Tilaknagar Industries (TI), which markets and sells brandy and whisky under the Mansion House brand, had sought the court’s intervention to restrain ABD, Herman Jansen Beverages Nederland BV, and UTO Asia Pte Ltd from manufacturing, marketing, or selling alcoholic products under the trademarks Mansion House and Savoy Club.
“The balance of convenience is clearly against UTO and in favour of Tilaknagar,” a division bench of Chief Justice Alok Aradhe and Justice Sandeep Marne said in its order issued on Wednesday. “In order to avoid confusion in the minds of the customers, which is also in the public interest, the two rival entities cannot be allowed to manufacture and sell products under the same marks, particularly when UTO has not sold a single bottle of alcohol in India under the impugned marks for 38 long years,” it said in its 83-page order.
ABD in a stock exchange filing on Thursday said, “The company is considering to challenge the order.”
The dispute has been going on for over 17 years now.
Singapore-based UTO-which ABD acquired from Herman Jansen last month for ₹1.22 million, or about ₹12 crore-owns worldwide rights in Mansion House and Savoy Club brands, excluding certain territories such as China and most of Southeast Asia.Tilaknagar had in 1987 signed an agreement with UTO (Herman Jansen) for the ownership rights of Mansion House brandy and Savoy Club gin in India. The Dutch side, however, argued that the arrangement was never legally solemnised and filed a trademark infringement lawsuit against TI in 2008, when Mansion House brandy emerged as a formidable brand in India.In December 2011, the Bombay HC held that Tilaknagar had the ownership rights to Mansion House in India, but Herman Jansen filed an appeal against it before a division bench.
In 2014, ABD bought 50% ownership rights for Mansion House and Savoy Club brands from Herman Jansen and signed a licensing deal to produce and sell them in the country.
Tilaknagar challenged this.
In February this year, Bombay High Court’s Justice Riyaz Chagla allowed ABD and Herman Jansen to launch Mansion House brandy and Savoy Club gin in West Bengal, observing that “there is no apparent similarity between the ABD’s label and Tilaknagar’s mark” and that ABD has been able to establish that its products will compete in a different market segment of high-end alcoholic beverages.
Tilaknagar challenged the order before a division bench, which has now set it aside.
When contacted, Tilaknagar’s legal head Savitrii Dadhich confirmed the development but refused to divulge any details.
The firm, through senior counsels Ravi Kadam and Venkatesh Dhond, had argued that it has marketed and sold alcoholic beverages under Mansion House and Savoy Club trademarks in India for over 40 years.
