napoleon".