M/S.Allied Blenders & Distillers ... vs M/S. Rock And Storm Distilleries ...
2015 Latest Caselaw 4120 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI


%                                    Date of Decision : May 22, 2015


+                             FAO (OS) 260/2015

       M/S.ALLIED BLENDERS & DISTILLERS
       PVT. LTD.                                       ..... Appellant

                   Represented by:   Mr.Rajiv Nayar, Sr.Advocate instructed
                                     by Mr.Pravin Anand, Mr.Sharwan
                                     Chopra and Ms.Abhilasha, Advocates


                                     versus


       M/S. ROCK AND STORM
       DISTILLERIES PVT. LTD.                          ...... Respondent

                   Represented by:   Mr.Ajay Sahni, Advocate with
                                     Mr.Rahul Rajput and Ms.Kanika Bajaj,
                                     Advocates

CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MS. JUSTICE PRATIBHA RANI

PRADEEP NANDRAJOG, J.

1. The appellant claims to be the registered proprietor of various trademarks, one of which is 'Officer‟s Choice'. Appellant also claims to be the registered proprietor of the label 'Officer‟s Choice Blue' for alcoholic beverages vide registration No.2159743 dated June 14, 2011. The label mark is as under:-

2. As per the appellant it is in the trade of alcohol since past over 30 years and alcohol sold by it under the trademark 'Officer‟s Choice' has the largest sales world wide. Appellant, after bottling the alcohol, packs it in a carton, and claims a distinctive colour scheme, design and layout of the carton. The front side of the carton is as under:-

3. The respondent sells alcohol under the trademark 'Dennis' and after bottling the alcohol in a bottle puts it in a carton, the front side whereof is as under:-

4. Appellant claims that the respondent has slavishly reproduced its original, unique and distinctive artistic work in the packaging material and thus has sued the respondent claiming infringement of its registered label mark as also its copyright in the artistic work in its carton and claims an injunction to restrain the respondent from selling alcohol in the carton adopted by the respondent or any other carton which is deceptively similar to the appellant's carton.

5. Admittedly, the appellant and the respondent sell whisky and claim that their whisky is a rich/rare blend of Indian grain spirit and scotch malt.

6. The suit along with an application seeking interim injunction being IA No.8887/2015 filed by the appellant came up for admission/hearing before the

learned Single Judge on April 29, 2015. The respondent entered appearance as a caveator and accepted summons issued in the suit. It opposed the grant of any ad-interim injunction.

7. Vide impugned order dated April 29, 2015, the learned Single Judge declined grant of an ad-interim injunction recording an opinion that apart from the colour of the two cartons, there was no similarity between the cartons to mislead an unsuspecting customer to mistake one for the other, opining further that a somewhat similar colour combination alone cannot lead to the plaintiff's claim being successful. The learned Single Judge has proceeded to prima- facie note the dissimilarities in the two cartons. The reasoning of the learned Single Judge is as under:-

"The Court would notice on comparing the two trade dresses that prima facie apart from colour there is no similarity between them such as to mislead an unsuspecting customer to mistake one for the other. The design and trade dress of the two products are entirely dissimilar. The plaintiff‟s product has the name „Officer‟s Choice‟ in golden colour written in the middle of the packaging in an angular fashion rising from left to right with the word „BLUE‟ written prominently in white. The name „Officer‟s Choice Blue‟ is placed prominently and is clearly visible from a distance. The defendant‟s product contains a crest design in golden colour at the top of the trade dress than the name DENNIS in an entirely different font style and font size printed horizontally as opposed to the slanting print of „Officer‟s Choice Blue‟ and thereafter a sketch of a head of a horse printed prominently in white colour. The latter sketch covers about half of the dress- dress space of the packaging. Latter is the most striking feature of the defendant‟s trade dress. The horse-head design by itself would be sufficient to distinguish one from the other to an unsuspecting buyer, unless the latter is so inebriated as to be unable to distinguish between cheese cake and castor oil. No similarity can be found in the manner and style of using the colour combination. The

trade dresses are widely dissimilar.

A deceptive similarity or an infringement is so reckoned when two products are so close, that a purchaser is likely to mistake one for the other. A somewhat similar colour combination alone cannot lead to the plaintiff‟s claim being successful. Furthermore, the plaintiff claims that their produce „Officer‟s Choice Blue‟ is amongst the most premium brands of alcoholic beverages. If that be, so the person purchasing the premium brand would belong to a class of consumers who would surely know and understand the difference between the two especially in view of the ex- facie distinction as delineated hereinabove. Even an unsuspecting buyer would be able to distinguish between the two because of the „white horse head‟ on the defendant‟s trade dress. There is no similarity between „Officer‟s Choice Blue‟ and DENNIS. The crest design in gold colour at the top of the trade dress of the defendant‟s defends their distinctive packaging. When products are sold by name it would not be a case of unsuspecting buyer purchasing DENNIS for „Officer‟s Choice Blue‟. The buyer of a premium brand of alcoholic beverage would clearly understand and identify the brand. In any case, the Court finds no similarity either in the phonetics of the trade name, the trade dress or the style of packaging between the plaintiff‟s and the defendant‟s products."

8. It is trite that while considering the issue concerning infringement or passing off, it is deception and likelihood of confusion which have to be considered and it is the cardinal principle that it is not the dissimilarities which are to be taken into consideration while deciding or determining the issue. It is the similarities which have to be considered because deception or confusion arises from similarities. In other words similarities are the source and the origin of deception or confusion.

9. Instructed by the legal principle aforesaid it needs to be noted that the appellant and the respondents sell their product by packaging it in cuboidal

cartons, with slight variation in the dimensions thereof. The carton of the appellant has a matte finish and that of the respondent has a glossy finish; the latter being more shining. Blue colour has been used predominantly by both. The appellant has adopted the Navy blue colour, but of two gradients thereof, and the overall getup is to give the backdrop a hue akin to what we see in the rays rising from behind the cloud shadowing the Sun. The aesthetics in the work is to so give different gradients of the Navy blue colour, in a manner that the lasting impression in the mind as caught by the eye is to remember having seen a carton with a Navy blue colour in different gradients with image of rays emitting. The respondent has adopted Navy blue and Admiral blue colour. Both shades being used alternatively, to have radiation effect in the background conveying the similar impression of rays emitting. Whereas this radiation effect appears only in the upper half of the carton of the appellant, it spreads on the entire carton of the respondent. Both have used white colour and golden colour. The logos of the two are in golden colour. That of the appellant has a graphic representation of a rank patch, which is a part of the uniform of an Armed Force Personnel (possibly to connect it to its brand name 'Officer'). The logo of the respondent has a graphic representation of the head of a horse. The logo of the appellant comprises two horses, one crown, two banners with the alphabets 'O' and 'C' in a distinct styling with a tagline in the logo 'Committed to excellence'.

10. Section 2(zb) of the Trademarks Act, 1999 reads as under:-

"2.(zb) "trademark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and -

(i) in relation to Chapter XII (other than section 107), a registered trademark or a mark used in relation to goods

or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and

(ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trademark of collective mark;"

11. A bare reading of the definition of trademark would evince that if represented graphically, a mark, which is capable of distinguishing the goods or services of one person from the other, would be a trademark, and would include a mark resulting from a combination of colours.

12. A gradient of the same colour would be a combination of colours and in the field of graphic designing is so recognized by graphic designers.

13. From the aforesaid it would emerge that the case of the appellant could be put in three alternative and perhaps conjunctive pleas. The first being the proprietary interest in the label protectable under the Trademark Act, 1999; with the distinctiveness being use of the Navy blue colour with different gradients used in alternative sections having a darker and a lighter shade, to give a visual representation of a radiation effect akin to rays of the Sun emerging from behind a cloud and the same being infringed by the respondent. The second could be a plea based on the common law of passing off. The third could be the infringement of the copyright in the artistic work in the trade dress. In this context it would be relevant to note that the trade dress is essentially the design of the label mark, registration whereof has been

obtained by the appellant.

14. The learned Single Judge has simply noted that apart from colour there is no similarity between the packaging material in which the respondent sells its whisky and the packaging material of the appellant, a finding of fact which appears to be the result of a lack of critical appreciation of the two trade dresses, features whereof have been noted by us hereinabove. Similarly, the view taken by the learned Single Judge that 'a somewhat similar colour combination alone cannot lead to the plaintiff‟s claim being successful' is again the result of a non-appreciation of the law on the subject.

15. But noting that the respondent had appeared before the learned Single Judge on a caveat and may perhaps have something to rebut; keeping in view that the suit is not a quia timet action, judicial discretion warranted the learned Single Judge to have granted a short time to the respondent to file a written statement and a response to the application seeking interim injunction and post the application seeking interim injunction for hearing at a short date.

16. The suit has been renotified, to be listed before the Joint Registrar, on September 24, 2015 without specifying a schedule for completion of pleadings. The application for interim injunction has been listed for hearing before Court on September 02, 2015.

17. Under the circumstances we dispose of the appeal by simply noting the facts and the law applicable so as to highlight, that since the respondent was on caveat the learned Single Judge ought to have fixed the application seeking interim injunction at a short date, giving a reasonable time to the respondent to file a response.

18. We direct that the respondent shall file the written statement as also the reply to the application seeking interim injunction with advance copy to learned counsel for the appellant within a week from today.

19. We prepone the hearing of IA No.8887/2015 and direct that it shall be listed for hearing on June 30, 2015 and grant permission to the appellant to file a replication/rejoinder at least three days prior to the date of hearing of the application for interim injunction.

20. No costs.

(PRADEEP NANDRAJOG) JUDGE

(PRATIBHA RANI) JUDGE MAY 22, 2015 mamta