Delhi High Court Bars Sale Of Irish Whiskey Brand 'The Whistler' In India In Trademark Dispute With Piccadily

The Delhi High Court has restrained Robert A. Merry and Co. Ltd., the Irish whiskey maker behind “The Whistler” brand, from selling its Irish whiskey in India.

The court found that the company failed to establish that its transborder goodwill and reputation had spilled over into India before Piccadily Agro Industries Ltd. launched its own “Whistler” whiskey in 2018.

Justice Jyoti Singh, deciding two cross-suits filed by the rival whiskey makers, dismissed Robert A. Merry's application for an injunction against Piccadily. At the same time, the Court granted an injunction in Piccadily's favour and restrained the Irish company from selling its Irish whiskey in India under the marks “The Whistler” and/or “Whistler” during the pendency of the suits.

The dispute arose after Piccadily Agro, the maker of the INDRI single malt, launched its “Whistler Barrel Aged Blended Malt Whiskey” in India in 2018. Robert A. Merry, which had been using the WHISTLER mark internationally since 2005 and holds registrations in the UK, EU, Japan, South Korea and several other jurisdictions, alleged that Piccadily was passing off its goods by riding on The Whistler's global reputation.

Piccadily had registered “Whistler” in India as early as April 2008. This was years before Robert A. Merry established any commercial presence for Whistler whiskey in India.

The central issue before the Court was whether Robert A. Merry's global goodwill and reputation had spilled over into India. Establishing such spillover was necessary to sustain a passing-off action under the territoriality principle affirmed by the Supreme Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries.

Robert A. Merry argued that its marks had been continuously used since 2005. It said established Indian distributors such as Radico Khaitan and Oberoi Spirits had approached it over the years. The company also pointed to a recent sale of stock worth about ₹75 lakh to HS Oberoi Spirits in Delhi. It further contended that because liquor advertising is restricted in India, the absence of mass advertising should not be held against it.

Piccadily countered that not a single bottle of The Whistler had entered India before August 2025. It said excise approvals for Delhi and Maharashtra were granted only in January 2026. It also pointed out that the lone invoice showing Indian sales was a pro forma invoice dated May 2025, long after Piccadily's commercial launch in 2018.

The court agreed with Piccadilly. Examining the material relied upon by Robert A. Merry, Justice Singh held, “The material on record does not disclose spillover of Plaintiff's transborder reputation and goodwill in India prior to launch of Defendant's whiskey in 2018.”

The court found that foreign trademark registrations, international sales, awards and online presence were insufficient to establish goodwill and reputation in India before Piccadily's launch.

Rejecting the argument that restrictions on liquor advertising lowered the evidentiary threshold, the Court observed that “despite ban on advertisements, there are several brands which have successfully established reputation in India through other means such as organising events, sponsorship, actual sales, etc.”

The court also found that the excise approvals and customs documents relied on by Robert A. Merry undermined its own case. “The excise approvals in favor of the Plaintiff came only in January, 2026 and this itself defeats any claim of spillover of goodwill and reputation into India prior to 2018,” it said.

Turning to Piccadilly's infringement claim, the Court found that the rival marks “THE WHISTLER” and “WHISTLER” were nearly identical. The marks were used for identical goods.

The Court rejected Robert A. Merry's contention that differences in price points and the sophistication of consumers would eliminate confusion. It noted that the Irish company had itself relied on the likelihood of confusion as the basis of its passing-off claim.

“A party cannot approbate and reprobate at the same time,” the Court observed.

The Court also took note of the realities of alcohol retail in India. In a regulated market where advertising is prohibited, products are commonly sold through a counter-based “hand-in-hand-out” model. In such a market, “the decision is largely based on oral articulation of the brand name,” making phonetic similarity particularly important.

Robert A. Merry had further argued that, as the first user of the WHISTLER mark internationally, it was entitled to protection in India. The Court rejected the contention. It held that after Toyota Jidosha, being first in the world market is irrelevant unless goodwill and reputation in India are established.

The injunction granted in Piccadily's favour will operate during the pendency of the suits.

The Court clarified that the findings were only prima facie observations made for deciding the interim applications. They will not influence the final adjudication of either suit..