Madras High Court Rejects Vinbros Plea To Sue Rivals Over 'Blue Grape' Trademark

The Madras High Court on 28 August rejected liquor manufacturer Vinbros & Co.'s plea to sue two rival entities, Chamundi Winery and Distillery and R.R. Wine Mart, before it for alleged infringement of its “Blue Grape” trademark.

A Bench of Justice K. Kumaresh Babu observed:

“The fact that the situs of the registration of Trade Marks is with the Trade Marks Registry at Chennai by itself would not be sufficient to give rise to cause of action to institute the suit in the Madras High Court, though it may be a factor to be taken into account, among the bundle of facts, for purposes of determining the situs of the cause of action.”

Vinbros, a Puducherry-based liquor manufacturer, claimed to be the registered proprietor of the trademark “Blue Grape”, used on its brandy products. It alleged that Chamundi Winery and Distillery, Bangalore, and R.R. Wine Mart, Puducherry, were using a deceptively similar “Blue Grape” mark on their brandy, amounting to infringement.

It sought leave to sue before the Madras High Court on the ground that the trademark was registered with the Trade Marks Registry at Chennai.

The Court relied on the Full Bench decision in Duro Flex Pvt. Ltd. v. Duroflex Sittings System (2014), which examined whether the situs of the Trade Marks Registry in Chennai would by itself give rise to a cause of action before the Madras High Court.

It also referred to the Supreme Court's ruling in Indian Performing Rights Society Ltd. v. Sanjay Dalia (2015), which clarified the scope of the “additional forum” created by Section 134 of the Trade Marks Act. The top court had observed:

“...cannot be interpreted in the manner that it has authorised the plaintiff to institute a suit at a different place other than the place where he is ordinarily residing or having principal office and incidentally where the cause of action wholly or in part has also arisen.”

Applying these principles, Justice Kumaresh Babu examined paragraph 75 of the plaint, where Vinbros had stated:

“As the Defendants' products under the infringing trademark are not currently sold in the city of Chennai, the plaintiff craves leave of this Hon'ble Court to sue the Defendants before this Hon'ble Court.”

The Bench also noted that this amounted to an admission that no part of the cause of action had arisen in Chennai and that only the situs of registration had been pleaded to seek leave. It held that the case was squarely covered by the Full Bench ruling in Duro Flex.

Accordingly, the High Court rejected the prayer for leave and directed the Registry to return the plaint for presentation before the appropriate Court.