The Scotch Whisky Association (SWA) is exploring ways to appeal against a ruling by the Supreme court on a review petition that allows Indian made foreign liquor (IMFL) company Khoday India to retain its popular brand Peter Scot.
“The association is currently in talks with lawyers what avenues are open to overturn a decision which we consider to be fundamentally flawed and contrary to the evidence,” said a spokesman of the Scotch Whisky Association (SWA) in reply to an email sent by Business Standard.
SWA is a UK-based trade association for promoting Scotch whisky of Scotland. It has objected to the use of words ‘Scotch’ or ‘Blended Scotch’ or similar sounding words for whisky brands, not originating from Scotland. On May 27, 2008, the Supreme Court had ruled in favour of Khoday India allowing it to retain its brandname Peter Scot. SWA had filed a review petition to revise the judgement. However, a bench headed by justice S B Sinha has now rejected SWA’s petition to revive the case as it held that there were no grounds for reviewing the May 27 verdict.
Although the Supreme Court judgement in a review petition would be final, “In case of exceptional cases involving serious natural justice violations or in case of any bias from judiciary, curatory proceedings can be initiated in the Supreme Court to re-examine an earlier order,” explained Anoop Narayanan, Partner, Majmudar & Co International, on the options available for SWA to take fresh action.
“The primary reasons behind the decision in favour of Khoday is due to the long delay amounting to acquiescence (permission given through silence or passiveness) and that the brand does not deceive its customers of its Indian origins,” said Narayanan.
Peter Scot has been available in the market since 1968 and was registered in 1974. Besides it also has a rampant lion on its cover. Pictures of rampant lions on covers are prohibited in the UK.
“The decision has been issued in proceedings relating to the registration of a trademark. The use of marks, and whether that use amounts to ‘passing off’, raises various issues. Indian courts have consistently concluded that the use of the word ‘Scot’ on locally produced spirit drinks is likely to mislead consumers and have prohibited its use as have courts throughout the world,” said the SWA spokesman.
SWA is also engaged in a separate ‘passing off’ action suite against Peter Scot at the Mumbai High Court. “SWA continues to have concerns about the ‘Peter Scot’ brand, an Indian product with a label that states it is blended by ‘Scotch experts’. A separate ‘passing off’ action continues at the Mumbai High Court,” he further added.
Under the Trademarks Act of 1999, a registered trademark has the backing of infringement and passing off remedies. Under passing-of action, if it is proved that the defendants (in this case Peter Scot) brandname is similar sounding or looking to the claimant’s (SWA’s Scotch) registered brandnames or trademark, the court can restrain the defendant (pass off brand/ business) from conducting business under the ‘pass off’ name as it causes confusion and harms the goodwill of the original trademark or brand owner’s business.
In the past, the Delhi High Court had ruled in favour of SWA when it restrained IMFL manufacturers from using the words Scot or Scotch on their products. The court had ordered Golden Bottling, a Jaipur-based company, not to use the word Scot on its product — Red Scot.
Among the many issues that SWA has with India, one is the high import and state duties levied on imported spirits. “SWA wants India to reduce duties on imported Scotch and has taken this issue up with WTO as well,” says an industry expert, who represents an association of IMFL manufacturers in India.
