Khoday Distilleries Limited vs. The Scotch Whisky Association
Date of Judgment: May 27, 2008
Appeal: Appeal (Civil) 4179 of 2008
Citation: AIR 2008 Supreme Court 2737
Court: Supreme Court of India
Hon’ble Judges: Shri S.B. Sinha and Shri Lokeshwar Singh Panta
Introduction
In the annals of trademark law, few cases weave a narrative as intricate and compelling as Khoday Distilleries Limited vs. The Scotch Whisky Association…
Detailed Factual Background
Khoday Distilleries Limited, now known as Khoday India Limited, embarked on its whisky-making journey in May 1968…
Detailed Procedural Background
The procedural journey began with Khoday’s trademark registration application, accepted and advertised in the early 1970s…
Issues Involved in the Case
The Supreme Court distilled two principal issues:
- Whether the SWA’s delay in filing the rectification application amounted to acquiescence or waiver, barring their claim?
- Whether the Registrar and High Court applied the correct legal tests in assessing deception and confusion under Section 11 of the Act?
Detailed Submission of Parties
Khoday mounted a robust defense. They argued that the SWA, aware of Peter Scot since 1974, waited 12 years until 1986 to act…
Judgments Cited by Parties and Their Context
- Mohan Meakin Breweries Ltd. vs. The Scotch Whisky Association: Cited by the SWA, emphasized consumer protection.
- Scotch Whisky Association & Ors. vs. Golden Bottling Ltd.: Upheld rectification of “Red Scot.”
- Srilab Breweries Pvt. Ltd. vs. Scotch Whisky Association: Barred Scottish-evoking marks.
- William Grant & Sons Ltd. vs. McDowell & Co. Ltd.: Protected “Glenfiddich.”
- Ciba Ltd. Basle Switzerland vs. M. Ramalingam: Argued delay could bar rectification.
- State of Madhya Pradesh vs. Bhailal Bhai: Suggested 3-year limitation analogy.
- Sakur vs. Tanaji: Argued Limitation Act’s inapplicability.
- Power Control Appliances vs. Sumeet Research and Holdings: Defined acquiescence as active consent.
- Ramdev Food Products (P) Ltd. vs. Arvindbhai Rambhai Patel: Reinforced delay as prejudice.
- Bollinger vs. Costa Brava Wine Coy. Ld.: SWA used this to support deception claims.
- Warnick (Erven) vs. J. Townend & Sons (Hull) Ltd.: Extended deception to whisky.
- Scotch Whisky Association vs. Marton De Witt (Australia): Argued discerning buyers wouldn’t be misled.
- Cooper Engineering Co. Pty. Ltd. vs. Sigmund Pumps Ltd.: Referenced suffix differences negating confusion.
- Application of E.I. DuPont DeNemours & Co.: Emphasized buyer sophistication.
- Scotch Whisky Association vs. Majestic Distilling Company: “Black Watch” not deceptive.
Detailed Reasoning and Analysis of Judge
On the delay issue, the court rejected the SWA’s claim that rectification proceedings were immune to equitable defenses…
Final Decision
The Supreme Court allowed Khoday’s appeal, set aside the High Court’s judgment, and restored the Peter Scot trademark, ruling no costs.
Law Settled in This Case
- Delay, acquiescence, and waiver can bar trademark rectification when they prejudice the registrant and public interest doesn’t outweigh equity.
- Deception under Section 11 requires a nuanced test considering buyer class, label as a whole, and actual confusion evidence.
- The Registrar’s discretion must balance statutory objectives with equitable principles.
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
