Delhi High Court refuses to issue blanket injunction against applications for similar marks

In Diageo Brands BV v Khoday Breweries Ltd, the High Court of Delhi has refused to grant a blanket injunction restraining Khoday Breweries Ltd from applying for trademarks similar to Diageo Brands BV’s marks.

The dispute arose in or around 1991 when Diageo found out that Khoday had adopted the mark VAT 999, which was held by the court to be similar to Diageo's mark VAT 69. Subsequently, in 2000, Khoday applied for the registration of the marks JOL-E-WALER, BON-E-WALKER, UNCLE WALKER and WALKER’S CHOICE, all of which were held by the court to be similar to Diageo's mark JOHNNIE WALKER, and Khoday was restrained from using them.

Diageo’s products:

Khoday’s labels (now abandoned):

Khoday had filed numerous trademark applications, against which Diageo initiated opposition and cancellation proceedings (post-registration of some of the marks) on the ground, among others, that the marks were similar to Diageo's marks (including JOHNNIE WALKER RED LABEL, JOHNNIE WALKER BLACK LABEL, CAPTAIN MORGAN, VAT 69, SMIRNOFF, BAILEYS and GUINNESS). In 2009 Diageo issued a notice to Khoday directing it to withdraw these trademark applications. As Khoday did not comply, Diageo filed the present suit to, among other things, restrain Khoday from applying for the registration of any mark similar to Diageo’s marks.

Khoday contended that:

• a blanket injunction would amount to pre-empting Khoday from applying for any trademark; and
• Diageo’s claim was barred under Section 93 of the Trademarks Act 1999, which bars the jurisdiction of the courts in relation to certain matters.

Diageo argued that the provisions of Section 93 were applicable only when the registration or refusal of a trademark was before the Intellectual Property Appellate Board (a forum which deals with, among other things, appeals against orders of the Indian Trademarks Registry and the Indian Patent Office).

Although the court observed that the bar to the jurisdiction of the civil court under Section 93 applied only to the matters set forth under Section 91 (appeals to the Appellate Board), the court based its decision to refuse to grant the blanket injunction on the following observations:

• such relief, if granted, would lead to an absurd situation, as there would be nobody to decide whether the trademarks that the defendant wishes to adopt could be registered or not, and the defendant could unwittingly face contempt of the court; and
• the Trademarks Act contains elaborate provisions under Section 21 to block applications for conflicting marks. Based on the above, the court restrained Khoday from using such marks.

In a similar earlier case (which was referred to in the present case), Zee Telefilms v Union of India, the High Court of Delhi had restrained the registrar of trademarks from processing pending applications pertaining to the registration of the trademark ZEE. However, in that case, Zee Telefilms had sought a specific injunction, rather than a blanket injunction, as in the present case.

The present decision illustrates the frustrations that trademark owners face due to the examination process adopted by the Trademarks Registry, which, in many cases, lacks quality. If the Trademarks Registry refused to accept trademarks similar to earlier marks, infringers would be discouraged from applying for such marks.

Adheesh Nargolkar and Smriti Yadav, Khaitan & Co, Mumbai