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CASE NO.: Appeal (civil)  4179 of 2008

PETITIONER: Khoday Distilleries Limited (Now known as Khoday India Limited)

RESPONDENT: The Scotch Whisky Association and others

DATE OF JUDGMENT: 27/05/2008

BENCH: S.B. Sinha & Lokeshwar Singh Panta

JUDGMENT: J U D G M E N T (Arising out of SLP (C) No. 21367 of 2007) REPORTABLE

S.B. SINHA, J.

       Leave granted.

       This appeal by special is directed against the judgment and order  dated 12th October, 2007 passed by a Division Bench of the High Court of  Judicature at Madras in Trade Mark Second Appeal (TMSA) No. 2 of 1998  affirming the judgment and order dated 25th September, 1998 passed in  T.M.A. No.3 of 1989 whereby and whereunder an appeal preferred by the  appellant herein under Section 109 of the Trade and Merchandise Marks  Act, 1958 arising out of an order dated 12th May, 1979 by respondent No.3  was dismissed.   

       Appellant is a company incorporated under the Companies Act, 1956.   It manufactures whisky under the mark \021Peter Scot\022.  Manufacture of the  said product allegedly was started by the company in May, 1968.  An  application was filed by it for registration of its mark before the respondent  No.3.  Appellant was informed that its application was accepted and allowed  to proceed with the advertisement, subject to the condition that the mark  would be treated as associated with Reg. T.M. No.249226-B.

    A proceeding was initiated as regards registration of the trade mark.   No opposition was filed by the respondent.  Only one M/s. Mohan Meakins  filed an opposition.  The said trade mark was registered.               Respondent Nos. 1 and 2 came to know of the appellant\022s mark on or  about 20th September, 1974.   They filed an application for rectification of  the said trade mark on 21st April, 1986.  We may also notice that a suit for  passing off has also been filed by the 1st respondent and others in the  Bombay High Court being C.S. No. 1729 of 1987, which is stated to be still  pending.            Appellant having been called upon showing its cause, by way of an  affidavit affirmed by one Mr. Petern Warren explaining the manner in which  the word \021Peter Scot\022 was coined, stating :-       \023While I was employed in Khoday, the whisky we  produced was sold under at least two marks,  namely RED KNIGHT and PETER SCOT.  The  brand name \021Peter Scot\022 was coined primarily with  my father in mind i.e. using his forename, \021Peter\024,  and his nationality, \021Scot\022.  Another factor behind  the coining of this brand name was the  internationally known British explorer, Captain  Scott, and his son Peter Scott, who is widely

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known as an artist, naturalist and Chairman of the  World Wildlife Fund.  Although the name \021Scott\022  is spelt with two \021t\022s, it is phonetically the same as  \021Scot\022.              Before the 3rd respondent, respondents 1 and 2 filed affidavits  affirmed by 20 different persons in support of their application for  modification.  One of the affidavits to which, we would advert to a little later  was affirmed by Ian Barclay, who is an in-house Solicitor of the said  respondents.              Several issues were framed by the 3rd respondent in the said  proceedings which were as under \026       \023(1) Whether the applicants are \023persons  aggrieved\024 under Section 56; (2)     Whether the Application for rectification is  not maintainable due to any mis-joinder of  Applicants; (3)     Whether the impugned mark was not  distinctive of the goods of the registered  proprietors at the commencement of the  rectification proceedings; (4)     Whether the impugned registration  contravenes Section 11 at the  commencement of rectification proceedings;  and (5)     Whether the mark is liable to be rectified  and if so, in what manner.\024            While opining that the 1st respondent has no locus standi to maintain  the said application for rectification, it upheld the locus standi of the 2nd  respondent. As regards Issue No.2 is concerned, it held that the mis-joinder  of the applicants is not fatal.  Issue No.3 which was to the effect that whether  the impugned mark was not distinctive of the goods of the registered  proprietors at the commencement of the rectification proceedings, it was  answered in favour of the appellant.        Issue No.4 which primarily concern us was discussed by the 3rd  respondent at some details.  It was held that the mark has been used  deceptively for long time and, although there is also unexplainable and  inexcusable delay on the part of the respondents in filing the rectification  application, the registered proprietors failed to file any evidence nor did they  raise their little finger to rebut the evidence filed by the  applicants/respondents.  The plea of acquiescence/delay raised by the  appellant was negatived on the ground that the plea of deceptive element in  the impugned mark having neither been displaced nor rebutted by evidence  on the part of the registered proprietors, the pleas of delay and acquiescence  cannot be allowed in favour of the registered proprietors.              On the affidavit evidence filed on behalf of the respondents,  respondent No.3, although opined, that the same was not satisfactory but  held the respondents\022 plea that the impugned registration contravenes  Section 11 of the Act, stating :-       \023Nonetheless, the evidence gives an impression  that some customers are being persuaded into  thinking that PETER SCOT brand Whisky is also a  Scotch Whisky.  This is on account of the  poresence of two factors, namely \026 (1) the  presence of the word Scot in the PETER SCOT  mark and (2) the presence of some slogan on the  Whisky bottles under PETER SCOT brand.   Unfortunately, there is absolutely no evidence  whatever from the registered proprietors to assail  or counteract or rebut the Applicants\022 evidence.  In

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the absence of any material or evidence in rebuttal  or reply from the registered proprietors, the  evidence of Applicants stands unquestioned,  unrebutted, unassailed and even unmitigated and I  have no other go except to receive the voluminous  affidavit and documentary evidence filed by  Applicants on its face value.\024

          On the aforementioned premise, the application for rectification was  allowed.            An appeal was preferred thereagainst by the appellant before the High  Court in terms of Section 109 of the Act.              A learned Single Judge of the High Court dismissed the said appeal.   As regards the plea of acquiescence it was held :-               \023The acquiescence if it is to be made a  ground for declining to rectify, must be of such a  character as to establish gross-negligence on the  part of the applicant or deliberate inaction which  had regulated in the appellant incurring substantial  expenditure or being misled into the belief that the  respondents though entitled to, had deliberately  refrained from taking any action and were  unmindful of the use of the mark by the person in  whose name it was registered. The facts of this case are not such as to warrant the  conclusion that there has been acquiescence.\024

          Noticing that the appellant had neither adduced any evidence nor  cross-examined the deponents of the affidavits, it was held :-       \023It is unfortunate that the appellant had chosen to  refrain from placing any material before the  authority to refuse the claim for rectification.   Apparently, appellant did not have great faith in  the validity of the registration and did not consider  it worthwhile even to cross-examine the witnesses  who had filed the affidavits in support of the  application for rectification.  It is evident that  adoption of the mark \021Peter scot\022 by the appellant  was for the reasons mentioned in the affidavit of  Peter Jeffery Warren.  The mark was adopted  apparently with a view to take advantage of the  good will associated with Scotch whisky by using  the word \023Scot\024 as part of the trade mark for the  whisky manufactured by the appellant.\024         As regards the quality of the affidavits it was held :-       \023The criticism leveled against the deponents of  some of the affidavits filed by the respondents as  evidence though justified to some extent does not  help the appellant to avoid rectification.  The  statutory standard is not the actual confusion and  deception but likelihood thereof.  The term \021Scot\022  when used in association with whisky of non- Scottish origin is inherently capable of and is  likely to cause confusion and deception.\024             

       Feeling aggrieved, an intra court appeal was preferred thereagainst by

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the appellant.  A Division Bench of the High Court, as noticed hereinbefore,  dismissed the said appeal.  The Division Bench noticed at some length the  submissions made by the parties to inter alia hold :-

\023We have carefully considered the abovesaid  submissions made by the counsel on either side.  In  our considered view, the use of the device \023Lion  Rampant\024 and the abovesaid description especially  the description \023Distilled from the Finest Malt and  Blended with the Choicest Whiskeys by Scotch  Experts under Government Supervision\024 is  definitely intended to lead the consumers to  believe that the whiskey manufactured by the  appellant is scotch whiskey.  Though specific  averments as above said have been made in the  affidavit on Ian Barclay, the same have not been  rebutted by the appellant by adducing rebuttal  evidence.  The appellant has also not chosen to  cross-examine Ian Barclay on the averments  contained in the affidavit.  Therefore, we are of the  considered view that both the third respondent and  the learned single Judge have considered all the  relevant materials available on record and have  exercised their discretion properly and as such we  do not find any reason to interfere with the  judgment of the learned single Judge.\024

       Mr. R.F. Nariman, learned senior counsel appearing on behalf of the  appellant, submitted :-

1.      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 statement made in the affidavit affirmed by Ian  Barclay that the respondents were aware of infringement of  marked as far back in 1974 but as no action was taken in  relation thereto till 1986, the application for rectification was  barred under the principles of waiver and acquiescence. 2.      Long delay of 14 years caused in filing the said application for  rectification should have been held to be fatal having regard to  the fact that the same caused immense prejudice to the appellant  as in the meantime, the sale of the appellant had gone many  folds. 3.      Acquiescence on the part of the respondents would amount to  waiver, if not abandonment, of their right as any order passed  for rectification of the mark being unconscionable and   inequitable, the same should not have been allowed.  4.      The word \021Peter Scot\022 allegedly being evolved of Scotland  cannot be held to be a subject matter of passing off as :-                 a)      Purchasers of the same are discerning; b)      They are aware of the brand which they would be  purchasing ; c)      Rich and wealthy people would only ordinarily purchase  goods like Scotch Whisky and they being literate cannot  possibly be pulled by the word \021Scot\024 knowing that they  are purchasing Scotch Whisky, particularly in view of the  fact that in the label as also in the box, it has  categorically been mentioned that the product is a  \021PRIDE OF INDIA\024 and is manufactured at Bangalore in  India; 5.      The Division Bench committed a serious error insofar it failed  to take into consideration the aforementioned arguments of the  appellant, although categorically noticed by it, so far as if the  label is to be looked by in its entirety, the emblem of Rampant  Lion with the words \021Distilled from the Finest Malt and  Blended with the Choicest Whiskies by Scotch Experts under

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Government Supervision\022 must be read with the word \023PRIDE  OF INDIA\024 and the names of the appellant and the fact that it  was manufactured at Bangalore.  6.      The Division Bench of the High Court committed a serious  error in so far as it failed to take into consideration that having  regard to the provisions contained in Section 26 of the  Geographical Indication of the Goods Act, 1999 (for short \023the  1999 Act\024), the rights of trade marks which had been acquired  through use in good faith were protected and thereby committed  a serious error in not allowing the appellant to raise the said  contention, on the premise that the same was being raised for  the first time before it.  

       Mr. Ashok H. Desai, learned Senior Counsel appearing on behalf of  the respondent Nos. 1 and 2, on the other hand submitted :-                    (i)     The findings of fact arrived at by the respondent No. 3 and as  affirmed by the learned Single Judge and the Division Bench of the  High Court should not be interfered with as they cannot be  characterized as extraneous or perverse being based on no  evidence.   (ii)    An application for rectification is the only remedy in respect of a  registered trade mark which is likely to deceive or cause confusion  for the purpose of maintaining the purity of register of trade marks  wherefor the extended concept of passing off action should be  recognized.   (iii)   The basic distinction between the trade mark infringement and  passing off action is that whereas the former flows from a statutory  right, the latter is action in tort being in the realm of unfair  competition.   (iv)    Courts in India and abroad having consistently protected Scotch  Whisky, any mark carrying words such as SCOT, Glen and  Highland should not be allowed to continue.  Appellant by using  its product as Peter Scot, which is an Indian Whisky, intended to  be seen as a manufacturer of Scotch Whisky, as would be evident  from the affidavit of Mr. Peter J. Warren.   (v)     If there is a fraud at inception in adoption of the name, the court  should discourage such fraud in sternest way.  It is not correct to  contend that the delay, if any, on the part of the respondents would  amount to acquiescence or waiver as the purpose of filing an  application for rectification is to maintain the purity of register and  public interest.   (vi)    There is significant evidence in the present case as regards  confusion concerning whisky bearing the name of Peter Scot  which having not been controverted or rebutted would clearly go to  show that any ordinary consumer would tend to believe that Peter  Scot is a Scotch and not an Indian Whisky.   (vii)   The label used by the appellant clearly suggests that it is a Scotch  Whisky and not of Indian origin. (viii)  The provisions of the 1999 Act are not applicable to the facts and  circumstances of the present case.

       Before adverting to the rival contentions we may notice some of the  provisions of the Act.  

       Sections 2(1)(d) ; 11, 27(2); 56 and 109 of the Act read as under: \0232 \026 Definitions and interpretation\027(1) In this  Act, unless the context otherwise requires,\027 (a) to (c) \005\005 (d) "deceptively similar":--A mark shall be deemed  to be deceptively similar to another mark if it so  nearly resembles that other mark as to be likely to  deceive or cause confusion; 11 \026 Prohibition of registration of certain

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marks\027A mark\027 (a) the use of which would be likely to deceive or  cause confusion; or (b) the use of which would be contrary to any law  for the time being in force; or (c) which comprises or contains scandalous or  obscene matter; or (d) which comprises or contains any matter likely  to hurt the religious susceptibilities of any class or  section of the citizens of India; or (e) which would otherwise be disentitled to  protection in a court, shall not be registered as a trade mark. 27 \026 No action for infringement of unregistered  trade mark.\027 (1)             \005.                           \005. (2) Nothing in this Act shall be deemed to affect  rights of action against any person for passing off  goods as the goods of another person or the  remedies in respect thereof. 56 \026 Power to cancel or vary registration and to  rectify the register.\027(1) On application made in  the prescribed manner to a High Court or to the  Registrar by any person aggrieved, the tribunal  may make such order as it may think fit for  cancelling or varying the registration of a trade  mark on the ground of any contravention, or  failure to observe a condition entered on the  register in relation thereto. (2) Any person aggrieved by the absence or  omission from the register of any entry, or by any  entry made in the register without sufficient cause,  or by any entry wrongly remaining on the register,  or by any error of defect in any entry in the ’  register, may apply in the prescribed manner to a  High Court or to the Registrar, and the tribunal  may make such order for making, expunging or  varying the entry as it may think fit. (3) The tribunal may in any proceeding under this  section decide any question that may be necessary  or expedient to decide in connection with the  rectification of the register. (4) The tribunal, of its own motion, may, after  giving notice in the prescribed manner to the  parties concerned and after giving them an  opportunity of being heard, make any order  referred to in sub-section (1) or sub-section (2). (5) Any order of the High Court rectifying the  register shall direct that notice of the rectification  shall be served upon the Registrar in the prescribed  manner who shall upon receipt of such notice  rectify the register accordingly. (6) The power to rectify the register conferred by  this section shall include the power to remove a  trade mark registered in Part A of the register to  Part B of the register. 109 \026 Appeals.\027(1) No appeal shall lie from any  decision, order or direction made or issued under  this Act by the Central Government or from any  act or order of the Registrar for the purpose of  giving effect to any such decision, order or  direction. (2) Save as otherwise expressly provided in sub- section (1) or in any other provision of this Act, an  appeal shall lie to the High Court within the

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prescribed period from any order or decision of the  Registrar under this Act or the rules made there- under. (3) Every such appeal shall be preferred by petition  in writing and shall be in such form and shall  contain such particulars as may be prescribed. (4) Every such appeal shall be heard by a single  Judge of the High Court: Provided that any such Judge may, if he so thinks  fit, refer the appeal at any stage of the proceeding  to a Bench of the High Court. (5) Where an appeal is heard by a single Judge, a  further appeal shall lie to a Bench of the High  Court. (6) The High Court in disposing of an appeal under  this section shall have the power to make any order  which the Registrar could make under this Act. (7) In an appeal by an applicant for registration  against a decision of the Registrar under section 17  or section 18 or section 21, it shall not be open,  save with the express permission of the court, to  the Registrar or any party opposing the appeal to  advance grounds other than those recorded in Ihe  said decision or advanced by the party in the  proceedings before the Registrar, as the case may  be, and where any such additional grounds are  advanced, the applicant for registration may, on  giving notice in the prescribed manner, withdraw  his application without being liable to pay the costs  of the Registrar or the parties opposing his  application. (8) Subject to the provisions of this Act and of the  rules made thereunder, the provisions of the Code  of Civil procedure, 1908 (5 of 1908), shall apply to  appeals before a High Court under this Act.\024

                Although a large number of issues have been raised by the learned  counsel for the parties, we are of the opinion that the principal issues which  arise for our consideration are:

(i)     Whether the delay on the part of the respondent Nos. 1 and 2 in  filing the application for rectification would amount to  acquiescence and/ or waiver? (ii)    Whether the respondent No. 3 as also the learned Single Judge and  the Division Bench of the High Court have failed to apply the  correct tests and, thus, misdirected themselves in law.

       It is not in dispute that the appellant manufactures whisky under the  brand name of \021Peter Scot\022.  The box of the carton contains the emblem of  \021Rampant Lion\022.  It is a malt whisky.  On one side of the box it is stated  \023PRIDE OF INDIA\024 and on the other \023KHODAY DISTILLERIES  PRIVATE LIMITED\024.  Apart from the said information on the right hand  side of the label it is stated \021Distilled from the Finest Malt and Blended with  the Choicest Whiskies by Scotch Experts under Government Supervision\022

    In terms of Section 56 of the Act, the Registrar exercises a quasi  judicial power wherefor he has to take into consideration the provisions of  Sections 31 and 21 of the Act.  A presumption can be raised in terms of  Section 31 in all the legal proceedings that the trade mark is valid.  The  jurisdiction can be invoked if the mark is not distinctive or the mark used  falls under any of the clause envisaged in Sections 32 of the Act.  Furthermore if a mark had remained in existence for 7 years or more from  the date of registration, it would be presumed to be valid, unless :-      

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a)      It had been obtained by fraud. b)      It is contrary to Section 11 ; and c)      The mark had not become distinctive.             In this case no plea of fraud has been raised.  Registrar held in favour  of the appellant that the mark had not become distinctive. The respondents\022  case is based on the premise that the same was contrary to Section 11 of the  Act.        In support of their application, the respondents raised the following  grounds :- 1)      The mark is not distinctive. 2)      It was not capable of distinguishing itself as the goods of  the appellant. 3)      The use of the mark is likely to deceive or confuse. 4)      Non-user of the mark.            They have succeeded before the learned Magistrate only on the third  ground.             The principal question which arises for consideration is as to whether  the term \021Scot\022 would itself be a sufficient ground to opine that the mark  \021Peter Scot\022 is deceptive or confusing.   Indisputably the onus of proof  would be open the respondents.  The question arises is as to whether they  have discharged the same or not.

RE: ISSUE NO. 1      Ian Barclay is admittedly the in-house Solicitor of the respondents.   They have not only been filing actions against several persons infringing the  said mark in India but also in several other countries like Australia and  United Sates of America.  Ian Barclay in his affidavit stated :-       \023The first applicant received notice of the  advertisement of the said mark PETER SCOT in  the Trade Mark Journal when it received a routine  report from \021Wildbore and Gibbons dated 20th  September, 1974.  Regrettably, the first Applicant  did not lodge opposition with the time allowed\005\024            Respondents, therefore, were well aware that the appellant had filed  an application for registration.  One of the questions which was raised before  respondent No.3 as also before the High Court was as to whether Article 137  of the Limitation Act, 1963 would apply to the rectification proceedings.   Keeping in view the decision of this Court in Sakur v. Tanaji [AIR 1985 SC  1279], evidently the same has to be rejected as the Registrar is not a court.   

       The submission of Mr. Nariman, however, is that the period of three  years provided for should be taken to be the upper limit as an equitable  jurisdiction is to be invoked.  Our attention in this behalf has been drawn to  the decision of this Court in State of Madhya Pradesh  v.  Bhailal Bhai and  others,  [1964 (6) SCR 261 at 271] wherein it was held :-                                  \023It was necessary for the High Court to consider  this question of delay before any order for refund  was made. It does not appear however that any  attention was paid to this question. In making the  orders for refund in each of these cases the High  Court merely said this: \023The present case is governed by Bhailal  Bhai case. Learned Government Advocate  formally raised the question of the remedy  open to the petitioner for refund of tax in  order to keep the point open in the Supreme  Court. We accordingly allow this petition  and issue a writ directing the opponents to  refund to the applicant firm the amount of

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tax collected from it during the above  mentioned period.\024 The learned Judges appear to have failed to notice  that the delay in these petitions was more than the  delay in the petition made in Bhailal Bhai case out  of which Civil Appeal No. 362 of 62 has arisen.  On behalf of the respondents-petitioners in these  appeals (CAs Nos. 861 to 867 of 1962) Mr Andley  has argued that the delay in these cases even is not  such as would justify refusal of the order for  refund. We argued that assuming that the remedy  of recovery by action in a Civil Court stood barred  on the date these applications were made that  would be no reason to refuse relief under Article  226 of the Constitution. Learned counsel is right in  his submission that the provisions of the  Limitation Act do not as such apply to the granting  of relief under Art 226. It appears to us however  that the maximum period fixed by the legislature  as the time within which the relief by a suit in a  Civil Court must be brought may ordinarily be  taken to be a reasonable standard by which delay  in seeking remedy under Article 226 can be  measured. The court may consider the delay  unreasonable even if it is less than the period of  limitation prescribed for a civil action for the  remedy but where the delay is more than this  period, it will almost always be proper for the  court to hold that it is unreasonable. The period of  limitation prescribed for recovery of money paid  by mistake under the Limitation Act is three years  from the date when the mistake is known. If the  mistake was known in these cases on or shortly  after January 17, 1956 the delay in making these  applications should be considered unreasonable. If,  on the other hand, as Mr Andley seems to argue,  that the mistake discovered much later this would  be a controversial fact which cannot conveniently  be decided in proceedings. In either view of the  matter we are of opinion the orders for refund  made by the High Court in these seven cases  cannot be sustained.\024                 We are unable to accept this submission.  What would be the  reasonable period in a given case would not depend upon the nature of  action initiated before a statutory authority but also upon the purport and  object of the statute.  If the reliefs sought for before the superior courts are  the same which could be sought for in a suit, the period of limitation  specified for in the Limitation Act may be taken to be the criteria for  consideration as to whether the same should be treated as a reasonable  period, but not otherwise.  In Bhailal Bhai and others (supra) a writ petition  was filed for refund of the tax which was legally collected.  It was  essentially a money claim and in that context the aforementioned  observations were made.

       It was next contended that the appellant suffered a great prejudice by  reason of delay as during the said period of 18 years the sales figures had  gone up.  Our attention has been drawn to a chart filed before the learned  Single Judge on 6th July, 1988.  Such a stand apparently had not been taken  before the respondent No.1.  No application appears to have been filed in  terms of Order 41 Rule 27 of the Code of Procedure or principles analogous  thereto nor the learned Single Judge appears to have permitted them to  produce additional evidence before it. The sales figures as contained in the  said chart, therefore, cannot be taken into consideration.  

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    We would, however, assume that such a delay ex facie causes  prejudice as a manufacturer of a popular brand.  It must have arranged its  affairs in such a manner so that it may not have to withdraw the brand or the  mark after it gains popularity.  

       Respondent No. 3 as also the High Court refused to entertain the plea  of delay leading to application of the principles of estoppel and/ or waiver  only on the premise that the appellant is guilty of adopting a mark which is  deceptively similar and/ or causes confusion.

       Contention raised before us by Mr. Desai is that having regard to the  provisions of the Act, no application for rectification should be rejected on  the ground of delay.   

       The said contention is based on the premise that Section 11 of the Act  provides for a prohibition of registration of certain marks, the use of which  would likely to deceive or cause confusion.   

    Section 56 of the Act provides for filing of application and application  for rectification and, thus, should be considered only from that point of view.   Registration of a trade mark is governed by the provisions of the Act.   Section 9 thereof provides for restrictions for registration in Parts A and B of  the Register unless the essential particulars laid down therein are satisfied.  It  provides for a detailed enquiry.  An advertisement has to be issued.   Objections are to be called for.  Only upon proof of existence of one or the  other essential particulars therein and upon consideration of the objections  which may be raised therein, the registration of mark may be allowed.   Sections 10 to 14 provide for prohibitions.  The prohibitory provisions,  therefore, are required to be taken into consideration for the purpose of  registration of the mark.  The question as to whether the use of a mark would   likely to deceive or cause confusion so as to disable the Registrar from  registering the mark as a trade mark would be necessary to be considered  only in the course of the enquiry conducted therefor.  A Registrar of Trade  Mark is not supposed to know that there exist other marks which are  registered or which would deceive or cause confusion with any other  established mark.  In a given case, the Registrar of Trade Mark may be  aware thereof.  But, in some cases, he may not be.  It may, therefore, not be  correct to contend that Section 11 of the Act prohibits the Registrar for  registration of marks which would likely to deceive or cause confusion.              Indisputably, the purity of the Registrar is to maintain the register.   Indisputably again, the public interest has to be kept in view.  An application  for registration has also to be considered keeping the public interest in view.   What is therefor, necessary for the Registrar is to arrive at a conclusion as  regards registration of mark, is as to whether having regard to the nature of  the mark sought to be registered and the use thereof as also the class of bias,  would be deceived or confused with the mark registered or not.         An application for rectification and correction of the register may be  entertained if any of the grounds specified therein exists, viz.,  contravention  or failure to observe the condition entered on the register or in relation  thereto.  An application for rectification and correction of the register would  also be maintainable if a person is aggrieved by the absence or omission  from the register of any entry or by any entry made in the register without  sufficient cause or by any entry wrongly remaining on the register or by any  error or defect in any entry in the register.   

       The power of the Registrar in terms of Section 56 of the Act is wide.   Sub-section (2) of Section 56 of the Act used the word \023may\024 at two places.   It enables a person aggrieved to file an application.  It enables the Tribunal  to make such order as it may think fit.  It may not, therefore, be correct to  contend that under no circumstances the delay or acquiescence or waiver or  any other principle analogous thereto would apply.

       Purity of register as also the public interest would indisputably be

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relevant consideration.  But, when a discretionary jurisdiction has been  conferred on a statutory authority, the same although would be required to  be considered on objective criteria but as a legal principle it cannot be said  that the delay leading to acquiescence or waiver or abandonment will have  no role to play.  [See Ciba Ltd. Basle Switzerland v. M. Ramalingam and S.  Subramaniam trading in the name of South Indian Manufacturing Co.,  Madura and another  AIR 1958 Bombay 56]

       In determining the said question, therefore, conduct of the person  aggrieved in filing the application for rectification would be relevant.   

       For the aforementioned purpose, whether it is a class or group action  or a private action although would be relevant but may not be decisive.  It is  one thing to say that class or group action will receive special attention of  the statutory authority vis-‘-vis a private action.  But, in both types of cases,  public interest should remain uppermost in the mind of the authority.  The  question which is required to be posed therefor would be as to whether the  public in general or the class of bias would be deceived or be confused if the  existing mark is allowed to remain on the register.  Thus, deceptively similar  or confusion is the principal criteria for determining applications both for  registration as also for rectification.   

       We have noticed hereinbefore that it is not the case of the respondents  that any fraud was practised by the appellant.  

    Appellant started manufacturing of the product as far back as in the  year 1968.  It marketed two brand names, viz., Peter Scot and Red Knight.   It is said to have been done for making the name attractive.  It was a period  when there were restrictions on import of Whisky.  The custom duty was  high.  The price of a genuine Scotch Whisky was prohibitive for a large  section of the consumers.   Appellant applied for registration in the year  1971.              Ian Glen Barclay affirmed an affidavit in support of the respondents.   He, in his affidavit which otherwise remained uncontroverted, admitted that  the respondents were aware of registration of the mark through an  advertisement made in a trade mark journal at the instance of the appellant  as also a report received from Wildbore and Gibbons dated 20.09.1974.   Respondent No. 1 had issued a notice.  It also issued a notice in respect of an  application filed by the appellant for registered proprietors trade mark  \021Hogmanay\022 which led to withdrawal of the said application by the appellant  before hearing.  He also affirmed that there are provisional trade mark  agencies about the trade marks advertisements in all the countries in classes  32 and 33 which inter alia have British or Scottish connotations.

       On their own showing a large number of applications were filed  against those who were using trade marks which have some relation with use  of a label, mark or insignia which reminds the customers of the products of  Scotland which included the word such as Scot, Glen and Highland.   Respondents have referred to as many as 19 judgments rendered by different  High Courts in India and four decisions rendered by the Courts of France,  Italy, Illinois and Malaysia to contend that all oppositions made and/ or  litigations filed ended in success.  It is relevant to place on record the  decisions which have been placed before us by Mr. Desai and the marks  which were being used by different companies:

\0231.  Mohan Meakin Breweries Ltd. Vs. The  Scotch Whisky Association, PTC (Suppl) (1) 352  (Del) (DB) Para 6, Para 17 and 18

2.      Scotch Whisky Association & ors. Vs.  Golden Bottling Ltd., 2006 (32) PTC 656 (Del.)  Paras: 22, 23, 24, 25, 27 and 28.

3.      Srilab Breweries Pvt. Ltd. Vs.Scotch

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Whisky Association, 2006 (33) PTC 527 (Reg.)  Para 13

4.      SWA & Anr. Vs. Mohan Meakin Ltd.  (Royal Scot) \026 (Bombay High Court)

5.      Scotch Whisky Association & Ors. Vs.  Golden Bottling Ltd. (Red Scot) \026 2006 (32) PTC   656 (Del.)

6.      SWA & Anr. Vs. Royal Distillery (Royal\022s  Scot) \026(Bombay High Court)

7.      SWA & Ors. Vs. The Brihan Maharashtra  Sugar Syndicate Ltd. (Brihan\022s Old Scot) \026 (Bombay High Court).  

8.      SWA & Ors. Vs. The Ugar Sugar Works  Ltd. (Appeal Order) \026(Bombay High Court).

9.      SWA & Anr. Vs. Rangar Breweries Ltd.  (Grand Scot) \026(Bombay High Court)  

10.     SWA & Anr. Vs. Swaroop Vegetable  Products Industries Ltd. & Ors. (Final Order) \026 (Delhi High Court)  

11.     Scotch Whisky Association Vs. Dyer  Meakin Breweries Ltd. (Highland Chief) \026 ILR  1972 Delhi 124

12.     Dyer Meakin Breweries Ltd. (now known as  Mohan Meakin Breweries Ltd.) Vs. The Scotch  Whisky Association \026 PTC (Suppl) (1) 352 (Del)  (DB)

13.     SWA & Anr. Vs. M/s Rheea Distillers  (Scotch Terrier) \026(The Court of Addl. Civil Judge,  Sr. Division \026 Margao, Goa).

14.     William Grant & Sons Ltd. Vs. McDowell  & Co. Ltd. (Glenfiddich Case) \026 1997 (17) PTC  134

15.     Srilab Breweries Pvt. Ltd. Vs. Scotch  Whisky Association (Rare Blend) \026 2006 (33) PTC  527 (Reg.) WA & Anr. Vs. Forbes Camphell &  Co. Ltd. (Glen Forbes, Blended with the finest  Scotch) \026 (Bombay High Court)  

16.     SWA & Anr. Vs. Pravara Sahakar Shakar  Karkhana Ltd. (Drum Beater, Gold Tycoon) \026 (Bombay High Court)  

17.     SWA & Anr. Vs. Scottish Distilleries & Ors.  (Macqueen and Black Kilt) \026(Bombay High Court)

18.     SWA Vs. Silver Oak Blenders and Bottlers  Private Ltd. & Anr. (Windsor Club) \026(Bombay  High Court).

19.     SWA Vs. Maharashtra Manufacturing  Corporation & Ors. (Black Skipper, White Scot &  Salute India) \026(Delhi High Court)

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Decisions of Foreign Courts:

20.     SWA Vs. Societe d\022 Importation e de  Distribution des Grandes Marques (Judgment  dated 23rd January, 1992 of the Commercial Court  of Saint Etienne, France)

21.     SWA & Anr. Vs. Pollini Liquori Spa  (Judgment dated 19th March, 1980 passed by the  Court of Rome, Italy)

22.     SWA & Ors. Vs. Bartaon Distillery Co.  (Judgment dated 12th November, 1973 passed by  the United States Court of Appeal, Illinois)

23.     SWA & Anr. Vs. Ewein Winery (M) Sdn.  BhD \026 [1999] 6 MLJ 280 (Malaysia)\024         The details of the cases aforementioned would clearly go to show that  not only oppositions were made, but also actions were initiated against the  persons who used the word \021Scot\022 as also against those who used the words  \021Highland Chief, Scotch Terrier, Glenfiddich, Rare Blend\022, etc.  

       In Australia and United States of America, the respondent No. 1  initiated actions almost on the self-same cause of action but failed.

       It is, therefore, evident that whereas actions had been taken against  each and every party throughout the world whenever a mark evocating  Scotland or any other brand which remained in the minds of the buyer of the  Scotland had been opposed, the appellant was singularly left out. They  opposed to the registration of the mark and in fact issued a notice.  If it had  issued a notice then there is absolutely no reason as to why they did not  pursue the same.  A notice was issued in relation to an attempt made by the  appellant to get the name Hogmanay registered.  If such an opposition had  been made even in relation to the registered proprietors trade mark Peter  Scot, as it did in the case of Hogmanay, it could have withdrawn its  application.  It would have known its position as to where it stood.  It could  have started manufacturing Whisky of the same quality with a different  brand name.  We may furthermore place on record that not only in respect of  Hogmanay, opposition was also made in relation to \021Old Angus\022 in Class 32  which bears the name of a county in Scotland and, therefore, evocative of  Scottish origin although the product was a \021Rum\022 and not \021Whisky\022.  If the  respondent No. 1 took such actions in respect of trade marks \021Hogmanay\022  and \021Old Angus\022 in 1974 and 1979, one fails to understand as to why a  similar action was not taken in relation to Peter Scot.   

    Barclay, in his affidavit, attempted to give an explanation therefor  stating:-

\02343.        Proceedings in respect of the registration of  the mark \023HIGHLAND CHIEF\024 were pending in  the Indian Courts at the relevant time.  The 1st  Applicant succeeded in these proceedings before  the Delhi Court in 1971 but thereafter the matter  was taken to the Division Bench of the Delhi High  Court where the 1st Applicant also succeeded.   However, the matter was thereafter taken to the  Supreme Court.  The 1st Applicant did not  appreciate, that it would take so long to obtain a  final judgment.  The Judgment from the Supreme  Court would be binding on all tribunals in India.   At issue in the said Appeal was registration of  words, or devices or marks or labels or   descriptions evocative of Scotland for use on  Indian  Whisky.  In this connection I crave leave to  refer to and rely upon the judgment of the Delhi

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High Court (see Exhibit X-4).  I say that the  Appeal to the Supreme Court from the same  judgment had not yet been decided.  

44.     I say that the 1st Applicant, having failed to  lodge opposition to the \021Peter Scot\022 application  within the prescribed period, was awaiting the  decision of the Supreme Court before adopting  proceedings against the registered proprietor for  rectification of the mark PETER SCOT.  However,  in recent years, the 1st Applicant learned that  various other parties were attempting to adopt the  word \021SCOT\022 as part of their trade marks, and/or  other marks with Scottish Connotations.   Therefore, the 1st Applicant decided that it could  not afford to wait for the decision of the Supreme  Court and proceedings were adopted by filing  passing off actions which are referred to in the  annexures referred to hereinabove, as well as the  rectification proceedings against the registered  proprietor.  Thus, the delay is due to the aforesaid  facts.\024  

       Ex facie, the said explanation is wholly unacceptable.   

    Even before us, the result of the litigation before this Court has not  been disclosed.  When action had been taken by the respondent No. 1 in so  many matters although one of the matters was pending before this Court, the  explanation offered appeared to be absolutely hollow, particularly when  even on its own showing the respondent No. 1 succeeded even in the said  proceedings.         Moreover, if the said explanation is to be accepted, then why an  application for rectification should have been filed even in 1986?  They  should have waited till the decision in the case then pending was rendered by  this Court.  Nothing has been stated in the said affidavit as to what was the  occasion to file such an application in 1986 but prompted them to wake up  after such a long time is beyond anybody\022s comprehension.   

    Once the facts are admitted the legal inference shall ensue.   Respondent No. 3 as also the learned Single Judge and the Division Bench  of the High Court failed and/ or neglected to advert to this aspect of the  matter.  They did not pose unto themselves the question as to whether an  application for rectification can be dismissed on the ground of principle of  delay, acquiescence, waiver or abandonment.  It is one thing to say that such  principles can never be applied but it is another thing to say that whether  they should be applied in a fact situation obtaining in a particular case or not.   If they have any application, the same should have been considered by the  respondent No. 3 as also by the High Court on their own merit.   

       Mr. Desai himself has relied upon a decision of Chagla, C.J. of the  Bombay High Court in Ciba Ltd. Basle Switzerland (supra).  The learned  Chief Justice therein recorded his opinion, thus: \02310. The second contention in which there is much  more force is that the appellants have come to file  this application under Section 46 after considerable  delay and no relief should be granted to them. It is  true that the granting of relief under Section 46 is a  discretionary relief, but it is equally true that the  Legislature has not laid down any period of  limitation for making an application under Section  49. Kerly at p. 271 states: "The delay of the  applicant in coming to the Court to ask for  rectification of the register is not of itself any bar  to his application, and the marks have been  removed or varied after being registered for long

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periods to the knowledge of the applicant....." But  at p. 264 the learned author points out that the  demerits of the applicant in any such case are  irrelevant to the question whether rectification  should be ordered or not, for the question is not  between the applicant on the one hand and the  respondent on the other, but between public and  the respondent. But the learned author further  points cut at p. 272 that where the objection  alleged to a mark is that it to the same as that of  the applicant, or that it has such resemblance to his  as to be calculated to deceive, it will be some  evidence against the applicant, on whom the  burden lies of showing that the registration was  made without sufficient cause, if he had stood by  and allowed the registered proprietor to use the  mark objected to for a length of time, especially if  no case of actual deception is proved. But the  learned author also points out that in such a case  two things have got to be considered; first, what  was the reason of the delay in the application to  expunge; and, secondly, whether any substantial  injury has been caused by the delay to the person  who has registered. Therefore, the question of  delay must be approached from this point of view  whether the applicant stood by and thereby caused  substantial injury to the respondent and the injury  was so substantial that that injury would outweigh  the interest of the public which the Court must  consider where a trade mark is likely to deceive.\024                  In this case, the respondent stood by the mark.

       A distinction may be made between a \021fraudulent trade mark\022 and a  \021deceptive trade mark\022.  In both the cases evidences have to be adduced.   

    Whether a misrepresentation is made or not is essentially a question of  fact.  It will depend upon many factors.

       The principles of waiver and acquiescence in a case of this nature are  applicable.  Apart from the ordinary rule of waiver of a right expressly  provided for in a case of passing off, the court has consistently been noticing  development of law in this field.  The principles in that behalf were laid  down by way of provender in Scotch Whiskey Association and another  v.   Pravara Sahakar Shakar Karkhana, [AIR 1992 Bom. 294].      The development of law was also noticed by the Court of Appeal in  Habib Bank Ltd.  v.  Habib Bank, A.G. Zurich, [ [1980] (1) W.L.R. 1265 ] at  1283 \026 1284, in the following terms :-

\023We were again referred to many authorities on  this subject and to the debate which has taken  place as to whether, in order to succeed in a plea of  acquiescence, a defendant must demonstrate all the  five probanda contained in the judgment of Fry J.  in Willmott v. Barber [(1880) 15 Ch.D.96: see the  recent judgment of Robert Goff J. in Amatgamated  Investment & Property Co. Ltd. v. Texas  Commerce International Bank Ltd. [(1981) 2 WLR  554].  Whether all five of those probanda are  necessary or not, Mr. Aldous submits that to  succeed HBZ must at least establish three things.   They must show, first, that HBZ have been acting  under a mistake as to their legal rights.  That, in  the instant case, must mean that they were unaware  that what they were doing (that is to say, carrying

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on their business under the name in which they had  been incorporated with the active assistance of the  plaintiffs\022 predecessors), constituted any invasion  of the plaintiffs\022 rights.  Secondly, they must show  that the plaintiffs encouraged that course of action,  either by statements or conduct.  Thirdly, they  must show that they have acted upon the plaintiffs\022  representation or encouragement to their  detriment.\024             Noticing various other decisions, Oliver, L.J.,  noticing a decision in  Taylor Fashions Ltd.  v.  Liverpool Victoria Trustees Co. Ltd.  [ (Note)  [1981] 2 W.L.R.] 576 opined  :-  \023Furthermore the more recent cases indicate, in my  judgment, that the application of the Ramsden v.  Dyson, L.R. 1 H.L. 129 principle\027whether you  call it proprietary estoppel, estoppel by  acquiescence or estoppel by encouragement is  really immaterial\027requires a very much broader  approach which is directed rather at ascertaining  whether, in particular individual circumstances, it  would be unconscionable for a party to be  permitted to deny that which, knowingly, or  unknowingly, he has allowed or encouraged  another to assume to his detriment than to  inquiring whether the circumstances can be fitted  within the confines of some preconceived formula  serving as a universal yardstick for every form of  unconscionable behaviour.\024  

       It was held :

\023I have to acknowledge my indebtedness to  counsel on both sides for some illuminating  arguments, but at the end of them I find myself  entirely unpersuaded that the judge erred in any  material respect.  He concluded his judgment in  this way on the question of estoppel : \023Of course, estoppel by conduct has been a  field of the law in which there has been  considerable expansion over the years and it  appears to me that it is essentially the  application of a rule by which justice is done  where the circumstances of the conduct and  behaviour of the party to an action are such  that it would be wholly inequitable that he  should be entitled to succeed in the  proceeding.\024 That, to my mind, sufficiently appears on the facts  of this case.\024

       Thus, in cases involving equity or justice also, conduct of the parties  has also been considered to be a ground for attracting the doctrine of  estoppel by acquiescence or waiver for infringement.  

    This Court also in M/s. Power Control Appliances and others  v.   Sumeet Research and Holdings, [ (1994) 2 SCC 448 ] held :- \02326. Acquiescence is sitting by, when another is  invading the rights and spending money on it. It is  a course of conduct inconsistent with the claim for  exclusive rights in a trade mark, trade name etc. It  implies positive acts; not merely silence or  inaction such as is involved in laches. In Harcourt  v. White Sr. John Romilly said: \023It is important to  distinguish mere negligence and acquiescence.\024

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Therefore, acquiescence is one facet of delay. If  the plaintiff stood by knowingly and let the  defendants build up an important trade until it had  become necessary to crush it, then the plaintiffs  would be stopped by their acquiescence. If the  acquiescence in the infringement amounts to  consent, it will be a complete defence as was laid  down in Mouson (J.G.) & Co. v. Boehm. The  acquiescence must be such as to lead to the  inference of a licence sufficient to create a new  right in the defendant as was laid down in Rodgers  v. Nowill.\024          The question again came up for consideration before this Court in  Ramdev Food Products (P) Ltd.  v.  Arvindbhai Rambhai Patel and others,  [  (2006) 8  SCC 726] wherein it was held :-                          

\023103. Acquiescence is a facet of delay. The  principle of acquiescence would apply where: (i)  sitting by or allowing another to invade the rights  and spending money on it; (ii) it is a course of  conduct inconsistent with the claim for exclusive  rights for trade mark, trade name, etc.\024

       The delay by itself, however, may not be necessarily a ground for  refusing to issue injunction.  It was opined :-   

\023106. The defence of acquiescence, thus, would be  satisfied when the plaintiff assents to or lays by in  relation to the acts of another person and in view  of that assent or laying by and consequent acts it  would be unjust in all the circumstances to grant  the specific relief.\024

       It was furthermore observed :-                  108. Specific knowledge on the part of the plaintiff  and prejudice suffered by the defendant is also a  relevant factor. (See Spry on Equitable Remedies,  4th Edn., p.    433.)     

       In Halsbury\022s Laws of England, Fourth Edition, Vol. 16, para 1505, it  is stated:  \023Where a person has by words or conduct made to  another a clear unequivocal representation of fact,  either with knowledge of its falsehood or with the  intention that it should be acted upon, or has so  conducted himself that another would, as a  reasonable man, understand that a certain  representation of fact was intended to be acted on,  and that the other has acted on the representation  and thereby altered his position to his prejudice an  estoppel arises against the party who made the  representation, and he is not allowed to aver that  the fact is otherwise than he represented it to be.\024

       Delay would be a valid defence where it has caused a change in the  subject matter and action or brought about a situation in which justice cannot  be done.

       Mr. Desai relied upon Willmott v. Barber [15 Ch. D. 96] wherein it is  stated:

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\023The equitable doctrine of acquiescence is founded  on there having been a mistake of fact; can it be  repelled by showing that there was constructive  notice of the real facts?  In every case in which a  man acts under the mistaken belief that he is  entitled to land, he might, if he had inquired, have  found out that he had no time.  And yet the Courts  appear always to have inquired simply whether a  mistake has been made, not whether the plaintiff  ought to have made it.\024         However,  in Pfizer Products Inc. v. Rajesh Chopra & Ors. [2007 (35)  PTC 59 (Del)], injunction was granted despite delay, stating :-  \023Where infringement is deliberate and wilful and  the defendant acts fraudulently with knowledge  that he is violating plaintiff’s rights, essential  elements of estoppel are lacking and in such a case  the protection of plaintiff’s rights by injunctive  relief never is properly denied. The doctrine of  estoppel can only be invoked to promote fair  dealings. 31. It would appear to me that where there is an  honest concurrent user by the defendant then  inordinate delay or laches may defeat the claim of  damages or rendition of accounts but the relief of  injunction should not be refused. This so because it  is the interest of the general public, which is the  third party for such cases, which has to be kept in  mind. In the case of inordinate delay or laches, as  distinguished from the case of an acquiescence, the  main prejudice which may be caused to the  defendant is that by reasons of the plaintiff not  acting at an earlier point of time the defendant has  been able to establish his business by using the  infringing mark. Inordinate delay or laches may be  there because the plaintiff may not be aware of the  infringement by the defendant or the plaintiff may  consider such infringement by the defendant as not  being serious enough to hurt the plaintiff’s  business. Nevertheless, if the Court comes to the  conclusion that prejudice is likely to be caused to  the general public who may be mislead into buying  the goods manufactured by the defendant thinking  them to be the goods of the plaintiff then an  injunction must be issued. The Court may, in  appropriate cases, allow some time to the  defendants to sell off their existing stock but an  injunction should not be denied.\024

       In Mc Donald\022s Corporation and Another v. Sterling\022s Mac Fast Food  Represented by its Partner John Mathew [ILR 2007 Karnataka 3346], the  Karnataka High Court held:

\0239.  Though the plaintiff adopted its registered  trade mark BIG MAC in 1968 in USA, in  paragraph 7 of memorandum of appeal it is stated  as under:-  

\0217.  The first appellant is the proprietor in  India of other McFamily trade marks  having prefix or suffix Mc/MAC and  it has also applied for registration and  most of them were registered during  the pendency of the suit and the  trademarks are used in India since  October, 1996.\022

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From the above, it is clear that the plaintiffs are  using their trade marks in India since October  1996.  However, in the very next paragraph it is  stated as under:

\0218.  The first appellant was given approval  on February 15, 1993 by the Government of  India to operate a chain of restaurants in  India.  The second appellant was  incorporated and registered with the  Registrar of Companies on August 30, 1993  vide (Ex. P-30).\022

It is thus clear that plaintiffs got registered in India  in the year 1993 only.  On the other hand, the  defendant has been carrying on with its business  since 1983.  Having started business by the  plaintiffs much later than the defendant in India,  the plaintiffs cannot found fault with the defendant  in using its trademark in its business.\024

       A contention is sought to be raised that the purported wrong  committed by the appellant being a continuing one would not attract the  doctrine of latches, acquiescence or waiver.   

       The doctrine of continuing wrong has nothing to do with the refusal  on the part of a statutory authority or a court of law to exercise its  discretionary jurisdiction on the ground of latches, acquiescence or waiver.   

       In Balakrishna Savalram Pujari Waghmare and others v. Shree  Dhyaneshwar Maharaj Sansthan and others [AIR 1959 SC 798], this Court,  while dealing with a question of applicability of Articles 124 and 120 of the  Limitation Act, 1908, made a distinction between a wrongful act causing an  injury which is complete and a wrong which creates a continuing source of  injury rendering the doer of the act responsible and liable for the  continuance of the said injury.

       Reliance placed by Mr. Desai on Bengal Waterproof Limited v.  Bombay Waterproof Manufacturing Company and Another [(1997) 1 SCC  99] cannot be said to have any application herein whatsoever.  Therein, this  Court principally was dealing with a petition as regards application of Order  II, Rule 2(3) of the Code of Civil Procedure.  Holding that the cause of  action filed in the suit in question was not the same on which the earlier suit  was passed and further opining that the cause of action for filing the suit was  a continuous and recurring, infringement of the plaintiff\022s trade mark by the  respondents continuously till the date of filing of the second suit, it was held  that the presence in the register of a mark was a continuous wrong.   However, it is not necessary to delve deep into the matter any further as we  have held heretobefore that the provisions of the Limitation Act, 1963 will  have no application in the instant case.

       It is also not a case where a court has been conferred power to  exercise a suo motu jurisdiction.  Reliance placed by the appellant in State of  Punjab & Ors. v. Bhatinda District Coop. Milk P. Union Ltd. [2007 (2)  SCALE 135], therefore, cannot be said to have any application.   

       Whereas on the one hand Mr. Desai objects to the evidence that was  produced before the learned Single Judge with regard to the increase in the  volume of sale of Peter Scot, on the other hand, it was urged that if a  comparison is made of the Indian whisky and Scotch Whisky it would  appear that some Indian whiskies are costlier than some of the Scottish  brands.  The stand taken by the respondents is self contradictory.  We think  that their stand is not fair.

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       We, therefore, in the peculiar facts and circumstances of this case, are  of the opinion that action of the respondents is barred under the principles of  acquiescence and/ or waiver.   

       The power conferred on the Registrar is discretionary in nature.  In a  given case, the Registrar may not exercise its jurisdiction.  [See Kabushiki  Kaisha Toshiba v. Tosiba Appliances Co. & Ors. [Civil Appeal No. 3639 of  2008 decided on 16th May, 2008]

RE: ISSUE NO. 2

       Another principal question which arises for consideration is as to  whether the use of the term \021Scot\022 would itself be a sufficient ground to form  an opinion that the mark \021Peter Scot\022 is deceptive or confusing.   Indisputably, the onus of proof therefor would be on the respondents.   Whether they have discharged the said onus is the question?   

       The nature of a passing off action vis-‘-vis the action for infringement  of a registered trade mark may lead to ground of the same reliefs, but we, at  the outset, may notice that in Modern Law Trade Marks by Morcom, it is  stated:

\023Passing off \026 the group or class type action \026  the necessary characteristics.

14.64           A trade name may come to denote  goods of a particular type or class, Traders who  sell these goods do not have the exclusive rights in  the name.  The goodwill in the name is shared by  all of the traders who sell this type or class of  goods.  A passing off action may be brought by  one or more of these traders to protect the goodwill  in the name.\024          

       A passing off action may be brought by those who fulfill the  following requirements:

(i)     the claimant himself owns or has a sufficient proprietary interest in  the requisite goodwill, and (ii)    the goodwill so owned must be the goodwill which is really likely  to be damaged by the alleged misrepresentations.

       The decision of the respondent No. 3 that the respondent No. 1 has no  locus standi to file an application under Section 56 of the Act has attained  finality.  Locus has been found only in favour of the respondent No. 2.  It  comes within the purview of a foreign manufacturer whose goods are sold in  this country.  It indisputably have acquired a protectable goodwill in his  trade name or trademarks.  There will then be the question, which in  principle would involve pure question of fact, is whether the goodwill is that  of the foreign manufacturer or the importer. [See Kerly\022s Law of Trade  Marks and Trade Names, Fourteenth Edition, para 15-067, page 456]     

       The Law in this regard has been specifically stated in Kerly\022s Law of  Trade Marks and Trade Names, Thirteenth Edition pg. 600 in the following  terms:

\023(3) If the goods are expensive or important to  the purchasers and not of a kind usually  selected without deliberation, and the  customers generally educated persons, these  are all matters to be considered.\024

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    Respondent No.1 initiated some proceedings in Australia and United  States of America.              We may notice some precedents operating in Australia and United  States of America.       AUSTRALIA            In Scotch Whisky Association  v. Marton De Witt,  [(2008) FCA 73]       Federal Court of Australia, was concerned with the question as whether the  mark \021GLENN OAKS\022 was deceptively similar to trade marks that, before  the priority date of the Application, had acquired a reputation in Australia  for scotch whisky and scotch whisky-based liquors as envisaged under  Section 60 of the Trade Marks Act, 1995.  In that proceeding also Ian  Barclay had affirmed an affidavit in favour of respondent No.1-Association.   As regards the market (s) and consumer knowledge, it was held :-

\02333. There are two classes of consumer in the  scotch whisky and bourbon markets: the involved  consumer and the uninvolved consumer.  The  knowledge of these consumers may be obtained in  several ways \026 including labels, customer  salespeople, word of mouth and past experiences.\024                  Noticing the details involving the manufacture of scotch whisky that it  is ordinarily made from barley; it originates in Scotland ;  if there are two  forms of whisky : blended and malt ; it has various brands and its alcoholic  content is at least 40 % by volume.  It has further been noticed:        35.     All the applicant\022s expert witnesses would  fall within this class of consumer.  Given the  market is quite small, product distinction between  scotch whisky and other products is more readily  discerned by consumers in this class.  They would  also be aware that scotch whisky is sold in bottles  and in pre-mixed drinks (scotch whisky  products).\024

          It was also held :-       \02338. The purchase of bourbon and scotch whisky  products is not one of impulse.  The habits of  alcohol purchasers differs from those of purchasers  of soft-drinks or sports drinks, who are usually  teenagers and children.  Are, pricing and product  quality are all factors that make for more  discerning consumers of scotch whisky and  bourbon.  

39.     The uninvolved purchaser buying a present  or someone else will usually ask a salesperson,  who will assist in product distinction between  bourbon products and scotch whisky products.   The salesperson in a liquor store is a means by  which consumers become knowledgeable about  different products.  By contrast, consumers would  not typically ask a salesperson what a bottle of  coke or a new soft drink tastes like.  They would  purchase the product and try it themselves.   Consumers would also read product labels, see that  \023scotch whisky\024 is written on the container, and  infer that scotch whisky is made in Scotland.\024

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          The tests which have been laid down therein are as under :-       \02338. The purchase of bourbon and scotch whisky  products is not one of impulse.  The habits of  alcohol purchasers differs from those of purchasers  of soft-drinks or sports drinks, who are usually  teenagers and children.  Are, pricing and product  quality are all factors that make for more  discerning consumers of scotch whisky and  bourbon.  

39.     The uninvolved purchaser buying a present  or someone else will usually ask a salesperson,  who will assist in product distinction between  bourbon products and scotch whisky products.   The salesperson in a liquor store is a means by  which consumers become knowledgeable about  different products.  By contrast, consumers would  not typically ask a salesperson what a bottle of  coke or a new soft drink tastes like.  They would  purchase the product and try it themselves.   Consumers would also read product labels, see that  \023scotch whisky\024 is written on the container, and  infer that scotch whisky is made in Scotland.\024

          The Court held that both involved and uninvolved purchasers of  bourbon and scotch whisky products could not be confused save and except   those who are exceptionally stupid or careless.            As regards deceptive similarity test, it was held :-       \02366. The key issue under S.60 is a comparison  between the GLENN OAKS mark and marks used  before its priority date.  The approach in Pianotist  Co\022s Application (1906) 23 RPC 774 at 777 is oft  cited.  There, Parker J said:

\023You must take the two words.  You must judge of  them, both by their look and by their sound.  You  must consider the goods to which they are applied.   You must consider the nature and kind of customer  who would be likely to buy those goods.  In fact,  you must consider all of the surrounding  circumstances; and you must further consider what  is likely to happen if each of those trade marks are  used in a normal way as a trade mark for the goods  of the respective owners of the marks.\024

67.     That passage was cited with approval in  Cooper Engineering Co. Pty. Ltd. v. Sigmund  Pumps Limited (1952) 86 CLR 536 at 538 and in  Woollen Mills at 658, where Dixon and  McTiernan JJ described the comparative analysis  as follows:

\023In deciding this question, the marks ought not, of  course, to be compared side by side.  An attempt  should be made to estimate the effect or  impression produced on the mind of potential  customers by the mark or device for which the  protection of an injunction is sought.  The  impression or recollection which is carried away  and retained is necessarily the basis of any

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mistaken belief that the challenged mark or device  is the same.  The effect of spoken description must  be considered.  If a mark is in fact or from its  nature likely to be the source of some name or  verbal description by which buyers will express  their desire to have the goods, then similarities  both of sound and of meaning play an important  part.  The usual manner in which ordinary people  behave must be the test of what confusion or  deception may be expected.  Potential buyers of  goods are not to be credited with any high  perception or habitual caution.  On the other hand,  exceptional carelessness or stupidity may be  disregarded.  The course of business and the way  in which the particular class of goods are sold  gives, it may be said, the setting, and the habits  and observation of men considered in the mass  affords the standard.  Evidence of actual cases of  deception, is forthcoming, is of great weight.\024

    The High Court of Australia in Cooper Engineering Co. Pty. Ltd.  v.   Sigmund Pumps Ltd., [ (1952) HCA 15 ] was considering the question as to  whether the word \021RAINMATER\022 is deceptively similar to \021RAIN KING\022 in  respect of spray nozzles, sprinklers and their parts.  It was opined that the  same word \021RAIN\022 suffixing the word \021MASTER\022 and \021KING\022 differs in  appearance and sound and those marks as a whole make them quite distinct,  opining :-

\023There is not a single common letter in master and  in King.  The two words are so unlike to the eye  and to the ear that counsel for the appellant was  forced to rely on the likelihood of deception  arising from the two words conveying the same  idea of the superiority or supremacy of the article  as a mechanism for making a spray similar to  falling rain or artificial rain as it was called during  the argument.  But it is obvious that trademarks,  especially word marks, could be quite unlike and  yet convey the same idea of the superiority or  some particular suitability of an article for the  work it was intended to do.  To refuse an  application for registration on this ground would  be to give the proprietor of a registered trademark  a complete monopoly of all words conveying the  same idea as his trademark.  The fact that two  marks convey the same idea is not sufficient in  itself to create a deceptive resemblance between  them, although this fact could be taken into  account in deciding whether two marks which  really looked alike or sounded alike were likely to  deceive.  As Lord Parker said in the passage cited,  you must consider the nature and kind of customer  who would be likely to buy the goods.  A  purchaser of spray nozzles and sprinklers would  not be likely to be lacking in discernment.  He  would not be in a hurry to buy.  He would not be  likely to pay any attention to the presence of a  common word like rain in the combination.  That  prefix already appears in other trademarks for  goods of the same description sold on the  Australian market such as Rainwell, Rainmaker,  Rain Queen, and Rainbow.  The learned register  was right in holding that the only similarity  between the two marks is the common prefix

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\023Rain\024 and that this similarity is not sufficient to  create a reasonable likelihood of deception when  the remaining portions of the marks are so  different. (at p539).\024         Our attention has also been drawn to an order of a Delegate of the  Registrar of Trade Marks in Re :- Opposition by Southcorp Wines Pty Ltd.   to the registration of trade mark application number 749793 in the name of  Kemeny\022s Food & Liquor Pty. Limited for the trade mark, comprising the  words DEVIL\022S RIDGE and device, in Class 33 wherein on the question of  similarity of the words \021DEVIL\022S LAIR\022 and \021DEVIL\022S RIDGE\022 both being  brand names of wines, it was observed :-          \023Despite Ms. Williamson\022s concerns about wines  being purchased with labels unseen on wine lists,  or in a hurry at bottle shops, I do not think that  there would be a great deal of confusion between  the marks here because of the common word in  them.  I believe that ordinary Australian wine  drinkers are becoming increasingly knowledgable  and sophisticated in their drinking habits and take  more care with their selection than Ms. Williamson  believes they do.\024  

       The two marks were held to be not substantially identical with, or  deceptively similar to each other.    

UNITED STATES OF AMERICA

       In Application of E.I. DuPont DeNemours & Co.[476 F.2d 1357], it  was stated:                 \023The Decisional Process  The ultimate question of the likelihood of  consumer confusion has been termed a question of  fact. Coca-Cola Company v. Snow Crest  Beverages, Inc., 162 F.2d 280 (1st Cir. 1947), cert.  den. 332 U.S. 809, 68 S.Ct. 110, 92 L.Ed. 386  (1947). If labeled a mixed question or one of law,  it is necessarily drawn from the probative facts in  evidence. As so often said, each case must be  decided on its own facts. There is no litmus rule  which can provide a ready guide to all cases.  In testing for likelihood of confusion under Sec.  2(d), therefore, the following, when of record,  must be considered:  1.      The similarity or dissimilarity of the marks  in their entireties as to appearance, sound,  connotation and commercial impression.  2.      The similarity or dissimilarity of and nature  of the goods or services as described in an  application or registration or in connection  with which a prior mark is in use.  3.      The similarity or dissimilarity of established,  likely-to-continue trade channels.  4.      The conditions under which and buyers to  whom sales are made, i.e. "impulse" vs.  careful, sophisticated purchasing.  5.      The fame of the prior mark (sales,  advertising, length of use).  6.      The number and nature of similar marks in  use on similar goods.  7.      The nature and extent of any actual  confusion.  8.      The length of time during and conditions  under which there has been concurrent use  without evidence of actual confusion.

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9.      The variety of goods on which a mark is or  is not used (house mark, "family" mark,  product mark).  10.     The market interface between applicant and  the owner of a prior mark:    (a) a mere "consent" to register or use.  (b) agreement provisions designed to  preclude confusion, i.e. limitations on  continued use of the marks by each  party.  (c) assignment of mark, application,  registration and good will of the  related business.  (d) laches and estoppel attributable to  owner of prior mark and indicative of  lack of confusion. 11.     The extent to which applicant has a right to  exclude others from use of its mark on its  goods.  12.     The extent of potential confusion, i.e.,  whether de minimis or substantial.  13.     Any other established fact probative of the  effect of use.\024

       As regards public interest, the learned Judge held:  \023Whether offered in response to a right-to-use  argument or against any of the evidentiary  considerations listed above, citation of "the public  interest" as a basis for refusal of registration is a  bootless cry. [fn8] We need add little to the  shattering of that shibboleth in the concurring  opinion in National Distillers, supra, and in the  dissents in Ultra-White, Zildjian and Continental  Baking, supra. Writers and scholars listed in those  reported opinions have also shown the fallacy in  the notion that the Patent Office is somehow  guarding the public against confusion when it  refuses a registration. After a likelihood of  confusion is found (and the case thus decided)  citation of the public interest is unnecessary.  The Patent Office does have a guardianship role  under Sec. 2(d). It lies not in a negative, nay- saying of refusal alone, but in the protection of a  mark by registering it and then rejecting later  improper attempts, of which the registrant is  unaware, to register it or a similar mark. Refusal to  register cannot prevent confusion. At most, it  might discourage further use. [fn9] Refusal can,  under certain circumstances, encourage potential  confusion. Absence of a registration of RALLY for  auto cleansers in the present case may, for  example, lead others to adopt and use that or a  similar mark for auto cleansers. Granting a  registration will not produce confusion. Use alone  can do that and neither we nor the Patent Office  can grant or deny a right to use.  Presumably, everything the Patent Office and this  court does is in the public interest. We find no  place for "the guardianship of the public interest"  as support for refusals to register under Sec. 2(d).\024

       Respondent No. 1 herein brought out an action against Majestic  Distilling Company in The Scotch Whisky Association v. Majestic Distilling  Company [958 F.2d 594].  The Dupont test was applied to hold:

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\023Although the dictionary defines Black Watch as a  Scottish infantry regiment, SWA produced no  evidence that the public would understand it as  such. We simply do not believe this creates an  issue of material fact, especially considering that  the labels clearly indicate the products are made in  the United States. Moreover, the labels contain no  express reference to Scotland nor were the  products ever advertised as being of Scottish  origin. More importantly, gin, blended whiskey,  and vodka are not characteristically products of  Scotland.

       Yet again in Champagne Louis Roederer, S.A. v. Delicato Vineyards,  [148 F. 3d  1373 ] the United States Court of Appeals for the Federal Circuit  applying the DuPoint (supra) test in a case of wine stated :- \023Like regulatory agencies or other executive  tribunals in their subject areas, the Trademark Trial  and Appeal Board has acquired a high level of  expertise in evaluating the DuPont factors and  counter-weighing these factors to reach its ultimate  conclusion -- the likelihood vel non of confusion  between competing marks. Nonetheless, the Board  too should explain with reasonable \023precision\024 not  only its factual findings but the \023theory  underlying\024 its final conclusion. We need to be  told and not be \023compelled to guess at the theory\024  the Board applied to compare its conflicting  findings and decide likelihood of confusion.  Without such explanation we are hard-pressed to  review independently, as we must, whether the  Board\022s ultimate conclusion is legally correct. In  such circumstances, we cannot assure ourselves  that the Board did indeed \023engage in reasoned  decision- making.\024  

       It was observed :-         \023Because the Board in this case failed to  \023supply a synthesis\024 of its conflicting findings that  would enable us to \023discern the path\024 to its  ultimate conclusion, I initially wondered whether  its conclusion of no likelihood of confusion in this  case was correct. As our per curiam opinion notes,  however, it is perfectly lawful for the Board to  determine in an appropriate case that one DuPont  factor outweighs all others and thus disposes of the  question of whether competing marks are  confusingly similar. It was not immediately clear  to me from the Board\022s opinion, however, that this  is such a case. See Specialty Brands v. Coffee  Bean Distributors, Inc., 748 F.2d 669, 671, 223  USPQ 1281, 1282 (Fed. Cir. 1984) (holding that,  in some instances, the appearance, sound, and  significance of the marks may be dispositive, \023but  the similarity between words in the respective  marks is only part of the inquiry into likelihood of  confusion\024). Thus, the difficulty here arises, in my  view, because the Board explicitly found that four  of the DuPont factors weighed in Roederer\022s favor,  but concluded nonetheless that the dissimilarities  of the marks in appearance, sound, significance,  and commercial impression weighed dispositively  in favor of Delicato. I for one am left wondering  how the Board justified its disregard or diminution  in weight of the four DuPont factors that it found

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supported Roederer\022s Opposition, for the Board  has failed to \023bring together the disparate  elements\024 to explain the basis for its conclusion of  no likelihood of confusion.\024  

INDIA          We may also notice some Indian decisions operating in the field.          In Carew Phipson Limited  v.  Deejay Distilleries Pvt. Ltd., [ AIR  1994 Bom. 231 ], the Bombay High Court stated the law thus :-  \0236. Even on comparison of the trade mark of the  plaintiffs with the defendants’ trade mark, it is  difficult to hold that the two marks are deceptively  similar and are likely to create any confusion in the  minds of the customers.\024  

       It was furthermore observed :-

\023On comparison of the two marks bearing the  aforesaid principles in mind, it is difficult to  appreciate as to how there is even a remote  possibility of any customer being misled. In my  opinion, when a customer goes to a shop to buy the  plaintiffs’ product, he will not ask for "Duet" or  "Gin N Lime" or "Gin N Orange" but he will ask  for a "Blue Riband Gin N Lime" or "Blue Riband  Tango Gin N Orange". Further having regard to  the fact that the customer who is likely ’to buy the  products of the plaintiffs and the defendants will  be normally educated and discerning type, it is  impossible to hold that there is any likelihood of  confusion. It is pertinent to note that the plaintiffs  have failed to cite even a single instance showing  that there was confusion in the minds of the  customers. The absence of evidence of actual  deception is a circumstance which definitely  weighs in favour of the defendants. It is also  necessary to mention that the defendants have  produced on record voluminous evidence showing  that such premixtures are sold by several other  companies under the names "American Extra Dry  Gin with Lime Duet Plus", "Forbes Two in One  Dry Gin and Lime", "Rainbow Gemlet Gin and  Lime" etc. In my opinion, there is no possibility of  any confusion in this case at all.\024                  Yet again in Diageo North America, Inc. and another  v.  Shiva  Distilleries Ltd., [143 (2007) DLT 321] a learned Single Judge of the Delhi  High Court held as under :-                  \02314. 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 submitted that all the  letters are common except the letter and 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 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

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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.\024

       This Court in Cadila Health Care Ltd.  v.  Cadila Pharmaceuticals  Ltd.,  [ (2001) 5 SCC 73 ]  inter alia laid down the law in the following  terms :-

\02335. Broadly stated, in an action for passing-off  on the basis of unregistered trade mark generally  for deciding the question of deceptive similarity  the following factors are to be considered :

(e)     The class of purchasers who are likely to  buy the goods bearing the marks they  require, on their education and intelligence  and a degree of care they are likely toe  exercise in purchasing and/or using the  goods.\024                                  The tests which are, therefore, required to be applied in each case  would be different. Each word must be taken separately.  They should be  judged by their look and by their sound.  Must consider the goods to which  they are to be applied.  Nature and kind of customers who would likely to  buy goods must also be considered.  Surrounding circumstances  play an  important factor.  What would likely to happen if each of those trade marks  is used in a normal way as a trade mark of the goods of the respective  owners of the marks would also be a relevant factor.  [See Pianotist Co.\022  Application, Re ,  (1906) 23 RPC 774].

       Thus, when and how a person would likely to be confused is a very  relevant consideration.

       Where the class of buyers, as noticed hereinbefore, is quite educated  and rich, the test to be applied is different from the one where the product  would be purchased by the villagers, illiterate and poor. Ordinarily, again  they, like tobacco, would purchase alcoholic beverages by their brand name.   When, however, the product is to be purchased both by villagers and town  people, the test of a prudent man would necessary be applied.  It may be true  that the tests which are to be applied in a country like India may be different  from the tests either in a country of England, United Sates of America or  Australia.  We however, do not mean to suggest that in a case of this nature,  the Heightened Scrutiny Test should be applied as urged on behalf of the  appellant.    Bollinger, J. and Others v. Costa Brava Wine Coy., Ld. [1960  (1) RPC 16], whereupon Mr. Desai has strongly relied upon, makes such a  distinction.  Bollinger, J. (supra) was a case on demurrer.  It was concerned  with sale of Spanish Champagne.  In that case, in paragraph 4 of the  application, the applicant stated: \023Then in Para 4 they deny that this name \023Spanish  Champagne\024 is a false description, and they  continue: \023The defendants deny that the said  section imposes any statutory duty on the  defendants or any statutory duty owed by the  defendants to the plaintiffs.  Alternatively, if the  said section does impose any such statutory duty  the same is not actionable at the suit of any of the   plaintiffs or at all\024.

       The court proceeded on certain assumptions which are:

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\023(1) the Plaintiffs carry on business in a  geographical area in France known as  Champagne;  (2)     The Plaintiffs\022 wine is produced in  Champagne and from grapes grown in  Champagne;  (3)     the Plaintiffs\022 wine has been known in the  trade for a long time as \023Champagne\024 with a   high reputation;  (4)     Members of the public or in the trade  ordering or seeing wine advertised as  \023Champagne\024 would expect to get wine  produced in Champagne from grapes grown  there; and  (5)     The Defendants are producing a wine not  produced in that geographical area and are  selling it under the name of \023Spanish  Champagne.\024

       It was noticed: \023The well-established action for \023passing-off\024  involves the use of a name or get-up which is  calculated to cause confusion with the goods of a  particular rival trader, and I think it would be fair  to say that the law in this respect has been  concerned with unfair competition between traders  rather than with the deception of the public which  may be caused by the Defendant\022s conduct, for the  right of action known as a \023passing-of action\024 is  not an action brought by the member of the public  who is deceived but by the trader whose trade is  likely to suffer from the deception practised on the  public but who is not himself deceived at all.\024

       Before the learned Judge, the plaintiffs claimed that their goodwill in  the name or description \023Champagne\024 is injured by the Defendants\022 conduct  to which the counsel for the defendants did not contest the correctness of the  statement.

       The learned Judge, referring to Mayor of Bradford v. Pickles [1895  AC 587] and laying down the principles of injuries, noticed the argument of  the counsel that before a person can negative the argument of the defence  counsel, the person can recover for loss or it must be shown that his case  falls within the class of actionable wrongs stating: \023But the law may be thought to have failed if it can  offer no remedy for the deliberate act of one  person which causes damage to the property of  another.  There are such cases, of course, but they  occur, as a rule, when the claims of freedom of  action outweigh the interests of the other persons  who suffer from the use which a person makes of  his own property.\024

       It was in the aforementioned fact situation, the learned Judge  proceeded to determine as to whether the description \023Spanish Champagne\024   is  calculated to deceive holding that the plaintiff has a right to bring any  action.

       J. Bollinger and Others v. The Costa Brava Wine Company Limited  (for short \023Bollinger II\024) [1961 (5) RPC 116], however, clearly shows as to  what was the test applied.  The inference deduced from the evidence  adduced was noticed in the following terms:

\023In particular, it appeared from the evidence that  Champagne is a wine specially associated with

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occasions of celebration so that (in addition to  sales to persons who regularly buy wine) it is  purchased on such occasions from time to time by  many persons who are not in the habit of buying  wine for consumption and are not educated in the  nature or qualities of different kinds of wine.\024

       Holding that \023Spanish Champagne\024 may lead to ordinary belief into  thinking that wine so described was the real thing, it was observed:

\023Moreover, when the case is tried in an  atmosphere of educated persons, many of whom  are well acquainted with the qualities of various  wines, it may seem absurd that persons should be  deceived by what may appear to be a transparent  impersonation.  It was argued indeed that  Champagne was so well known that everyone  except a trifling minority of ignorant persons (who  were not to be considered, especially in regard to  what was termed a luxury article) would not be  deceived.\024

       It was held: \023Champagne, on the other hand, is a French word,  and it is wrong if not dishonest to apply it to  anything but the product of Champagne, the area  round Rheims in France.  Others must call  themselves Sparkling Moselle, Sparkling  Californian White, or what they please. There is  some still champagne, a pleasant hard white wine,  which you can drink in France, and even some dull  still red wine\024; and on pages 79-80 of the same  book it is said: \023It mayn\022t be forgery to describe a  wine as, say, Australian Chablis; it is deplorable  and shows the maker has no proper pride in his  product, but the adjective \021Australian\022 is a sort of  warning\024.  In a previous edition (the 6th) of the  same book, the words in the same passage are \023is a  fair warning\024.

       The learned Judge proceeded to hold:

\023All the lovers of wine who gave evidence before  me deplored this practice by which the names of  well-known wines have been debased.  Some of  the witnesses, employed in the more practical side  of the wine trade, referred to the convenience of  thus using the name of the real wine to indicate a  type.  But it appeared that a number of the wine  merchants who dealt in such wines were careful in  their price lists to list such wines under titles or  descriptions which showed that they were of a type  but not from the original district.\024

       Referring to Kerly on Trade Marks, which we have referred to  hereinbefore, the learned Judge said: \023And it has been said that regard should not be had  to \023unusually stupid people, fools or idiots\024.   Moreover, \023if the goods are expensive and not of a  kind usually selected without deliberation and the  customers generally educated persons these are all  matters to be considered.\024  (That is also a

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quotation from the same book.)  Various other  judicial statements are collected in the judgment of  the Assistant-Registrar in George Angus & Co.\022s  Application (1943) 60 R.P.C. 29, at pp. 31-32, to  which I was referred.\024

       In arriving at the said decision, the following was specifically noticed:

\023Mr. Munday, whose wine business was in  Swansea, when asked \023How far do you think the  class of customers that you deal with know the  origin of Champagne?\024 replied: \023Limited.  Some  would know.  The first category I mentioned  would know a fair amount about it.  In the second  category some.  But there would be a considerable  number in my area who would know nothing about  it except that it was a wine they wanted for a  special occasion or for something in their life they  wanted to celebrate with.  They would then want  that.  That is how much they would know about it- just a general outline\024.\024

       It was furthermore held:

\023There is thus, in my view, a considerable body of  evidence that persons whose life or education has  not taught them much about the nature and  production of wine, but who from time to time  want to purchase Champagne, as the wine with the  great reputation, are likely to be misled by the  description \023Spanish Champagne\024.  

       Something was said on the subject of the  burden of proof.  Well, burden of proof is  something which may shift in the course of an  action.  It appears to me that when the plaintiffs  have shown that a description used by the  defendants contains an untruthful statement that a  wine which is not Champagne is Champagne, they  have gone some way to establishing their case, and  the Court might require to be satisfied that such an  untrue statement was so clearly qualified as to be  not likely to mislead.  But, however, that may be, I  am satisfied on the evidence that a substantial  portion of the public are likely to be misled.  And  as Lord Justice Lindley said in Slazenger & Sons  v. Feltham & Co. (1889) 6 R.P.C. 531 at p. 537:  \023One must exercise one\022s common sense, and, if  you are driven to the conclusion that what is  intended to be done is to deceive if possible, I do  not think it is stretching the imagination very much  to credit the man with occasional success or  possible success.  Why should we be astute to say  that he cannot succeed in doing that which he is  straining every nerve to do?\024

       Bollinger test was not only applied in Warnick (Erven) Besloten  Vennootschap v. J. Townend & Sons (Hull) Ltd. [1980 RPC 31], but in all  the case which have been referred to by Mr. Desai to which the different  High Courts of India as also to which we have taken note of.   

    However, tests laid down in Australia and United States in respect of  self-same goods are noticed hereinbefore are somewhat different.             But then we are concerned with the class of buyer who supposed to

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know the value of money, the quality and content of Scotch Whisky.  They  are supposed to be aware of the difference of the process of manufacture, the  place of manufacture and their origin.  Respondent No.3, the learned Single  Judge as also the Division Bench of the High Court, therefore, failed to  notice the distinction, which is real and otherwise borne out from the  precedents operating in the field.  [See - Kerly\022s Law of Trade Marks and  Trade Names, Thirteenth Edition pg. 600].

       Had these tests been applied the matter might have been different.  In  a given case probably we would not have interfered but we intend to do so  only because wrong tests applied led to a wrong result.   

       So far as the applicability of the 1999 Act is concerned, having regard  to the provisions of Sections 20(2) and 26(2), we are of the opinion that the  1999 Act will have no application.   

       For the reasons aforementioned, the impugned judgment is set aside.   The appeal is allowed.  No costs.