IA No.9010/2020 (U/O 39 R 1 & 2 CPC) and IA No.11432/2020(U/S 151 CPC)1. IA No. 9010/2020 is filed by the plaintiff seeking the relief of grant of an ad-interim injunction in favour of the plaintiff and against the defendants against infringement of the plaintiff’s registered trade mark i.e. “IMAGE”2. On 07.10.2020, this court passed an interim order granting an ad interim injunction in favour of the plaintiff and against the defendants in terms of prayer (a) and (b) of IA No. 9010/2020. Prayer (a) and (b) of IA No. 9010/2010 reads as follow:-“a) Grant an ad-interim injunction in favour of the Applicant and against infringement of Applicant's registered trade mark “IMAGE”, restraining the respondents, their promoters, directors, assigns, relatives, successors-in interest, licensees, franchisees, partners, representatives, servants, distributors, employees, agents etc. or anyone associated with them from using the marks SIGGNATURE/“IMAGE” or any other marks or variation thereof, identical to or deceptively similar to or containing the applicant’s registered trade mark “IMAGE” written in a unique font and with the underline under the word ‘SIGNATURE’ either as a trade mark, copyright or as a part of their website, their products, hoardings/signages, social media webpages, online trade directories, etc. and/or in any manner whatsoever so as to infringe the same;b) Grant an ad-interim injunction in favour of the Applicant restraining the Respondents, their promoters, directors, assigns, relatives, successors-in-interest, licensees, franchisees, partners, representatives, servants, distributors, employees, agents etc. or anyone associated with them from using the mark SIGGNATURE /“IMAGE” and /or any other mark/variation thereof identical to or deceptively similar to the Applicant’s trade mark SIGNATURE /“IMAGE” in any manner whatsoever so as to pass off or enable others to pass off their goods as emanating from the Applicant and for the goods of the Applicant;”3. IA No. 11432/2020 is filed by the defendants to vary or modify the order dated 07.10.2020 and take on record the defendants label “IMAGE” which was in use as per the terms of the undertaking prior to filing of the suit.4. It is the case of the plaintiff that it is part of the Diageo Group of Companies and is a subsidiary of Diageo Plc, which is one of the global leaders in manufacturing, distributing, marketing and sale of alcoholic beverages with a large collection of brands across spirits and beer. The brands offered by the plaintiff span across price points operating in all types of segments such as Popular, Prestige, Premium and Luxury. MCDOWELL’s No.1, ROYAL CHALLENGE, SIGNATURE, ANTIQUITY, BLACK DOG are some of the marquee brands etc. In addition, the plaintiff has rights to import, manufacture, distribute and sell various iconic Diageo Global Brands in India such as JOHNNIE WALKER, BAILEYS, CAPTAIN MORGAN, etc.5. Products under the trade mark SIGNATURE/“IMAGE” were first introduced in India in the year 1993 and are known for their iconic green coloured octagonal bottles and the brand is available in two variants-‘SIGNATURE Rare Aged Wishky’ and ‘SIGNATURE Premier Grain Whisky’. It is stated that the plaintiff has developed a strong business and distribution network in India. The mark SIGNATURE/“IMAGE” stands registered in favour of the plaintiff since December 1994 in class 33 in respect of whisky. The said mark is valid and renewed up to 05.12.2024. It is stated that the plaintiff has obtained several other registrations for the mark “IMAGE” under different variations that comprise the mark ‘SIGNATURE’ with the underline below the word ‘SIGNATURE’ as its foremost feature. The plaintiff has also obtained registrations for several other ‘SIGNATURE' formative marks such as ‘SIGNATURE SOLITAIRE’, ‘SIGNATURE STARTUP’, ‘SIGNATURE MISERIES’, etc. The immense sales of products reflecting plaintiff’s trade mark “IMAGE” /SIGNATURE are wholly attributable to the high quality of its products, both whisky and drinking water and their active promotion and marketing. The vast goodwill and reputation subsisting in favour of the plaintiff is further evidenced from several awards and accolades standing to its credit. The plaintiff’s trade mark “IMAGE”/SIGNATURE is extremely well-known and it considers the same as its valuable intellectual property.6. In April 2018, the representatives of the plaintiff came across use of the mark SIGGNATURE/ “IMAGE” by the defendants on the internet in respect of ‘pan masala’ products. The plaintiff issued a cease and desist notice on 19.04.2018 to defendants No. 1 and 2 calling upon them to immediately give up all use of the mark SIGGNATURE/ “IMAGE” and/or any deceptive variations of the plaintiff’s trade mark SIGNATURE/“IMAGE” . In response, counsel for the defendants expressed a desire to amicably resolve the matter. Thereafter, pursuant to exchange of correspondence, finally in March 2019, defendants No. 1 and 2 agreed to amend their label/mark from “IMAGE” to “IMAGE”. Other terms were also agreed upon. The defendant executed an Undertaking dated 14.03.2019 expressly acknowledging that the plaintiff is the exclusive proprietor of the trade mark SIGNATURE/ “IMAGE”.7. However, sometime in January 2020, representatives of the plaintiff came across certain hoardings bearing the impugned mark “IMAGE” as well as variations thereof i.e. “IMAGE” and “IMAGE” in the states of Uttar Pradesh and Karnataka. Market enquiries revealed that the defendants had continued to use the impugned mark with the underline under the word ‘SIGGNATURE’ and had also continued to offer their products for sale under the objectionable mark through a dedicated website www.dbsiggnature.com replete with the impugned mark “IMAGE” and variation thereof “IMAGE”. The plaintiff sent a letter dated 11.01.2020 to the counsel for the defendants expressing its concern regarding the hoardings which were discovered by the plaintiff and calling upon the defendants to immediately cease all use of the impugned mark “IMAGE” and to comply with the terms of the undertaking. As the defendants failed to respond, the present suit has been filed.8. Defendants have filed the written statement. It is stated in the written statement that the defendant are engaged in the business of manufacturing and selling of Tobacco, Chewing Tobacco, Pan Masala, Zarda, Khaini, Jafrani Patti, etc. and other similar and cognate goods under the trade mark/label SIGGNATURE/ “IMAGE”. It is stated that defendant No. 1 is the owner and proprietor of the said trademarks in class 31. The user of the said marks is claimed since 01.01.1985. Defendant no. 2 is the licensee of defendant No.1.9. It is the case of the defendants that the plaintiff is in the business of sale of Alcoholic Beverages whereas the defendants are dealing with the goods, namely, pan masala with and without tobacco, khaini, mouth freshners, etc. The defendants are dealing in entirely different and dissimilar goods. The trade channel and the purchasing public is entirely different from each other and so, there can be no question of confusion and deception. It is stated that it was in these backgrounds that the parties had settled the matter when the plaintiff had filed opposition against various applications of defendant No. 1.10. It is stated that the defendants remain bound by the undertaking dated 14.03.2019 given by defendant No. 1. It is stated that the undertaking was prospective and not retrospective. The defendant was to exhaust all goods, publicity material available with the trade mark ‘SIGGNATURE’ with underline. The defendants, it is claimed, are not violating the undertaking. It is asserted that the defendants have changed their label post execution of the undertaking and the defendants have no reason to seek advertisement of the old label.11. I have heard learned counsel for the plaintiff and learned senior counsel for the defendants.12. Learned counsel for the plaintiff has strongly urged that the defendants are in complete breach of the undertaking dated 14.03.2019 as is obvious from the advertisements which have been released by them in various arenas. Hence, the defendants cannot rely on the undertaking in any manner whatsoever.It is further urged that the settlement that was entered into with the defendants as reflected in the undertaking given by defendant No. 1 dated 14.03.2019 stands abrogated/annulled on account of breach of the same by the defendants. Hence, the plaintiff is not bound by the said settlement.It is further pleaded that the trade mark of the plaintiff is a well-known trade mark with user since 1993. The trade mark is registered since 1994. It is a well-know brand and merely, because the products being sold by the defendants are different would not be a ground to vacate the interim order. This court should confirm the interim order passed in favour of the plaintiff on 07.10.2020. Reliance is placed on the judgment of a Coordinate Bench of this court in the case of Bloomberg Finance LP vs. Prafull Saklecha &Ors., (2014) 207 DLT 35, judgment in the case of United Distillers Plc. Vs. Jagdish Joshi & Ors., (2000) 88 DLT 142 and judgment in the case of Rolex S.A. vs. Alex Jewellery Pvt. Ltd. & Ors., 2009 SCC OnLine Del 753 to plead that in respect of a well-known trade mark, a restraint order can be passed even in respect of different goods.Reliance is also placed on Section 29(4) of the Trade Marks Act.13. Learned senior counsel for the defendants has pleaded that they are using the said mark since 1985 and in case, the interim order is to continue, the entire business of the defendants would get disrupted. It is urged that the defendants’ brand is one of the leading brands in its trade of gutka, etc. and the injunction order would cause grave prejudice to the defendants.It is reiterated that the defendant have always abided by the undertaking dated 14.03.2019 that was given pursuant to the settlement between the parties. The defendants are ready and willing to abide by the said settlement. It is, in fact, pointed out that when the defendants had filed application for registration of their trade mark, the plaintiff had filed objections. Pursuant to the settlement, the plaintiff had withdrawn the objection after which the trade mark of the defendants was dully registered on 03.04.2019. It is stated that the parties are bound by the said settlement.It is strongly denied that any prejudice is caused to the plaintiff or confusion is caused to the general public by use of the trade mark SIGGNATURE/“IMAGE” by the defendants for gutka, etc. and other such cognate products.14. I may first have a look at the terms of the undertaking given by defendant No. 1 and 2 dated 14.03.2019 by which defendant No. 1 and 2 undertook as follows:i. give-up all use of the label “IMAGE” in relation to their goods/services;ii. to forthwith amend their label for the mark SIGGNATURE from “IMAGE” to “IMAGE”.iii. cease all use of the label and/or any deceptive variation(s) thereof as a trade/service mark, trade name, trading style, domain name, website, email address and/or in any other manner whatsoever to represent their goods/services or in any other relation thereto;iv. destroy all literature and material/s including business cards, stationery, catalogues, packaging materials, labelss, advertisements, brochures, hoardings, signboards, vouchers, bill books etc. bearing the label “IMAGE” and/or any other deceptive variations thereof.v. amend their trade mark applications filed under No.3082335 for the label“IMAGE” , No. 3200863 for the label “IMAGE” No. 3200864 for the label “IMAGE” No. 3821688 for the label “IMAGE” and 3977989 for the label “IMAGE” with the Trade Marks Registry within 10 days from signing of the Undertaking as well as file appropriate requests with the Trade Marks Registry for the above-mentioned applications requesting the Registrar of Trade Marks to allow amendment of the labels for all the above-mentioned applications to the label “IMAGE” and in case the request for amendment of application is not allowed, then immediately withdraw the above-mentioned applications under intimation to Plaintiff and Counsel for Plaintiff;vi. cancel their Copyright registration No. A-123041/2018 for the label “IMAGE” by filing an appropriate request/application with the Copyright Office, under intimation to Plaintiff and Counsel for Plaintiff;vii. not file any application or secure any registration for the label “IMAGE” or any other label mentioned in point (v) and (vi) above, and/or any other deceptive variations thereof; viii. not adopt/use any mark/label identical with or deceptively similar to the registered and reputed trade mark/logo SIGNATURE/ “IMAGE” of Plaintiff; andix. not to take any action against application/registration/use of the mark SIGNATURE “IMAGE” (along-with its variants) by United Spirits Limited.15. At the outset, it was put to the learned counsel for the plaintiff that the defendants are ready and willing to abide by the aforesaid undertaking. However, learned counsel for the plaintiff strongly urges that in view of the breach of the undertaking given by the defendants, the said understanding between the parties stands abrogated and revoked. The plaintiff’s mark being a well-know mark, the plaintiff is entitled to injunction to restrain the defendants from using the trade mark SIGGNATURE/“IMAGE” or any other variation thereof and deceptively similar to the plaintiff’s trade mark16. For the reasons stated herein below I am unable to accept the plea of the plaintiff that the undertaking / settlement ceases to bind the parties.17. Firstly I may note that admittedly, the above plea that the settlement between the parties stands rescinded is not taken anywhere in the plaint. It is not the case of the plaintiff in the plaint that on account of breach of the undertaking dated 14.03.2019, the said settlement between the parties ceased to operate.18. It is settled legal position that a party cannot be granted a relief which is not founded on pleadings. In this context reference may be had to the judgment of the Supreme Court in the case of State of Orissa & Anr. vs. Mamta Mohanty, (2011) 3 SCC 436 where the Supreme Court held as follows:-“55. Pleadings and particulars are required to enable the court to decide the rights of the parties in the trial. Thus, the pleadings are more to help the court in narrowing the controversy involved and to inform the parties concerned to the question in issue, so that the parties may adduce appropriate evidence on the said issue. It is a settled legal proposition that “as a rule relief not founded on the pleadings should not be granted”. Therefore, a decision of a case cannot be based on grounds outside the pleadings of the parties. The pleadings and issues are to ascertain the real dispute between the parties to narrow the area of conflict and to see just where the two sides differ. [Vide Sri Mahant Govind Rao v. Sita Ram Kesho [(1897-98) 25 IA 195 (PC)] , Trojan & Co. v. Nagappa Chettiar [AIR 1953 SC 235] , Ishwar Dutt v. Collector (L.A.) [(2005) 7 SCC 190] and State of Maharashtra v. Hindustan Construction Co. Ltd. [(2010) 4 SCC 518]19. Hence, in the absence of proper pleadings the averment of the plaintiff that the settlement between the parties has ceased cannot be permitted to be raised.20. I may further note that after the settlement arrived at between the parties and the undertaking dated 14.03.2019, both the parties took steps in terms of the settlement. On 10.06.2019, the defendants filed an application before the Registrar of Trade Marks withdrawing application for registration of the trade mark “DB SIGGNATURE FINEST”. Various communications were also sent to the Copyright Office for withdrawal/cancellation of the artistic work. The plaintiff also withdrew its objections filed with the Registrar of the Trade Mark against the trade mark of the defendants. Hence, the parties took steps pursuant to the settlement.21. Clearly there was a settlement agreement between the parties. Parties acted based on the settlement. It is not pleaded that the settlement stood terminated. The parties would remain prima facie bound by the settlement.22. I may also look at other pleas raised by the plaintiff. It was strongly urged by the plaintiff that their trade mark SIGNATURE is a well-know trade mark and a restraint order can be passed in respect of different goods other than the goods of the plaintiff.23. I may look at the judgments relied upon by the learned counsel for the plaintiff in this regard. In United Distillers Plc. Vs. Jagdish Joshi & Ors., (supra), the Coordinate Bench was dealing with the use of the mark “Johnnie Walker” by the defendants in respect of gutkha. The Coordinate Bench held as follows:-...9. The learned counsel has also relied upon several judgments to contend that in respect of well known trade marks a restraint order can be issued even in respect to different goods. It is only necessary to consider the illustrative case of Daimler Bern Aktiegesellschaft v. Hybo Hindustan [AIR 1994 Delhi 239], where an automobile manufacturer was granted a restraint order in respect of undergarments in respect of a known trade mark. Thus it is well settled law that the known trade marks do enjoy protection in respect of its unauthorised user on goods other than those goods for which the trade mark is registered. This principle of availability of protection for other goods has been laid down in number of judgments reported as Alfred Dunihill Limited v. Kartar Singh [1999 PTC 294] , AB Volvo v. Volvo Steels [1998 PTC 48.] , Bata India Limited v. Pyare Lal & Co. [AIR 1985 All 242.] , Binatone International Ltd. v. Sugan Kitchenware Appliances [1991 PTC 8] , Jugmug Electric & Radio Co. v. Telerad Pvt. Ltd. [ILR 1977 (1) 295.] , Banga Watch Co. v. NV Philips [AIR 1983 P&H 418.] , and Caterpillar Inc. v. Jorangel [1998 PTC 31 (DB)]...12. The plaintiff can, make a grievance about the striding figure of a hatted person and the colour scheme of the defendant's trade dress which does prima facie appears to be inspired by the plaintiff's product. A bare perusal of the trade dress of the defendant denotes a striking similarity between the defendant and the plaintiff's products. A comparative perusal of the trade dress of the competing products demonstrate inter alia the following similarities in the trade dress:(a) The angled label.(b) The user of colour combination of black and gold.(c) The user of the striding figure.24. Similarly, Rolex S.A. vs. Alex Jewellery Pvt. Ltd. & Ors. (supra) was a case where the plaintiff was seeking to restrain the defendants from dealing in artificial jewellery bearing the trade mark “ROLEX”. The court held as follows:-“18.This court, even prior to introduction of Section 29(4) in the 1999 Act had in Daimler Benz Aktiegesellschaft v. Hybo Hindustan (1994) 14 PTC 287 in relation to another well known trademark “Benz” held that such names are different from other names — these are names which have become household words — it was held that there would hardly be anyone conscious of automobiles who would not recognize the name “Benz” used in connection with cars. The defendant in that case was restrained from using the name “Benz” with reference to underwear. The Senior counsel for the plaintiff also relied upon(i) Hamdard National Foundation v. Abdul Jalil application for interim relief in suit No. 1240/2004 decided on 13th August, 2008 where use of name Hamdard in relation to processing and marketing of rice was injuncted notwithstanding plaintiff till then not dealing in the same and diversity in the goods and considerable delay in bringing the action. It was held that the consumer was likely to believe that the goods of defendant, though dissimilar, originate from the plaintiff.(ii) General Motors Corpn v. Yplon SA decided by the court of Justice of European Communities and Premier Brands UK Ltd v. Typhoon Europe Ltd Fleet Street Reports (2000) 767 on the aspect of deception and dilution respectively.(iii) Order of Assistant Registrar of Trade Marks, Singapore holding that watches have over the years evolved from their traditional function as being merely time keepers to being distinguished as items of fashion/fashion accessories.(iv) Cartier International B.V. v. Choosy Corner (2003) 26 PTC 160 (Delhi) where the mark cartier was held to have tremendous goodwill and reputation and use thereof in relation to different goods i.e., garments was injuncted.(v) Honda Motors Co Ltd v. Charanjit Singh (2003) 26 PTC 1 (Del) where mark Honda was held to have a global goodwill and reputation and use thereof in relation to pressure cooker was injuncted on the principles of passing off.and a number of other judgments, which are discussed in judgments aforesaid and with which it is not necessary to burden this order.”25. Similarly, in the case Bloomberg Finance LP vs. Prafull Saklecha &Ors., (supra), the Coordinate Bench held as follows:-“62.The fact that the Plaintiff and the Defendants are operating in different lines of businesses is not a
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good defence in an action brought by the proprietor of a well-known mark. As has been explained in several decisions (see for e.g., Adidas Solomon and Adidas Benelux (2003) ECR-I-2357), even if the fields of operation are different, it is possible that the average consumer makes a link with the prominent well-known mark. The well-known mark comes to signify certain qualities that transcend the goods and services for which it is registered. Increasingly, with the free flow of goods and services offered under well-known brands internationally, the possibility of confusion being caused in the minds of the average consumer in countries other than the country of origin has to be acknowledged.”26. Clearly, the fact that the plaintiff and the defendants are operating in different lines of business may not be a good defence in an action brought by the proprietor of a well-known mark. The well-known mark is said to be a mark which signifies certain qualities that transcend the goods and services for which it is registered. The possibility of confusion being caused in the minds of an average consumer in the counties other than the country of origin has to be acknowledged.27. However, in my opinion, the above judgements prima facie do not apply to the facts of this case. In none of the above cases parties had entered into a settlement as in the present case.28. Further, the fact also remains that the plaintiff had agreed that the defendants can use the trade mark SIGGNATURE/“IMAGE”. The plaintiff prima facie was conscious that the use of this mark by the defendant does not create confusion or deception in the minds of the general public. That is why it agreed for the said settlement and allowed the defendant to use the said mark. One cannot forget that the defendant also claims to be using the noted mark SIGGNATURE since 1985.29. In the above facts I modify the interim order dated 07.10.2020. Subject to the defendants filing an undertaking of their directors to abide by the terms and conditions of the undertaking dated 14.03.2019 absolutely with a copy to the learned counsel for the plaintiff, the interim order dated 07.10.2020 is confirmed subject to the modification that in terms of the undertaking dated 14.03.2019, the defendant is permitted to use the trade mark SIGGNATURE/“IMAGE”.30. Both the applications stand disposed of.