2008 (5) TMI 701 - SC - Indian Laws

Trade mark - Delay in filing the application for rectification - registration of mark Peter Scot - Persons aggrieved - commencement of the rectification proceedings - locus standi - Delay and Acquiescence/Waiver - term Scot would itself be a sufficient ground to form an opinion that the mark Peter Scot is deceptive or confusing - onus of proof - infringement of a registered trade mark - HELD THAT - A notice was issued in relation to an attempt made by the appellant to get the name Hogmanay registered. If such an opposition had been made even in relation to the registered proprietors trade mark Peter Scot as it did in the case of Hogmanay it could have withdrawn its application. It would have known its position as to where it stood. It could have started manufacturing Whisky of the same quality with a different brand name. We may furthermore place on record that not only in respect of Hogmanay opposition was also made in relation to Old Angus in Class 32 which bears the name of a county in Scotland and therefore evocative of Scottish origin although the product was a Rum and not Whisky . If the respondent No. 1 took such actions in respect of trade marks Hogmanay and Old Angus in 1974 and 1979 one fails to understand as to why a similar action was not taken in relation to Peter Scot. The principles of waiver and acquiescence in a case of this nature are applicable. Apart from the ordinary rule of waiver of a right expressly provided for in a case of passing off the court has consistently been noticing development of law in this field. Holding that the cause of action filed in the suit in question was not the same on which the earlier suit was passed and further opining that the cause of action for filing the suit was a continuous and recurring infringement of the plaintiff s trade mark by the respondents continuously till the date of filing of the second suit it was held that the presence in the register of a mark was a continuous wrong. However it is not necessary to delve deep into the matter any further as we have held heretobefore that the provisions of the Limitation Act 1963 will have no application in the instant case. Whereas on the one hand Mr. Desai objects to the evidence that was produced before the learned Single Judge with regard to the increase in the volume of sale of Peter Scot on the other hand it was urged that if a comparison is made of the Indian whisky and Scotch Whisky it would appear that some Indian whiskies are costlier than some of the Scottish brands. The stand taken by the respondents is self contradictory. We think that their stand is not fair. We therefore are of the opinion that action of the respondents is barred under the principles of acquiescence and/ or waiver. Where the class of buyers as noticed hereinbefore is 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 however the product is to be purchased both by villagers and town 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 Heightened Scrutiny Test should be applied as urged on behalf of the appellant. Bollinger J. and Ors. v. Costa Brava Wine Coy. Ld. 1960 (1) RPC 16 whereupon Mr. Desai has strongly relied upon makes such a distinction. Bollinger J. (supra) was a case on demurrer. It was concerned with sale of Spanish Champagne. But then we are concerned with the class of buyer who supposed to know the value of money the quality and content of Scotch Whisky. They are supposed to be aware of the difference 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 to notice the distinction which is real and otherwise borne out from the precedents operating in the field. Had these tests been applied the matter might have been different. In a given case probably we would not have interfered but we intend to do so only because wrong tests applied led to a wrong result. So far as the applicability of the 1999 Act is concerned having regard to the provisions of Sections 20(2) and 26(2) we are of the opinion that the 1999 Act will have no application. Thus the impugned judgment is set aside. The appeal is allowed.

Summary

Issues Involved:
1. Whether the delay on the part of the respondent Nos. 1 and 2 in filing the application for rectification would amount to acquiescence and/or waiver.
2. Whether the respondent No. 3 as also the learned Single Judge and the Division Bench of the High Court have failed to apply the correct tests and, thus, misdirected themselves in law.

Issue-wise Detailed Analysis:

Issue 1: Delay and Acquiescence/Waiver
The appellant argued that the respondents were aware of the infringement as far back as 1974 but did not take action until 1986, which should bar the rectification application under principles of waiver and acquiescence. The respondents countered that the delay was due to awaiting a Supreme Court decision on a related matter and the need to address multiple infringements globally. The court noted that the respondents had taken actions against other similar infringements but had not pursued the appellant's case, suggesting acquiescence. The court emphasized that delay and acquiescence should be considered in the context of the public interest and the purity of the register but concluded that the respondents' inaction for over a decade amounted to acquiescence and waiver, barring the rectification application.

Issue 2: Correct Tests and Legal Misapplication
The court examined whether the use of the term "Scot" in "Peter Scot" was sufficient to deem the mark deceptive or confusing. It was noted that the onus of proof was on the respondents, who failed to provide substantial evidence. The court reviewed precedents from various jurisdictions, including Australia and the United States, which emphasized the importance of considering the nature of the goods, the class of buyers, and the likelihood of confusion. The court found that the respondents did not adequately demonstrate that the use of "Scot" would confuse or deceive the educated and discerning consumers of whisky. It was also noted that the appellant's product clearly indicated its Indian origin, further reducing the likelihood of confusion. The court concluded that the lower courts had applied incorrect tests, leading to a misdirected judgment.

Conclusion:
The Supreme Court set aside the impugned judgment, holding that the respondents' delay amounted to acquiescence and waiver, and that the lower courts had misapplied the legal tests for determining deceptive similarity. The appeal was allowed, and the rectification application was dismissed.