I hope the following gudgment is same:
Bench: S Sinha, L S Panta
Appeal (civil) 4179 of 2008
Khoday Distilleries Limited (Now known as Khoday India Limited)
The Scotch Whisky Association and others
DATE OF JUDGMENT: 27/05/2008
S.B. Sinha & Lokeshwar Singh Panta
J U D G M E N T
(Arising out of SLP (C) No. 21367 of 2007) REPORTABLE
S.B. SINHA, J.
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 Peter Scot. 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 appellants 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 Peter Scot was coined, stating :- While 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 Peter Scot was coined primarily with my father in mind i.e. using
his forename, Peter, and his nationality, Scot. 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 known as an artist, naturalist and Chairman of the World Wildlife
Fund. Although the name Scott is spelt with two ts, it is phonetically the
same as Scot.
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
(1) Whether the applicants are persons aggrieved 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
(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.
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
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 plea that the impugned registration contravenes Section 11 of
the Act, stating :-
Nonetheless, 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 (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 evidence. In 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
On the aforementioned premise, the application for rectification was
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
:- The 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
Noticing that the appellant had neither adduced any evidence nor cross-
examined the deponents of the affidavits, it was held :- It 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 Peter scot 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 Scot as part of the trade mark for the whisky manufactured by the
As regards the quality of the affidavits it was held :- The 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 Scot when used in association with whisky of
non- Scottish origin is inherently capable of and is likely to cause confusion
Feeling aggrieved, an intra court appeal was preferred thereagainst by 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 :-
We have carefully considered the abovesaid submissions made by the counsel on
either side. In our considered view, the use of the device Lion Rampant and
the abovesaid descripttion especially the descripttion Distilled from the Finest
Malt and Blended with the Choicest Whiskeys by Scotch Experts under Government
Supervision 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.
Mr. R.F. Nariman, learned senior counsel appearing on behalf of the appellant,
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 Peter Scot 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 Scot
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 PRIDE OF INDIA 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 Distilled from the Finest
Malt and Blended with the Choicest Whiskies by Scotch Experts under Government
Supervision must be read with the word PRIDE OF INDIA 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 the 1999 Act), 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
(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: 2
Definitions and interpretation(1) In this Act, unless the context otherwise
requires, (a) to (c)
(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 Prohibition of registration of certain marksA mark
(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;
(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 No action for infringement of
unregistered trade mark.
(1) . .
(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
56 Power to cancel or vary registration and to rectify the register.(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
(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 Appeals.(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
(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
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.
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
(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 Peter Scot. The box of the carton contains the emblem of Rampant
Lion. It is a malt whisky. On one side of the box it is stated PRIDE OF INDIA
and on the other KHODAY DISTILLERIES PRIVATE LIMITED. Apart from the said
information on the right hand side of the label it is stated Distilled from the
Finest Malt and Blended with the Choicest Whiskies by Scotch Experts under
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 :- 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 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
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
The principal question which arises for consideration is as to whether the
term Scot would itself be a sufficient ground to opine that the mark Peter
Scot 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 :- The 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 Wildbore and Gibbons dated
20th September, 1974. Regrettably, the first Applicant did not lodge opposition
with the time allowed 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
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 :- It 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:
The 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 tax collected from it during the above
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.
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
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
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 may 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 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 Hogmanay 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:
1. 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 Whisky Association, 2006 (33) PTC 527
(Reg.) Para 13
4. SWA & Anr. Vs. Mohan Meakin Ltd.
(Royal Scot) (Bombay High Court)
5. Scotch Whisky Association & Ors. Vs. Golden Bottling Ltd. (Red Scot) 2006
(32) PTC 656 (Del.)
6. SWA & Anr. Vs. Royal Distillery (Royals Scot) (Bombay High Court)
7. SWA & Ors. Vs. The Brihan Maharashtra Sugar Syndicate Ltd. (Brihans Old
Scot) (Bombay High Court).
8. SWA & Ors. Vs. The Ugar Sugar Works
Ltd. (Appeal Order) (Bombay High Court).
9. SWA & Anr. Vs. Rangar Breweries Ltd. (Grand Scot) (Bombay High Court)
10. SWA & Anr. Vs. Swaroop Vegetable
Products Industries Ltd. & Ors. (Final Order) (Delhi High Court)
11. Scotch Whisky Association Vs. Dyer
Meakin Breweries Ltd. (Highland Chief) ILR 1972 Delhi 124
12. Dyer Meakin Breweries Ltd. (now known as Mohan Meakin Breweries Ltd.) Vs.
The Scotch Whisky Association PTC (Suppl) (1) 352 (Del) (DB)
13. SWA & Anr. Vs. M/s Rheea Distillers (Scotch Terrier) (The Court of Addl.
Civil Judge, Sr. Division Margao, Goa).
14. William Grant & Sons Ltd. Vs. McDowell & Co. Ltd. (Glenfiddich Case) 1997
(17) PTC 134
15. Srilab Breweries Pvt. Ltd. Vs. Scotch Whisky Association (Rare Blend) 2006
(33) PTC 527 (Reg.) WA & Anr. Vs. Forbes Camphell & Co. Ltd. (Glen Forbes,
Blended with the finest Scotch) (Bombay High Court)
16. SWA & Anr. Vs. Pravara Sahakar Shakar Karkhana Ltd. (Drum Beater, Gold
Tycoon) (Bombay High Court)
17. SWA & Anr. Vs. Scottish Distilleries & Ors. (Macqueen and Black Kilt)
(Bombay High Court)
18. SWA Vs. Silver Oak Blenders and Bottlers Private Ltd. & Anr. (Windsor Club)
(Bombay High Court).
19. SWA Vs. Maharashtra Manufacturing
Corporation & Ors. (Black Skipper, White Scot & Salute India) (Delhi High
Decisions of Foreign Courts:
20. SWA Vs. Societe d Importation e de Distribution des Grandes Marques
(Judgment dated 23rd January, 1992 of the Commercial Court of Saint Etienne,
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  6 MLJ 280 (Malaysia)
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 Scot as also against those who used the words Highland Chief,
Scotch Terrier, Glenfiddich, Rare Blend, 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 Old Angus in
Class 32 which bears the name of a county in Scotland and, therefore, evocative
of Scottish origin although the product was a Rum and not Whisky. If the
respondent No. 1 took such actions in respect of trade marks Hogmanay and Old
Angus 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
43. Proceedings in respect of the registration of the mark HIGHLAND CHIEF
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 descripttions 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 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
Peter Scot 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 SCOT 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.
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 anybodys 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: 10. 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 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. In this case, the respondent stood by the mark.
A distinction may be made between a fraudulent trade mark and a deceptive
trade mark. 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, [  (1)
W.L.R. 1265 ] at 1283 1284, in the following terms :-
We 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
on their business under the name in which they had been incorporated with the
active assistance of the plaintiffs predecessors), constituted any invasion of
the plaintiffs 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 representation or encouragement to
Noticing various other decisions, Oliver, L.J., noticing a decision in
Taylor Fashions Ltd. v. Liverpool Victoria Trustees Co. Ltd. [ (Note)  2
W.L.R.] 576 opined :-
Furthermore the more recent cases indicate, in my judgment, that the
application of the Ramsden v. Dyson, L.R. 1 H.L. 129 principlewhether you call
it proprietary estoppel, estoppel by acquiescence or estoppel by encouragement
is really immaterialrequires 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
It was held :
I 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 :
Of 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
That, to my mind, sufficiently appears on the facts of this case.
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 :- 26. 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: It is
important to distinguish mere negligence and acquiescence. 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.
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 :-
103. 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.
The delay by itself, however, may not be necessarily a ground for refusing to
issue injunction. It was opined :-
106. 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.
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 Halsburys Laws of England, Fourth Edition, Vol. 16, para 1505, it is
Where 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.
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:
The 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
However, in Pfizer Products Inc. v. Rajesh Chopra & Ors. [2007 (35) PTC 59
(Del)], injunction was granted despite delay, stating :- Where 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
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.
In Mc Donalds Corporation and Another v. Sterlings Mac Fast Food Represented
by its Partner John Mathew [ILR 2007 Karnataka 3346], the Karnataka High Court
9. Though the plaintiff adopted its registered trade mark BIG MAC in 1968 in
paragraph 7 of memorandum of appeal it is stated as under:-
7. 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
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
8. 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
incorporated and registered with the
Registrar of Companies on August 30, 1993 vide (Ex. P-30).
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.
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 plaintiffs 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.
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 Scot would itself be a sufficient ground to form an opinion
that the mark Peter Scot 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:
Passing off the group or class type action 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.
A passing off action may be brought by those who fulfill the following
(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 Kerlys Law of Trade Marks and Trade Names,
Fourteenth Edition, para 15-067, page 456]
The Law in this regard has been specifically stated in Kerlys Law of Trade
Marks and Trade Names, Thirteenth Edition pg. 600 in the following terms:
(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.
Respondent No.1 initiated some proceedings in Australia and United States
We may notice some precedents operating in Australia and United States of
In Scotch Whisky Association v. Marton De Witt, [(2008) FCA 73] Federal
Court of Australia, was concerned with the question as whether the mark GLENN
OAKS 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 :-
33. 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 including labels, customer
salespeople, word of mouth and past experiences. 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 applicants 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
It was also held :-
38. 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 scotch whisky is written on the
container, and infer that scotch whisky is made in Scotland.
The tests which have been laid down therein are as under :- 38. 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
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 scotch whisky is written on the
container, and infer that scotch whisky is made in Scotland.
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 :- 66. 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 Cos
Application (1906) 23 RPC 774 at 777 is oft cited. There, Parker J said:
You 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
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:
In 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 mistaken belief that
the challenged mark or device is the same. The effect of spoken descripttion must
be considered. If a mark is in fact or from its nature likely to be the source
of some name or verbal descripttion 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.
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 RAINMATER is deceptively similar to RAIN KING in respect of spray
nozzles, sprinklers and their parts. It was opined that the same word RAIN
suffixing the word MASTER and KING differs in appearance and sound and those
marks as a whole make them quite distinct, opining :-
There 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 descripttion 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
Rain 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).
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 Kemenys Food & Liquor
Pty. Limited for the trade mark, comprising the words DEVILS RIDGE and device,
in Class 33 wherein on the question of similarity of the words DEVILS LAIR
and DEVILS RIDGE both being brand names of wines, it was observed :-
Despite Ms. Williamsons 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.
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:
The 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
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
8. The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.
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
(c) assignment of mark, application,
registration and good will of the
(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.
As regards public interest, the learned Judge held: Whether 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).
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: Although 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 :- Like 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 precision not only its factual findings but
the theory underlying its final conclusion. We need to be told and not be
compelled to guess at the theory 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 Boards ultimate
conclusion is legally correct. In such circumstances, we cannot assure ourselves
that the Board did indeed engage in reasoned decision- making.
It was observed :-
Because the Board in this case failed to supply a synthesis of its
conflicting findings that would enable us to discern the path 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 Boards 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, but the similarity between words
in the respective marks is only part of the inquiry into likelihood of
confusion). Thus, the difficulty here arises, in my view, because the Board
explicitly found that four of the DuPont factors weighed in Roederers 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 supported
Roederers Opposition, for the Board has failed to bring together the disparate
elements to explain the basis for its conclusion of no likelihood of
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 :- 6. 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.
It was furthermore observed :-
On 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.
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 :-
14. 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 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.
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 :-
35. 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
require, on their education and intelligence and a degree of care they are
likely toe exercise in purchasing and/or using the goods.
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. Application, Re , (1906) 23 RPC 774].
Thus, when and how a person would likely to be confused is a very relevant
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:
Then in Para 4 they deny that this name Spanish Champagne is a false
descripttion, and they continue: The 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.
The court proceeded on certain assumptions which are:
(1) the Plaintiffs carry on business in a geographical area in France known as
(2) The Plaintiffs wine is produced in Champagne and from grapes grown in
(3) the Plaintiffs wine has been known in the trade for a long time as
Champagne with a high reputation;
(4) Members of the public or in the trade ordering or seeing wine advertised as
Champagne 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 Spanish
It was noticed:
The well-established action for passing-off 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 Defendants conduct, for the
right of action known as a passing-of action 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.
Before the learned Judge, the plaintiffs claimed that their goodwill in the
name or descripttion Champagne is injured by the Defendants 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: But 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.
It was in the aforementioned fact situation, the learned Judge proceeded to
determine as to whether the descripttion Spanish Champagne 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
Bollinger II) [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
In particular, it appeared from the evidence that Champagne is a wine specially
associated with 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.
Holding that Spanish Champagne may lead to ordinary belief into thinking
that wine so described was the real thing, it was observed:
Moreover, 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
It was held:
Champagne, 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; and on pages 79-80 of the same book it is said: It maynt 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
Australian is a sort of warning. In a previous edition (the 6th) of the same
book, the words in the same passage are is a fair warning.
The learned Judge proceeded to hold:
All 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 descripttions
which showed that they were of a type but not from the original district.
Referring to Kerly on Trade Marks, which we have referred to hereinbefore, the
learned Judge said:
And it has been said that regard should not be had to unusually stupid people,
fools or idiots. Moreover, if 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. (That is also a quotation from
the same book.) Various other judicial statements are collected in the judgment
of the Assistant-Registrar in George Angus & Co.s Application (1943) 60 R.P.C.
29, at pp. 31-32, to which I was referred.
In arriving at the said decision, the following was specifically noticed:
Mr. Munday, whose wine business was in Swansea, when asked How far do you
think the class of customers that you deal with know the origin of Champagne?
replied: Limited. 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.
It was furthermore held:
There 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 descripttion Spanish
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 descripttion 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: One must exercise ones 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
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 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 - Kerlys
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.