INTRODUCTION
In a recent trademark dispute between competing whiskey brands, Madhya Pradesh High Court refused to pass a temporary injunction against the makers of ‘London Pride’ for the alleged trademark infringement of registered trademarks of ‘Blenders Pride’ & ‘Imperial Blue’. The Court held that there was no prima facie case of trademark infringement.
Before delving into the case, let’s brief ourselves with the concept of trademark, understand what deceptive similarity is, and what are the factors used to determine it. This blog explores the practical application of the “test of deceptive similarity” in the context of trademark infringement, using a recent case involving a trademark dispute between competing whiskey brands.
WHAT IS A TRADE MARK?
In today’s market driven economy where businesses are in intense competition, trade marks play a vital role. It helps in concentration of market power by means of advertisements and other strategies.
A trademark is basically a sign or symbol which identifies the goods and services of a given enterprise and distinguishes them from similar goods or services of competitors in the trade.
MEANING AND SCOPE OF DECEPTIVE SIMILARITY
When a person gets his trademark registered, he enjoys valuable rights to use the trademark in connection with the specified goods or services. In case, there would be any infringement upon his rights by using a mark identical or deceptively similar to his trademark, the owner can safeguard their mark through legal action for infringement and seek an injunction.
The concept of “deceptively similar” is enshrined under Section 2(1)(h) of the Trade Marks Act, 1999[1] as the degree to which two trademarks resemble each other in terms of their appearance, sound, connotion, or commercial impression.
CRITERIA FOR DETERMINATION OF DECEPTIVE SIMILARITY
The factors to determine the deceptive similarity between the two marks were established long ago by the Hon’ble Supreme Court in the matter of Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd.[2]. It ruled that the following factors should be taken into account in determining whether a mark is deceptive:-
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods
d) The similarity in the nature, character and performance of the goods of the rival traders
e) The class of purchasers who are likely to buy the goods bearing the marks they require, based on their level of education, intelligence, and a degree of care they are likely to exercise when purchasing or using the goods
f) The mode of purchasing the goods
g) Any other surrounding circumstances which may be relevant.
BLENDERS PRIDE v LONDON PRIDE: A COMPREHENSIVE LEGAL ANALYSIS
BACKGROUND OF THE CASE
In a trademark infringement suit titled Pernod Ricard India Private Limited & Anr. v. Karanveer Singh Chhabra[3] where the plaintiffs, Pernod Ricard India and Pernod Ricard USA LLC, manufactures and sells wines, liquors and spirits. They manufacture and sell whiskey in the name of ‘Blenders Pride’ and ‘Imperial Blue’. On the other hand, the defendants sell whiskey under the name ‘London Pride’.
The Plaintiff filed a trademark infringement suit against the Defendant and has accused the Defendant of infringing Intellectual Property Rights by the following actions:
- That, the term “Pride” is identified as the crucial and distinctive element in the ‘Blenders Pride’ mark, holding distinctive features and has acquired considerable goodwill and reputation in India. Additionally, they utilize another mark, ‘Imperial Blue,’ to sell whisky under the same in distinctive label, packaging and trade dress. The plaintiff alleges that the defendant is imitating all of these trademarks.
- That, the whiskey of defendant is being sold by putting label, using packaging, getup and trade dress deceptively similar to Imperial Blue. Thus, practicing misrepresentation and fraud to deceive the customers.
- That, the defendant is impinging upon the trade mark, goodwill and reputation of plaintiff’s trademarks and is deriving illegal benefits by doing the same, causing enormous monitory loss, injury and damage to plaintiffs.
ARGUMENTS ADVANCED BY PLAINTIFF AND RESPONDENT
The plaintiffs contended that London Pride whiskey exhibits deceptive similarity to the Blenders Pride trademark. Additionally, they utilize another mark, ‘Imperial Blue,’ to sell whiskey under the same in distinctive label, packaging and trade dress. The plaintiff alleged that the defendant is imitating all of these trademarks. Thus, practicing misrepresentation and fraud to deceive the customers, and deriving illegal benefits.
By the impugned order made by the trial Court, it was held that overall no similarity is found in defendant’s brand which can be said to be of such imitation of plaintiff’s trademarks. It was contented that the trial Court’s approach was both illegal and erroneous. That, the entire registered trademark should’ve been compared with defendant’s trademark without dissecting any of the trademarks to adjudicate visual, phonetic and structural similarity. It has, however, split up the word ‘Pride’ and has then made the comparison between the two marks. Splitting up of a registered word “TM’ is impermissible even according to Section 28(1) of the Trade Marks Act, 1999[4].
The defendant contented that they own the rights to ‘London Pride’ and hold registered copyright for the associated artistic work and other related intellectual properties. His trademark London Pride is entirely different in name, and composition from any of the earlier registered trademarks. The defendant has supported the impugned order, and submitted that a thorough examination of the plaintiffs’ trademarks in comparison to those of the defendant demonstrates that there is no discernible similarity that could lead to confusion in the mind of a consumer making a purchase.
DECISION AND FINDINGS
The Madhya Pradesh HC upheld the trial Court’s judgement that no similarity is found in the defendant’s mark which can be said to be such imitation of plaintiff’s trade mark which could deceive the consumers of plaintiff’s products. The Court held that findings arrived at by the Trial Court are just and legal, and refused to pass a temporary injunction against the makers of ‘London Pride’ for the alleged trademark infringement.
It is not disputed that the two names’ Blenders Pride and London Pride are in use in respect of the same description of goods, namely, whiskey. In Carew Phipson Ltd. v. Deejay Distilleries (P) Ltd.[5] the Bombay High Court stated that, “In my opinion, when a customer goes to a shop to buy the plaintiffs’ product, he will not ask for ‘Duet’ or ‘Gin N Lime’ or ‘Gin N Orange’ but he will ask for a ‘Blue Riband Gin N Lime’ or ‘Blue Riband Tango Gin N Orange’. Similarly, it is obvious that when a customer is going to buy the plaintiff’s product, he is definitely not going to ask for ‘Pride’, rather he will ask for a ‘Blenders Pride’, isn’t it?
It is also pertinent to note that the trade mark of the parties are in respect of ‘premium’ or ‘ultra premium’ whisky. The Division Bench of Justices Pranay Verma and S.A. Dharmadhikari observed that, “It can be safely presumed with a sufficient deal of certainty that the consumers of such products would be mostly literate and having reasonable intelligence to distinguish between the bottles of Blenders Pride/Imperial Blue and that of London Pride. Even if they are of average intelligence with imperfect recollection, they would be able to differentiate between the rival competing brands consumers of scotch whiskey are educated and discerning type. They are literate persons belonging to the affluent class of society.”
One of the factors to determine the deceptive similarity laid down in Cadila Health Care vs. Cadila Pharmaceuticals[6] case was to determine the class of purchasers who are likely to buy the goods, based on their level of education, intelligence, and a degree of care they are likely to exercise when purchasing or using the goods. The nature of the consumers who would be purchasing the goods has been held to be a relevant consideration also in J.R. Kapoor Vs. Microlx India[7], and Kaviraj Pandit Durga Dutt Sharma[8] in which it was held that the class of purchasers who are likely to buy the goods bearing the marks they require, their education, intelligence and the degree of care they are likely to exercise in purchasing and/or using the goods would be a relevant factor for deciding the question of deceptive similarity.
On plaintiffs’ contention that Pride is the most essential and distinctive component of their mark ‘Blenders Pride’ which they have been using since 1995 on the commonality of the word ‘Pride’ in Blenders Pride and London Pride bottles. With that context, the Court observed that Pride is ‘publici juris’ common to trade with 48 variants of trademarks in Class 32 and 33 with the word ‘Pride’. The plaintiff cannot be given exclusivity over the ‘PRIDE’ as a part of ‘Blenders Pride’ Mark. The Court reasoned that protection afforded under the Trademark Act for a registered trademark is only concerning a ‘complete trademark’ and not any single term. The plaintiffs could have got the word ‘Pride’ registered separately under the provisions of Section 15 of the Trade Marks Act, 1999[9]. However, Pride is a noun and is of common usage which even otherwise cannot be registered being a generic word. It cannot be treated as distinctive or as being capable of distinguishing the product of plaintiffs from that of any other manufacturer of whisky.
Further, it was held that examining the marks of plaintiffs with the mark of defendant as a whole, there is no visual, phonetic or structural similarity between any of the boxes or bottles of the plaintiffs with that of the boxes or bottles of the defendant.
Pernod Ricard India Pvt Ltd. has now filed a petition before the Hon’ble Supreme Court against the judgement passed by the Madhya Pradesh HC. During the court proceedings, both bottles before the court were displayed. On the shape of the bottle, CJI reminded of his Bombay High Court judgment on Vodka bottles, Gorbatschow Wodka Kg v. John Distelleries Ltd.[10]. The bench led by CJI opined that the defendant’s bottle had a different shape to that of the plaintiff. It was further said that the term “Pride” is a generic word.
On the aspect of deceptive similarity, the Counsel illustrated deceptive similarity cases where the disputes have arisen between various brand names, including Royal Stag-Indian Stag, Imperial Blue-Imperial Gold, Johnny Walker-Captain Walker, and others. The matter is now pending before the Hon’ble Supreme Court for further hearing. Stay tuned for more updates!
CONCLUSION
In cases of trademark disputes, the process of adjudicating such disputes varies from case to case based on the unique circumstances of the dispute at hand. There are various judicial dictums wherein courts have determined the deceptive similarity as per the facts and specific details inherent to each case.
The comparison between two marks involves a critical analysis on the degree of similarity between the marks and their respective products, and the likelihood of confusion it may cause in the mind of a consumer. To establish infringement concerning a registered trademark, it is essential to demonstrate that the infringing mark is either identical or deceptively similar to the registered mark. The use of the mark should have the potential to create deception or confusion.
To conclude, the ruling emphasizes the importance of considering the overall impression of the marks, the nature of consumers, and the distinctiveness of the elements in question when evaluating trademark disputes. By emphasizing the importance of an overall assessment, the ruling reinforces the concept that a comprehensive understanding of the trademarks and their impact on consumers is crucial in reaching a fair and just decision in trademark disputes.
[1] Trade Marks Act, 1999, S 2(1)(h)
[2] Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73
[3] Pernod Ricard India Private Limited & Anr. v. Karanveer Singh Chhabra, [2023]MISC. APPEAL No. 232 of 2021
[4] Trade Marks Act, 1999, S 28(1)
[5] Carew Phipson Ltd. v. Deejay Distilleries (P) Ltd. AIR 1994 Bom 231
[6] Cadila Health Care vs. Cadila Pharmaceuticals (2001) 5 SCC 73
[7] J.R. Kapoor Vs. Microlx India, (1994) Supp (3) SCC 215
[8] Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980
[9] Trade Marks Act, 1999, S 15
[10] Gorbatschow Wodka K.G. v. John Distilleries Limited, [2011] (47) PTC 100 (Bom)
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