Case Title: Robert A. Merry and Co. Ltd. Vs. Piccadily Agro Industries Ltd.
Case Number: CS(COMM) 1164/2025
Date of Judgment: 29 May 2026
Neutral Citation: 2026:DHC:4852
Court: High Court of Delhi at New Delhi
Hon'ble Judge: Jyoti Singh
In a trademark dispute concerning the mark “WHISTLER” for whisky products, the Delhi High Court decided rival interim injunction applications filed by Irish whisky manufacturer Robert A. Merry and Co. Ltd. and Indian liquor company Piccadily Agro Industries Ltd. The foreign company alleged passing off by Piccadily’s use of the mark “WHISTLER”, while Piccadily sought to restrain the foreign company from selling whisky in India under the marks “WHISTLER” and “THE WHISTLER”.
The court held that although the foreign company had international registrations and reputation, it failed to establish sufficient spillover of transborder goodwill and reputation in India prior to Piccadily’s adoption and use of the mark. The Court applied the territoriality principle laid down in Toyota Prius and found that global reputation alone was insufficient for a passing-off claim in India. The Court also noted that Piccadily was the registered proprietor of the mark “WHISTLER” in India and had been commercially selling whisky under the mark since 2018.
The Court dismissed the foreign company’s application for interim injunction and allowed Piccadily’s application, restraining Robert A. Merry and Co. Ltd. and its associates from selling whisky in India under the marks “WHISTLER”, “THE WHISTLER” or any deceptively similar mark during the pendency of the suit.
[Disclaimer: Readers are advised not treat this as a substitute for legal advise as it may contain errors in perception,interpretation and presentation of facts and law.]
===
The Whistler Whiskey War: When Global Fame Meets Indian Trademark Law
Introduction
In a world increasingly connected by trade, travel, and digital media, a foreign brand may become well known in a country even before it physically arrives there. But does that familiarity alone give the foreign brand legal protection against a domestic rival who has been selling under the same name for years? This is precisely the question that came before the High Court of Delhi in a landmark trademark dispute between an Irish whiskey maker and an Indian distillery, both claiming rights over the name "WHISTLER" for their respective whiskey products. The judgment, delivered on 29th May 2026, offers a rigorous and illuminating analysis of the law of passing off, trademark infringement, and the doctrine of trans border reputation and Territoriality of Goodwill as it applies in India. It is a judgment that every brand owner, domestic or foreign, seeking to enter or protect a position in the Indian market must carefully study.
Factual and Procedural Background
Robert A. Merry and Co. Ltd. is a Private Limited Company incorporated under Irish Company Law. It has been engaged in the manufacture, production, and trading of Irish whiskey, gin, and other alcohol-based drinks for more than two decades and describes itself as an industry leader. The company claims that the trademark WHISTLER was first registered on 12th May 2005 in the United Kingdom and was later assigned to its sister concern, Boann Distillery Limited, in 2015, before being transferred to the company itself in 2017. The mark THE WHISTLER was adopted in 2016 and the company obtained registrations for one or both marks in several countries including the Russian Federation, Chile, Japan, South Korea, Taiwan, Mexico, Brazil, and Nigeria. However, and this is a fact of central importance in the entire dispute, the company does not hold any trademark registration in India for either of the two marks WHISTLER or THE WHISTLER.
The company claims an impressive global market presence spanning Asian countries including China, India, and Japan, European countries, North and South America, the United Kingdom, and parts of Africa. It registered several domain names incorporating the words WHISTLER and THE WHISTLER. It also claims substantial global revenues from as early as 2011-12 reaching over Rs. 224 crore in 2023-24. The company won several awards including the World's Best Honey at the World Liqueur Awards in 2020 and the World's Best Grain at a prestigious whiskey event in 2022. A number of established Indian liquor distributors including Radico Khaitan, Oberoi Spirits, and Globus Spirits reportedly approached the company between 2014 and 2025 to market and sell its products in India.
Piccadily Agro Industries Ltd. is a listed Public Limited Company incorporated in 1994 and is described as India's premier independent producer and distributor of malt spirits. Its portfolio includes single malt whiskey, blended malt whiskies, rum, vodka, and other products. The company is also the maker of the celebrated Indian single malt brand INDRI, which became the first single malt brand in the world to cross sales of one lakh cases in 2023-24 and commands 35 percent of export market share from India in its category with presence in 27 countries. In 2007, Piccadily conceived the trademark WHISTLER and in April 2008 filed an application for registration. The company says the brand draws inspiration from the Whistler Warbler, a vibrant song bird indigenous to the Indian sub-continent known for its rich and melodic whistling songs. The mark was registered and the company spent nearly a decade developing the product before commercially launching the whiskey under the WHISTLER brand in 2018. The whiskey became a success upon launch and was relaunched in 2025 with a varied blend and new packaging. The product received excise approvals in more than 15 states including Delhi, Uttar Pradesh, Goa, and Rajasthan and is priced in the range of Rs. 980 to Rs. 1500 for a 750 ml pack.
In August 2025, Piccadily learned that the Irish company was attempting to market and sell its whiskey under the WHISTLER mark in India through M/s HS Oberoi Spirits. It issued objection letters to various state excise departments in September 2025 and sent a legal notice. The Irish company replied asserting its ownership of the mark globally and on the very same day, 27th October 2025, filed CS (COMM) 1164/2025 before the High Court of Delhi seeking a permanent injunction restraining Piccadily from selling its IMFL whiskey under the mark WHISTLER, alleging passing off. Piccadily in turn filed CS (COMM) 9/2026 seeking a permanent injunction against the Irish company for infringement of its registered trademark WHISTLER in India. Both parties also filed applications for ad interim injunctions. The court took up both applications together and disposed them by a single judgment.
The Dispute
The dispute in its simplest form is this. Two companies are using or seeking to use the trademark WHISTLER for whiskey in India. The Irish company registered the mark internationally first, in 2005, but has no Indian registration and has only recently attempted physical entry into the Indian market. The Indian company registered the mark in India in 2008, launched the product commercially in 2018, has been selling it successfully ever since, and possesses extensive documentary evidence of Indian sales, promotions, and recognition.
The Irish company sued for passing off, arguing that its global reputation and goodwill in the WHISTLER brand had spilled over into India, and that the Indian company was misrepresenting its product as originating from or being associated with the Irish company, thereby causing damage to its reputation and goodwill. The Irish company also resisted the infringement claim made by the Indian company, arguing that the products cater to entirely different consumer segments, that the Irish whiskey retails at Rs. 2800 to Rs. 11,000 per bottle while the Indian product retails at an average of Rs. 780 per bottle, that discerning whiskey consumers would never confuse the two, and that the Irish whiskey is an EU Geographical Indication protected product clearly labelled as Irish whiskey.
The Indian company on its part claimed infringement of its registered trademark WHISTLER by the Irish company and also claimed passing off. It argued that it has an unchallenged Indian registration from 2008, that it was first in the Indian market in 2018, that the Irish company had no presence or reputation in India when the Indian product was launched, and that the near-identical marks used for the same product category namely whiskey would inevitably cause confusion among consumers.
Reasoning and Analysis of the Court
The court began by addressing the legal framework applicable to both sets of claims, providing a thorough and scholarly analysis of the governing principles.
On the question of passing off, the court noted that in the absence of any trademark registration in India, the Irish company could only assert common law rights by establishing the three classic ingredients of a passing off action as described by Lord Oliver in Reckitt and Colman Products Ltd. v. Borden Inc and Ors, MANU/UKHL/0012/1990, namely goodwill, misrepresentation, and damage to goodwill. The Supreme Court of India had endorsed this classical trinity in Laxmikant V. Patel v. Chetanbhai Shah and Another, (2002) 3 SCC 65. Registration merely recognises rights pre-existing in common law and does not create new rights.
The critical question, however, was whether the Irish company could establish goodwill in India sufficient to sustain a passing off claim. This brought the court to the most important legal issue in the case, namely the territoriality principle versus the universality doctrine in trademark law.
The court reviewed the evolution of this legal position through a series of landmark Supreme Court decisions. In N.R. Dongre and Others v. Whirlpool Corporation and Another, (1996) 5 SCC 714, the Supreme Court had upheld an injunction against an Indian company using the mark WHIRLPOOL, holding that the American corporation had the necessary transborder reputation which had spilled into India through its advertising and worldwide reputation. In 2004, in Milmet Oftho Industries and Others v. Allergan Inc., (2004) 12 SCC 624, the Supreme Court applied the first-in-the-world-market test, holding that a mark first used in the world market is entitled to protection in India against a subsequent adopter, though this reasoning was applied specifically in the context of pharmaceutical products given their inherently international character where doctors and medical professionals regularly access global literature.
The decisive shift came with the Supreme Court's judgment in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited and Others, (2018) 2 SCC 1. In this case, the Supreme Court authoritatively moved away from the universality doctrine and firmly endorsed the territoriality principle. It held that the existence of goodwill and reputation must be shown to exist in India specifically, and that global goodwill and reputation without evidence of territorial goodwill and reputation in India will not be sufficient to succeed in a claim of passing off. The court in Toyota Jidosha reviewed the view of the UK Supreme Court in Starbucks (HK) Ltd. v. British Sky Broadcasting Group, (2015) 1 WLR 2628, which had held that mere reputation is not enough and that a claimant must show significant goodwill in the form of customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere. The yardstick under Toyota Jidosha for passing off became prior use in India. The Supreme Court further held that once goodwill is established in the jurisdiction, the claimant is not required to prove actual confusion and that likelihood of confusion would be a sufficient test.
The court also reviewed the Delhi High Court's own judgment in BPI Sports LLC v. Saurabh Gulati and Another, (2023) 3 HCC (Del) 164, which drew out the following principles from Toyota Jidosha: that the territoriality principle applies and not the universality doctrine; that mere reputation is not enough; that the claimant must have customers within India rather than merely people in India who are customers of the brand abroad; that the claimant must be present through its mark in the territorial jurisdiction even if a real market is not necessary; and that such presence may be shown by extensive advertisements circulated and seen in India.
The Division Bench's decision in VIP Industries Limited v. Carlton Shoes Limited and Another, 2025 SCC OnLine Del 4620, was also discussed at length. In that case the Division Bench reaffirmed that global goodwill and reputation alone is insufficient for passing off and that existence of goodwill and reputation must be demonstrated in India. The court in that case had granted injunction to Carlton against VIP after finding that Carlton had priority of user in India supported by sale invoices, revenue certificates, articles in high-profile Indian magazines, VAT registrations, and presence across multiple retail outlets in India, none of which VIP could match for the relevant period.
The Division Bench's very recent decision in Sumit Vijay and Another v. Major League Baseball Properties Inc. and Another, 2026 SCC OnLine Del 2, was also relied upon by the court. In that case the Division Bench reversed an order striking a mark from the Register, holding that acquisition of global goodwill and reputation is entirely irrelevant unless the global goodwill has percolated into India. It was held that the mere accessibility of a mark on websites in India is no evidence of transborder goodwill, that availability of goods bearing the mark online without actual purchases from India is not sufficient, and that publication of marks in magazines globally available on the internet cannot by itself establish transborder reputation without positive evidence of readership or subscription in India.
Applying all these principles to the facts before it, the court conducted a detailed document-by-document analysis of what the Irish company had filed to support its transborder reputation claim.
The trademark registrations in other countries were found to be entirely irrelevant since they did not confer any protection in India. Two of the three domain names of the Irish company were not even accessible in India. Even if they were, the Irish company had failed to show how many times and by whom in India those websites had been accessed. The financial statements filed did not pertain specifically to the WHISTLER product and showed no Indian sales. The sales invoices pertained to other countries except for one invoice showing a sale to M/s HS Oberoi Spirits in India, but this was a pro forma invoice dated 2nd May 2025, years after the Indian company had launched its product in 2018. Social media screenshots showed no engagement counts, viewership statistics, or liked post statistics specific to India. The copies of journals in which the Irish company's products were mentioned were all post-2021, and most pertained to foreign markets. The awards won had no connection to any activity or transaction in India. The emails relied upon mostly did not even mention the WHISTLER mark, and those that did were post-2021 and discussed only the prospect of the Irish company entering India rather than an established presence. The lone email mentioning WHISTLER in 2017 showed at best some confidential correspondence with a third party and could not establish spillover reputation. An article dated 27th October 2025 was created on the very day the Irish company filed its suit and was therefore self-serving. Excise approvals for Delhi and Maharashtra for the Irish company's whiskey were granted only in January 2026 and the Indian Customs Department documents for import of the Irish whiskey pertained to 2025, all of which actually undermined the claim that the Irish company's reputation had reached India before 2018.
The court therefore found that the Irish company had prima facie failed to demonstrate spillover of transborder reputation and goodwill in India prior to the Indian company's commercial launch of Whistler whiskey in 2018. The court noted that it is not enough to show that people in India were customers of the Irish company when they travelled abroad, but what is required is to demonstrate the presence of the mark within Indian boundaries.
The court also rejected the argument that the advertising ban on liquor in India should excuse the Irish company from producing evidence of spillover reputation. While acknowledging that liquor is a regulated industry where direct advertisement is restricted, the court pointed out that several brands have successfully established reputation in India through other means such as events, sponsorships, actual sales, and trade channels. None of the documents established spillover reputation prior to 2018.
The court found further that the Irish company had not applied for trademark registration in India even for its THE WHISTLER mark, and that its actual physical products had not entered the Indian market before 2025. This itself was described as self-destructive of the claim of goodwill and reputation preceding the Indian company's 2018 launch.
Having dismissed the Irish company's passing off claim, the court turned to the Indian company's infringement claim. Here the legal position was clearer. The Indian company held an unchallenged registration in the mark WHISTLER in India in Class 33 from 3rd April 2008. The Irish company had no Indian registration. Under Section 28 of the Trade Marks Act, 1999, the registered proprietor has the exclusive right to use the mark in relation to the goods for which it is registered. Under Section 29(2)(b), a registered trademark is infringed when a person, not being a registered proprietor or permitted user, uses in the course of trade a mark which because of its similarity to the registered mark and identity or similarity of goods covered by such trademark is likely to cause confusion. Under Section 29(2)(c) read with Section 29(3), when the marks are identical and the goods are identical, confusion is presumed.
The court found that the marks THE WHISTLER and WHISTLER are structurally, visually, and phonetically nearly identical or deceptively similar. The rival products are both whiskey. The court referred to the Supreme Court's decision in Renaissance Hotel Holdings Inc. v. B. Vijaya Sai and Others, (2022) 5 SCC 1, where the addition of the word SAI to RENAISSANCE did not save the mark and the court found the marks RENAISSANCE and SAI RENAISSANCE to be so similar as to attract Section 29(2)(c) read with 29(3). Applying the same principle, adding or removing the word THE did not create any meaningful distinction between WHISTLER and THE WHISTLER.
The court also rejected the Irish company's defence of no confusion owing to price difference and discerning consumers. This defence was found to be self-contradictory because the Irish company itself had built its passing off claim on inevitable confusion arising from the similarity of marks and products. A party cannot approbate and reprobate, that is, a party cannot take inconsistent positions at the same time to suit its own convenience. Furthermore, in the liquor industry where advertising is strictly prohibited, the brand name becomes the singular element of consumer recall and purchase decisions at liquor counters are often made orally. Under these circumstances, even discerning consumers are likely to be confused when the marks are near identical.
The court specifically addressed the argument about the different types of whiskey, noting that the Irish company had itself pleaded that rival marks and products being similar would cause confusion, and could not then turn around in the infringement case and argue that the products are so different that no confusion is possible. On the infringement claim, the only available defences for the Irish company were registration in India, prior use in India under Section 34 of the Trade Marks Act 1999, or spillover of transborder reputation. The Irish company had failed on all three counts.
On balance of convenience, the court found that the Indian company had been commercially selling its Whistler whiskey since 2018, had built substantial goodwill and reputation in India, and would suffer irreparable harm if the Irish company were allowed to enter the Indian market under an identical or near-identical mark. The request of the Irish company for interim relief permitting it to sell its existing stock was also refused, because on the date the Irish company filed its suit in December 2025, it did not yet possess the requisite excise approvals to sell the goods in India, which were granted only in January 2026. This was a calculated risk taken by the Irish company and no equity could be claimed on account of it.
Final Decision of the Court
The court allowed IA 414/2026 filed by the Indian company and granted an ad interim injunction restraining the Irish company and all those acting on its behalf from selling Irish whiskey in India under the marks THE WHISTLER and/or WHISTLER and/or any other mark deceptively similar to the Indian company's registered mark WHISTLER during the pendency of the suit.IA 26995/2025 filed by the Irish company was dismissed as it had failed to make out a prima facie case of passing off.
Point of Law Settled
The judgment makes a significant contribution to Indian trademark law by firmly applying and extending the territoriality principle laid down in Toyota Jidosha to the alcohol and liquor industry, rejecting any industry-specific exception. The court settled that in a passing off action by a foreign brand in India, global goodwill and reputation without actual percolation into India is insufficient. The foreign brand must demonstrate that its mark was present within Indian territorial jurisdiction through sales, advertisements, events, trade channels, or other means that would have made the mark known to the relevant consuming public in India before the domestic user began occupying the space. The mere accessibility of websites, availability of goods online without proof of actual Indian purchases, publication in internationally circulated magazines without proof of Indian readership, and foreign trade awards without Indian connection do not amount to spillover of transborder reputation into India. Furthermore, the court settled that in a claim for trademark infringement by a registered proprietor under Section 29(2)(c) read with 29(3) of the Trade Marks Act, 1999, where marks are identical and goods are identical, confusion is presumed, and price difference or product quality distinction does not constitute a defence, particularly in the alcohol industry where advertising is prohibited and oral articulation of brand names plays a decisive role in consumer purchases. It was also clarified that a party alleging confusion in its own passing off suit cannot simultaneously deny confusion in defending an infringement claim by the opposite party, as such inconsistency amounts to approbating and reprobating.
Case Details
Title: Robert A. Merry and Co. Ltd. v. Piccadily Agro Industries Ltd. and connected matter
Date of Order: 29th May 2026
Case Numbers: CS(COMM) 1164/2025 and CS(COMM) 9/2026
Neutral Citation: 2026:DHC:4852
Name of Court: High Court of Delhi at New Delhi
Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh
Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Suggested SEO Titles for Legal Journal:
- Whistler Whiskey Trademark Battle: Delhi High Court Rules on Transborder Reputation and Passing Off in India
- Global Brand vs Indian Registered Trademark: Lessons from the WHISTLER Whiskey Case 2026
- Transborder Reputation in India: Why Foreign Brands Cannot Rely on Global Fame Alone
- Delhi High Court 2026: Territoriality Principle Prevails Over Global Reputation in Whiskey Trademark War
- Trademark Infringement vs Passing Off in Liquor Industry: The WHISTLER Case Explained
- When Does a Foreign Trademark Get Protection in India Without Registration? The WHISTLER Judgment
- WHISTLER Whiskey Case 2026: Key Lessons on Trademark Rights for Foreign Brands Entering India
- Irish Whiskey Meets Indian Whiskey in Delhi Court: Who Owns the Name WHISTLER in India?
SEO Tags:
TrademarkInfringement, PassingOff, TransborderReputation, TerritorialityPrinciple, WHISTLERWhiskey, DelhiHighCourt2026, IndianTrademarkLaw, TradeMarksAct1999, Section29TradeMarksAct, Section34TradeMarksAct, GlobalBrandProtection, ForeignTrademark, IrishWhiskey, PiccadilyAgro, RobertAMerry, WHISTLERTrademark, LiquorTrademarkIndia, ToyotaJidosha, TransborderGoodwill, PrimeFaciePassing Off, IntellectualPropertyIndia, IPLawIndia, BrandProtectionIndia, TrademarkRegistrationIndia, WhiskeyBrand, IMFLWhiskey, AdvocateAjayAmitabhSuman, IPAdjutor
Brief Headnote:
The Irish whiskey manufacturer Robert A. Merry and Co. Ltd., owner of the WHISTLER and THE WHISTLER marks internationally since 2005 and 2016 respectively but without any Indian trademark registration, filed suit for passing off against Indian company Piccadily Agro Industries Ltd., which held a registered trademark in WHISTLER in India from 2008 and had commercially launched the whiskey product in 2018. Piccadily in turn sued for infringement of its registered Indian trademark. The High Court of Delhi, on competing applications for ad interim injunction, dismissed the Irish company's passing off application holding that it had failed to establish prima facie spillover of transborder reputation and goodwill in India prior to the Indian company's 2018 launch, applying the territoriality principle authoritatively laid down in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Limited, (2018) 2 SCC 1. The court allowed the Indian company's infringement application restraining the Irish company from selling its whiskey under THE WHISTLER and WHISTLER marks in India, holding that the marks were nearly identical and the goods identical, attracting presumption of confusion under Section 29(2)(c) read with Section 29(3) of the Trade Marks Act, 1999, and that the Irish company's price-difference and discerning consumer defence was inconsistent with its own passing off claim and therefore untenable.
