Research › Search › Judgment

Delhi High Court · body

2014 DIGILAW 2354 (DEL)

Diageo Brands B. V v. Khoday Breweries Ltd.

2014-09-03

G.P.MITTAL

body2014
Judgment : 1. By virtue of this application under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (CPC), the Plaintiffs seek an ad interim injunction in their favour and against the Defendants in the following terms :- (i) From either jointly or severally using or attempting to use or asserting any right to use or applying to register or to maintain the applications, or to register any of the trademarks mentioned in paragraph 20 of the plaint or any other trademark similar to any trade mark of any of the Plaintiffs more particularly mentioned in paragraphs 5 to 16 of the plaint, or using or applying for any trademarks containing an essential or prominent element of the trademarks mentioned in paragraphs 5 to 16 of the plaint or in any other manner whatsoever infringing the registered trademarks of the Plaintiffs or in violation of any other rights in the registered trademarks of the Plaintiffs; (ii) From passing off their goods as and for the goods of the Plaintiffs by the use of any of the marks specifically mentioned in paragraph 20 of the plaint or any other trademark similar to the trademarks of the Plaintiffs more particularly mentioned in paragraphs 5 to 16 of the plaint or associating themselves or their products in any way with the Plaintiffs or the Plaintiffs' trademarks or products; and (iii) From either jointly or severally using or attempting to use or asserting any right to use the registered trademarks, mentioned under paragraph 21 of the plaint and/ or any other registration that the Defendants may have obtained for a mark which is similar to trademarks of the Plaintiffs mentioned in paragraphs 5 to 16 of the plaint and produce such Registration Certificates. 2. A suit for permanent and mandatory injunction for infringement of registered trademarks, for passing off, unfair competition and damages has been filed by the Plaintiffs alleging that the Plaintiffs are a group of companies or associated or affiliated companies of Diageo Plc., which is one of the world’s most famous trade names in manufacturing, distribution, marketing and sale of alcohol beverages including wines, liquors, spirits, cordials, beers and other products. 3. 3. Plaintiffs operate in over 180 countries and territories across Europe, North and South America and Asia-Pacific and are the owners of a global portfolio of the world’s best known brands such as JOHNNIE WALKER RED LABEL, JOHNNIE WALKER BLACK LABEL, JOHNNIE WALKER GREEN LABEL, JOHNNIE WALKER GOLD LABEL, JOHNIE WALKER BLUE LABEL, CAPTAIN MORGAN, VAT 69, SMIRNOFF, BLACK & WHITE, BAILEYS, BELL’S, J&B and GUINNES and several others. 4. It is urged that Plaintiff no. 1 is a company incorporated under the laws of Netherlands and is the registered proprietor of the trademarks mentioned at pages 17-38 of the plaint, in India. Some of the mentioned registrations are pending certain recordals of devolution of title and are pursued by Plaintiff no. 1 with the Trademarks Registry. However, applications for the trademarks mentioned at pages 38-39 of the plaint are pending before the Registrar of Trademarks in India. 5. Plaintiff no.2 is a corporation incorporated under the laws of the State of Connecticut, U.S.A. and is the registered proprietor of the trademarks mentioned at pages 40-51 of the plaint, in India. Some of the mentioned registrations are pending certain recordals of devolution of title and are pursued by Plaintiff no.2 with the Trademarks Registry. However, applications for the trademarks mentioned at page 51 of the plaint are pending before the Registrar of Trademarks in India. 6. Plaintiff no.3 is a corporation organised under the laws of Scotland and is the registered proprietor of the trademarks mentioned at pages 52-56 of the plaint, in India. Some of the mentioned registrations were pending certain recordals of devolution of title and are pursued by Plaintiff no.3 with the Trademarks Registry. However, applications for the trademarks mentioned at page 56 of the plaint are pending before the Registrar of Trademarks in India. 7. Plaintiff no.4 is a corporation organised under the laws of Ireland and is the registered proprietor of the trademarks HARP, GUINESS and GUINESS ABSTRACT HARP in India. However, application for trademark KILKENNY in the name of Plaintiff no.4 is pending before the Registrar of Trademarks in India. 8. Plaintiff no.5 is a corporation organised under the laws of U.S.A. and is the proprietor of the trademarks THE MONTEREY VINEYARD, STERLING VINEYARDS and BEAULIEU VINEYARD in India. Plaintiff no. 2 assigned these trademarks to Plaintiff no. 5 by an assignment dated 30.06.2008. 8. Plaintiff no.5 is a corporation organised under the laws of U.S.A. and is the proprietor of the trademarks THE MONTEREY VINEYARD, STERLING VINEYARDS and BEAULIEU VINEYARD in India. Plaintiff no. 2 assigned these trademarks to Plaintiff no. 5 by an assignment dated 30.06.2008. This assignment was filed for recorder at the Indian Trademarks Registry on 22.09.2008 but the change of ownership is pending. Some of the mentioned registrations were pending certain recordals of devolution of title and are pursued by Plaintiff no.5 with the Trademarks Registry, and the applications for the trademarks BLOSSOM and BLOSSOM HILL in the name of Plaintiff no.5 are pending before the Registrar of Trademarks in India. 9. Plaintiff no. 6 is a corporation organised and existing under the laws of Singapore and is the owner of the trademarks SHANGHAI WHITE and SHANGHAI WHITE 3-D, the registrations of which are pending before the Registrar of Trademarks in India. 10. Plaintiff no. 7 is a corporation organised and existing under the laws of Argentina and is the registered proprietor of the trademark SAN TELMO in India. 11. Plaintiff no. 8 is a corporation organised and existing under the laws of India. Plaintiff no. 8 has appropriate authorisations/ licences to use all the trademarks belonging to Plaintiffs no. 1 to 11 in India. Plaintiff no. 8 is the registered proprietor of the trademarks ANCHOR ST, Shark Fin & Device and YOU ARE INTERESTING in India and the application for trademark SHARK TOOTH in the name of Plaintiff no. 8 is pending before the Registrar of Trademarks in India. 12. Plaintiff no. 9 is a corporation organised under the laws of Ireland and is the registered proprietor of the trademarks mentioned at pages 60-62 of the plaint, in India. Some of the mentioned registrations were pending certain recordals of devolution of title and are pursued by Plaintiff no. 9 with the Trademarks Registry and the applications for registration of the trademarks BB and Horse and Rider Device (2007 version) in the name of Plaintiff no.8 are pending before the Registrar of Trademarks in India. 13. Plaintiff no. 10 is a corporation organised and existing under the laws of Ireland and is the registered proprietor of the trademarks BUSHMILLS (330920), BUSHMILLS (331875), BLACK BUSH, and BUSHMILLS (935955) in India and the application for the trademark STILL in the name of Plaintiff no. 13. Plaintiff no. 10 is a corporation organised and existing under the laws of Ireland and is the registered proprietor of the trademarks BUSHMILLS (330920), BUSHMILLS (331875), BLACK BUSH, and BUSHMILLS (935955) in India and the application for the trademark STILL in the name of Plaintiff no. 10 is pending before the Registrar of Trademarks in India 14. Plaintiff no. 11 is a corporation organised and existing under the laws of Netherlands Antilles and is the registered proprietor of the trademarks URSUS (704941) and URSUS (701189) in India. 15. According to the case set up by the Plaintiffs, Defendants no. 1 to 4 are a part of one group of companies dealing in alcohol and beverage products similar to those of Plaintiffs and are under a common management. Defendants no.5 to 14 are responsible for the management of Defendants no.1 to 4 group of companies. 16. It is averred that Defendants no. 1 to 4 have filed trademark applications which have been mentioned in Para 19 (pages 64-67 of the plaint) and to which the Plaintiffs are aware that they are confusingly and deceptively similar to the trademarks of Plaintiffs. These trademarks were advertised in the Trade Marks Journal and were opposed by one of the Plaintiffs. 17. It is stated that the trademarks KHODEY BLACK & WHITE, VAT 999, GUDNESS, BOND’S GREEN LABEL, CAPTAIN WALKER, PETEWALKER, PETEWALKR and NOF were also found deceptively similar to the trademarks of the Plaintiffs and were wrongly registered by Defendants no. 1 to 4. 18. It is pleaded that Plaintiffs initiated various proceedings against the Defendants and filed various applications as mentioned in para 21 (pages 68 to 71 of the plaint). Most of the applications for obtaining similar trademarks were abandoned as mentioned in the tabulated form in para 21 of the plaint, whereas some oppositions initiated by Plaintiff no.1 i.e., application bearing no. 801153 for the mark BON-E-WALKER in Class 33 and application bearing no. 845538 for the mark BONNIE-V-WALER in Class 32 filed by Defendant no.1 were concluded successfully in favour of Plaintiff no.1. 19. It is pleaded that in the year 1991, Plaintiff no.1 and its predecessors became aware of the adoption of the mark VAT 999 and passing off of the trademark of JOHNNIE WALKER RED LABEL brand of the Plaintiffs by the Defendants in relation to Whisky. 19. It is pleaded that in the year 1991, Plaintiff no.1 and its predecessors became aware of the adoption of the mark VAT 999 and passing off of the trademark of JOHNNIE WALKER RED LABEL brand of the Plaintiffs by the Defendants in relation to Whisky. The Plaintiffs filed a suit bearing no.866/1996 against Defendant no.1 and an interim injunction dated 23.04.1996 was passed against the Defendants as under :- “the Defendants are restrained from selling, offering for sale, advertising, directly or indirectly dealing in whiskies under the mark VAT 999 or any other mark identical with or deceptively similar to the Plaintiff's trade mark VAT 69.” 20. The said civil suit on account of increase in pecuniary jurisdiction of the District Court is pending before the Additional District Judge, Delhi and the injunction order is operating against Defendant no. 1. It is the case of the Plaintiffs that in early 2000, the Plaintiffs became aware of Defendant no. 1 having filed applications for the marks JOL-E-WALKER, BON-E-WALER, UNCLE WALKER and WALKER’S CHOICE. Thus, perceiving a threat by the Defendants of introducing these marks in the market, Plaintiff no.1 instituted a suit bearing no.2781/2000 against Defendant no.1. The Delhi High Court again granted an ex-parte ad interim injunction against the Defendant by an order dated 15.12.2000 as under :- “.... the Defendants, its distributors, servants, agents, representatives and assigns etc. are restrained from using the trade mark JOL-E-WALER, BON-E-WALKER, UNCLE WALKER AND WALKER’S CHOICE and any other trade mark or trade marks which are deceptively or confusingly similar to the Plaintiff's registered trade mark “JOHNNIE WALKER” in respect of their goods or in advertising and promotional material or any other manner whatsoever infringing the Plaintiff's rights in and to their registered mark JOHHNIE WALKER”. 21. A decree was passed for perpetual injunction in favour of the Plaintiffs therein and against the Defendants therein restraining them from using the trademarks JOL-E- WALKER, BON-E-WALKER, UNCLE WALKER and WALKER’S CHOICE which were confusingly similar to the trademark of the Plaintiffs' JOHNNIE WALKER in respect of their goods or any advertisement and promotional material. 22. 21. A decree was passed for perpetual injunction in favour of the Plaintiffs therein and against the Defendants therein restraining them from using the trademarks JOL-E- WALKER, BON-E-WALKER, UNCLE WALKER and WALKER’S CHOICE which were confusingly similar to the trademark of the Plaintiffs' JOHNNIE WALKER in respect of their goods or any advertisement and promotional material. 22. It is alleged that despite the above suit having been initiated in the year 2000 and not contested by the Defendants, the predatory tactics of the Defendants continued unabated in as much as in the year 2003, the Defendants filed yet another application for registration of the mark PETER WALKER. 23. It is urged that mala-fides of the Defendants are evident from the fact that being in the alcoholic beverages trade, the Defendants who are well aware of the Plaintiffs' trademarks have deliberately adopted virtually identical or deceptively similar marks, or marks having essential and prominent portions of the Plaintiffs' marks, in respect of same or similar goods so as to cause confusion and deception in the market and to make unjust profits for themselves or by trying to ride on the reputation of the Plaintiffs. 24. The Plaintiffs have also given details of the well known global marks of the third parties which were opposed by the said parties by initiating oppositions to the applications for registration filed by the Defendants. 25. Plaintiff no.1 addressed a cease and desist notice dated 14.01.2009 to the Defendants no. 2 and 3 setting forth all the relevant particulars, pertaining to the Plaintiffs' right in their registered trademarks and calling upon the Defendants to withdraw the pending applications filed by them. 26. The Plaintiffs thus, sought ad interim injunction as stated above. 27. Defendants no.1 to 14 filed a joint written statement and joint reply to the application under Order XXXIX Rules 1 and 2 CPC. The Defendants have denied that they are using deceptively similar marks or proposing to use similar or deceptively similar marks as that of the Plaintiffs. 28. It is stated that the Plaintiffs have sought a blanket injunction to restrain the Defendants from filing applications seeking registration of trademarks which is not permissible and will tantamount to pre-empting the Defendants even from applying for a trademark based on the subjective and biased evaluation of the Plaintiffs rather than the Registrar of Trade Marks. 28. It is stated that the Plaintiffs have sought a blanket injunction to restrain the Defendants from filing applications seeking registration of trademarks which is not permissible and will tantamount to pre-empting the Defendants even from applying for a trademark based on the subjective and biased evaluation of the Plaintiffs rather than the Registrar of Trade Marks. Thus, it is stated that the prayer in the suit seeking remedies in respect of Defendants' applications which are pending before the Trade Marks Registrar is barred under Section 93 of the Trade Marks Act, 1999 (the Act). 29. Defendants no. 1 to 14 have stated that Defendant no. 15 is a separate legal entity and the present suit cannot be allowed to be extended to Defendant no. 15. It is stated that in Diageo North America Inc. & Anr. v. Shiva Distilleries Limited, CS (OS) No. 255/2004 decided by Delhi High Court on 05.07.2007, it was held that there was no similarity between the trademarks SMIRNOFF and BRISNOFF. It was held that BRISNOFF is not deceptively similar and can in no manner be confused with the Plaintiffs' trademarks. The Defendants extracted paras 13 and 14 of the order passed in CS (OS) No. 255/2004 as under:- “.........the fact remains that the syllable ‘NOFF’ has been in use in respect of alcoholic products and particularly in the case of vodka. Perhaps, the same is used to indicate a Russian connection as vodka is generally discerned as a Russian drink. Whether it has become a descriptive term or not is debateable, but, at this prima facie stage it cannot be said that the Plaintiffs have established their exclusive right to use the same. 14. So much for the second syllable. As regards the first syllable, I find that there is no similarity between SMIR and BRIS. Although the learned counsel for the Plaintiffs had I.A.s No.16758/2010 and 1908/2012 in submitted that all the letters are common except the letter M in SMIR and the letter B in 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. Although the learned counsel for the Plaintiffs had I.A.s No.16758/2010 and 1908/2012 in submitted that all the letters are common except the letter M in SMIR and the letter B in 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 belonging to the affluent class of the society and who would be in a position to easily distinguish SMIRNOFF from 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 to, nor can it be confused with the Plaintiffs' trade mark SMIRNOFF.” 30. It was thus, stated that the mark METRONOFF and SMIRNOFF are also not similar and Defendant no. 15 cannot be disallowed from pursuing the application for registration of the earlier said trademarks. It was stated that the suit filed by the Plaintiffs as such was not maintainable as Sections 18 to 26 of the Act lays down the procedure for registration of trademarks. Any person claiming a pre-existing right in the same as a right to file opposition and ultimately, it was for the registry to decide on the application. The Plaintiffs, therefore, cannot take away the statutory right of proposed Defendant no.15 to apply for registration of the mark “METRONOFF”. 31. I have heard Mr. C. M. Lall, learned counsel for the Plaintiffs and Mr. Gopal Jain, learned Senior Counsel for the Defendants. 32. The prayer for ad interim injunction made by the Plaintiffs can be divided in five parts, that is, restraint order restraining the Defendants either jointly or severely from (i) using or attempting to use or (ii) asserting any right to use or (iii) applying to register or (iv) to maintain the applications, or (v) to register any of the trademarks mentioned in paragraph 20 of the application. 33. First of all, I shall like to deal with the prayers (iii), (iv) and (v) in the application. 33. First of all, I shall like to deal with the prayers (iii), (iv) and (v) in the application. As far as prayer (v) is concerned, these marks have already been registered by Defendant no. 1. The Plaintiffs can take appropriate proceedings for cancellation of the marks as may be advised irrespective of their action for passing off against the Defendants. Thus, a restraint order against registering any trade mark which is already registered by Defendant no. 1 cannot be granted at this stage. 34. Turning to prayers (iii) and (iv), the learned counsel for the Plaintiffs urges that the Defendants cannot insist and compel the Plaintiffs to keep a watch on every trade mark applied for registration which is similar or deceptively similar to the trademark of the Plaintiffs. The Plaintiffs cannot be forced to always file an application for opposition and if the Defendants are aware that they are applying for a similar or deceptively similar trademark as that of the Plaintiffs, they should be restrained from lodging any such application with the Trade Marks Registry. 35. Referring to Section 18 of the Act, the learned counsel for the Plaintiffs has urged that there is no inherent right in the Defendants to make a trademark application. Such an application can only be made by “person claiming to be proprietor” who has “used” or “proposes to use” the trade mark in near future. 36. Referring to American Home Product v. Mac Laboratories, AIR 1986 SC 137 , the learned counsel for the Plaintiffs has contended that the intention to use a trademark sought to be registered must be genuine and real. The intention to use the mark must exist on the date of making the application for registration. 37. The learned counsel for the Plaintiffs has argued that as soon as the Defendants make a claim in the application for registration that they have either used the mark or that they propose to use the mark in the foreseeable future either by themselves or through a company to be formed in future and if the said mark is same or deceptively similar to the mark of the Plaintiffs, they invade the right of the Plaintiffs and the Plaintiffs would be entitled to an injunction under Section 38 (3) of the Specific Relief Act, 1963. 38. 38. It is urged that the Plaintiffs are registered proprietors of several trademarks and by virtue of Section 28 of the Act, they have the exclusive right to use the trademarks in respect of specified goods and to obtain relief in respect of infringement, which means right to restrain others from using an identical mark or a deceptively or confusingly similar mark. 39. Referring to N.R. Dongre v. Whirlpool, AIR 1995 Delhi 300, the learned counsel for the Plaintiffs has urged that registration of a trademark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. 40. The learned counsel for the Plaintiffs has contended that the Civil Court is well within its right to adjudicate upon what constitutes passing off or not and since the jurisdiction of the Civil Court is not barred by any statute either expressly or impliedly, the Plaintiffs are entitled to the relief as stated above. 41. The learned counsel for the Plaintiffs has strenuously contended that bar of jurisdiction of the Civil Court as given under Section 93 of the Act would be applicable only when the matter of registration or refusal of registration of any trademark is before an Appellate Board as provided in Section 91 of the Act. This has nothing to do with the right of the Plaintiffs to restrain a person who intends to apply for a deceptively similar mark to the Registrar for registration. 42. With regard to prayers (i) and (ii) the learned counsel for the Plaintiffs has argued that the Defendants are trying to cash on the reputation and trademarks of the Plaintiffs and that is why, when the Plaintiffs made opposition to a large number of trademarks for which the Defendants sought registration, the Defendants either abandoned the application for registration or the opposition was successfully allowed or the opposition is pending before the Registry. 43. Per contra Mr. Gopal Jain, learned senior counsel for the Defendants has urged that a blanket order restraining the Defendants to apply to register or to maintain the application for registration is barred under Section 41 (h) of the Specific Relief Act, 1963 as the alternative remedy to oppose registration is available under the Act. 43. Per contra Mr. Gopal Jain, learned senior counsel for the Defendants has urged that a blanket order restraining the Defendants to apply to register or to maintain the application for registration is barred under Section 41 (h) of the Specific Relief Act, 1963 as the alternative remedy to oppose registration is available under the Act. The suit is also barred under Section 9 of the CPC in view of the provisions of Section 93 read with Section 91 of the Act. In support of his contention, the learned senior counsel for the Defendants has relied upon Srikant Kashinath Jituri & Ors. v. Corporation of City of Belgaum, (1994) 6 SCC 572 . 44. Referring to Dhodha House v. S.K. Maingi, (2006) 9 SCC 41 , the learned Sr. Counsel for the Defendants has contended that cause of action will arise only when a registered trademark is used or when an application is filed for registration of the trademark. An application for grant of registration certificate may or may not be allowed. A person in whose favour a Registration Certificate has already been granted indisputably will have an opportunity to oppose the same by filing an opposition before the Registrar who has the requisite jurisdiction to determine the said question. The learned Sr. Counsel for the Defendants has very strenuously stated that vigilance is the cornerstone of any right and it cannot be a ground to pre-empt filing of an opposition to an intended registration of any trademark which is the foundation of the concept of registration of trademark and the Plaintiffs cannot be allowed to contend that they cannot be forced to oppose every application filed by the Defendants. 45. In the alternative, the learned Senior Counsel for the Defendants urges that the order sought, if granted, will lead to absurdity because there will be nobody to decide whether the trademark which the Defendants want to adopt is deceptively or confusingly similar to that of the Plaintiffs and the Defendants may face contempt even if they bonafidely apply for registration of the trademark which in their opinion is not deceptively or confusingly similar, but is held to be so by the Civil Court. It is urged that there is an elaborate machinery under Section 21 of the Act to decide whether the proposed mark is to be registered in the name of the applicant or not. 46. It is urged that there is an elaborate machinery under Section 21 of the Act to decide whether the proposed mark is to be registered in the name of the applicant or not. 46. With regard to prayers (i) and (ii), the learned Sr. Counsel for the Defendants has stated that the trademarks which are sought to be registered or sought to be used are not similar or deceptively and confusingly similar to the marks of the Plaintiffs. Thus, there is no question of infringement of any registered trademark of the Plaintiffs and the injunction application is thus, liable to be dismissed. 47. I have gone through the record and given my thoughtful consideration to the respective contentions raised on behalf of the parties. 48. Chapter III of the Act deals with the procedure for registration and the duration of registration. As per Section 18, any person claiming to be the proprietor of a trademark used or proposed to be used by him or who is desirous of registering it shall apply in writing to the Registrar in the prescribed manner for registration of his trademark. If the application is not withdrawn as provided under Section 19, an advertisement of the application is to be issued as provided under Section 20. Section 21 provides for the limitation within which a person may apply for opposition to the registration. Section 23 provides for registration of the trademark, which is extracted hereunder: “23. Registration. - (1) Subject to the provisions of Section 19, when an application for registration of a trade mark has been accepted and either- (a) the application has not been opposed and the time for notice of the opposition has expired; or (b) the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall, unless the Central Government otherwise directs, register the said trade mark and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of Section 154, be deemed to be date of registration. (2)..... (3).... (4).....” 49. Then, there are provisions for duration, renewal, removal and restoration of the registration. Section 27 (1) debars any person to institute any proceedings to prevent or to recover damages in the infringement of an unregistered trademark. (2)..... (3).... (4).....” 49. Then, there are provisions for duration, renewal, removal and restoration of the registration. Section 27 (1) debars any person to institute any proceedings to prevent or to recover damages in the infringement of an unregistered trademark. At the same time, as per Section 27 (2), a person with an unregistered trademark is competent to have his remedy for passing off goods or services as the goods of another person or as services provided by another person. Section 91 entitles a person aggrieved by an order or decision of the Registrar under the Act to file an appeal before the Appellate Board and Section 93 creates the bar of jurisdiction of the Court in respect of matters referred to in Section 91 (1). Sections 91 and 93 are extracted hereunder: “91. Appeals to Appellate Board. - (1) Any person aggrieved by an order or decision of the Registrar under this Act, or the rules made there-under may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal. (2)..... (3).....” xxxx “93. Bar of jurisdiction of courts, etc. - No court or other authority shall have or, be entitled to, exercise any jurisdiction, powers or authority in relation to the matters referred to in sub-section (1) of Section 91.” 50. Thus, Registrar is entitled to register or refuse registration as provided under Chapter III and appeal thereof is provided under Section 91 of the Act. Bar of jurisdiction of the civil court is only with regard to the matters which are provided under Section 91 of the Act. Thus, wherever the trademark is ordered to be registered or the registration in respect of the trademark is refused by Registrar, an appeal lies to the Appellate Board under Section 91 of the Act. The other remedy against the registration or refusal to register i.e. the civil court is thus, barred to entertain any proceedings with regard to the registration or refusal to registration. Section 93 neither specifically nor by implication bars the jurisdiction of a civil court to injunct a person from applying for registration. The other remedy against the registration or refusal to register i.e. the civil court is thus, barred to entertain any proceedings with regard to the registration or refusal to registration. Section 93 neither specifically nor by implication bars the jurisdiction of a civil court to injunct a person from applying for registration. At the same time, since a detailed procedure for registration, opposition to registration, etc., is given under the Act, it will not be appropriate to grant an injunction against an application for registration. I tend to agree with the learned Sr. Counsel for the Defendants that such an injunction, if granted, will lead to absurdity because there will be nobody to decide whether the trademark, which a person wants to adopt, is liable to be registered or not. A party may think a trademark not to be deceptively or confusingly similar and may bonafidely apply for registration of the same and then face contempt if the Court holds that the mark applied by the said person was deceptively or confusingly similar to the one being used and registered by the Plaintiff. He may unwittingly face contempt of the Court. In any case, simply because the Plaintiff should not be compelled to oppose every application for registration of the trademark, the Defendants cannot be injuncted from applying to register or to maintain the application itself. Section 21 of the Act lays down the time limit and the procedure for filing opposition to the registration. In view of the specific procedure laid down for registration and duration of the trademark in Chapter III, it is not permissible to grant the injunction as stated above. 51. The learned Sr. Counsel for the Plaintiffs could not refer to any precedent where such an injunction was granted. I could lay my hand on only one order of this Court in Zee Tele-films Ltd. & Anr. v. Union of India & Ors., (C.M. No. 1703/ 2007 in CM (M) No. 183/ 2007), where while staying the operation of the registration of the trademark “Zee”, the Registrar of Trademarks was restrained from processing pending applications pertaining to registration of the trademark “Zee”. 52. The Plaintiffs in para 19 of the plaint have mentioned in a tabulated form the trademarks which were proposed to be used by the Defendants and which were deceptively or confusingly similar to the marks of the Plaintiffs. 52. The Plaintiffs in para 19 of the plaint have mentioned in a tabulated form the trademarks which were proposed to be used by the Defendants and which were deceptively or confusingly similar to the marks of the Plaintiffs. In para 21 of the plaint, the Plaintiffs have given the details of the opposition to the various trademarks sought to be registered by the Defendants, where the application for registration of the trademark was either abandoned or the opposition was allowed. In one such case highlighted in the tabulated form hereunder, an adverse order was passed against the Plaintiffs wherein an appeal as provided under Section 91 has been filed by the Plaintiffs. Para 21 of the plaint is extracted hereunder: “Given herein below is a detailed chart of the opposition proceedings initiated by the Plaintiffs against the Defendants' many applications for marks which offend the Plaintiffs' trademarks : S. No. Defendants impugned marks Plaintiffs’ trade marks Number Date of Defendants’ Applications User Status of the opposition proceedings 1 JOL-E-WALKER JOHINNIE WALKER 945062 04-Aug-2000 Proposed to be proposed Application abandoned 2 JOL-E-WALKER JOHNNIE WALKER 845542 16-Mar-1999 Proposed to be proposed Application abandoned 3 JOL-E-WALKER JOHINNIE WALKER 801152 06-May-1998 Proposed to be proposed 4 BON-E WALKER JOHNNIE WALKER 801153 06-May-1998 Proposed to be proposed Opposition allowed. Application refused registration. 5 BONNIE-V-WALKER JOHNNIE WALKER 798014 07-Apr-1998 Proposed to be proposed Awaiting hearing to be appointed 6 BONNIE-V-WALKER (Label) JOHNNIEWALKER 945549 07-Aug-2000 Proposed to be proposed Application Abandoned 7 BON-E-WALKER (Label) JOHNNIE WALKER 945558 07-Aug-2000 Proposed to be proposed Application abandoned. 8 BON-E-WALKER JOHNNIE WALKER 845541 16-Mar-1999 Proposed to be proposed Awaiting Evidence in support of application. 9 BONNIE-V-WALKER JOHNNIE WALKER 845538 16-Mar-1999 Proposed to be proposed Opposition allowed. Application refused registration. 10 UNCLE WALKER JOHNNIE WALKER 831792B 10-Dec-1998 Proposed to be used Application abandoned. 11 UNCLE WALKER JOHNNIE WALKER 868778 30-July-1999 Proposed to be used Awaiting hearing to be appointed. 12 CAPTAIN WALKER JOHNNIE WALKER 945047 04-Aug-2000 Proposed to be used Application abandoned 13 UNCLE WALKER (Label) JOHNNIE WALKER 903075 11-Feb-2000 Proposed to be used Application abandoned. 14 CAPTAIN WALKER CAPTAIN MORGAN and JOHNNIE WALKER 863117 29-June-1999 Proposed to be used Application abandoned 15 WALKER’S CHOICE JOHNNIE WALKER 938765 12-Jul-2000 Proposed to be used Application abandoned. 16 WALKER’S CHOICE Johnnie Walker 863893 05-Jul-1999 Proposed to be used Awaiting hearing to be appointed. 14 CAPTAIN WALKER CAPTAIN MORGAN and JOHNNIE WALKER 863117 29-June-1999 Proposed to be used Application abandoned 15 WALKER’S CHOICE JOHNNIE WALKER 938765 12-Jul-2000 Proposed to be used Application abandoned. 16 WALKER’S CHOICE Johnnie Walker 863893 05-Jul-1999 Proposed to be used Awaiting hearing to be appointed. 17 WALKER’S CHOICE JOHNNIE WALKER 804677 04-Jan-1998 Proposed to be used Awaiting hearing to be appointed. 18 PETEWALKER JOHNNIE WALKER 869490 04-Aug-1999 Proposed to be used Awaiting hearing to be appointed. 19 PETER WALKER JOHNNIE WALKER 1177923 25-Feb-2013 Proposed to be used Awaiting hearing to be appointed. 20 PETEWALKER JOHNNIE WALKER 945054 04-Aug-2000 Proposed to be used Awaiting Counter Statement. 21 VAT 999 (Label) VAT 69 938758 12-Jul-2000 Proposed to be used Application abandoned. 22 VAT 999 VAT 69 675559 03-Aug-1995 Since 20/09/1991 Application abandoned. 23 VAT 999 VAT-69 885871 08-Nov-1999 Proposed to be used Awaiting Counter Statement. 24 AMRONOFF SMIRNOFF 879482 01-Oct-1999 Proposed to be used Application abandoned. 25 AMRONOFF SMIRNOFF 879515 01-Oct-1999 Proposed to be used Awaiting Evidence in support of Application 26 AMRONOFF (Label) SMIRNOFF 762505 17-Jul-1997 Proposed to be used Awaiting hearing to be appointed. 27 BALKANOFF SMIRNOFF 878182 24-Sep-1999 Proposed to be used Application abandoned. 28 RHUMNOFF SMIRNOFF 646768 25-Nov-1994 Proposed to be used Awaiting hearing to be appointed. 29 CZARNOFF SMIRNOFF 628245 17-May-1994 Proposed to be used Application abandoned. 30 CZARNOFF IMPERIAL vodka SMIRNOFF 634116 18-Jul-1994 Proposed to be used Awaiting Counter Statement. 31 BALKANOFF SMRINOFF 879495 01-Oct-1999 Proposed to be used Awaiting Counter Statement. 32 AMRONOFF SMIFNOFF 879482 01-Oct-1999 Proposed to be used Application abandoned. 33 NOFF SMIRNOFF 1611526 15-Oct-2007 Proposed to be used Awaiting evidence in support of application. 34 NOF. SMIRNOFF 728798 01-Oct-1996 Proposed to be used Awaiting evidence in support of application. 35 CAPTAIN SCOTT (Label) CAPTAIN 903112 11-Feb-2000 Proposed to be used Application abandoned 36 CAPTAIN DENIEL CAPTAIN MORGAN 804959 05-Jun-1998 Proposed to be used Application abandoned 37 CAPTAIN GREENE CAPTAIN MORGAN 804670 04-Jun-1998 Proposed to be used Application abandoned 38 CAPTAIN SCOTT CAPTAIN MORGAN 868783 30-Jul-1999 Proposed to be used Application abandoned. 39 CAPTAIN GREENE logo CAPTAIN MORGAN 903094 11-Feb-2000 Proposed to be used Application abandoned. 40 CAPTAIN DANIEL CAPTAIN MORGAN 845549 16-Mar-1999 Proposed to be used Application abandoned. 41 CAPTAIN FISHER CAPTAIN MORGAN 831752B 10-Dec-1998 Proposed to be used Final arguments concluded. Awaiting hearing order. 42 CAPTAIN FISHER CAPTAIN MORGAN 869483 04-Aug-1999 Proposed to be used Awaiting Counter Statement. 39 CAPTAIN GREENE logo CAPTAIN MORGAN 903094 11-Feb-2000 Proposed to be used Application abandoned. 40 CAPTAIN DANIEL CAPTAIN MORGAN 845549 16-Mar-1999 Proposed to be used Application abandoned. 41 CAPTAIN FISHER CAPTAIN MORGAN 831752B 10-Dec-1998 Proposed to be used Final arguments concluded. Awaiting hearing order. 42 CAPTAIN FISHER CAPTAIN MORGAN 869483 04-Aug-1999 Proposed to be used Awaiting Counter Statement. 43 CAPTAIN FISHER (Label) CAPTAIN MORGAN 945566 07-Aug-2000 Proposed to be used Awaiting Evidence in support of Application 44 CAPTAIN SCOTT CAPTAIN MORGAN 831790 10-Dec-1998 Since 28/09/1998 Awaiting Counter Statement. 45 CAPTAIN GREENE CAPTAIN MORGAN 806552 17-Jun-1998 Proposed to be used Awaiting hearing to be appointed. 46 KHODAY’S BLACK LABEL BLACK LABEL 518496 17-Oct-1989 31/10/1998 Adverse order received. Appeal filed. 47 GUDNNESS (Label) GUINNESS 945042 04-Aug-2000 Proposed to be used Application abandoned. 48 BONDS GREEN LABEL GREEN LABEL 806525 17-Jun-1998 Proposed to be used Awaiting Counter Statement. 49 BOND’S GREEN LABEL (Label) GREEN LABEL 900946 01-Feb-2000 Proposed to be used Application abandoned 50 GORBEYS GILBEY’S 780412 01-Dec-1997 Proposed to be used Application abandoned. 51 GORBEYS GILBEY’S 770976 16-Oct-1997 Proposed to be used Application abandoned. 53. Thus, it will be seen that out of total 51 marks, 26 marks were abandoned, 02 marks were refused, hearing is awaited in rest of the cases and as stated above, an adverse order has been passed in one case. 54. The Defendants have relied upon an order dated 05.07.2007 in I.A. No. 1717/ 2004 in CS (OS) No. 255/ 2004, DIAGEO NORTH AMERICA, INC. AND ANOTHER v. SHIVA DISTILLERIES LIMITED, where Defendant’s Shiva Distilleries Limited mark “BRISNOFF” was found to be not deceptively or confusingly similar to the Plaintiff’s trademark “SMIRNOFF”. The order dated 05.07.2007 passed in I.A. No. 1717/ 2004 is not applicable to the facts of the present case for several reasons. First, the Defendant in that case was already using the trademark “BRISNOFF”. Secondly, it was found as a fact that the two trademarks were visually and phonetically dissimilar. All the more, the Defendant had undertaken “to stop using the eyebrow device and to alter the colour combination as offered by the learned counsel for the Defendant”. 55. First, the Defendant in that case was already using the trademark “BRISNOFF”. Secondly, it was found as a fact that the two trademarks were visually and phonetically dissimilar. All the more, the Defendant had undertaken “to stop using the eyebrow device and to alter the colour combination as offered by the learned counsel for the Defendant”. 55. In the instant case, the table extracted from para 21 of the plaint earlier clearly reveals that the Defendants want to ride on the goodwill and reputation of the Plaintiffs and that is why as many as 20 marks are sought to be registered which prima facie, are similar to the Plaintiffs' mark JOHNNIE WALKER. It is apparent that the Defendants have malafidely not only used the word WALKER, but have taken similar alphabets from first word JOHNNIE. Similarly, Defendant no. 1 got a mark VAT 999 registered as against the registered trademark VAT 69 of the Plaintiffs. In N.R. Dongre and Others. V. Whirlpool Corporation and Another, (1996) 5 SCC 714 , the Supreme Court dismissed an appeal against the order passed by a Division Bench of this Court upholding the order of learned Single Judge restraining the Respondent from using the trademark WHIRLPOOL although the same had been got registered by the Respondent in spite of its opposition by the Appellant as it was established that the Appellant’s trademark WHIRLPOOL although not registered in India had acquired reputation and goodwill in this country. 56. The Defendants applied for various marks numbering 54 stating that the marks are proposed to be used. As per Section 18 of the Act, a person claiming to be the proprietor of a trademark used or proposed to be used by him, is entitled to apply for registration of his trademark. It is apparent from the averments of para 19 that the application for registration of a number of trademarks was filed with the Registrar of Trademarks under Section 18 of the Act between the year 1994 to 2000. Most the applications were filed during the period 1998 to 2000. None of the marks have so far has been used by Defendant no.1, although the instant suit was filed in the year 2010. Most the applications were filed during the period 1998 to 2000. None of the marks have so far has been used by Defendant no.1, although the instant suit was filed in the year 2010. A person claiming to be the proprietor of a trademark as referred to in Section 18 of the Act is a person who has already used or who proposes to use the trademark in respect of which an application has been made. The words proposed to be used by him do not refer to a person who does not intend to use the mark in foreseeable future. The fact that the trademark had not been used by the Defendants before applying for registration or even thereafter, for a long time itself shows that the Defendants were taking chance to get the mark registered as one such mark i.e., KHODAY'S BLACK LABEL as given in para 21 and reproduced earlier was allowed to be registered in respect of which an appeal has been filed by the Plaintiffs. As per the averments made in para 11 of the preliminary objections to the written statement, the Defendants have been manufacturing liquor in India since before l968. It is stated in para 11 of the written statement that the Defendants have many registered and unregistered marks, including Peter Scot, Red Knight, Hercules Rum, Khodays Black Label etc. Thus, getting/ obtaining registration to similar or deceptively similar trademarks shows the malafides of the Defendants. In N.R. Dongre (supra), the Supreme Court while affirming the judgment of a Division Bench of Delhi High Court held as under: “15. Thus, getting/ obtaining registration to similar or deceptively similar trademarks shows the malafides of the Defendants. In N.R. Dongre (supra), the Supreme Court while affirming the judgment of a Division Bench of Delhi High Court held as under: “15. The findings of the learned Single Judge, as affirmed on appeal by the Division Bench, are: (i) Long prior user of the name of “WHIRLPOOL” by Plaintiff 1 and a trans-border reputation and goodwill extending to India to the use of that name; (ii) Prior registration of that name even in India from 1956-57 to 1977 against the earliest claim by the Defendants from 1986 (the date of application for registration); (iii) Grant of registration to the Defendants on 12-8-1992, only on the ground of proposed user instead of actual user, which was opposed by the Plaintiffs and is subject to the outcome in the pending appeal; (iv) No reliable evidence of the Defendants having marketed their washing machines for any considerable length of time prior to grant of the interlocutory injunction; (v) Irreparable injury to the Plaintiffs' reputation and goodwill with whom the name of “WHIRLPOOL” is associated, because of the washing machines of the Defendants not being of the same standard and quality of performance as the Plaintiffs' machines; (vi) On the other hand, no injury to the Defendants by grant of the injunction inasmuch as the Defendants' washing machines can be sold under the other names used earlier, with the removal and replacement only of the small metallic strip which bears the offensive trade mark/name which includes “WHIRLPOOL”; and (vii) There is no justification to accuse the Plaintiffs of culpable delay, acquiescence and laches or abandonment so as to disentitle them from the relief of injunction. It has also been held that there is no plausible explanation offered by the Defendants for recently adopting the mark “WHIRLPOOL” when business in washing machines was being carried out earlier in other names, which at this stage, is supportive of the plea of unfair trading activity in an attempt to obtain economic benefit of the reputation established by Plaintiff 1, whose name is associated with the mark “WHIRLPOOL”. The Plaintiffs' conduct in opposing the Defendants' application for registration as soon as it was notified and persisting in the opposition by filing an appeal against the Registrar's order and then an application for rectification of the entry in the register on grant of the certificate and also filing the suit without delay is referred by the trial court as sufficient to suggest that there was no abandonment of the mark, acquiescence or laches by the Plaintiffs.” 57. There is consensus of judicial opinion that a part of the trade mark which is likely to confuse the consumer will also amount to infringement of the trade mark. In De Cordova v. Vick Chemical Co., (1951) 68 RPC 103, the Plaintiffs were using the trade mark containing the words “Vick’s VapoRub” as an essential feature registered in Jamaica. The Defendants used a similar label with words “Karsote Vapour Rub”. It was held that the expression “VapoRub” had become distinctive of the Plaintiffs' goods in Jamaica and action for infringement was held to be successful. 58. In M/s. Atlas Cycle Industries Ltd. v. Hind Cycles Limited, ILR 1973 Delhi 393, while dealing with two rival trademarks “Royal Star” and “Eastern Star” of the parties, the Division Bench of this Court held that the trade mark “Royal Star” adopted and used by the Defendant was similar to the Plaintiff’s trade mark “Eastern Star”. 59. In Himalaya Drug Company v. S.B.L. Limited, 2013 (53) PTC 1 (Del.), a Division Bench of this Court held as under:- “25. After having considered the above mentioned decisions, it is clear to us that it is not the right test of a meticulous comparison of two marks, letter by letter and syllable by syllable. It is the person who only knows the one mark and has perhaps an impression, or imperfect recollection of it, who is likely to be deceived or confused. In fact it depends on first impression of a person. In case he is aware or familiar with both rival marks of the parties he will neither be deceived or confused. The degree of similarity between the two rival marks and which depends upon the first impression whether visual or phonetic and in case court finds that there is a risk of confusion which is the public interest should not be authorised. The degree of similarity between the two rival marks and which depends upon the first impression whether visual or phonetic and in case court finds that there is a risk of confusion which is the public interest should not be authorised. The question is merely the dispute of inter se between the parties but it is matter of right by the registered proprietor who got the exclusive rights to protect the same, otherwise, many competing marks would be available in the market in due course and uncertainty might happen in case the infringer is allowed to use similar mark.” 60. Further, it has been held that the ascertainment of an essential feature of a trademark can be judged even if a word forming a part of a trademark has come in trade to be used to identify the goods of the owner of the trademark. Even use of that part of the mark would amount to infringement of the mark itself as the part of the mark is likely to result into confusion. The likelihood of confusion or deception in such cases is not disproved by placing the 2 marks side by side and demonstrating how small the chance of error is by any customer who places his order for the goods with both the marks clearly before him, for orders are not often placed under such conditions. In most cases, the eye is not an accurate recorder of visual detail and marks are rather remembered by general impressions or by some significant detail than by photographic recollection of the whole. Hence, in De Cordova v. Vick Chemical Co., (1951) 68 RPC 103, the Defendants who used a similar label with words “Karsote Vapour Rub” to the Plaintiffs’ label containing the words “Vick’s VapoRub” were held guilty of infringement. Similarly, this Court in Himalaya Drug Company v. S.B.L. Limited, 2013 (53) PTC 1 (Del.) (DB), held the Defendant using the mark “Liv-T” similar to Plaintiff’s mark “Liv. 52” guilty of infringement as the part of the mark “Liv” was similar. 61. For a Plaintiff to be entitled to the relief of ad interim injunction, the Plaintiff has to satisfy the triple test of strong prima facie case, balance of convenience and irreparable loss and injury in case the injunction sought for is not granted. 62. I have earlier given detailed reasons to demonstrate that the Defendants, particularly Defendant no. 61. For a Plaintiff to be entitled to the relief of ad interim injunction, the Plaintiff has to satisfy the triple test of strong prima facie case, balance of convenience and irreparable loss and injury in case the injunction sought for is not granted. 62. I have earlier given detailed reasons to demonstrate that the Defendants, particularly Defendant no. 1 has attempted to use or has actually used or has applied for registration of the trade marks which are similar or are deceptively or confusingly similar to the marks of which the Plaintiffs are the proprietors. Defendant no.1 got registration of some of the marks as mentioned in para 20 of the application which were deceptively similar to the registered trademark of the Plaintiffs. Out of these, the trademark CAPTAIN WALKER, PETEWALKER and PETEWALKR have not been renewed by Defendant no.1. As stated above, Defendant no. 1’s mark KHODEY BLACK & WHITE, VAT 999, GUDNESS and BOND’S GREEN LABEL are similar or confusingly or deceptively similar to the Plaintiffs’ mark BLACK & WHITE, VAT 69, GUINNES and GREEN LABEL respectively. It is also established that the Defendants have also been using or have adopted deceptively or confusingly similar marks to the marks of the third parties which have been opposed by them. Hence, the Plaintiffs have established a strong prima facie case in their favour. 63. As far as question of irreparable loss and injury is concerned, because of the use of the deceptively or confusingly similar trademarks to those of the Plaintiffs, the Defendants are not only causing financial loss to the Plaintiffs but have also caused immense loss to the Plaintiffs' reputation. Although, Defendant no. 1 is an old company dealing in liquor and alcohol, yet no reason has been given by Defendant no. 1 for adopting the marks similar to the trademark of the Plaintiffs. Thus, it is also clear that there will be irreparable loss and injury if the injunction sought is not granted. 64. Balance of convenience also tilts in favour of the Plaintiffs as the Plaintiffs are entitled to the protection of their trademarks so that the same are not diluted by unwarranted use by the Defendants or third parties. 65. The Plaintiffs, therefore, have been able to make out a case for grant of ad interim injunction in their favour. 64. Balance of convenience also tilts in favour of the Plaintiffs as the Plaintiffs are entitled to the protection of their trademarks so that the same are not diluted by unwarranted use by the Defendants or third parties. 65. The Plaintiffs, therefore, have been able to make out a case for grant of ad interim injunction in their favour. The application is disposed of with grant of ad interim injunction in favour of the Plaintiffs and against the Defendants restraining them from: (i) either jointly or severally using or asserting any right to use any of the trademarks mentioned in paras 5 to 16 of the plaint or any other trademark specifically mentioned in para 20 of the plaint or any other trademark similar to any trademark of any of the Plaintiffs, till the disposal of the suit; and (ii) from passing of the goods as the goods of the Plaintiffs with the trademark KHODEY BLACK & WHITE, VAT 999, GUDNESS, BOND’S GREEN LABEL, CAPTAIN WALKER, PETEWALKER, PETEWALKR and NOF specifically mentioned in para 20 of the application (I.A. No. 16758/ 2010) or any other trademark similar to the trademarks of the Plaintiffs as mentioned in paras 5 to 16 of the plaint, till the disposal of the suit. CS (OS) No. 2510/2010 66. List for admission/ denial of documents before the Joint Registrar on 15.10.2014.