## Facts

- Skol Breweries (Skol) brewed and sold beer in India under several brands, including “KNOCK OUT.”
- “KNOCK OUT” beer had been in existence and in continuous use since 1986 through Skol’s predecessor.
- Skol claimed rights in registered “KNOCK OUT” marks for beer in Class 32, including registrations dated March 11, 1986 for “KNOCK OUT” label/logo variants; Skol’s title was traced through an assignment deed dated May 27, 2005.
- Skol relied on sales and advertising evidence (including figures for 1999–2004) to show that “KNOCK OUT” had substantial goodwill and reputation in India for beer.
- In or around 2004, Unisafe Technologies (Unisafe) began selling a self-defense pepper spray using the identical mark “KNOCK OUT” and used the domain name “www.knockoutspray.com.”
- Skol sent cease-and-desist communications; Unisafe did not stop the challenged branding.
- Skol filed a Delhi High Court suit (CS(OS) 472/2006) seeking permanent injunction and allied relief on theories including infringement, passing off, unfair competition, and dilution under the Trade Marks Act, 1999.
- Unisafe’s main defense was that “knock out” described the intended effect of pepper spray (incapacitating an attacker) and therefore amounted to descriptive use.
- Unisafe initially participated but later did not contest the case; the court proceeded on Skol’s evidence.
- Skol argued that Unisafe’s pepper-spray marketing (including themes tied to street harassment and self-defense) risked harming the beer mark’s image by creating an unwanted association with violence and disorder.

## Issues

1. Whether Unisafe’s use of “KNOCK OUT” for pepper spray—goods dissimilar to beer—constituted infringement by dilution under Section 29(4) of the Trade Marks Act, 1999.
2. Whether Skol proved that “KNOCK OUT” had the required reputation in India to obtain Section 29(4) protection beyond beer.
3. Whether Unisafe could avoid liability on the ground that “knock out” was a dictionary phrase used descriptively for pepper spray rather than as a badge of trade origin.
4. Whether Skol’s delay in approaching the court affected entitlement to permanent injunctive relief.

## Decision

- The court found that Skol’s “KNOCK OUT” mark for beer had acquired substantial reputation and distinctiveness in India.
- Applying Section 29(4), the court held that Unisafe’s adoption and use of the identical mark on pepper spray (dissimilar goods) was without due cause and was detrimental to the distinctive character and repute of Skol’s mark, including by tarnishing association.
- The court rejected Unisafe’s descriptiveness justification on the record before it, treating Unisafe’s use as trade mark use (brand identification) rather than mere descriptive reference to product effect.
- The court held that the time gap between Unisafe’s market entry and Skol’s suit did not bar injunctive relief for a continuing wrong.
- The court granted a permanent injunction restraining Unisafe from using “KNOCK OUT” (or deceptively similar marks) for pepper spray and related trade activities, including restraint relating to the “knockoutspray.com” domain name, along with ancillary relief consistent with the proof and the uncontested posture of the case.

## Legal Principles

- Section 29(4) of the Trade Marks Act, 1999 allows infringement relief for use on dissimilar goods where (i) the defendant uses an identical or similar mark, (ii) the registered mark has a reputation in India, and (iii) the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the registered mark.
- For Section 29(4), the focus is on reputation and unfair advantage/detriment (including tarnishment), rather than ordinary same-market confusion analysis.
- A dictionary expression can function as a protectable trade mark when evidence shows long, continuous, commercially significant use and acquired distinctiveness for the plaintiff’s goods.
- “Descriptive use” defenses do not succeed where the defendant uses the term as a prominent brand identifier instead of as a good-faith description of product characteristics.
- Delay, without clear acquiescence, does not normally defeat injunctive relief against ongoing infringement/dilution, especially after notice of the plaintiff’s asserted rights.

## Conclusion

In *Skol Breweries v. Unisafe Technologies*, the Delhi High Court permanently restrained Unisafe from branding pepper spray as “KNOCK OUT” and from using a matching domain name, holding that Skol’s long-used and reputed “KNOCK OUT” beer mark was entitled to dilution and tarnishment protection under Trade Marks Act Section 29(4) even though the parties’ goods were dissimilar and Unisafe claimed descriptive use.


Skol Breweries v. Unisafe Technologies, Case No. CS(OS) 472/2006 (2010)