Case Note & Summary
The plaintiff, Brihan Karan Sugar Syndicate Private Limited, and the defendant, South Konkan Distilleries, both manufacture and sell country liquor. The plaintiff filed a suit for trade mark infringement and passing off, alleging that the defendant was vending its own liquor in the plaintiff's embossed bottles bearing the mark 'TANGO' and a three-finger device. The plaintiff claimed to be the registered proprietor of the trade mark 'TANGO PUNCH' (registration no. 1051107 in Class 33), with 'TANGO' as an essential feature, assigned to it by its predecessor in 2008. The defendant raised defences under Section 30(1)(a) of the Trade Marks Act, 1999, arguing honest industrial practice, that the plaintiff's registration was for 'TANGO PUNCH' not 'TANGO' alone, and that the use was a mistake. The court, per G.S. Patel, J., held that the defendant's use of the plaintiff's embossed bottles constituted infringement and passing off, rejecting the defence of honest industrial practice as the use was not honest but a mistake. The court granted the interim injunctions sought by the plaintiff, restraining the defendant from using the plaintiff's bottles or any deceptively similar mark.
Headnote
A) Trade Marks - Infringement - Essential Feature - Use of Registered Mark on Bottles - The plaintiff's registered trade mark 'TANGO PUNCH' includes the word 'TANGO' as an essential, leading and memorable feature, embossed on glass bottles with a three-finger device. The defendant's use of the same embossed bottles for its own country liquor amounts to infringement under the Trade Marks Act, 1999, as the mark is used in the course of trade and is likely to cause confusion. (Paras 1-3) B) Trade Marks - Passing Off - Use of Embossed Bottles - The defendant's sale of its distillations in the plaintiff's embossed bottles constitutes passing off, as it misrepresents the origin of the goods and damages the plaintiff's goodwill. (Paras 2-3) C) Trade Marks - Defences - Honest Industrial Practice - Section 30(1)(a) Trade Marks Act, 1999 - The defence of honest industrial practice under Section 30(1)(a) is not available when the defendant uses the plaintiff's distinctive bottles without any independent adoption or justification. The use is not honest but a mistake that does not negate infringement. (Para 3)
Issue of Consideration
Whether the defendant's use of the plaintiff's embossed bottles bearing the mark 'TANGO' and three-finger device constitutes trade mark infringement and passing off, and whether such use is protected as honest industrial practice under Section 30(1)(a) of the Trade Marks Act, 1999.
Final Decision
The court held for the plaintiff and granted the interim injunctions sought, restraining the defendant from using the plaintiff's embossed bottles or any deceptively similar mark.
Law Points
- Trade mark infringement
- passing off
- honest industrial practice
- Section 30(1)(a) Trade Marks Act
- 1999
- essential feature of mark
- use of embossed bottles
