The rise in trademark infringements and use of similar names has become a usual state of affairs in trademark system in India. To set out a procedure once and for all, the judgment passed by the Bombay High Court in the case of Meher Distilleries Pvt. Ltd. v. SG Worldwide Inc. And Radico Khaitan Ltd. Commercial Appeal (L) No. 10963 OF 2021 on 23.08.2021 acts as a landmark judgment.
Meher Distilleries (hereinafter referred to as “the Appellant”) is a producer and dealer of alcoholic beverages. The Appellant is a registered proprietor of the trademark ‘THE ASWA‘ for the class of alcoholic beverages under the trademark class 33. Radico Khaitan (hereinafter referred to as the Respondent No. 2) launched a single malt whiskey, using the mark ‘ASĀVA’ in the same class of trademarks.
The Appellant filed a commercial suit for trademark infringement against the Respondent No. 2 to restrain them from using ASĀVA. However, it was held that the words ‘THE ASWA’ and ‘ASĀVA’ are not visually, phonetically or structurally similar and hence, the Interim Application was dismissed.
The Appellant later on came to know that the Respondent No. 2 was manufacturing and exporting the same product as he was i.e. a single malt whiskey under the name ASĀVA to SG Worldwide United States, the Respondent No. 1 herein and filed an appeal in the Bombay High Court (hereinafter referred to as “the Court”).
This appeal is filed under Section 13 of the Commercial Courts Act, 2015 challenging the Impugned Order and praying for a restraint order against the Respondent No. 1 and 2 (hereinafter collectively referred to as “the Respondents”).
ISSUE BEFORE THE BOMBAY HIGH COURT
Whether the word marks ‘THE ASWA” and “ASĀVA”are identical or similar to each other, thereby leading to trademark infringement?
CONTENTIONS OF THE PARTIES
The Appellant contended that the trademark used by the Respondents is identical to the Appellant’s trademark. Furthermore, the Appellant stated that as both the parties, i.e.the Appellant and the Respondents sell similar products, it might create confusion among the general public that the product is sold by the same company. In the light of the same, the Appellant further contended that it is likely to create an inference that the trademark used by the Respondents is associated with Appellant’s trademark.
The Appellant contended that the action of the Respondents in using the mark ASĀVA, which is identical or deceptively similar (especially phonetically) to the Appellant’s trademark, violates the Appellant’s rights acquired by way of registration under the Trademark Act, 1999 (hereinafter, the Act) and therefore, Section 29 of the Act shall be rightly applicable herein.
On the other hand, the Respondent stated that ASĀVA is a Sanskrit word that means an alcoholic beverage and the word‘Asav’ is the Hindi translation for ‘wine’. The Respondent contended that the Respondent’s mark is RAMPUR ASĀVA, where ASĀVA acts as a sub-brand to Rampur Range. It was stated that the said mark was adopted in bona fide nature and the trademark used by the Respondent is not deceptively similar to that of the Appellant.
It was further contended that the Applicant has tried to suppress the Respondent’s application for registration of mark ASĀVA before filing the suit.
The Respondent placed reliance on the judgment in the case of Ultra Tech Cement Ltd. v. Alaknanda Cement Pvt. Ltd, 2011(5) BomCR 588.
DECISION AND FINDINGS
The Court examined the design of the bottles of both the companies and observed that even though the trademark used is ‘RAMPUR ASĀVA’, there is no clarity as to whether ASĀVA is a sub-brand of RAMPUR malt whiskey or it is a description of a kind that falls under Section 30(2)(a) of the Act. However, it was noted that Section 30(2)(a) had no relevance here.
The Court further stated that the primary parameter for using a word is to determine the process or quality of a product as “it ought to have been in a language that the average consumer understands”.
The Court held that the word ‘ASĀVA’is used for the identification of the product and not for the description and thus, Section 2(1)(zb) of the Act is applicable.
“The test to be applied is not the infringer’s terminology but whether the use of a mark is to distinguish or it is capable of distinguishing the goods or services of a person or used for the “purpose of indicating” to fall under Section 2(1)(zb)”.
The Court observed that using the words RAMPUR and ASĀVA together constitutes a single trademark and it is necessary to examine, if these words have their own identification process or not.
The Court placed reliance on various judgments to reach to the conclusion wherein following decisions were taken into consideration:
In the case of Aristoc Ltd. v. Rysta Ltd., (1943) 60 RPC 87, it was held that the identification of the sounds of two words to determine whether they resemble each other or not depends on the first impression, when one listens it for the first time. In such cases of phonetically similar marks, it has to be examined that if a person already knows one of the words and when he hears the other, is he likely to get confused or deceived by it or not.
In the case of Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449, it was held that even if the words are different, if there is a possibility that a person of average intelligence might get deceived because of similarity between the two words, then such words will be considered similar.
In the case of Encore Electronics Ltd. v. Anchor Electricals & Electronics Pvt. Ltd., 2007 SCC Online Bom 147, the Court held that if the pronunciation of two words is similar in India, then these words will be considered similar, even if they are pronounced different in their country of origin.
Thus, the Court concluded that there is a similarity between the words “THE ASWA” and “ASĀVA” and that it can deceive or confuse an average consumer. The Court stated that because a fact was brought in defence, it cannot be inferred that there was any suppression by the appellant.
The Court set aside the decision of learned Single Judge and held that, there is a structural, phonetic and visual similarity between the words ASWA and ASĀVA and whether they are identical or not is to be determined by the tests laid down by this Court.
Therefore, the Court allowed the appeal and set aside the Impugned Order.
The Court has delivered a salient judgment in relation to the identification and description of a trademark and has settled numerous questions regarding the similarity and identification of two different trademarks which are similar in nature.
The Court has determined substantial processes for identification of similarities between the marks which will prevent the companies from misusing the goodwill of other companies and also provide extra protection to the companies acquiring the trademark.
Disputes pertaining to phonetic similarity between two marks is a relevant factor that needs to be considered while dealing with trademark infringement cases. Such similarity can often end up confusing the consumers and thereby affecting the goodwill of the companies. Such intricacies should be duly noted and taken care of, while observing trademark infringement cases.
– Team AMLEGALS, assisted by Mr. Mandeep Singh and Ms. Mansi Jain (Interns)
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