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Peter Scott or Scotch

Written by: Utpal Kant - I am in 5th year Symbiosis Law School
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Objective:
This Article is an initiative dedicated to providing a rigorous independent review of the recent judgment delivered by Supreme Court of India in ‘Khoday Distilleries Limited Vs. The Scotch Whisky Association and Ors’. . The aim of this program of research and analysis is to see that whether tests of “deceptive similarity”, required to be applied in each case would be different? Is nature and kind of customers who would likely to buy goods and when and how a person would likely to be confused are relevant considerations? Where the class of buyers 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?

The question which is required to be posed therefore 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. 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 confusion? The discussion highlights the unintentional but often harmful consequences of such judgment.

This article is a comprehensive study of the review of the recent controversial judgment delivered by Supreme Court of India in ‘Khoday Distilleries Limited Vs. The Scotch Whisky Association and Ors’[1]. This paper therefore encompasses non doctrinal methods of research.

Limitations:
· It is not always true that 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.

· In liquor shops in India all the sales executive are not well trained to be aware with the quality and content of Scotch Whisky & they are not supposed to be aware of the difference of the process of manufacture, the place of manufacture and their origin.

"Khoday India’ manufactures whisky under the mark ‘Peter Scot’. Peter Warren, an employee of ‘Khoday’, explained that the brand name ‘Peter Scot’ was coined primarily with his father in mind i.e. using his forename, ‘Peter’, and his nationality, ‘Scot’. Another factor 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 ‘t’s, it is phonetically the same as ‘Scot’.

The ‘Scotch Whisky Association & others’ initiated legal proceedings against ‘Khoday’ inter alia for passing off of the mark, Peter Scot. The Court referred to a passage in Kerly’s classic book on trademark and ruled that “if the goods are expensive and not of a kind usually selected without deliberation and the customers are generally educated persons which are all matters to be considered”. It relied on the judgments like In ‘Bollinger, J. and Ors. v. Costa Brava Wine Coy.[2]’ and ‘Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd.[3]’ where it was held that “where the class of buyers is educated and rich, the test to be applied is different where the product would be purchased by the villagers, the illiterate and the poor”.

The Court concluded that it was concerned with the class of buyers who are supposed to know the value of money, the quality and content of Scotch whisky and the difference in the process of manufacture, the place of manufacture and their origin. Applying these tests the Court decided in favour of ‘Khodays’. This means that tomorrow a manufacturer starts selling a Cigar with the name ‘Kuban Cigar’ then no action of passing off would lie against the manufacturer. According to above test the consumer of Cigar which is an expensive and non essential item are bound to be educated enough to distinguish between a Cuban Cigar and ordinary cigar. The statutory standard is not the actual confusion and deception but likelihood thereof.

It is also to be noted that they have also used the device of lion Rampant and the description "Distilled from the finest malt and blended with the choicest whiskies by Scotch experts under Government Supervision" was to deceive and confuse to the consumers at large. The device used by ‘Khoday’ India manufacture is an exact replica of the Royal Standard of Scotland which is a well known emblem of Scotland The words "Scotch Experts" is intended to lead consumers to believe that the ‘Peter Scott’ whisky is Scotch Whisky.

"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;
In section 11 of The Trade Mark Act - Prohibition of registration of certain marks--'A 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; or
(c) which comprises or contains scandalous or obscene matter; or
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
(e) which would otherwise be disentitled to protection in a court, shall not be registered as a trade mark.

Under Section 11(a) of the Trade Mark Act, a mark, the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark; the law does not require to prove actual deception or confusion. Under Section 11(a) of the Trade Mark Act, it has to be noted that the use of word 'SCOT' as part of the registered trade mark is not just likely to deceive or cause confusion but actually results in causing deception and confusion in believing such a whisky as Scotch Whisky as the word 'SCOT' is an abbreviation of / synonymous to / evocative of Scotland and when used in relation to a whisky is indicative that such whisky is distilled and matured in Scotland and is Scotch Whisky. Till 1960, the classic cases relating to deception and confusion were confined to the use of or in connection with his goods by one trader of the trade name or a trade mark so as to induce any potential purchaser to believe that his goods were those of the rival trader[4].

In Parker-knoll Limited v. Knoll International Limited[5] principle arrived was that trading must not only be honest but must not even unintentionally be unfair.

The term 'Scot' when used in association with whisky of non- Scottish origin is inherently capable of and is likely to cause confusion and deception. 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. There are 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 in which actions of passing off 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 Scotch Whisky Association & Anr. against Mohan Meakin Ltd.[6] it was held that expressions "SCOT", "SCOTS", "SCOTTISH" or "Scotch Whisky" is bound to cause confusion in the mind of the customers who are not regularly drinking or who are not well educated that the Whisky with such a brand name is a Scotch Whisky.

Conclusion and Suggestions:
It is not true that the tests which are to be applied in a country like India are to be same to the tests applied either in a country of England, United Sates of America or Australia. As we know that literacy rate in India is not same in comparison to the above mentioned countries. Neither in all the shops all the sales executives are well aware with the quality and content of Scotch Whisky nor they are supposed to be aware of the difference of the process of manufacture, the place of manufacture and their origin.

It is obvious that the use of the expressions "SCOT", "SCOTS", "SCOTTISH" or "Scotch Whisky" is bound to cause confusion in the mind of the customers who are not regularly drinking or who are not well educated that the Whisky with such a brand name is a ‘Scotch Whisky’. It is not always that 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. It is purchased on various special occasions from time to time by many persons who are not in the habit of buying wine for consumption and are not educated enough to differentiate in the nature or qualities of different kinds of wine.

End notes
[1] 2008(56)BLJR1979, 2008BusLR625(SC), MIPR2008(2)253, (2008)4MLJ942(SC), 2008(9)SCALE40
[2] Ld. 1960 (1) RPC 16
[3] 1980 RPC 31
[4] 1960 RPC 16 and 1969 RPC Page 1 referred to supra
[5] 1962 RPC 265
[6] Suit No. 1352 of 1986 before the Bombay High Court

The author can be reached at: utpalagarwal@legalserviceindia.com / Print This Article

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