In a couple of commercial suits filed before the Delhi High Court filed by Robert A. Merry and Co. Ltd. (Plaintiff), an Irish private limited company and Piccadily Agro Industries Ltd. (Defendant), an Indian listed public limited company, a Single Judge Bench of Justice Jyoti Singh restrained Robert A. Merry from selling its Irish whiskey in India under the marks THE WHISTLER and/or WHISTLER during the pendency of the suit.
The present matter dealt with two cross-applications for ad-interim injunction stemming from parallel trademark suits filed by Robet A. Merry and Piccadily, seeking to restrain each other from using the trademark “WHISTLER” (and its variant “THE WHISTLER”) in relation to their respective whiskey products. The plaintiff produced premium imported Irish whiskey protected under European Geographic Identity (GI) regulations, retailing in India between Rs. 2,800/- and Rs. 11,000/- per bottle. Conversely, the defendant manufactured an accessible Indian Made Foreign Liquor (IMFL) product titled “Whistler Barrel Aged Blended Malt Whiskey”, retailing at an average market price of Rs. 780/- to Rs. 1,500/-.
The plaintiff conceded that it held no statutory trademark registration within India and asserted that the mark “WHISTLER” was originally registered in the United Kingdom in 2005 and subsequently transferred to them in 2017, establishing long-standing worldwide priority. It was submitted that they also adopted the variant “THE WHISTLER” in 2016, securing numerous international registrations and global revenues alongside accolades like the World Liqueur Awards. The plaintiff argued that its immense transborder reputation had spilled over into the Indian market through distribution negotiations with major entities, domain name accessibility, and international industry publications.
Against Picadilly’s cross-suit, the plaintiff argued that there was no likelihood of confusion under Section 29(2)(b) of the Trade Marks Act, 1999, because premium consumers of imported single malts were highly discerning, and the vast price disparities, divergent trade channels, and packaging styles effectively distinguished the products.
The Court stated that in absence of registration in India, the plaintiff could not assert any statutory rights in the marks and could not allege infringement of the marks WHISTLER/THE WHISTLER. The Court noted that because the defendant held a valid Indian registration from 2008, the unregistered plaintiff was legally barred under Section 28(3) of the Act from maintaining a statutory action for trademark infringement. Hence, it was said that the plaintiff’s case rested solely on common law rights alleging passing off.
Referring to the landmark Supreme Court decision in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. (2018) 2 SCC 1, and the subsequent ruling in VIP Industries Ltd. v. Carlton Shoes Ltd. 2025 SCC OnLine Del 4620, the Court reiterated that India follows the territoriality principle rather than the universality doctrine. It was stated that a foreign claimant seeking to halt a domestic trader must prove that its global goodwill has actually percolated into the specific Indian jurisdiction, establishing a substantial customer or brand awareness baseline prior to the domestic user’s entry date.
The Court opined that the material on record did not disclose spillover of the plaintiff’s transborder reputation and goodwill in India prior to launch of defendant’s whiskey in 2018. It was found that even though the plaintiff claimed an exclusive distributorship in India since 1993, the same was not proved and the Court stated that as far as India was concerned, the defendants were the first user, holding that the action for passing off must fail. The Court also stated that the excise approvals in favour of the plaintiff came only in January 2026, which defeated the claim of spillover of goodwill and reputation into India prior to 2018. It was held that since one of the three essential ingredients of passing off, i.e., goodwill was not established, the plaintiff’s claim failed.
Further, the Court found that the plaintiff’s mark THE WHISTLER was nearly identical/deceptively similar to the defendant’s registered mark WHISTLER. It was said that since direct and surrogate advertising is strictly prohibited in the alcohol industry, manufacturers have extremely limited means of consumer engagement and the brand name’s distinctiveness becomes the singular element of brand identity. It was stated that allowing two identical phonetically spoken brands to co-exist across the same bars and vendors would make customer confusion inevitable.
The Court held that the mark WHISTLER being used by both parties was identical and so were the products, meaning that Section 29(2)(c) would be attracted and that confusion would be presumed under Section 29(3). It was said that denying an injunction to the defendant would dilute its hard-earned domestic statutory rights. The Plaintiff argued that it should at least be permitted to clear its existing imported Indian inventory, but the Court rejected this, ruling that the plaintiff filed the suit in December 2025, knowing that there was serious contest on its proprietary right to sell under the said marks. Yet, it chose to bring the goods after excise approvals, which was a calculated risk that no one could be blamed for.
Thus, the plaintiff and all others acting on its behalf were restrained from selling, advertising, offering for sale, or promoting its Irish whiskey using the trademarks “WHISTLER” or “THE WHISTLER” in India during the pendency of the suit and the Court dismissed the plaintiff’s application as it had failed to make out a prima facie case of passing off.
