Judgment sc-2008-9-975-1037

p. 1028

+ A considering that the labels clearly indicate the products • are made in the United States. Moreover, the labels contain no express reference to Scotland nor were the products ever advertised as being of Scottish origin. More importantly, gin, blended whiskey, and vodka are not B characteristically products of Scotland.

79Copy pinpoint79. Yet again in Champagne Louis Roederer, S.A. v. Delicato Vineyards, [148 F. 3d 1373 ] the United States Court of Appeals for the Federal Circuit applying the DuPoint (supra) test in a case of wine stated :- c "Like regulatory agencies or other executive tribunals in their subject areas, the Trademark Trial and Appeal Board has acquired a high level of expertise in evaluating the DuPont factors and counter-weighing these factors to reach its ultimate conclusion - the likelihood ve/ non of D ~

confusion between competing marks. Nonetheless, the II' Board too should explain· with reasonable "precision" not only its factual findings but the "theory underlying" its final conclusion. We need to be told and not be "compelled to guess at the theory" the Board applied to compare its E conflicting findings and decide likelihood of confusion. Without such explanation we are hard-pressed to review independently, as we must, whether the Board's ultimate conclusion is legally correct. In such circumstances, we i cannot assure ourselves that the Board did indeed "engage ... F in reasoned decision- making." It was observed:- "Because the Board in this case failed to "supply a

G synthesis" of its conflicting findings that would enable us to "discern the path" to its ultimate conclusion, I initially .. wondered whether its conclusion of no likelihood of ..,, .. confusion in this case was correct. As our per curiam opinion notes, however, it is perfectly lawful for the Board to determine in an appropriate case that one DuPont factor outweighs all others and thus disposes of the question of

KHODAY DISTILLERIES LTD. (NOW KNOWN AS KHODAY 1029 INDIA LTD.) v. THE SCOTCH WHISKY ASSO. [SINHA, J.] t

whether competing marks are confusingly similar. It was not immediately clear to me from the Board's. opinion, however, that this is such a case. See Specialty Brands v. Coffee Bean Distributors, Inc., 748 F.2d 669, 671, 223 USPQ 1281, 1282 (Fed. Cir. 1984) (holding that, in some instances, the appearance, sound, and significance of the marks may be dispositive, "but the similarity between words in the respective marks is only part of the inquiry into likelihood of confusion"). Thus, the difficulty here arises, in my view, because the Board explicitly found that four of the DuPont factors weighed in Roederer's favor, but c concluded nonetheless that the dissimilarities of the marks in appearance, sound, significance, and commercial impression weighed dispositively in favor of Delicato. I for one am left wondering how the Board justified its disregard or diminution in weight of the four DuPont factors that it ~ D found supported Roederer's Opposition, for the Board • has failed to "bring together the disparate elements" to explain the basis for its conclusion of no likelihood of confusion." INDIA E

80Copy pinpoint80. We may also notice some Indian decisions operating in the field. }. <{ In Carew Phipson Limited v. Deejay Distilleries Pvt. Ltd., [AIR 1994 Born. 231 ], the Bombay High Court stated the law F thus:- "6. Even on comparison of the trade mark of the plaintiffs with the defendants' trade mark, it is difficult to hold that the two marks are deceptively similar and are likely to create any confusion in the minds of the customers." G ,j It was furthermore observed:- .. "'" "On comparison of the two marks bearing the aforesaid principles in mind, it is difficult to appreciate as to how H

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t A there is even a remote possibility of any customer being • misled. Jn my opinion, when a customer goes to a shop to buy the plaintiffs' product, he will not ask for "Duet" or "Gin N Lime" or "Gin N Orange" but he will ask for a "Blue Riband Gin N Lime" or "Blue Riband Tango Gin N Orange". B Further having regard to the fact that the customer who is likely 'to buy the products of the plaintiffs and the defendants y- will be normally educated and discerning type, it is impossible to hold that there is any likelihood of confusion. It is pertinent to note that the plaintiffs have failed to cite even a single instance showing that there was confusion c in the minds of the customers. The absence of evidence of actual deception is a circumstance which definitely weighs in favour of the defendants. It is also necessary to mention that the defendants have produced on record • voluminous evidence showing that such premixtures are D ~ sold by several other companies under the names "American Extra Dry Gin with Lime Duet Plus", "Forbes • ·. Two in One Dry Gin and Lime", "Rainbow Gem let Gin and lime" etc .. In my opinion, there is no possibility of any confusion in this case at all." E

81Copy pinpoint81. Yet again in Diageo North America, Inc. and another v. Shiva Distilleries Ltd., [143 (2007) DLT 321] a learned Single Judge of the Delhi Hjgh Court held as under:-

"14. So much for the second syllable. As regards the first -( F . syllable, I find that there is no similarity between SMIR and • BRIS. Although the learned Counsel for the plaintiffs had submitted that all the letters are common except the letter and M in SMIR and the letter Bin BRIS, this, to my mind, is of no consequence because the arrangement of the letters is entirely different, as is the phonetic and visual result. I also agree with the submission made by the learned Counsel for the defendant that the intending ~ . .. purchasers of the competing products are literate persons bE;!longlng to the affluent class of society and who would be in a position to easily distinguish SMIRNOFF from

KHODAY DISTILLERIES LTD. (NOW KNOWN AS"KHODAY 1031 JNDIA LTD.) v. THE SCOTCH WHISKY ASSO. [SINHA, J.]

• BRISNOFF particularly when the eyebrow device and the colour combination is sought to be given up by the defendant. The average person with imperfect recollection would have to be from amongst the sub-set of such persons i.e .. discerning consumers of vodka. My prima facie view is that the trade mark BRISNOFF is not deceptively similar· B to, nor can it be confused with the Plaintiffs' trade mark SMIRNOFF."

82Copy pinpoint82. This Court in Cadila Health Care Ltd. v. Cadila Phar- maceuticals Ltd., [ (2001) 5 sec 73] inter alia laid down the law in the following terms:- C

"35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered : D (e) "The class of purchasers who are likely to buy the goods bearing the marks they require, on their · education and intelligence and a degree of care they are likely toe exercise in purchasing and/or using the goods." E

83Copy pinpoint83. The tests which are, therefore, required to be applied in each case would be different. Each word must be taken separately. They should be judged by their look and by their > sound. Must consider the goods to which they are to be ap- <I

plied: Nature and kind of customers who would likely to buy F goods must also be considered. Surrounding circumstances play an important factor. What would likely to happen if each of those trade marks is used in a normal way as a trade mark of the goods of the respective owners of the marks would also be a relevant factor. [See Pianotist Co.' Application, Re, (1906) G 23 RPC 774]. Thus, when and how a person wo1,1ld likely to be confused . is a very relevant consideration.

84Copy pinpoint84. Where the class of buyers, as noticed hereinbefore, is H

p. 1032

t A quite educated and rich, the test to be applied is different from • the one where the product would be purchased by the villagers, illiterate and poor. Ordinarily, again they, like tobacco, would purchase alcoholic beverages by their brand name. When, how- ever, the product is to be purchased both by villagers and town B people, the test of a prudent man would necessary be applied. It may be true that the tests which are to be applied in a country like India may be different from the tests either in a country of England, United Sates of America or Australia. We however, do not mean to suggest that in a case of this nature, the Height- C ened Scrutiny Test should be applied as urged on behalf of the appellant. Bollinger, J. and Others v. Costa Brava Wine Coy., Ld. [1960 (1) RPG 16], whereupon Mr. Desai has strongly re- lied upon, makes such a distinction. Bollinger, J. (supra) was a case on demurrer. It was concerned with sale of Spanish Cham- D pagne. In that case, in paragraph 4 of the application, the appli- cant stated: "Then in Para 4 they deny that this name "Spanish Champagne" is a false description, and they continue: 'The defendants deny that the said section imposes any E statutory duty on the defendants or any statutory duty owed by the defendants to the plaintiffs. Alternatively, if the said section does impose any such statutory duty the same is not actionable at the suit of any of the plaintiffs or at all". The court proceeded on certain assumptions which are: ,._ F ~ "(1) the Plaintiffs carry on business in a geographical area in France known as Champagne; (2) The Plaintiffs' wine is produced in Champagne and from grapes grown in Champagne; G (3) the Plaintiffs' wine has been known in the trade for a long time as "Champagne" with a high reputation; (4) Members of the public or in the trade ordering or seeing wine advertised as "Champagne" would H expect to get wine produced in Champagne from

KHODAY DISTILLERIES LTD. (NOV'/ KNOWN AS KHODAY 1033 INDIA LTD.) v. THE SCOTCH WHISKY ASSO. lSINHA, J.] .~ grapes grown there; and A (5) The Defendants are producing a wine not produced in that geographical area and are selling it under the name of "Spanish Champagne."

It was noticed: B ...., "The well-established action for "passing-off' involves the use of a name or get-up which is calculated to cause confusion with the goods of a particular rival trader, and I think it would be fair to say that the law in this respect has been concerned with unfair competition ·betWeen traders c rather than with the deception of the public which may be caused by the Defendant's conduct, for the right of action known as a "passing-of action" is not an action brought by the member of the public who is deceived but by the trader ,. whose trade is likely to suffer from the deception practised D .. on the public but who is not himself deceived at all." Before the learned Judge,.the plaintiffs claimed that their goodwill in the name or description "Champagne" is injured by the Defendants' conduct to which the counsel for the defendants did not contest the correctness of the statement. E

The learned Judge, referring to Mayor of Bradford v. Pick- /es [1895 AC 587] and laying down the principles of injuries, noticed the argument of the counsel that before a person can ...'r negative the argument of the defence counsel, the person can F. recover for loss or it must be shown that his case falls within the class of actionable wrongs stating: "But the law may be thought to have failed if it can offer no remedy for the deliberate act of one person which causes damage to the property of another. There are such cases, G of course, but they occur, as a rule, when the claims of .: ..,. freedom of action outweigh the interests of the other persons who suffer from the use which a person makes of his own property." H

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.,... ~

A It was in the aforementioned fact situation, the learned Judge proceeded to determine as to whether the description "Spanish Champagne" is calculated to deceive holding that the plaintiff has a right to bring any action.

85Copy pinpoint85. J. Bollinger and Others v. The Costa Brava Wine B Company Limited (for short "Bollinger II") (1961 (5) RPC 116], however, clearly shows as to what was the test applied. The ..... inference deduced from the evidence adduced was noticed in the following teqns:

c "In p(!rticular, it appeared from the evidence that Champagne is a wine specially associated with occasions of celebration so that (in addition to sales to persons who regularly buy wine) it is purchased on such occasions from time to time by many persons who are not in the habit of D buying wine for consumption and are not educated in the nature or qualities of different kinds of wine." .. Ir

86Copy pinpoint86. Holding that "Spanish Champagne" may lead to ordi- nary belief into thinking that wine so described was the real thing, it was observed: E "Moreover, when the case is tried in an atmosphere of ...... educated persons, many of whom are well acquainted with the qualities of various wines, it may seem absurd that persons should be deceived by what may appear to

F· be a transparent impersonation. It was argued indeed 1- . · that Champagne was so well known that everyone except a trifling minority of ignorant persons (who were not to be considered, especially in regard to what was termed a luxury article) would not be deceived." It was held: G "Ch\:lmpagne,.on the other hand, is a French word, and it is· wrong if not dishonest to apply it to anything but the ........ ).

product of Champagne, the area round Rheims in France. Others must call themselves Sparkling Moselle, Sparkling H Californian White, or what they please. There is some still

KHODAY DISTILLERIES LTD. (NOW KNOWN AS KHODAY 1035 INDIA LTD.) v. THE SCOTCH WHISKY ASSO. [SINHA, J.]

" champagne, a pleasant hard white wine, which you can drink in France, and even some dull still red wine"; and on pages 79-80 of the same book it is said: "It mayn't be forgery to describe a wine as, say, Australian Chablis; it is deplorable ·and shows the maker has no proper pride in his product, but the adjective 'Australian' is a sort of warning". In a previous edition (the 61h) of the same book, the words in the same passage are "is a fair warning".

The learned Judge proceeded to hold: "All the lovers of wine who gave evidence before me c deplored this practice by which the name$ of well-known wines have been debased. Some of the witnesses, employed in the more practical side of the wine trade, referred to the convenience of thus using the name of the real wine to indicate a type. But it appear€!d that a number 0 of the wine merchants who dealt in such wines were careful in their price lists to list such wines under titles or descriptions which showed that they were of a type but not from the original district."

87Copy pinpoint87. Referring to Kerly on Trade Marks, which we have re- E ferred to hereinbefore, the learned Judge said: "And it has been said that regard should not be had to "unusually stupid people, fools or idiots". Moreover, "if the ...'r goods are expensive and not of a kind usually selected without deliberation and the customers generally educated F persons these are all matters to be considered." (That is also a quotation from the same book.) Various other judicial statements are collected in the judgment of the Assistant-Registrar in George Angus & Co.'s Application (1943) 60 R.P.C. 29, at pp. 31-32, to which I was referred." G In arriving at the said decision, the following was specifi- cally noticed: "Mr. Munday, whose wine business was in Swansea, when asked "How far do you think the class of customers that H

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~ A you deal with know the origin of Champagne?" replied: • "Limited. Some would know. The first category I mentioned would know a fair amount about it. In the second category some. But there would be a considerable number in my area who would know nothing about it except that it was B a wine they wanted for a special occasion or for something in their life they wanted to celebrate with. They would then want that. That is how much they would know about it-just r a general outline"." It was furthermore held: c "There is thus, in my view, a considerable body of evidence that persons whose life or education has not taught them much about the nature and production of wine, but who from time to time want to purchase Champagne, as the wine with the great reputation, are likely to be misled by D ,.. the description "Spanish Champagne". Ir Something was said on the subject of the burden of proof. Well, burden of proof is something which may shift in the course of an action. It appears to me that when the plaintiffs E have shown that a description used by the defendants contains an untruthful statement that a wine which is not Champagne is Champagne, they have gone some way to establishing their case, and the Court might require to be satisfied that such an untrue statement was so clearly '(

F qualified as to be not likely to mislead. But, however, that · ~

may be, I am satisfied on the evidence that a substantial portion of the public are likely to be misled. And as Lord Justice Lindley said in Slazenger & Sons v. Feltham & Co. (1889) 6 R.P.C. 531 at p. 537: "One must exercise one's common sense, and, if you are driven to the G conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination .. very much to credit the man with occasional success or. y

possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every H

KHODAY DISTILLERIES LTD. (NOW KNOWN AS KHODAY 1037 INDIA LTD.) v. THE SCOTCH WHISKY ASSO. [SINHA, J.] t A nerve to do?" " Bollinger test was not only applied in Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd. [1980 RPC 31], but in all the case which have been referred to by Mr. Desai to which the different High Courts of India as also to which we have taken note of. B

··--r However, tests laid down in Australia and United States in respect of self-same goods are noticed hereinbefore are some- what different.

88Copy pinpoint88. But then we are concerned with the class of buyer who c supposed to know the value of money, the quality and content of Scotch Whisky. They are supposed to be aware of the differ- ence of the process of manufacture, the place of manufacture and their origin. Respondent No.3, the learned Single Judge as also the Division Bench of the High Court, therefore, failed D ~ to notice the distinction, which is real and otherwise borne out ,. from the precedents operating in the field. [See - Kerly's Law of Trade Marks and Trade Names, Thirteenth Edition pg. 600]. Had these tests been applied the matter might have been different. In a given case probably we would not have inter- E fered but we intend to do so only because wrong tests applied led to a wrong result.

89Copy pinpoint89. So far as the applicability of the 1999 Act is concerned, ! having regard to the provisions of Sections 20(2) and 26(2), F we are of the opinion that the 1999 Act will.have no application.

90Copy pinpoint90. For the reasons aforementioned, the impugned judg- ment is set aside. The appeal is allowed. No costs. S.K.S. Appeal allowed .

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