KHODAY DISTILLERIES LIMITED versus THE SCOTCH WHISKY ASSOCIATION AND OTHERS

Citation: [2008] 9 S.C.R. 975 · Decided: 27-05-2008 · Supreme Court of India · Bench: S.B. SINHA · Disposal: Appeal(s) allowed

Cited by 2 judgment(s) · see the full citation network in Lexace

Judgment (excerpt)

[2008] 9 S.C.R. 975 
KHODAY DISTILLERIES LIMITED 
A 
(NOW KNOWN AS KHODAY INDIA LIMITED) 
v 
THE SCOTCH WHISKY ASSOCIATION AND OTHERS 
(Civil Appeal No. 4179 of 2008) 
MAY 27, 2008 
8 
[S.B. SINHA AND LOKESHWAR SINGH PANTA, JJ.] 
Trade and Merchandise Marks Act, 1958; Ss. 11, 27, 56 
and 109/Limitation Act, 1963; Article 137: 
c 
Infringement of trade mark - Trade mark 'Peter Scot' -
Registration of, in favour of appellant/manufacturer in 1968 -
Application for Rectification filed by respondent in 197 4 on 
ground that it contravenes s.11 of 1958 Act - Rejected by 
Registrar, Trade Marks - Affirmed by High Court - Correct-
D 
, ness of - Held: Application for Rectification was rejected by 
the Registrar, Trade Marks, which is not a Court - Hence, pro-
visions u/Article 137 of the Limitation Act not applicable -
Deceptively similar is the principal criteria for consideration 
of the application for registration as a/so for rectification - Re-
E 
spondent No. 1 was aware of registration of the marks in question 
through an advertisement issued by the appellant-A notice was 
allegedly issued by the respondents but they did not take any 
further action in the matter - No reason furnished for filing appli-
; cation for rectification so late - Registrar and the High Court both 
F 
did not pose unto themselves the question as to whether the ap-
plication for rectification could be dismissed on ground of prin-
ciple of delay/waiver/acquiescence/abandonment - In a case of 
this nature, principle of waiver applicable - Conduct of parties 
could also be considered as ground for attracting the doctrine of G 
estoppel by acquiescence/waiver/infringement. 
Geographical Indication of Goods Act, 1999 - Ss. 20(2) 
and 26(2) - Applicability of - Held: Not applicable. 
975 
H 
976 
SUPREME COURT REPORTS 
[2008] 9 S.C.R. 
A 
Locus Standi - Held: Respondent No. 1 has no locus 
standi to file an application u/s. 56 of 1958 Act. 
Deceptively similar goods - Tests - Held: Tests to be 
applied in each case are different - look and sound, nature 
B and kind of customs, surrounding circumstances, when and 
how a person likely to be considered are relevant consider-
ation to decide about deceptivity 
). 
Doctrines and Principles: 
c 
Doctrine of estoppel - Applicability of 
Principle of Waiver and acquiescence - Applicability of 
Appellant, a manufacturer of whisky under the brand 
name of 'Peter Scot', filed an application for registration 
of the trade mark before respondent No.3, the Registrar 
D of Trade Marks and Copy Right, which was not opposed 
· by respondent No.1 and the trade mark was registered. 
Respondent Nos. 1 & 2 allegedly came to know about the 
registration of the trade mark in question in favour of the 
appellant in 197 4. They filed an application for rectifica-
E tion of the trade mark on the grounds that the mark was 
not distinctive; that it was not capable of distinguishing 
itself as the goods of the appellant; and that the use of 
the mark is likely to deceive or confuse. They have sue-
ceeded before the Magistrate only on the third ground. 
Appeal filed thereagainst was dismissed by the Single 
' 
F 
Judge of the High Court. Second appeal dismissed by 
the Division Bench of the High Court. Hence the present 
appeal. 
. The questions which arose for consideration before 
G this Court were as to whether the term 'Scot' would itself 
be a sufficient ground to opine that the mark 'Peter Scot' • 
is deceptive or confusing, since the onus of proof would 
be on the respondents, as to whether they have dis-
charged the same or not; as to whether the delay in filing 
H application for rectification by respondent Nos. 1 and 2 
KHODAY DISTILLERIES LTD. (NOW KNOWN AS KHODAY 977 
INDIA LTD.) v. THE SCOTCH WHISKY ASSO. 
would amount to acquiescence and/or waiver; as to A 
whether the delay on the part of respondent Nos. 1 and 2 
in filing the application for rectification would amount to 
acquiescence and/ or waiver; and as to whether respon-
dent No. 3 as also the Single Judge and the Division Bench 
of the High Court have failed to apply the correct tests B 
~ 
and, thus, misdirected themselves in law. 
Appellant contended that respondent No. 3 as also 
the High Court committed a serious error insofar as they 
failed to take into consideration that in view of the state-
ment made in the affidavit affirmed by one Ian Barclay that c 
the respondents were aware of the infringement of as far 
back in 1974 but as no action was taken 

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