BLENDERS PRIDE

This is a very interseting article I got from the online edition of the newsletter of K& S Partners. Thought i should blog it. So read on-

Can the first user of a mark internationally supersede the first user in India?

This was the main issue that fell for consideration before the High Court of Delhi in Austin Nichols & Co. and Anr. Vs. Arvind Behl&Anr. (unreported – decided on November 29, 2005).
The mark involved in this case is ‘Blender’s Pride’ owned and used by the plaintiffs in respect of whisky manufactured worldwide by them since 1973. Thewhisky manufactured by the plaintiffs’ under the mark Blender’s Pride has sincebeen sold in over 50 countries and enjoys a tremendous reputation in India since the late 1980s and 1990s through foreign visitors, satellite channels and the internet.
The plaintiffs were unable to sell their whisky under the said mark in India until1995 due to the then prevailing policies of the Government of India. In 1995, theyapplied for registration of their mark in India.
The defendants, local manufacturers of alcoholic drinks, claimed that they have been selling their whisky under the trademark ‘Blender’s Pride’ since 1993-94 but temporarily discontinued production thereafter until 2004-05. The Action was instituted by the plaintiffs in February 2005 on the allegation that the defendants are passing off their whisky as that of the plaintiffs.
The main defence raised by the defendants was that they adopted the mark in India in 1993-94, which is prior to its adoption by the plaintiffs in India.

While deciding the case, the court raised two points: first, that by their own averments in the suit, the defendants are ‘one of the largest, most reputed and well-established manufacturers and distributors of liquor ’ ; this being so, how could they not have known of the presence or existence of the plaintiffs’ mark ‘Blender’s Pride’ in the international market.

Secondly, the plaintiffs have stated in the pleadings that they have held asmany as 20 promotional events for Blender’s Pride (the defendants have notdenied this statement) in India from January 2001 onwards; the defendants, being in the same business as that of the plain tiffs, should have been aware of this and should have taken appropriate steps to prevent the plaintiffs from exploiting the mark ‘Blender’s Pride’.

As regards the main defence raised by the defendants, the court went on to examine the effect of the plaintiffs being the first and perhaps the only manufacturers of ‘Blender’s Pride’ whisky internationally and the second in India. Having analysed the various precedents including the Milmet case decided by the Supreme Court of India, the court held that the plaintiffs having come out with the Blender’s Pride whisky first in the international market were first past the post even though the defendants were the first to do so in India. Further, a cost of Rs.18,850,000(approximately US$38,000) was awarded to the plain-tiffs as legal costs.

The judgment is a lesson to all those infringers who believe that foreign marksare up for grabs before the proprietor makes a physical entry into India.
© 2006 K&S Partners, New Delhi.