SUPREME BIDI FACTORY Vs. SCOTCH WHISKY ASSOCIATION SCOTLAND

JUDGEMENT

(1.) THIS appeal is directed against the order of the Asst. Registrar of Trade Marks allowing the application filed by the Respondents 1 and 2 herein for rectification of the register by expunging the trade mark No. 273203 registered in the name of the appellant herein. The mark that has been registered was in class 33 under No. 273203 consisting the words Peter Scot". That mark had been registered with effect from 3.7.1971 in the name of the appellant herein. The application for rectification was filed on 17.4.1986 by the Respondents 1 and 2 herein namely (1) The Scotch Whisky Association and Johny Walker and Sons Limited, London. The application was on the ground that the trade mark offended Section 9 of the Trade and Merchandise Marks Act, 1958 as it was neither distinctive nor was capable of distinguishing the registered proprietor's goods; that the registration contravenes Sec. 11(a) of the Act as it contains the words'Scot'which is likely to deceive or cause confusion and/or the said mark was and is disentitled to protection of the Court under Sec. 11(e) of the Act.

(2.) THE trade mark'Peter Scot'is used by the appellant for whisky manufactured by it. THE second respondent is a manufacturer of Scotch Whisky in the United Kingdom. THE first respondent is the association of manufactures of Scotch Whisky, that Association being one whose principal object is to protect the interests of its members world wide.

(3.) BEFORE the Asst. Registrar, the Respondents 1 and 2 had filed numerous documents as annexures to the affidavit of Barclay to show that whisky is made in Scotland has a special flavour; that the whisky universally known as Scotch Whisky always has been regarded as manufactured in Scotland; that Scotch Whisky has been imported into India for many decades; that such imports have been consistently on the rise and that large number of users in India are familiar with Scot Whisky which has also been regarded as superior whisky.