Radico Khaitan Ltd. v. Brima Sagar Maharashtra Distilleries Ltd.

1. Joint application filed by Radico Khaitan Ltd. and M/s Brima Sagar Maharashtra Distilleries Ltd. under Order XXIII Rule 3 ofthe Code of Civil Procedure is takenon record. Registry to number the application.

2. The two cross appeals were admitted on May 19, 2015. They have reached for hearing today. File of CS (OS) No.1572/2013 has been summoned in Court for the reason the two cross appeals concern an interim order dated October 15, 2014 disposing of, amongst others, I.A.No.12710/2013 filed by Radico Khaitan Ltd. praying for an interim injunction to restrain M/s Brima Sagar Maharashtra Distilleries Ltd. from selling alcoholic beverages bearing the trademark/label: BRIHAN'S DANZ NO.l WHISKY, BRIHAN'S PREMIUM BLUE WHISKY, GOA, NOVA GOA, BRIHAN'S ORIGINAL DOCTOR BRANDY.

3. The case ofRadico Khaitan Ltd. was premised on itbeing aregistered proprietor of various trademarks duly registered with the Registrar of Trademarks including: GOA DRY GIN AND LIME, BRIHAN S GOA, BRIHAN'S NO.l WHISKY, BRIHAN'S PREMIUM BLUE WHISKY, BRIHAN'S DOCTOR BRANDY.

4. Various issues cropped up for consideration including trade dress. At the heart of the debate, became the word GOA, a well loiown tourist destination inIndia; internationally renowned place. FAO (OS) 458/2014 &20/2015 ^

5. Radico Khaitan Ltd. substantially succeeded for the reason concerning its proprietary interest in the trademarks and copyright in the trade dress the learned Single Judge concluded in para 121 of the impugned order dated October 15, 2014 as under; "(i) BRIHAN'S DANZ NO. 1 WHISKY: The Defendant is restrained by way of an ad-interim injunction from directly or indirectly selling, manufacturing, offeringfor sale or in any manner dealing in any Alcoholic Beverage bearing the mark/label BRIHAN'S DANZ NO.l WHISKY/BRIHAN'S NO.l WHISKY or from adopting/using any other identical or deceptively similar trademark/label. The Defendant however, is not restrained from using the words DANZ and/or NO 1 and/or WHISKY without theprefix or suffixBRIHAN'S in a getup, trade dress, style and label that is neither identical nor deceptively similar to that ofthe Plaintiff;

(ii) BRIHAN'S PREMIUMBLUE WHISKY: The Defendantis restrained by way of an ad-interim injunction from directly or indirectly selling, manufacturing, offeringfor sale or in any manner dealing in any Alcoholic Beverage bearing the mark/label BRIHAN'S PREMIUM BLUE WHISKY/BRIHAN'S PREMIUM WHISKY or from trademark/label The Defendant however, is not restrained from using the words PREMIUM and/or BLUE and/or WHISKY without the prefix or suffix BRIHAN'S in a getup, trade dress, style and label that is neither identical nor deceptively similar to that of the Plaintiff; (Hi) BRIHMA 'S GOA: The Defendant is restrained by way of an ad-interim injunction from directly or indirectly selling, manufacturing, offeringfor sale or in any manner dealing in any Alcoholic Beverage bearing the mark/label BRIHAN'S GOA/BRIHMA'S GOA or from FAO (OS) 458/2014 &20/2015 Page 3of[6] trademark/label and also the trade dress, getup oflayout similar to that ofthe Plaintiff. The Defendant however, is not restrained from using the word GOA without the prefix or suffix BRIHAN'S and/or BRIHMA'S in a getup, trade dress, style and label that is neither identical nor deceptively similar to that ofthe Plaintiff;

(iv) NOVA GOA: TheDefendant, is not restrainedfrom using the trademark NOVA GOA without the prefix or suffix BRIHAN'S and/or BRIHMA'S in a getup, trade dress, style and label that is neither identical nor deceptively similar to that ofthe Plaintiff; and

(v) BRIHMA'S ORIGINAL DOCTOR BRANDY: The

Defendant is restrained by way of an ad-interim injunction from directly or indirectly selling, manufacturing, offering for sale or in any manner dealing in any Alcoholic Beverage bearing the mark/label BRIHAN'S DOCTOR BRANDY or BRIHMA'S ORIGINAL DOCTOR BRANDY or from adopting/using any other identical or deceptively similar trademark/label. The Defendant however, is not restrained from using the words DOCTOR and/or BRANDYwithout the prefix or suffix BRIHAN'S and/or BRIHMA'S in a getup, trade dress, style and label that is not deceptively similar to that ofthe Plaintiff "

6. While discussing on the word GOA, the learned Single Judge noted that it was the geographical name of the territory in India. The learned Single Judge, in paragraph 100, prima-facie recorded an opinion of law concerning the word being in public domain and in particular the word representing a geographical territory in India as follows: ''The wordGOA by itselfmaynot be capable ofprotection as a trademark'.

1. Learned counsel for the parties state that the dispute has been FAO (OS) 458/20U & 20/2015 Page[4] of[6] amicably resolved between Radico Khaitan Ltd. and M/s Brima Sagar Maharashtra Distilleries Ltd. and have jointly filed an application under Order XXIII Rule 3read with Section 151 of the Code of Civil Procedure. The application is proposed to be filed in CS (OS) No.1572/2013.

8. The application bears the signatures of the director and authorised signatory of M/s Brima Sagar Maharashtra Distilleries Ltd. as also the authorised signatory of Radico Khaitan Ltd. The two signatories have deposed affidavits in support of the application. The application has been signed by learned counsel for the two parties.

9. The terms of the settlement between the parties concerning the offending label and the offending trademark have been recorded in -the settlement. We are satisfied that abona-fide settlement has been arrived at between the parties.

10. With consent of the parties we have issued direction that the suit be listed before Division Bench. The Registry has listed the suit before us.

11. The application under Order XXIII Rule 3 read with Section 151 of the Code of Civil Procedure is taken on record. Registry is directed to number the same. The application has been kept in the record ofthe suit.