1 in the High Court of Karnataka at Bangalore

1 IN THE HIGH COURT OF KARNATAKA AT BANGALORE DATED THIS THE 25 TH DAY OF SEPTEMBER, 2013 BEFORE THE HON’BLE MR.JUSTICE B.S.PATIL W.P.No.35886/2013 (EXCISE) BETWEEN M/S. FOUR SEASONS WINES LTD. A COMPANY INCORPORATED UNDER THE PROVISIONS OF THE COMPANIES ACT 1956, HAVING ITS OFFICE CANBERRA, 15 TH LEVEL, U.B. CITY, 24, VITTAL MALLYA ROAD, BANGALORE – 01, REP BY ITS DIRECTOR MR. ABHAY KEWADKAR. ... PETITIONER (By Sri.S R SHIVAPRAKASH, ADV.) AND 1. THE COMMISSIONER OF EXCISE II FLOOR, VOKKALIGARA BHAVAN, HUDSON CIRCLE, BANGALORE 2. KRISHNA VALLEY WINE YARD PVT. LTD., NO.28, NEAR OLD MUGLKHOD MATH, SOLAPUR ROAD, BIJAPUR DISTRICT. ... RESPONDENTS (By Sri.T.K.VEDAMURTHY, HCGP) THIS WRIT PETITION IS FILED UNDER ARTICLES 226 & 227 OF THE CONSTITUTION OF INDIA, PRAYING TO QUASH THE ANNX-H DATED 13.6.13 PASSED BY THE R2 AUTHORITY AS WITHOUT AUTHORITY OF LAW, ILLEGAL AND ARBITRARY AND ETC. 2 THIS PETITION COMING ON FOR PRELIMINARY HEARING THIS DAY, THE COURT MADE THE FOLLOWING: ORDER 1. Learned Government Pleader takes notice for respondent No.1. 2. In this writ petition, petitioner is challenging the order dated 13.06.2013 passed by the Excise Commissioner, Bangalore, thereby overruling the objections filed by the petitioner for approval of the labels on the wine bottles as sought by the 2nd respondent. 3. The 2 nd respondent is the manufacturer and trader in wines. He sought for approval of new labels, by names (1) SEASON SAUVIGNON BLANC (2) SEASON SHIRAZ RED WINE (3) SEASON CABERNET SAUVIGNON (4) SEASON ROSE WINE and (5) SEASON MADAN RED WINE . Before approving the label as per the procedure prescribed, the concerned persons were notified calling for objections, if any for approval of the labels as sought by the 2 nd respondent. No 3 objections were received. The said labels were approved in favour of the 2 nd respondent in the year 2009-10. 4. Petitioner who is also a manufacturer and trader in wines by name ‘Four Seasons’ filed objections against the approval of the labels of the 2 nd respondent. The 1st respondent – Excise Commissioner overruled the objections raised by the petitioner and approved the labels of the 2 nd respondent for the year 2010-11. Petitioner approached this Court in W.P.No.40747/2010 challenging the order passed by the Excise Commissioner rejecting the objections raised by the petitioner. As this Court found fault with the procedure adopted while approving the labels of the 2 nd respondent, the matter was remanded for fresh consideration by providing opportunity to both parties. This is how the matter was examined by the 1 st respondent – Excise Commissioner and the present order is passed considering the objections raised and the contentions of both parties. 4 5. The Excise Commissioner has found that the standard adopted for verifying whether there is any infringement of the trade mark of the petitioner is that of an ordinary prudent person in similar facts and circumstances. If such yardstick is applied, in his view, there was no such infringement so as to deny the approval of the label proposed by the 2 nd respondent. He has further pointed out that simple comparison of the petitioner’s label with that of the 2 nd respondent indicated that they were different labels except the word “Season” which according to him was a generic term over which no one can claim proprietary right. 6. The Excise Commissioner has also referred to the pendency of a suit in O.S.No.3384/2010 filed by the petitioner for infringement of registered trade mark of the petitioner herein before the Civil Court. In the wake of pendency of the controversy before the Civil Court, he has opined that there is no jurisdiction vested in him to decide 5 whether there is infringement of the trade mark which is required to be adjudicated by the competent Civil Court. 7. It is thus clear from the order passed by the Excise Commissioner that he has heard both the parties and examined the trade mark of both the petitioner and the respondent and has come to the conclusion that the trade mark of the petitioner and that of the 2 nd respondent are not similar and there was no apparent violation of the petitioner’s mark. He has desisted from examining the matter with regard to the infringement of the trade mark, if any, by the 2 nd respondent as alleged by the petitioner, having regard to the pendency of the suit instituted by the petitioner. 8. The contention of the learned counsel for the petitioner is that petitioner is manufacturing and trading in wine having registered trade mark “Four Seasons”, whereas the 2 nd respondent who is also a manufacturer and trader in wine has obtained the registered trade mark 6 by name “Seasons”. Except the word “Four”, in all other respects, the words are similar, thus the 2 nd respondent is violating the registered trade mark of the petitioner. He draws the attention of the Court to the order of temporary injunction granted by this Court in M.F.A.No.11000/2010 disposed of on 11.02.2013 produced at Annexure-F1. He contends that this Court has restrained the 2 nd respondent from infringing the registered mark of the petitioner “Four Seasons”, which is ignored by the authorities. 9. I have perused the said judgment of this Court. In paragraph 10 of the said judgment, this Court has made the following observations: “Whether the business carried on by the respondents under the word mark ‘SEASON’ affects the right of the appellants is a matter required to be gone into after the trial. Apprehension of the appellants that the respondents are trying to infringe the registered word mark ‘FOUR SEASONS’ is supported by pleading. Without expressing any opinion with regard to the actual infringement, I am of the 7 considered opinion that the appellants are entitled to protect their registered word mark. By granting an order of temporary injunction to protect the word mark of the appellants no prejudice will be caused to the respondents. On the other hand, if the registered word mark of the appellants is not protected, then they will be put to hardship, inconvenience and loss. In the circumstances, I hold that the balance of convenience is in favour of the appellants and they will be put to injury if injunction is not granted. For the reasons stated above, the following: ORDER i) ……….. ii) ……….. iii) The respondents, their men, servants, agents, assignees or any other person or persons claiming through or under them are hereby restrained from infringing th registering word mark of the appellants ‘FOUR SEASONS’ 8 10. It is thus clear from the order passed by this Court that question whether the business carried on by the 2 nd respondent under the trade mark “Seasons” affects the right of the present petitioner is kept open to be decided during final adjudication after trial. Restraint order against the 2 nd respondent is in respect of use of the mark “Four Seasons”. It is thus apparent that whether there is infringement of the registered trade mark of the petitioner by the 2 nd respondent who has got fresh trade mark registered as “Seasons” is a matter that is seized by the Civil Court in O.S.No.3384/2010. It is also contended during the course of arguments by the learned counsel for the petitioner that the matter is also seized before the Intellectual Property Appellate Board where the petitioner has taken up his grievance seeking cancellation of the registration of the trade mark “Seasons” by the 2 nd respondent. 11. In such circumstances, one cannot expect the Excise Commissioner to embark upon an enquiry regarding the violation of the registered trade mark and to record his 9 findings which would virtually result in assuming the powers of the Civil Court or the competent Authority specially constituted in this regard. The Excise Commissioner is no doubt required as per Rule 15 of the Karnataka Excise (Bottling of Liquor) Rules, 1967 to examine and also as per the circular dated 30.05.2002 to verify, if any trader or manufacturer, while applying for registration of new labels or renewal of already registered labels, has infringed the trade mark or copied the name of any other manufacturer or trader. This Exercise the Excise Commissioner has done by comparing the two marks and by recording a finding that there was no such violation or infringement of the trade mark. He has taken care to observe that the matter has to be undoubtedly finally adjudicated in the pending proceedings before the Civil Court. Therefore, I do not find any apparent illegality or error of jurisdiction committed by the Excise Commissioner in passing the impugned order. Hence, the petition being devoid of merits is dismissed. 10 Learned Government Pleader is permitted to file memo of appearance within three weeks. Sd/- JUDGE VP .

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