16 July 2025 Trademark Laws in India >> Intellectual Property Rights  

In a significant ruling on July 16, 2025, the High Court of Judicature at Bombay upheld a previous judgment from December 22, 2011, effectively allowing Tilaknagar Industries Ltd. to continue its use of the 'MANSION HOUSE' and 'SAVOY CLUB' trademarks in India. The decision marks a pivotal moment in a protracted legal battle over trademark rights and passing off claims between UTO Nederland B.V. (and its subsidiary Allied Blenders and Distillers, collectively referred to as UTO/ABD) and Tilaknagar Industries Ltd..

The dispute, which dates back several decades, centers on the ownership and use of the popular alcoholic beverage trademarks. UTO, a Dutch company, claimed original registration of 'MANSION HOUSE' in the Netherlands in 1922 and 'SAVOY CLUB' in 1967, asserting worldwide registrations and an early Indian proprietorship for 'MANSION HOUSE' since 1983. Tilaknagar, an Indian alcoholic beverage manufacturer, entered into a licensing and manufacturing agreement with UTO in 1983, under which it began producing and selling products with these marks in India.

A key turning point in the case was the exchange of two letters on February 23, 1987. Following a dispute with the Scotch Whisky Association, UTO "ceded" its marks 'MANSION HOUSE' and 'SAVOY CLUB' to Tilaknagar. This ceding was conditional, with a stipulation that the marks would revert to UTO if it was unable to supply concentrates to Tilaknagar, and Tilaknagar promised to purchase specific quantities of concentrates annually. Tilaknagar eventually stopped purchasing concentrates from UTO after 1994 and developed its own.

UTO initiated a suit in 2009 (Commercial (IP) Suit No. 2/2009), seeking permanent injunctions against Tilaknagar for alleged copyright infringement and passing off of goods under the disputed marks, also claiming damages. UTO's primary argument was that Tilaknagar was merely a licensee and had breached the conditions of their agreement, leading to a reversion of trademark ownership to UTO.

The High Court's recent judgment focused on several critical aspects:

• Nature of the 1987 Ceding Letters: The court upheld the finding that the 1987 letters constituted an "assignment" or "transfer" of the trademarks to Tilaknagar, not merely a license. This rejected UTO's contention that Tilaknagar remained a licensee.
• Reversion of Title: While UTO argued that the trademarks should revert to them due to Tilaknagar's alleged breaches, the court found no "palpable error" in the learned Single Judge's initial decision to decline a temporary injunction. The court noted UTO's long-standing conduct of not objecting to Tilaknagar's use of the marks for many years, which was a significant factor. The court also highlighted the ambiguity surrounding the non-stipulation of price for concentrates as a factor in Tilaknagar's alleged breach.
• Public Policy and Market Confusion: The court emphasized the principle of "one mark, one source, and one proprietor" to avoid confusion among consumers. It was observed that allowing both parties to sell products under the same marks would lead to "utter confusion". Given that Tilaknagar has been consistently selling products under these marks in India since 1987, the balance of convenience was found to be in Tilaknagar's favor.
• Expedited Hearing: The court requested the Trial Judge to expedite the hearing of Commercial IP Suit No. 2/2009 to reach a definitive decision on the matter.

The court dismissed UTO's Appeal No. 66/2012, thereby upholding the dismissal of UTO's application for a temporary injunction. Furthermore, it set aside a recent interim order from February 7, 2025, which had granted ABD leave to introduce products under the 'MANSION HOUSE' trademark in West Bengal. Consequently, UTO and ABD are to maintain the current status of non-introduction of their products in India under the impugned marks 'MANSION HOUSE' and 'SAVOY CLUB' until the main suit is decided.

This ruling reinforces the long-standing market presence of Tilaknagar's products under these trademarks in India and underscores the importance of consistent enforcement of trademark rights.

  Transfer of Property Act, 1882  

  TRADE MARKS ACT, 1999