The Delhi High Court, in the case of Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, CS (Comm) 94/2021, decided on 02.03.2022, denied the claim of trademark infringement of Pernod Ricard India Private Limited (hereinafter referred to as “the Plaintiff”) but held Frost Dalcon Distilleries Limited (hereinafter referred to as “the Defendant”) liable for passing off of its products as that of the Plaintiff’s and issued an interlocutory injunction in terms of the relief sought by the Plaintiff.
FACTS
The Plaintiff has two products which are the subject matter of this case, namely, “BLENDERS PRIDE” and “IMPERIAL BLUE”, both having registered trademarks under Class 34 and 33 of the Trademarks classification categories, respectively. The Plaintiff has been using the “BLENDERS PRIDE” mark since 1995 and the “IMPERIAL BLUE” mark since 1997.
On the other hand, the Defendant has been using the impugned “CASINOS PRIDE” mark since 02.08.2017, which was claimed to be confusingly similar to the Plaintiff’s mark.
It was also submitted that the products of the Plaintiff and the Defendant belong to the same segment i.e., Indian Made Foreign Liquor (“IMFL”), and there they have the same customer base and are available from the same outlets.
The Defendant applied for registration of the impugned mark “CASINOS PRIDE” mark under Class 33 but the Plaintiff filed an application opposing the same. With regards to the opposition, the two main allegations by the Plaintiff against the Defendant were as discussed below:
ISSUES BEFORE THE DELHI HIGH COURT
- Whether the Defendant’s impugned marks infringes the Plaintiff’s registered trademarks?
- Whether a case of passing off can be made against the Defendant?
CONTENTIONS OF THE PARTIES
The Plaintiff alleged that the Defendant deliberately infringed registered marks of the Plaintiff- “BLENDERS PRIDE” and “IMPERIAL BLUE”.
The Plaintiff submitted that in two cases, namely Austin Nichols & Co. v. Arvind Behl 2006 (32) PTC 133 (Del) and Rhizome Distilleries v. UOI 2016 (65) PTC 132 (Mad), the Delhi High Court (hereinafter referred to as “the Court”) and the Madras High Court, recognized both “BLENDERS PRIDE” and “IMPERIAL BLUE” as “well-known marks”, within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) and asserted that both marks are so closely associated with the Plaintiff that they have become source identifiers.
The Plaintiff brought it to the notice of the Court that in an effort to “come as close” to the Plaintiff’s mark, the Defendant also used a blue background in the packages in which Plaintiff was marketing its product which was a deliberate deviation from the mark which the Defendant sought to register (with a black background).
To establish the claim of infringement of “BLENDERS PRIDE”, the Plaintiff alleged that the word “PRIDE” in “BLENDERS PRIDE” is a distinctive feature and its use by the Defendant would infringe the Plaintiff’s reputation of the brand and cause the Plaintiff’s irreparable loss.
The Plaintiff asserted that there was no compulsion for anyone to use the word, “PRIDE” for their alcoholic beverage since it is not a descriptive term of alcoholic beverages. The Plaintiff further alleged that “CASINOS PRIDE” has no etymological meaning and the word “PRIDE” is used just to capitalize on the Plaintiff’s goodwill and reputation and deceive the consumers into mistaking the products or associating it to that of the Plaintiff. Additionally, the Plaintiff highlighted the phonetic similarity between that the expressions “BLENDERS PRIDE” and “CASINOS PRIDE”.
To establish the claim of infringement of “IMPERIAL BLUE”, the Plaintiff submitted that the product is sold in a distinctive trade dress which includes the name and other writings on the label in white letters on a blue background with a dome shaped insignia in gold and the name of the product written in two words, one below the other. The Plaintiff alleged that the Defendant copied these essential features in its “CASINOS PRIDE” label and affixed the sane on the bottle and the package of the bottle.
The Plaintiff further alleged that the Defendant’s use of identical bottle and the label affixed thereon infringes the Plaintiff‘s “IMPERIAL BLUE” 3D Mark which was separately registered by the Plaintiff. The Plaintiff also invoked Section 154 of the Act to claim exclusivity over the individual parts of the mark, such as the blue colour, golden dome etc. and submitted that its “IMPERIAL BLUE” registrations constitute a “series of marks” within Section 154 of the Act.
The Plaintiff alleged that the Defendant in order to confuse the consumers, copied the essential features of different trademarks of the Plaintiff. The Defendant copied “PRIDE” which is the distinctive part of the mark “BLENDERS PRIDE” and the blue colour, the golden dome, the general getup and trade dress of “IMPERIAL BLUE” marks to devise a label and packaging which would create confusion or infer an association between the rival products.
Finally, the Plaintiff claimed copyright infringement on the basis that the distinctive features of the trade dress of “IMPERIAL BLUE” IMFL constitutes an “artistic work” within the meaning of Section 2(c) 5 of the Copyright Act, 1957 and the Plaintiff’s impugned label and packaging constitutes “an infringing copy” within the meaning of Section 2(m) over which the Plaintiff is entitled to protection under Section 51 and the Defendant is liable to be injuncted against use of copyright.
On the contrary, The Defendant denied the allegation of trademark infringement and stated that the Defendant(s) had honestly and bona fide conceived and adopted the “CASINOS PRIDE” mark on 25th May, 2016 and used the same openly since 2nd August, 2017.
The Defendant placed reliance on Section 17 of the Act to contend that the Plaintiff cannot claim exclusivity in respect of part of its composite mark “BLENDERS PRIDE”. The Defendant also brought it to the notice of the Court that the Plaintiff tried to register the mark “PRIDE”, however failed to do so and alleged that this case was an oblique attempt by the Plaintiff to obtain exclusivity in respect of the “PRIDE” mark.
The Defendant further highlighted that the word “PRIDE” was being used by several manufacturers and has resultantly become common to the trade. Hence, “PRIDE” cannot be the dominant part of the Plaintiff’s “BLENDERS PRIDE” mark. The Defendant further alleged that “PRIDE” is publici juris as it is ‘generic, descriptive, laudatory or common’ and has not acquired a secondary meaning in the minds of the consuming public. Thus, the Defendant denied any infringement by the usage of “PRIDE” in “CASINOS PRIDE”.
The Defendant also denied any deceptive similarity between the marks and, also denied any case for idea infringement.
The Defendant denied the infringement of “IMPERIAL BLUE” mark and submitted that the manner in which the words “CASINOS PRIDE” are written on the label between diagonal golden lines, the shade of blue used on the labels and the arrangement of the features on the labels, are totally different from those used in the “IMPERIAL BLUE” label.
The Defendant asserted that the label, the getup, the packaging, the shape, the colour combination and the arrangement of features, on “CASINOS PRIDE” label are distinct and different from both the marks of the Plaintiff’s.
The Defendant further contended that there was no likelihood of confusion as the Defendant’s label has sufficient added matter. The Defendant also pointed out the difference in price between the products and their different consumer bases.
DECISION AND FINDINGS
The Court first dealt with the question of infringement of the Plaintiff’s “BLENDERS PRIDE” registered word mark. The Court held that the Plaintiff cannot claim exclusivity over the “PRIDE” part of the mark. Since “PRIDE” etymologically denotes the quality of the product, the Court stated that it is prima facie laudatory in nature.
The Court also noted that it was a word of common usage and does not distinguish the product of the Plaintiff from those of other manufacturers. The Court affirmed that “The right of the plaintiff, under Section 17(1) would be to the BLENDERS PRIDE mark as a whole. Any claim to exclusivity over the “PRIDE” part of the mark would be hit by Section 17(2)(b), as it is not distinctive in nature.”
The Court concluded that “PRIDE” is a plainly generic, commonplace and laudatory expression in the “BLENDERS PRIDE” mark and “the desire of anyone to use “PRIDE” as a part of the trade name of the product is perfectly understandable”.
The only exception is the dominant part of the mark. The Court used the ‘plain glance’ test to determine if “PRIDE” is a dominant part of the mark “BLENDERS PRIDE” by considering the perception of the customer of the goods, or the person availing the service. With respect to the “BLENDERS PRIDE” device mark of the plaintiff and the “CASINOS PRIDE” device mark of the defendant, the Court noted that upon a plain view of the marks, there is no similarity between the two.
The Court further applied the J.R. Kapoor test and stated that “once the common “PRIDE” part of the Plaintiff‘s and Defendant‘s mark is ignored, the remaining part of the marks are totally dissimilar. It is obvious that there is no phonetic, visual or other similarity, between the “BLENDERS” and “CASINOS” parts of the Plaintiffs and the Defendant‘s marks”.
For the abovementioned reasons, the Court held that no case of infringement of “BLENDERS PRIDE” mark could be made out.
The Court thereafter moved on to address the question of infringement of the “IMPERIAL BLUE” mark. The Court relied on the definition of “mark” in Section 2 (m) of the Act and stated that the Plaintiff was free to register each individual part of the design, like colour combination the golden dome etc. but they failed to do so.
All the Plaintiff had are registrations of the label in full, and the labelled bottle, as individual device marks. Therefore, no claim can be made with respect to any individual element of the registered marks in light of Section 17(2) of the Act.
The Court further noted that neither did these individual elements acquire any secondary meaning over a period of time, or become closely associated with the Plaintiff’s “IMPERIAL BLUE” whisky. The Court, upon prima facie consideration found no evidence of infringement.
Negating the contention of the Plaintiff that the Defendant copied the essential features of the Plaintiff‘s “IMPERIAL BLUE” label, the Court stated that “The most ‘essential’ feature in any label would be the name of the product”.
On the final issue of passing off, the Court highlighted the difference between tort of passing off and the tort of infringement and stated that it is not bound by the specific ingredients of the tort of infringement whilst considering the former claim.
The Court stated that to prove that the tort of passing off was committed, conclusive proof of mens rea, or mala fide, is not essential and existence of certain sufficient factors that would indicate that Defendant seeks to pass off its product as that of the Plaintiff is enough.
The Court examined all the similarities between the Defendant’s mark and the Plaintiff’s marks and agreed with the contention of Plaintiff alleging that the Defendant “ingeniously combined features of the “BLENDERS PRIDE” and “IMPERIAL BLUE” marks of the Plaintiff to create an overall label and packaging which, in the mind of a customer of average intelligence and imperfect recollection, who has earlier in point of time purchased the Plaintiff’s “BLENDERS PRIDE” and “IMPERIAL BLUE” beverages, and is aware thereof, is perilously likely to invite an inference of association between the Defendant‘s product and of the Plaintiff.”
The Court further relied on the judgment of Munday v. Carey, (1905) 22 RPC 273 and held that on account of the apparent dishonest intent of the Defendant, it is appropriate to give priority to the similarities between the labels over the dissimilarities.
The Court held that since the intent to deceive consumers to believe that “CASINOS PRIDE” is a cheaper product from that of the Plaintiff’s brewery is apparent, the Court would presume that the intention is successful.
As a result, the Court held the Defendant liable for passing off of its product as that of the Plaintiff.
AMLEGALS REMARKS
The Petitioners case on the infringement of “BLENDERS PRIDE” mark is based on their assertion that they have an exclusive right on “PRIDE” on the basis of it being a “dominant part” of the “BLENDERS PRIDE” mark.
The Court herein rightly applied Section 17 of the Act along with the anti-dissection rule to hold that the “BLENDERS PRIDE” has to be considered as a whole and denied any exclusivity on “PRIDE”. The Court based the foregoing observation on the reasoning that the consumer would not split it into components.
The Plaintiff had an even weaker case with respect to the infringement of “IMPERIOR BLUE” mark as there was no prima facie case as the names were different, labels distinguishable and no deceptive similarity could be seen.
The Court rightly noted that as the individual elements in the Plaintiff’s registered mark were not registered, they did not acquire any secondary meaning, nor could they be associated with the product. Therefore, no case of infringement could be made out.
The High Court reiterated the distinction between infringement and passing off, the former being statutory and the latter arising from common law. While the intent of the Defendant and the proof of actual damage were considered irrelevant to establish an allegation of passing off, the Court highlighted that deception or at the very least confusion is the sine qua non both for infringement and passing off.
The decision of this Court is in resonance with the legal framework pertaining to trademark, well established principles, and judicial precedents.
–Team AMLEGALS, assisted by Ms. Kirti Dhoke (Intern)
For any query or feedback, please feel free to get in touch with arushi.vyas@amlegals.com or mridusha.guha@amlegals.com.
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