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Monday, 5 December 2011

Court Rules with Uncustomary Speed Against Indian Companies Alleged to Have Infringed Foreign Trademarks

GLENFIDDICH Scotch Whisky Case

In William Grant & Sons Ltd. v. McDowell & Co. Ltd., Grant filed an action to restrain McDowell from copying the trade dress of GLENFIDDICH Scotch whisky. Grant had been exporting various whiskies to India since 1946 and GLENFIDDICH Single Malt Whisky since 1978. The GLENFIDDICH Single Malt Whisky was sold in a green bottle and black cylindrical cartons bearing a label with a distinctive trade dress and unique features, which included a stag device that Grant contended had become exclusively associated with them and a thistle device which Grant alleged was a Scottish symbol indicating origin of the product. Grant claimed trademark infringement and passing off alleging that McDowell used a label with a similar trade dress as the GLENFIDDICH label, including also a green bottle, a black cylindrical carton and stag and thistles devices.

McDowell denied that they were guilty of infringement and passing off, contending that their container and label were different and that the devices of a stag and thistles were common to the trade. The defendants also argued that the type of consumer who buys the product is well-informed and would never be confused or deceived and that their product was clearly marked McDOWELL'S Single Malt Whisky.

The Delhi High Court granted an interim injunction on May 27, 1994 restraining McDowell from dealing in alcoholic beverages marked McDOWELL'S Single Malt Whisky and from using packaging (including bottles, labels and containers) that was a colorable imitation and substantial reproduction of the plaintiff's GLENFIDDICH label. The judge held that GLENFIDDICH whisky had a reputation in India which Grant was entitled to protect and that the right to the exclusive use of the label for this product would be impaired if a similar label were used in relation to a different product. The judge also ruled that McDowell appeared to be aware of the reputation of Grant's product, that the copying was deliberate and not accidental, and that the balance of convenience lay in favor of Grant whose time, money and effort had been expended in designing its label.

Aside from the relative promptness of the court's ruling, we consider this to be a significant decision, since it is the first time that an Indian court has dealt in depth with a trade dress case.


Playboy Enterprises Inc., the publisher of PLAYBOY magazine, filed a passing off action against Bharat Malick, the editor, and Pratibha Publications, the publisher, of PLAYWAY magazine, which was launched recently as an apparent Indian version of PLAYBOY magazine. The attorney for Playboy Enterprises Inc. claimed that PLAYBOY magazine had circulated in India at one time and that the trademark was still valid. An ex parte interim injunction was granted on May 26, 1994 by the Delhi High Court restraining the defendants from using the title PLAYWAY for magazines having a similar format, get up, articles and photographs as PLAYBOY magazine. By an order, dated July 11, 1994, the court confirmed the injunction and allowed the defendant to publish the July 1994 issue only. Subsequently, the defendants offered to settle the matter by agreeing to change the title of the magazine to NAUGHTY BOY but, as far as we are aware, the plaintiffs have not yet responded to this proposal.


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