Delhi High Court Grants Summary Decree Against ‘Principal Choice’ Whisky Mark

Delhi High Court Grants Summary Decree Against ‘Principal Choice’ Whisky Mark

Introduction

The Delhi High Court, exercising jurisdiction under Article 227 and the Commercial Courts Act, 2015, granted a summary judgment in favour of Allied Blenders and Distillers Limited, permanently restraining the defendants from using the mark “Principal Choice” in relation to alcoholic beverages. The Court held that the plaintiff’s mark “Officer’s Choice”, a declared well-known trademark, had acquired distinctiveness and secondary meaning through decades of continuous use, and that the defendants’ adoption was deceptively similar and dishonest.

Factual Background

The plaintiff, Allied Blenders and Distillers Limited, is the registered proprietor of the trademark “Officer’s Choice”, coined and adopted in 1988 and subsequently assigned in 1991. The mark has been extensively used in relation to whisky and related alcoholic beverages. Over the years, the mark has been registered in multiple classes and languages, with nearly 160 trademark registrations.

The plaintiff asserted that “Officer’s Choice” had achieved global recognition and at one stage ranked among the highest-selling whisky brands worldwide. The mark was declared a well-known trademark by the Delhi High Court in Allied Blenders and Distillers Pvt. Ltd. v. Surya Rao Trading as Leo Foods & Beverages (2017).

The defendants were found to be manufacturing and marketing whisky under the mark “Principal Choice” and “Principal Choice Premium Whisky.” Trademark applications were filed by Defendant No. 3 on a “proposed to be used” basis in Class 33.

The plaintiff alleged that the impugned mark was deceptively similar not only phonetically and structurally but also in overall trade dress and packaging, amounting to infringement and passing off.

Procedural Background

Summons were issued on 11 August 2023, and a partial interim injunction was granted restraining the defendants from manufacturing whisky under the impugned mark, permitting disposal only of existing stock subject to accounting.

The interim injunction was confirmed on 12 December 2023. Although delay in filing the written statement was condoned, no written statement was ultimately placed on record. On 18 October 2024, the defendants proceeded ex parte.

The plaintiff thereafter filed an application under Order XIIIA of the Commercial Courts Act, 2015 seeking summary judgment.

Issues

1. Whether the plaintiff had established statutory and common law rights in the trademark “Officer’s Choice.”

2. Whether the defendants’ mark “Principal Choice” was deceptively similar and infringed the plaintiff’s registered trademarks.

3. Whether the case warranted summary adjudication in the absence of a defence.

Contentions of the Plaintiff

The plaintiff contended that: “Officer’s Choice” is an arbitrary mark in relation to whisky and has acquired distinctiveness and secondary meaning through continuous use since 1988.

The mark has been declared well-known under Section 2(zg) of the Trade Marks Act, 1999.

The defendants’ adoption of “Principal Choice” is dishonest and calculated to ride upon the plaintiff’s goodwill. The trade dress and label presentation were strikingly similar, reinforcing deceptive similarity. The defendants’ trademark application status reflected “Abandoned,” demonstrating lack of bona fide intent. In view of the defendants’ failure to file a written statement, the plaint averments stood admitted. The plaintiff voluntarily gave up claims for damages and costs, seeking only permanent injunction.

Reasoning and Analysis

Justice Tushar Rao Gedela observed that the plaintiff had established long, continuous, and uninterrupted use of the mark since 1988. The Court noted that while the words “Officer” and “Choice” may individually be common, their combination in relation to whisky was arbitrary and had acquired distinctiveness. The Court relied upon prior Division Bench decisions and the declaration of the mark as well-known. The plaintiff had also placed on record numerous injunction orders passed in earlier proceedings against infringers.

On comparison of the two marks and packaging, the Court found clear deceptive similarity. The adoption of “Principal Choice” was held not to be honest or coincidental.

The Court emphasized that under the Commercial Courts Act and the Delhi High Court IPD Rules, summary adjudication is permissible where the defence is absent and the material on record suffices. Citing precedent, the Court held that recording formal ex parte evidence would be unnecessary and waste judicial time. The abandonment of the defendants’ trademark application further reinforced the inference that the impugned adoption lacked bona fides. The balance of convenience and irreparable harm clearly favoured the plaintiff.

Decision

The Court allowed the application under Order XIIIA and decreed the suit in favour of the plaintiff. A decree of permanent injunction was granted restraining the defendants from using the mark “Principal Choice” or any deceptively similar variant. Claims for damages and costs were voluntarily relinquished.The suit was disposed of, and the decree sheet directed to be drawn.

In this case the plaintiff was represented by Mr. Pravin Anand, Mr. Shrawan Chopra, Mr. Achyut Tewari, Ms. Krisha Baweja and Mr. Parth Malhotra, Advocates.