The case of ROYAL STAG with Device of Stag (hereafter referred to as
"Plaintiff") Vs. INDIAN STAG with Device of Stag (hereafter referred to as
"Defendant") is a significant legal battle that delves into the complexities of
trademark infringement, export, and the use of trademarks in India.
Both parties are involved in the alcoholic beverages industry, and the Plaintiff
had been using its trademark since 1995, with the earliest trademark
registration dating back to 1996.
In contrast, the Defendant was exclusively selling its products for export
purposes with bills produced since 2015. The Hon'ble High Court of Delhi granted
an interim injunction in favor of the Plaintiff after thoroughly examining the
The heart of this case lies in the trademark infringement issue. The court
invoked Section 29(2)(b) of the Trade Marks Act to analyze the situation.
According to this section, if the essential features of the Plaintiff's mark are
replicated in the Defendant's mark, infringement is deemed to have occurred.
In this case, all criteria set forth in the provision were met. The marks were
similar, used for the same product, and consequently, there was a likelihood of
confusion or association in the minds of consumers with average intelligence and
imperfect recollection. Thus, the Defendant was found to have infringed the
Disclaimer on Trademark Registration:
The Defendant's defense based on the disclaimer attached to the word "ROYAL"
was dismissed by the court. The Plaintiff emphasized that the "DEVICE OF STAG"
was the essential feature, which had been copied by the Defendant. Consequently,
the disclaimer concerning the "ROYAL" part of the Plaintiff's mark, which was
granted during the registration of the "ROYAL STAG" mark, was considered
Section 17 of Trademark Act 1999 and Trademark Infringement:
Section 17 of the Trademark Act 1999 was also invoked by the Defendant, but the
court found it not relevant to the case. The court concluded that the
Plaintiff's "ROYAL STAG with Device of Stag" and the Defendant's "INDIAN STAG
with Device of Stag" were similar as a whole, and there was a possibility of
confusion. Therefore, Section 17 did not provide a valid defense.
Export from India as Use in India:
One of the critical aspects of this case is the Defendant's claim that their
product was exclusively exported from India and that the "Device of Stag" was
common to trade. The court, however, found in favor of the Plaintiff, stating
that, within the meaning of Section 56 of the Trademarks Act 1999, export from
India also constitutes use in India. This interpretation is significant because
it reinforces the protection of trademarks even when products are primarily
intended for export.
Publici Juris and Third Party Use:
The Defendants argued that the "ROYAL STAG" mark was not publici juris, and the
publici juris character was attributed only to the "STAG" part of the
Plaintiff's mark. However, the court ruled that this distinction became
irrelevant as the Defendant's "INDIAN STAG" mark, as used for Indian Made
Foreign Liquor (IMFL), was deceptively similar to the Plaintiff's "ROYAL STAG"
The Defendant also relied on third-party use as a defense. They claimed that the
Plaintiff was aware of the use of the "SCOTTISH STAG" mark but remained silent.
However, the court found this argument lacking evidential support, as mere
coexistence of the "SCOTTISH STAG" and "ROYAL STAG" in the same outlets in Dubai
did not constitute evidence of the Plaintiff's knowledge of the "SCOTTISH STAG"
The Concluding Note:
The case of ROYAL STAG Vs. INDIAN STAG exemplifies the intricacies involved in
trademark infringement cases, particularly when export from India is a
The court's rulings on trademark similarity, the significance of disclaimers,
and the interpretation of export as use in India underscore the importance of
protecting intellectual property rights in a globalized world.
Additionally, the court's dismissal of the publici juris and third-party use
defenses highlights the need for substantial evidence in legal proceedings
involving trademark disputes. This case sets a precedent for the safeguarding of
trademarks in export-oriented industries in India and provides valuable insights
into the nuanced world of intellectual property law.
The Case Law Discussed:
Case Title: Pernod Ricard India Private Limited Vs A B Sugars Limited
Date of Judgement/Order:31/10/2023
Case No.CS(COMM) 371/2019
Neutral Citation No: 2023:DHC:7842
Name of Hon'ble Court:High Court of Delhi
Name of Hon'ble Judge: C Hari Shankar, H.J.
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539