Radico Khaitan Limited v. Union of India & Anr

1. The short question in this case is as to whether the Petitioner can claim exclusive rights in respect of the word “GOA” for gin. The Petitioner and Respondent No.2 have had a long history of litigation since 2015. The Petitioner commenced use of the word “GOA” since the 1990s and in any event, since 2006, it has had extensive use of the mark in respect of gin. The Petitioner‟s trademark applications Nos.628446 and 629645, both in class 33 were filed for a label mark, and when the Petitioner found that the Respondent No.2 was using the mark “GOA” for Gin and other alcoholic beverages, disputes ensued between the parties. Respondent No.2 then filed a rectification petition under the Trade Marks Act, 1999 seeking 2020:DHC:1494 rectification/ modification of the Petitioner‟s trademark registration Nos. 628446 and 629645. The IPAB, vide a detailed judgment dated 30th November, 2018 partially rectified the mark in the following terms:

2. Mr. Sagar Chandra, ld. counsel appearing for the Petitioner submits that the impugned order has affected the Petitioner‟s statutory rights immensely inasmuch as there are several other third parties who have started misusing the order in effect to mean that the word “GOA” has become publici juris.

3. He relies upon the findings of the IPAB to the effect that the Petitioner‟s rights for passing off have in fact been saved by the IPAB, however, the same would not be sufficient, as statutory rights for infringement have in effect been negated. On the other hand, on behalf of Respondent No.2 - Mr. Sachin Gupta, ld. counsel submits that the IPAB has arrived at a conclusion in a detailed judgment after going through various existing trademarks for the word “GOA” and other beverages. He submits that the word “GOA” cannot be monopolised in respect of alcoholic beverages, let alone gin. Reliance is placed on the various trademark applications/registrations which were noted before passing the impugned order.

4. The law in respect of marks containing geographical names has been considered by various courts in India. In one of the earliest judgements, the High Court of Calcutta in Imperial Tobacco Co. of India Ltd. v. Registrar of Trade Marks and Ors, AIR 1968 Cal 582, considered whether the mark SIMLA in a label form with the device of snow-clad hills ought to be given registration. The mark was a composite mark, described in the judgement in para 11, as under:-

11. The trade mark "Simla" with the label is composite in character. Its essential feature is the word Simla. ''Simla" is neither an invented word nor is it a word having a dictionary meaning. It is a well known hill-station of India. Its geographical signification is, therefore, plain and unequivocal. The snow-clad hills in outline on the label makes the geographical significance inescapable. The appellant's whole case now rests on 3 years prior use of this trade mark before the date of the application for registration with the assertion that the geographical name has acquired distinctiveness and so qualified for registration. The Registrar of Trademarks had accepted the large-scale sales and popularity of the mark, however, he came to the conclusion that it would be “unwise” to allow registration, as independent evidence had not been proffered. The Calcutta High Court, in a detailed judgment, which has analysed the entire English law on this aspect including the Yorkshire Case(1954) 71 RPC 150, London Candles case (1909) 26 RPC 797 etc came to the conclusion that whenever there are marks which include geographical names, “ careful scrutiny” is required.

5. In Manipal Housing Finance Syndicate Ltd. and Ors. v. Manipal Stock and Share Brokers Ltd. and Ors., [1999] 98 Comp Cas 432(Mad), the Madras High Court again considered the law relating to registration of descriptive marks, including marks containing geographical names. The court observed as under:-

6. In Hi-Tech Pipes Ltd. v. Asian Mills Pvt. Ltd, 2006(32) PTC 192(Del), a ld. Single Judge of this Court, while considering the trademark „Gujrat‟ in respect of pipes, observed that the trademark „Gujrat‟ had acquired secondary meaning and had come to be exclusively associated with the Plaintiff. Thus, the interim injunction was granted.

7. In Hi-Tech Pipes Ltd. v. Asian Mills Pvt. Ltd, the decision in Geepee Ceval Proteins and Investment Pvt.Ltd v. Saroj Oil Industry 2003 (27) PTC 190 was also considered by the Court. In Geepee Ceval Proteins, a ld. Single Judge of this Court considered the mark „Chambal’ in respect of oil, and held that the same was capable of becoming a trademark and an action for passing off based on the said mark was maintainable.

8. In Sahkar Seeds Corporation V. Dharti Seeds, 2017 (71) PTC 77 (Guj), the Gujarat High Court was considering the trademark Vadhiyari which was a name denoting the Vadhiyar religion in Gujarat. The Gujarat High Court held that there was nothing on record to suggest that the Vadhiyar region was known for manufacturing of seeds of different types of grains. The observations of the Court are as under:- “With regard to the contention raised by Mr. P.C. Kavina about the use of the word “VADHIYAR” which may suggest geographical region, is concerned, I am of the opinion that “VADHIYAR” might be an area of State of Gujarat which is known as per its geographical situation, but there is nothing on record to suggest that this area is known for manufacturing of seeds of different types of grains. The seeds manufactured in Vadhiyari area neither create some impression about the qualities, reputation nor other characteristic which attribute to its geographic origin. It is difficult to accept at this stage that the grant of "VADHIYARI BIJ" as Trade Mark by the authority to original plaintiff would mislead the public about the product. When the registration of the "VADHIYARI BIJ" was granted to the plaintiff, it is difficult to accept that the authority has not considered the same before issuing the Registration.” The High Court confirmed the injunction granted against the Defendant protecting the mark Vadhiyari.