The Delhi High Court has held that goods which infringe a registered trademark under the Trade Marks Act, 1999 can neither be exported nor imported into India. In case such goods are “liquor”, they fall within the ambit of “counterfeit liquor” under Section 2(16) of the Delhi Excise Act, 2009, as they violate rights conferred under the Trade Marks Act.
Consequently, the Court cannot permit a defendant to sell seized infringing liquor goods and place them in the market, as any such direction would be violative of the harmonious reading of the proscription in Section 29(6)(c) of the Trade Marks Act, 1999 and Section 2(16) of the Delhi Excise Act, 2009. Thus, the High Court refused to permit the sale of seized whiskey stocks bearing the trademark “OLD FORESTER”, holding that goods found in violation of trademark rights fall within the definition of “counterfeit liquor” under excise law.
A Single Judge Bench of Justice Tushar Rao Gedela observed that on a plain reading of Section 29(2)(c), 29(3), and 29(6)(c) of the Trade Marks Act, 1999, the proscription against export or import of goods into India, which are found to be infringing registered trademarks, is clearly set out. The Bench noted that this provision is engrafted to avoid the mischief where a clever importer may import goods under a trademark registered in India, and while continuing to be in violation thereof, would be entitled to sell the same and earn profits thereon.
The Bench observed that Section 2(16) of the Delhi Excise Act, 2009 clearly defines “counterfeit liquor” to include any liquor in respect of which there is any violation of any right under the Trade Marks Act, 1999. It noted that there are no qualifications to the nature of the liquor, and unambiguously, it would include all and any liquor found in violation of the rights conferred under the Act.
Thus, the Bench held that whether the goods procured are validly imported or not is not the primordial question; if the goods, particularly liquor, are imported and infringe any right conferred upon any person or entity under the Act, they would be “counterfeit liquor”.
Briefly, the present application was filed by Defendant No. 1 under Section 151 of the Code of Civil Procedure, 1908 seeking permission to sell existing stocks and already placed orders of whiskey bearing the trademark “OLD FORESTER”. The Defendant claims to import whiskey under the brand “OLD FORESTER BLENDED RESERVE WHISKY”, manufactured and bottled by M/s Yeti Distillery (P.) Ltd., Nepal, which allegedly owns the trademark in Nepal.
The Defendant and M/s Yeti Distillery executed a Sale and Purchase Agreement on Nov 08, 2023 for the import, sale, and distribution of the whiskey in India, pursuant to which the Defendant claims to have obtained all requisite licenses, approvals, and paid applicable customs duties and GST. The Plaintiff is the registered proprietor of over 100 registrations for the mark “OLD FORESTER” globally and filed a suit for permanent injunction restraining infringement of the registered trademarks, passing off, rendition of accounts, and damages after discovering the Defendant’s products in Delhi in December 2025.
The Court granted an ex-parte ad-interim injunction in 2025, restraining the Defendant from importing, selling, or distributing counterfeit products bearing the mark “OLD FORESTER”, and appointed a Local Commissioner who seized 3464 boxes of the alleged infringing products. The Defendant sought the release of the seized goods and 2600 boxes of similar products pending importation formalities, arguing that non-fulfilment of contractual obligations with the State Government would result in high penalties and blacklisting, and offered to deposit Rs. 25 to Rs. 30 lakhs as security.
The Plaintiff opposed the application, arguing that Section 29(2)(c), 29(3), and 29(6)(c) of the Trade Marks Act, 1999, and Section 2(16) of the Delhi Excise Act, 2009, strictly proscribe the import of infringing goods, which are classified as “counterfeit liquor”.
Appearances:
Advocates Shwetasree Majumder, Rohan Krishna Seth and Ritwik Marwaha, for the Plaintiff
Senior Advocate J. Sai Deepak, along with Advocates Kapil Midha, Sindhoora Ravindran, Garv Singh, Vartika Gautam and Abhishek, for the Defendant
