CASE STUDY OF WHITE HORSE DISTILLERS V.

UPPER DOAB
The claim was brought to prevent the defendants from using the mark Flying horse, which
was argued to be confusingly similar to the plaintiff's mark White Horse. As a result, the
Court was presented with a case alleging infringement and passing off of the plaintiff's
products. Furthermore, the defendants were temporarily barred from using the mark Flying
Horse, or any other identical or deceptively similar mark, in connection with any alcoholic
beverage. They were also forbidden from utilizing the device of the horse.
FACTS
On July 20, 1943, the plaintiff obtained registration of the mark 'white horse' coupled with the
device of a horse on a white background. The mark, as well as the device mark, has remained
in use till now. The defendants, on the other hand, only began marketing whisky under the
moniker Flying horse in 1967, coupled with a flying horse device. The plaintiff asserted that
the defendants are infringing on the plaintiff's mark by employing the said mark in
conjunction with the device mark. They've also been accused of passing off the plaintiff's
products.
It was discovered that the two marks were not identical and that they differed in various
ways. The only thing that the two trademarks had in common was the usage of the
word Horse; the other aspects of the two trademarks, such as White and flying, were not. The
device of the two marks differs as well, with the plaintiff's photos depicting a white horse on
a black backdrop and the defendant's picture depicting a flying horse against a standing horse.
The defendants used a completely different colour scheme for their label than the plaintiffs.
The plaintiff's label had the words "fine old scotch whisky" printed on it, whereas the
defendant's label had the phrases "product of India" written on it. These distinctions urge us
to consider the contrasts between the two marks.
ISSUE
1. Is the defendant accountable for both the infringement and the passing off of the plaintiffs'
goods?
2. Should the plaintiff's infringement suit be allowed to proceed?
PLAINTIFF’S CONTENTION
The plaintiff claims that the defendants infringed on their trademarks by utilizing the mark
horse and the device of a horse in a flying position. They also address the fact that the
defendant's registration was denied by the Registry due to the plaintiff's resistance. Mr.
Anand, the plaintiff's attorney, says that the Trademark Registry orders operate in favor of the
plaintiff and enhance their case on the issue of whether the defendants infringed on the
plaintiff’s trademark. According to the plaintiff's counsel, the infringement action sought by
the plaintiff is a statutory entitlement of the plaintiff, and the delay is no basis to reject the
requested remedy.
DEFENDANT’S CONTENTION
The defendant claims that they have the right to file a claim that the mark horse has lost its
distinctiveness in connection with alcoholic beverages, and it is up to the Court to judge on
this. They further claim that the Trademark Registry's objection was waived and that the
mark horse has lost its distinctiveness in Class 33. As a result, anybody can use the term
Horse in conjunction with any other word for alcoholic beverages.
HELD
The Court ruled that the plaintiff's failure to file a case of infringement or passing off against
the defendant to prevent them from using the disputed mark is a reason why the plaintiff's
request for a permanent injunction should be denied. The plaintiff was found to be ineligible
for a temporary injunction, and the application for relief was dismissed. The previous interim
injunction was likewise revoked.