Mukul Mudgal, J.—
Whereas I.A. No. 5178/97 is an application for interim stay and LA. 5338/97 for vacation of the stay granted by this Court on 30th May, 1997.
2. The plaintiff’s case is that the plaintiff is the owner of the trademark ‘Johnnie Walker’ for a Scotch Whisky which according to the plaintiff has acquired a transborder reputation on account of extensive and continuous user all over the world since 1959. The name Johnnie Walker is derived from the name of the founder of John Walker and Sons Company which is the predecessor-in-title of the plaintiff in respect of the said product. The advertisement in respect of said Whisky with a distinctive striding figure have appeared in Indian Publications as far back as 1960 and the products sold and consumed in India. The learned Senior Counsel for the plaintiff Mr. Sudhir Chandra has submitted that the Johnnie Walker’s Scotch Whisky packaging bears a distinctive trade dress featuring a label characterised by two tone colour combination comprising of black and gold, red and gold, and blue and gold in respect of the black, red and blue label whiskey. The centre label is deliberately slanted and contains a distinctive golden outline. Within the outline, there is another rectangle in the centre of which the brand name Johnnie Walker appears in bold and distinctive golden lettering. The plantiff has also referred to the distinctive feature of a striding figure and a bowler hatted man in its trade dress. It has been averred that the defendant has adopted and indeed usurped the device of the striding figure and the slanting label in relation to their products and the said, labels are deceptively similar and copy the trade dress and the name of the plaintiffs product. It is submitted that a bare look at two competing marks would suggest that the mark of the defendant is an imitation of the plaintiff’s label. The plaintiff has relied upon judgments of the American Courts to contend that the plaintiff’s is a famous trademark for whisky. The plaintiff has complained about the use of the mark ‘Johnnie Walker’ by the defendants in respect of Gutkha with or without tobacco which is being manufactured by the defendants with the trade name ‘Johnnie Walker’. The plaintiff’s complaint is that the user of the trade mark Johnnie Walker, the logo and the get up of the trade dress empoloyed by the defendant clearly infringes on the rights of the plaintiff and the defendants have attempted to derive unfair advantage of the goodwill generated and enjoyed for long by the plaintiff’s product.
3. The defendants have contended that apart from the preliminary objections as to the maintainability of the plaint, the product of the defendant falls in Class 34 relating to tobacco in respect of Gutkha with tobacco and Gutkha without tobacco falls in Class 31 of the schedule whereas the product of the plaintiff falls in Class 33, i.e. wines, spirit and liquors and is a totally different product. The learned Senior Counsel for the defendants Mr. R.K. Anand, contended that there is no common factor or link between the plaintiff’s product and the defendants’ product and no association is discernible or suggested between the two products. The defendants submit that they have made no attempt to pass off their product as that being made by the plaintiff. It is also contended by the defendants that the plaintiff’s product is a highly priced product and is available only in Five Star Hotels and Duty Free Shops and not available at the market place. The defendants also submit that at the time of the filing of the written statement one litre bottle of Johnnie Walker cost about Rs. 1,600 whereas the defendants’ products were available only for an amount of Rs. 2.00 and Rs. 2.50 per pouch. The defendants cater to a lower economic strata of the society and a vast -majority of the consumers are either tetotallers or those who do not have the financial capacity to purchase the plaintiff’s products. Furthermore the advertisement of the plaintiff’s product is prohibited by law in India whereas the defendants’ products can be advertised with the suffixation of the statutory warning that ‘chewing of tobacco and betlenuts is injurious to health’.
4. The defendants have also pleaded that the defendants have derived the name of their products from a well-known actor of Hindi films Shri Johnny Walker. It has also been claimed that in fact there was a movie by the name of ‘Johny Walker’ starring the said actor Johny Walker in 1978 and the dress worn by Johny Walker in the said movie figures as part of the defendant’s logo. The defendants have further submitted that in the Gutkha trade it is common to name the products after the names of popular Hindi films such as Bobby, Poonam, Dillagi, Babul, Aashiki etc. The defendant’s case is that the goods of the plaintiff and the defendant are so inherently different that there is no possibility or likelihood of any deception in the mind of any prospective consumer.
5. This suit was first listed on 30th May, 1997 and on that day the following ex parte order was passed the operative portion of which continues upto date:
“I have gone through the plaint and the petition and am satisfied that the plaintiff has made out a prima facie strong case for injunction. There shall be an injunction restraining the defendants, their principal officers, servants and agents or any of them, from using, in relation to Pan Masala or Gutkha or any other tobacco product or any product bearing the mark ‘JOHNNIE WAL¬KER’ or any other deceptively similar trade mark or the device of a “Striding Figure” as described in para 7 or any other deceptively similar device, or a slanting label bearing the words “JOHNNIE WALKER” or any other decep¬tively similar words on any of their product so as to pass off or enable others to pass off their goods and/or business as that of the plaintiff. The defendants are further restrained from using the words “Johnnie Walker” or “JOHNNIE WALKER’ or any other deceptively similar words as part of their corporate name and/or trading style until further orders. Dasti.
Compliance of Order 39, Rule 3, CPC be made within three days.”
6. The plaintiff has inter alia relied upon several judgments to contend that well-known and well reputed foreign products can be protected in this country even when the mark has directly not been used in the Indian market. The learned Counsel has further relied upon a judgment of this Court in case William Grant and Sons Limited v. McDowell & Co. Limited reported as 1994 FSR 690, in respect of a trademark GLENFIDDICH. In that case the defendants were also marketing a Whisky with the use of the word GLENFIDDICH and the injunction was granted restraining the defendants from using the GLENFIDDICH label. The learned Counsel has also relied upon judgment of the Hon’be Supreme Court in the case of Tube Investments Of India Ltd. v. Trade Industries, Rajasthan., Rajasthan, reported as 1997 (6) SCC 35, wherein the manufacture of a bicycle and bicycle parts bearing initials TI in two concentric circles complained of breach of its trademark by the defendants who were manufacturing bicycle saddle using the mark TI enconsed in a single circle and an injunction was granted in plaintiff’s favour. The learned Counsel for the defendant has however strongly relied upon in the judgment of Vishnudas Trading v. Vazir Sultan Tobacco Co., 1996 PTC 512. However in Tube Industries case itself it has been observed that the Vishnudas’s decision was in respect of rectification proceedings and could not have a direct bearing in a passing off dispute. Thus the said decision relied upon by the defendant is inapplicable to the present proceed¬ings.
7. Insofar as the defendant’s plea as to the authority of Ronald James Gilchrist to institute these proceedings is concerned, the large number of proceedings and steps taken on behalf of the plaintiff in these proceedings prima facie negate this plea. The judgment of the Hon’ble Supreme Court in United Bank of India v. Naresh Kumar, reported in 1996 (6) SCC 660, also supports the submission of the plaintiff that the plea of lack of authority cannot be entertained at this stage. In any event the plaintiff having subsequently filed documents ratifying the steps taken by Mr. Gilchrist this plea cannot be entertained at this stage.
8. The learned Counsel has also relied upon several judgments to contend that in respect of well-known trade marks a restraint order can be issued even in respect to different goods. It is only necessary to consider the illustrative case of Daimler Benz Aktiegesellschaft and Another v. Hybo Hindustan, AIR 1994 Delhi 239, where an automobile manufacturer was granted a restraint order in respect of undergar¬ments in respect of a known trade mark. Thus it is well settled law that the known trade marks do enjoy protection in respect of its unauthorised user on goods other than those goods for which the trade mark is registered. This principle of availability of protection for other goods has been laid down in number of judgments reported as Alfred Dunhil Limited v. Kartar Singh, 1999 PTC 294; AB Volvo v. Volvo Steels, 1998 PTC 48; Bata India Limited v. M/s. Pyare Lal & Co., AIR 1985 All. 242; M/s. Binatone International Ltd. v. M/s. Sugan Kitchenware Appliances, 1991 PTC 8 and M/s. Jugmug Electric & Radio Co. v. M/s. Telerad Pvt. Ltd., ILR 1977 (1) 295; Banga Watch Co. v. M/s. NV Philips, AIR 1983 P & H 418; Caterpillar Inc. v. Jorangel, 1998 PTC 31(DB).
9. The defendant’s company was incorporated on 17th October, 1995. The defendants have been advertising the product net from February, 1997. The defendants have relied upon some press releases of the year 1997. The defendants have also relied on several licences granted to it for the purpose of its product. The defendants have also relied upon the fact that their goods fall in Classes 31 and 34 of Schedule IV of the Act. The defendants have further pleaded that the plaintiff’s goods fall at best within Class 33. In view of the fact that the protection in respect of the trade mark has been held in law to be available for other goods this plea of the defendants loses relevance.
10. I have considered the rival pleas and have also examined and compared the two marks and the two dresses.
11. The plaintiff can, make a grievance about the striding figure of a hatted person and the colour scheme of the defendant’s trade dress which does prima facie appear to be inspired by the plaintiff’s product. A bare perusal of the trade dress of the defendant denotes a striking similarity between the defendant and the plaintiff’s products. A comparative perusal of the trade dress of the competing products demonstrate inter alia the following similarities in the trade dress:
(a) The angled label.
(b) The user of colour combination of black and gold.
(c) The user of the striding figure.
12. The defendants have not given any satisfactory explanation as to why there are such similarities with the plaintiff’s trade dress in their product’s trade dress. This user of the trade dress similar to the plaintiff by the defendant, prima facie does not appear to be coincidental and deserves to be restrained. A perusal of the two competing trade dresses demonstrates a clear overall similarity between the plaintiff’s and the defendant’s trade dress. The defendant’s plea that there is a vast difference in the price, user and availability of the two products on its own may have same validity but it is the combination of not only the name ‘Johnnie Walker’ but the trade dress which makes this explanation not capable of being sustained at this stage. Merely the use of name without the combination of trade dress similar to that of the plaintiff might have justified the claim of the defendant that the product was inspired by the movie and film actor by ‘Johnnie Walker. However, the trade dress of the plaintiff has been found to be similar to the defendant’s trade dress and the angled use of the label by the plaintiff is also present in the defendant’s product. This coincidence is sufficient to warrant the confirmation of the interim order dated 30th May, 1997.
13. In light of these circumstances I am satisfied that the interim order dated 30th May, 1997 deserves to be confirmed. Accordingly the said interim order is confirmed.
I.A. stands disposed of.
S. 1232/97:
List for further proceedings before the Joint Registrar on 14th September, 2000.
I.A. 5178/97 allowed.