UTO NEDERLAND B.V. Vs. TILAKNAGAR INDUSTRIES LTD.

JUDGEMENT

(1.) Commercial Appeal No.66/2012 is filed by the Plaintiffs challenging the judgment and order dtd. 22/12/2011 passed by the learned Single Judge of this Court dismissing Notice of Motion No. 993/2009 filed by the Plaintiffs seeking temporary injunction against the Defendant from passing off by use of the marks 'MANSION HOUSE', 'M.H.', 'M.H.B.' and 'Savoy Club' and committing infringement of Plaintiff 's copyrights in labels associated with the said marks. The Defendant has filed Counterclaim in Plaintiff 's suit and in that Counterclaim, the Defendant filed Notice of Motion No. 1287/2010 seeking injunction against the Plaintiffs from manufacturing and/or bottling and/or marking and/or trading and/or otherwise dealing in the alcoholic products and like goods bearing the trademarks 'MANSION HOUSE' and 'SAVOY CLUB' and other trademark deceptively similar to Defendant's trademark 'MANSION HOUSE' and 'SAVOY CLUB' so as to commit the tort of passing off. Notice of Motion No. 1287/2010 filed by the Defendants in its Counterclaim has been dismissed by the learned Single Judge by judgment and order dtd. 7/2/2025, which is subject matter of challenge in Commercial Appeal (L) Nos. 6617/2025 filed by the Defendant. Interim Application (Lodg.) No. 16999/2023 was filed by Plaintiff No.3 seeking leave to introduce products in the State of West Bengal under the trademark 'MANSION HOUSE' and by judgment and order dtd. 7/2/2025, the learned Single Judge has allowed Interim Application (Lodg.) No. 16999/2023, which is challenged by the Defendant in Commercial Appeal (L) No. 6622/2025.

(2.) Plaintiff Nos.1 and 2 are Companies organised and existing under the Dutch laws and are producers, importers, exporters, sellers and distributors of various spirits and liquors including scotch, brandy, whisky, gin, vodka, rum, liqueurs and cognac. Plaintiff Nos.1 and 2 are fully owned subsidiaries of UTO holding B.V. formerly known as B.V. UTOMIJ. For ease of reference, Plaintiff Nos.1 and 2 are collectively referred to as 'UTO'. Plaintiffs claim that the trademark 'MANSION HOUSE' was registered by UTO in the Netherlands in November 1922. UTO claims to have secured registration of the mark 'MANSION HOUSE' in 33 jurisdictions across the world. The mark 'SAVOY CLUB' was registered by the UTO in the Netherlands on 12/1/1967 and UTO claims to have secured registration of the trademark 'SAVOY CLUB' in 27 jurisdictions across the world. UTO applied for registration of the wordmark 'MANSION HOUSE' in India and it is claimed that it is the proprietor of the wordmark 'MANSION HOUSE' in India since 5/4/1983. UTO claims to have secured registration of the wordmark 'SAVOY' in India on 20/12/1983. UTO entered into a License and Manufacturing Agreement with the Defendant-Tilaknagar Industries Ltd. (Tilaknagar) for use of the marks 'MANSION HOUSE' and 'SAVOY CLUB' in India on condition of procurement of specified minimum quantities of concentrates for producing and selling whisky, brandy, gin and rum from UTO.

(3.) Defendant-Tilaknagar is also in the business of manufacturing alcoholic beverages. Under the Licensing and Manufacturing Agreement of 7/7/1983, the Defendant started manufacturing, marketing and selling whisky, gin, rum and brandy under the marks 'MANSION HOUSE' and 'SAVOY CLUB' in India.