ROBERT A. MERRY AND CO. LTD. V PICCADILLY AGRO INDUSTRIES LTD

CS(COMM) 1164/2025 & CS(COMM) 9/2026

INTRODUCTION

This case concerns a trademark dispute over the use of the mark WHISTLER for whiskey in India. Robert A. Merry & Co. Ltd., an Irish whiskey company, claimed prior international use and reputation in the marks WHISTLER and THE WHISTLER, and sought to restrain Piccadilly Agro Industries Ltd. from using WHISTLER for its Indian Made Foreign Liquor whiskey. Piccadilly, on the other hand, relied on its Indian registration for WHISTLER dating back to 2008 and asserted that Robert had no registration or established goodwill in India.

The Court examined the competing claims of passing off and infringement, particularly whether Robert’s alleged transborder reputation had sufficiently spilled over into India before Piccadilly’s launch of its WHISTLER whiskey. It held that Robert failed to establish a prima facie case of passing off in India, while Piccadilly, as the registered proprietor of the WHISTLER mark in India, made out a prima facie case of infringement. Accordingly, the Court refused interim relief to Robert and granted interim protection in favour of Piccadilly.

FACTS

1. Robert A. Merry & Co. Ltd. (Robert), an Irish whiskey company, filed a passing off action against Piccadilly Agro Industries Ltd. (Piccadilly) over the use of the mark WHISTLER for whiskey in India.
2. Robert claimed prior international rights in WHISTLER, first registered in the United Kingdom on 12th June 2005, and in THE WHISTLER, adopted in 2016. Robert did not have an Indian registration for either mark.
3. Piccadilly, an Indian company engaged in malt spirits, conceived WHISTLER in 2007, applied for registration in 2008, and launched whiskey under the mark in 2018. It stated that the mark was inspired by the Whistler Warbler, a bird found in the Indian subcontinent.
4. The dispute arose when Robert sought to introduce WHISTLER/THE WHISTLER whiskey in India through M/s HS Oberoi Spirits. Robert sued for passing off, while Piccadilly filed a counterclaim/suit for trademark infringement based on its Indian registration for WHISTLER.

ISSUES

1. Whether Robert established a prima facie case of passing off based on its alleged goodwill and reputation in India.
2. Whether Piccadilly, as the registered proprietor of WHISTLER in India, established a prima facie case of trademark infringement against Robert.

CONTENTIONS

Plaintiff’s contentions

1. Robert argued that prior use prevails over registration and that a foreign proprietor can restrain a later Indian adopter where its reputation has spilled over into India. It relied on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 62, and N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714.
2. It submitted that, because liquor is a regulated industry with advertising restrictions, reputation may travel through awards, publications, trade channels, and awareness among discerning consumers. The absence of mass advertising, therefore, could not defeat its claim of spillover reputation in India.
3. Robert alleged dishonest adoption by Piccadilly and argued that the Whistler Warbler explanation was an afterthought. It also contended that Piccadilly’s product was being sold under a deceptively similar mark and did not meet the same whiskey standards applicable to Robert’s Irish whiskey.
4. Robert disputed Piccadilly’s infringement claim under Section 29(2)(b) of the Trade Marks Act, 1999, arguing that differences in price, quality, composition, classification, and consumers reduced any likelihood of confusion. It relied on Radico Khaitan Ltd. v. Carlsberg India Pvt. Ltd., 2011 SCC OnLine Del 3925 and Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701.

Defendant’s contentions

1. Piccadilly argued that Robert had no Indian registration for WHISTLER or THE WHISTLER and could not assert statutory trademark rights in India.
2. It submitted that Robert’s passing off claim was unsupported because Robert had not shown meaningful spillover of transborder reputation, goodwill, or sales in India before Piccadilly’s adoption and launch.
3. Piccadilly contended that, as the registered proprietor of WHISTLER in India, Robert’s proposed use of WHISTLER/THE WHISTLER for whiskey would infringe its registered mark for identical goods.
4. It further submitted that Robert could resist infringement only by showing either a valid Indian registration or prior user protection under Section 34 of the Trade Marks Act, 1999. It relied on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1 and Sumit Vijay v. Major League Baseball Properties Inc., 2026 SCC OnLine Del 2.

COURT’S REASONING

1. Absence of Indian registration
   1. The Court held that Robert had no statutory rights in India because it had no Indian registration for WHISTLER or THE WHISTLER. It therefore could not maintain an infringement claim against Piccadilly, which was the registered proprietor of WHISTLER in India since 03.04.2008.
   2. Relying on S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, the Court noted that while statutory rights between registered proprietors are limited by Section 28(3), passing off rights remain protected under Section 27(2). Robert’s case, therefore, could only rest on common law passing off.
2. Priority of prior use
   1. The Court reiterated that registration does not defeat the rights of a prior user. Section 34 protects prior use, and as held in N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, a registered proprietor’s rights remain subject to the rights of an earlier user.
3. Transborder reputation
   1. The Court considered the law on transborder reputation. While N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714 recognised protection for a foreign mark whose reputation had spilled over into India, later decisions require evidence of goodwill and reputation within India.
   2. Relying on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, BPI Sports LLC v. Saurabh Gulati, (2023) 3 HCC (Del) 164, and VIP Industries Ltd. v. Carlton Shoes Ltd., 2025 SCC OnLine Del 4620, the Court held that mere global reputation is insufficient. The claimant must show that the reputation had meaningfully reached Indian consumers before the defendant’s relevant use.
   3. On the facts, Robert failed to show that its goodwill or reputation in WHISTLER/THE WHISTLER had spilled over into India before Piccadilly launched WHISTLER whiskey in 2018.
   4. The Court also found Robert’s import documents insufficient. The excise approvals for Delhi and Maharashtra were dated January 2026, and the customs documents related to 2025. These documents did not establish Indian use or goodwill before Piccadilly’s 2018 launch. Robert therefore failed to make out a prima facie passing off case or justify ad interim relief.
4. Identical or deceptively similar marks
   1. The Court held that the rival marks WHISTLER and THE WHISTLER were nearly identical or deceptively similar, and the competing goods were also identical, namely whiskey. This created a clear likelihood of confusion.
   2. The Court rejected Robert’s argument that differences in price, quality, composition, or consumer sophistication were enough to avoid confusion. Even discerning consumers may be confused where the marks and goods are near identical.
   3. Relying on Renaissance Hotel Holdings Inc. v. B. Vijaya Sai, (2022) 5 SCC 1, the Court noted that a high degree of similarity between marks can attract infringement provisions. It also relied on Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blenders & Distillers Pvt. Ltd., 2015 SCC OnLine Del 10164, where different trade dress did not rule out confusion in alcoholic beverages.
   4. Accordingly, the Court held that Piccadilly had established a prima facie case of infringement. Since the marks and goods were identical or near identical, Section 29(2)(c) was attracted, and confusion was presumed under Section 29(3) of the Trade Marks Act, 1999.

RULING

1. The Court held that Piccadilly had made out a prima facie case of infringement. The balance of convenience was also in its favour, as Robert’s launch of Irish whiskey in India under WHISTLER/THE WHISTLER was likely to cause irreparable injury. Accordingly, an ad interim injunction was granted in favour of Piccadilly.
2. The Court refused Robert’s request to sell existing stock. It noted that Robert had filed its suit in December 2025, was aware of the dispute over its right to use WHISTLER/THE WHISTLER in India and nevertheless imported the goods after obtaining excise approvals in January 2026. The Court treated this as a calculated risk taken by Robert. Accordingly, Robert’s application was dismissed.

Our comment

The ruling reinforces that foreign brand owners cannot rely on global reputation alone to restrain an Indian registered proprietor. They must prove actual spillover goodwill in India before the Indian party’s adoption/use.