Delhi High Court
Pernod Ricard India Private ... vs Frost Falcon Distilleries ... on 2 March, 2022
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 24th August, 2021
Pronounced on:2nd March, 2022
+ IA 2821/2021 in CS (COMM) 94/2021
PERNOD RICARD INDIA PRIVATE LIMITED ..... Plaintiff
Through: Mr. Hemant Singh, Ms. Mamta
Rani Jha, Mr. Waseem Shuaib Ahmed and
Mr.Abhijeet Rastogi, Advs.
versus
FROST FALCON DISTILLERIES LIMITED ... Defendant
Through: Mr. Sachin Datta, Sr. Adv. with
Mr. Sidhartha Das, Mr. Gajanand Kirodiwal
and Ms.Prity Sharma, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
% JUDGMENT
02.03.2022
1. This judgment disposes of IA 2821/2021, preferred by the
plaintiff, seeking interim injunction against the defendant.
Facts
2. The plaintiff alleges that the defendant's mark ―CASINOS
PRIDE‖, the label of the defendant, the design of the bottle in which
the defendant sells its product and the package in which the bottle is
packed all infringe the plaintiff's registered trademarks.
3. The allegedly infringing product of the defendant, and the
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package in which it is packed and sold, are the following:
Product Package
4. Two products of the plaintiff are subject matter of the present
proceedings. Both are IMFL. They are ―BLENDERS PRIDE‖ and
―IMPERIAL BLUE‖. Admittedly, the products of the plaintiff and the
defendant belong to the same segment i.e. Indian Made Foreign
Miquor (IMFL) and, therefore, cater to the same customer base. They
are also, therefore, available from the same outlets.
5. The plaintiff also alleges that the defendant is seeking to pass
off its goods as those of the plaintiff or as associated with the plaintiff
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and its business.
6. The marks that the plaintiff asserts, in this plaint, may be
referred to as (i) the BLENDERS PRIDE marks, and (ii) the
IMPERIAL BLUE marks, for convenience.
7. Specifically, the registered trade marks of the plaintiff, which
the defendant is alleged to have infringed are the following:
(i) BLENDERS PRIDE mark - the word mark ―BLENDERS
PRIDE‖ registered on 25th March, 1994 and valid till 25th
March, 2024, under Class 34 (Wines, Spirits and Liqueurs) and
(ii) IMPERIAL BLUE marks:
Trade Mark Registration Class & Valid till
Sl. No. & Date Goods
No. Descrip-
tion
1 1682732 33 01.05.2008
01.05.2008
Whisky
2 2471714 33 04.02.2023
04.02.2013 Alcoholic
beverages
including
whiskies,
spirits,
brandies,
aperitifs,
cider and
liquerurs'
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3 3327621 33 03.08.2026
03.08.2016 Alcoholic
beverages
(except
beers)
4 3296387 33 28.06.2026
28.06.2016 Alcoholic
beverages
(except
beers)
5 4493973 33 30.04.2030
30.04.2020 Alcoholic
beverages
(except
beers)
6 3263961 33 19.05.2026
19.05.2016 Alcoholic
beverages
(except
beers)
8. The plaintiff asserts that it has been using the ―BLENDERS
PRIDE‖ mark since 1995 and the ―IMPERIAL BLUE‖ marks since
1997. As against this, it is an admitted position that the defendant is
using the impugned ―CASINOS PRIDE‖ mark only since 2 nd August,
2017. Priority of user of the plaintiff is not, therefore, an issue in
controversy in the present case.
9. The defendant also applied for registration of the following
mark under Class 33:
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Registration, as sought by the defendant, has not been granted, as the
defendant's application has been opposed by the plaintiff.
10. One of the protestations of the plaintiff, in the present plaint, is
that the package, in which the defendant is marketing its product, uses
a blue background. This, according to the plaintiff, is a deliberate
departure from the mark which the defendant sought to register (which
has a black background), so as to achieve proximity between the
defendant's mark and the plaintiff's registered trademarks. The
defendant, thus alleges the plaintiff, wants to ―come as close‖ to the
plaintiff's mark as possible.
11. According to the plaintiff, the mark ―BLENDERS PRIDE‖ was
coined and adopted by the plaintiff's predecessors in 1973. It is
claimed that the mark was initially registered in favour of Seagram,
Canada in the same year, whereafter it passed various hands till, under
Deed of Assignment dated 27th June, 2018, the plaintiff succeeded the
proprietorship of the mark. In India, it is claimed that, IMFL has been
sold by the plaintiff's predecessors since 1995.
12. The plaintiff also claims to have succeeded to proprietorship
over the ―IMPERIAL BLUE‖ mark vide the Assignment Deed dated
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27th June, 2018 already cited supra. IMFL (Whisky), it is claimed, is
being sold in India under the ―IMPERIAL BLUE‖ mark since 1997.
13. The defendant has not disputed the proprietorship of the
plaintiff over the marks that it seeks to assert.
14. As is customary in such cases, the plaintiff has averred,
positively, that the ―BLENDERS PRIDE‖ and ―IMPERIAL BLUE‖
marks have, over a period of time and consequent on continuous and
uninterrupted use, become indelibly associated with the plaintiff and
have, thus, become source identifiers. Both ―BLENDERS PRIDE‖ as
well as ―IMPERIAL BLUE‖ stand recognised as ―well-known
marks‖, within the meaning of Section 2(1)(zg)1 of the Trade Marks
Act, 1999 (―the Trade Marks Act‖, hereinafter) by this Court vide its
decisions in Austin Nichols & Co. v. Arvind Behl2 (in respect of
―BLENDERS PRIDE‖) and by the High Court of Madras in Rhizome
Distilleries v. UOI3 (in respect of ―IMPERIAL BLUE‖). There can,
therefore, be no gainsaying the reputation of the plaintiff, to which this
Court, and the High Court of Madras, have already accorded their
judicial imprimatur.
15. The plaintiff has provided its sales figures and the expenses
incurred by it on promotions and advertisements; however, as the
plaintiff's marks stand recognized, judicially, as ―well-known marks‖,
(zg) ―well known mark‖, in relation to any goods or services, means a mark which has become so to the
substantial segment of the public which uses such goods or receives such services that the use of such mark in
relation to other goods or services would be likely to be taken as indicating a connection in the course of trade
or rendering of services between those goods or services and a person using the mark in relation to the first-
mentioned goods or services.
2006 (32) PTC 133 (Del)
2016 (65) PTC 132 (Mad)
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the reputation and goodwill of the plaintiff stand crystallized and,
therefore, there is no need to refer to those figures.
Rival contentions
16. I have heard Mr. Hemant Singh on behalf of the plaintiff and,
initially, Mr. Chander Lall and, later, Mr. Sachin Datta, learned Senior
Counsel, for the defendant, respectively.
Contentions of the plaintiff
17. Mr. Singh submits that the defendant has, by its label, its bottle,
and the package in which the bottle is sold, deliberately infringed the
plaintiffs' registered ―BLENDERS PRIDE‖ and ―IMPERIAL BLUE‖
marks.
18. Apropos ―BLENDERS PRIDE‖, Mr. Hemant Singh submits
that the mark was a fancifully structured and coined trademark,
registered in favour of the predecessor of the plaintiff on 25th March,
1994. There is, therefore, he submits, no dispute regarding priority of
user, by the plaintiff, of its marks, vis-à-vis, the impugned ―CASINOS
PRIDE‖ mark of the defendant. Mr. Hemant Singh submits that the
plaintiff has been using ―BLENDERS PRIDE‖, with ―PRIDE‖ as the
distinctive feature thereof, in respect of whisky since 1995. As such,
he submits that use of any composite mark by others, with ―PRIDE‖
as the second component of the mark would not only infringe the
plaintiffs' ―BLENDERS PRIDE‖ reputation but would also subject
the plaintiff to irreparable loss.
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19. Mr. Hemant Singh submits that there is, indeed, no compulsion
for anyone to use ―PRIDE‖ as part of its registered mark, as, ―PRIDE‖
is not descriptive of alcoholic beverages. The use, by the defendant, of
the mark ―CASINOS PRIDE‖ - which, as Mr. Hemant Singh points
out, has no etymological meaning, whatsoever, with ―PRIDE‖ as the
distinctive part thereof, is clearly with a view to capitalize on the
plaintiff's goodwill and reputation and deceive consumers into
mistaking the product of the defendant with that of the plaintiff or into
drawing an association between the two.
20. Mr. Hemant Singh also submits that the expressions
―BLENDERS PRIDE‖ and ―CASINOS PRIDE‖ are phonetically
similar. He has also questioned the validity of the defendant's
contention that the expression ―PRIDE‖ is common to the alcoholic
beverage trade, stating that no sufficient evidence, to that effect, has
been placed on record by the defendant.
21. Adverting to the ―IMPERIAL BLUE‖ mark, Mr. Hemant Singh
submits that the ―IMPERIAL BLUE‖ IMFL of the plaintiff 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. For ease of reference, the photograph of the bottle of
the plaintiff, in which it sells its ‗IMPERIAL BLUE' IMFL, may be
reproduced:
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Product Package
These features, which, according to Mr. Hemant Singh, are the
―essential features‖ of the defendants' registered ―IMPERIAL BLUE‖
marks, have been copied by the defendant in its ―CASINOS PRIDE‖
label as well as affixed on the bottle on which the defendant sells its
IMFL and on the package in which the bottle is sold. Mr. Hemant
Singh further submits that the defendant's bottle, along with the label
affixed thereon, are also infringing the plaintiff's ―IMPERIAL BLUE‖
3D Mark registration separately held in respect of the bottle as well as
the label thereon. He points out that the shape of the bottle of the
defendant is identical to that of the bottle of the plaintiff, which stands
registered as a separate 3 D mark in the plaintiff's favour. Mr. Hemant
Singh has also sought to contend that the plaintiff's ―IMPERIAL
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BLUE‖ registrations - except its 3D Mark registration for the bottle
with the label thereon - constitutes a ―series of marks‖ within the
meaning of Section 154 of the Trademarks Act, 1999 and that,
consequently, the plaintiff is entitled to claim exclusivity over the
individual parts of the mark, such as the blue colour, the golden dome
shaped design etc.
22. Mr. Hemant Singh submits that the defendant has resorted to an
ingenious ruse of copying the essential features of different
trademarks of the plaintiff, so as to confuse prospective consumers of
IMFL. According to Mr. Hemant Singh, the defendant has 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, and by conflating them,
devised a label and the packaging which is bound to confuse
customers into inferring an association between the defendant's
product and the plaintiff.
23. Mr. Hemant Singh has also claimed copyright infringement.
According to him, the distinctive features of the trade dress in which
15. Registration of parts of trade marks and of trade marks as a series.
(1) Where the proprietor of a trade mark claims to be entitled to the exclusive use of any part
thereof separately, he may apply to register the whole and the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the
incidents of, an independent trade mark.
(3) Where a person claiming to be the proprietor of several trade marks in respect of the same
or similar goods or services or description of goods or description of services, which, while
resembling each other in the material particulars thereof, yet differ in respect of--
(a) statement of the goods or services in relation to which they are respectively
used or proposed to be used; or
(b) statement of number, price, quality or names of places; or
(c) other matter of a non-distinctive character which does not substantially affect
the identity of the trade mark; or
(d) colour, seeks to register those trade marks, they may be registered as a series in
one registration.
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the plaintiff sells its ―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 an
infringing copy thereof within the meaning of Section 2(m) 6 over
which the plaintiff is entitled to protection by Section 51 thereof and
the defendant is liable to be injuncted against use of copy right by
Section 557.
Contentions of the defendant
24. Answering the submissions of Mr. Hemant Singh, Mr. Sachin
Datta, learned Senior Counsel for the defendant submits that the
defendant had honestly and bona fide conceived and adopted the
―CASINOS PRIDE‖ mark on 25th May, 2016. He submits that the
expression ―CASINOS PRIDE‖ is coined and fanciful and that the
defendant is entitled to exclusivity in respect thereof. It is further
(c) ―artistic work‖ means -
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving
or a photograph, whether or not any such work possesses artistic quality;
(ii) a work of architecture; and
(iii) any other work of artistic craftsmanship.
(m) ―infringing copy‖ means -
(i) in relation to a literary, dramatic, musical or artistic work, a reproduction thereof
otherwise than in the form of a cinematographic film;‖
55. Civil remedies for infringement of copyright.
(1) Where copyright in any work has been infringed, the owner of the copyright shall, except
as otherwise provided by this Act, be entitled to all such remedies by way of injunction, damages,
accounts and otherwise as are or may be conferred by law for the infringement of a right:
Provided that if the defendant proves that at the date of the infringement he was not aware
and had no reasonable ground for believing that copyright subsisted in the work, the plaintiff shall
not be entitled to any remedy other than an injunction in respect of the infringement and a decree
for the whole or part of the profits made by the defendant by the sale of the infringing copies as the
court may in the circumstances deem reasonable.
(2) Where, in the case of a literary, dramatic, musical or artistic work, or, subject to the
provisions of sub-section (3) of section 13, a cinematograph film or sound recording, a name
purporting to be that of the author, or the publisher, as the case may be, of that work, appears on
copies of the work as published, or, in the case of an artistic work, appeared on the work when it
was made, the person whose name so appears or appeared shall, in any proceeding in respect of
infringement of copyright in such work, be presumed, unless the contrary is proved, to be the author
or the publisher of the work, as the case may be.
(3) The costs of all parties in any proceedings in respect of the infringement of copyright shall
be in the discretion of the court.
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submitted that the defendant is openly using the ―CASINOS PRIDE‖
mark since 2nd August, 2017.
25. The defendant, it is submitted, pointed out this fact to the
plaintiff in its reply dated 12th December, 2017 filed by way of
response to the notice of opposition dated 14th April, 2017 of the
plaintiff, while opposing the defendant's application dated 19th
December, 2016 for registration of the ―CASINOS PRIDE‖ mark. It
is pointed out that, in the evidence by way of affidavit filed by the
defendant before the Registrar of Trademarks in support of its
application, the defendant has claimed continuous and extensive use of
the ―CASINOS PRIDE‖ mark since 2nd August, 2017. Invoices in
support thereof have also been placed on record.
26. Learned Senior Counsel for the defendant has also invoked
Section 17 of the Trademarks Act to contend that the plaintiff cannot
claim exclusivity in respect of part of its composite mark
―BLENDERS PRIDE‖. It is sought to be submitted that, in order to
overcome this objection, the plaintiff had, in fact, applied on 14 th
December, 2020 for registration of the mark ―PRIDE‖, but could not
register the mark as an objection was raised by the Registrar of
Trademarks on 5th January, 2021 on the ground that the same mark
had been earlier registered in respect of similar goods. The present
plaint, according to the defendant, is an oblique attempt by the
plaintiff to obtain exclusivity in respect of the ―PRIDE‖ mark having
failed to obtain registration thereof.
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27. Learned Senior Counsel submits that the defendant has not, in
any manner, infringed the plaintiff's ―BLENDERS PRIDE‖
trademark. By adverting to various examples, learned Senior Counsel
have sought to contend that the suffix ―PRIDE‖, in the context of
alcoholic beverages, has become common to the trade, and is used by
several manufacturers. It cannot, therefore, it is submitted, be sought
to be contended that ―PRIDE‖ is the dominant part of the plaintiff's
―BLENDERS PRIDE‖ mark.
28. In any event, submits learned Senior Counsel, no exclusivity
can be claimed in respect of generic, descriptive, laudatory or common
words, unless the word has acquired a secondary meaning in the minds
of the consuming public. No evidence of the plaintiff's mark of the
―PRIDE‖ mark having acquired any such secondary meaning is, it is
submitted, forthcoming on the record. ―PRIDE‖ is, therefore, submits
learned Senior Counsel, publici juris, and the plaintiff cannot seek to
make out the case of infringement against persons who use ―PRIDE‖
as part of their registered trademark in respect of their alcoholic
beverages.
29. Moreover, submits learned Senior Counsel, the label, the getup,
the packaging, the shape, the colour combination and the arrangement
of features, on the defendant's ―CASINOS PRIDE‖ label are
completely distinct and different both from the plaintiff's
―BLENDERS PRIDE‖ as well as ―IMPERIAL BLUE‖ trademarks.
30. The defendant emphatically denies any deceptive similarity
between the marks ―BLENDERS PRIDE‖ and ―CASINOS PRIDE‖.
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These marks, submits learned Senior Counsel, are not similar
phonetically, visually, or otherwise. Nor can it be said that there is any
case for idea infringement either.
31. These submissions, submits learned Senior Counsel, apply
equally to the plaintiff's allegation of infringement, by the defendant,
of its ―IMPERIAL BLUE‖ label. The learned Senior Counsel for the
defendant submits that there is no similarity between the ―CASINOS
PRIDE‖ label of the defendant and the ―IMPERIAL BLUE‖ label of
the plaintiff. The manner in which the words ―CASINOS PRIDE‖ are
written on the label of the defendant between diagonal golden lines,
the shade of blue used on the labels and the arrangement of the
features on the labels, it is submitted, are totally different from those
used by the plaintiff on its ―IMPERIAL BLUE‖ label. Purveyors of
IMFL, it is submitted, are least likely to get confused between the
defendant's and plaintiff's products. In this context, learned Senior
Counsel has also highlighted the fact that the plaintiff's products are
much more expensive than those of the defendant, so that the customer
segments, to which the plaintiff and the defendant cater, are also
different.
32. Learned Senior Counsel, addressing the submission of the
plaintiff that the defendant has ingeniously infringed both the
―BLENDERS PRIDE‖ and ―IMPERIAL BLUE‖ labels of the
plaintiff, submits that the argument has no legs to stand on. It is
submitted that no customer would ever find the plaintiff's
―BLENDERS PRIDE‖ product in a label or a packaging, which is in
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any manner similar to its ―IMPERIAL BLUE‖ label or packing. As
such, learned Senior Counsel submits that the plaintiff cannot seek to
make out a case of infringement by combining two marks and alleging
that a case of deceptive similarity is made out. Besides, learned
Senior Counsel submits that the defendant's label has sufficient added
matter, as would disabuse the possibility of any confusion in the mind
of the imbibing public, between the products of the defendant and the
plaintiff. Learned Senior Counsel emphatically denies any deceptive
similarity between the ―IMPERIAL BLUE‖ label of the plaintiff and
the ―CASINOS PRIDE‖ label of the defendant. It is submitted that
the only similarity between the two labels is the blue colour and, in all
other respects, the labels are different. Even the descriptions on the
labels, the manner in which the letters are written and all other
features, they submit, are distinct from one other.
Plaintiff's submissions in rejoinder
33. Arguing in rejoinder, Mr. Hemant Singh reiterates some of the
submissions initially advanced by him and further submits that the
plea of ―PRIDE‖ being common to the trade would require the
defendant to establish sufficient volume of sales of products using
―PRIDE‖, to the knowledge of the plaintiff, without the plaintiff
seeking to challenge such registrants. He draws my attention to the
fact that the plaintiff has filed a number of legal proceedings, asserting
its rights over the ―BLENDERS PRIDE‖ and ―IMPERIAL BLUE‖
marks. Even otherwise, he submits that the plaintiff, to succeed in an
infringement action is not required to show that it has sued every
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infringer.
34. Mr. Hemant Singh cites, in his support, the judgements of the
Supreme Court in T.V. Venugopal v. Ushodaya Enterprises Ltd8 and
Heinz Italia v. Dabur India Ltd9 and the judgements of this Court in
B.K. Engineering Co. v. U.B.H.I. Enterprises10 and Ishi Khosla v.
Anil Agarwal11, to contend that, where deception is deliberate,
injunction must follow. On the aspect of deceptive similarity, Mr.
Hemant Singh cites Parle Products v. J.P. & Co.12, Kaviraj Pt Durga
Dutt Sharma v. Navratna Pharmaceutical Inds13 and Ruston &
Hornby Ltd v. Zamindra Engg Co.14 Mr. Singh further submits,
relying on Amritdhara Pharmacy v. Satya Deo Gupta15 that, for a
person of average intelligence and imperfect recollection, the marks
―BLENDERS PRIDE‖ and ―CASINOS PRIDE‖ would be
phonetically and structurally similar. Mr. Singh also relies on the
judgement of a Division Bench of the High Court of Madras in
Rhizome Distilleries v. U.O.I.16 to contend that, even if the marks are
not individually infringing, infringement may exist when the marks
are combined. In the present case, he submits that this aspect assumes
additional significance as there is no explanation adduced, by the
defendant, for use of the mark ―CASINOS PRIDE‖, in similar letters
and on a similar background. On the argument of the defendant that
the word ―PRIDE‖ is publici juris, Mr. Hemant Singh relies on
(2011) 4 SCC 85
2007 (35) PTC 1 (SC)
AIR 1985 Del 210
2007 (34) PTC 370 (Del)
AIR 1972 SC 1359
AIR 1965 SC 980
AIR 1970 SC 1649
AIR 1963 SC 449
2016 (65) PTC 132 (Mad) (DB)
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Himalaya Drug Co. v. S.B.L. Ltd17 , to contend that such a plea
requires positive evidence to be adduced by the defendant. Moreover,
he submits, relying on the judgement of the Supreme Court in Corn
Products Refining Co. v. Shangrila Food Products Ltd18, that there is
a distinction between marks which are commonly found in the register
of trademarks and marks which are common to the trade. He
reiterates his contention that the defendant has not produced any
substantial material to indicate that the mark ―PRIDE‖ is common to
the trade. Injurious association, submits Mr. Hemant Singh, exists
where the products are available from the same source, even if the
defendant's product may not be mistaken for that of the plaintiff, for
which purpose he relies on Parle Products12 and B.K. Engineering10.
He further cites William Grant & Sons Ltd v. McDowell & Co. Ltd19
to contend that, if the acts of the defendant dilutes the plaintiffs
goodwill in its product, the plaintiff is entitled to relief even if there is
no confusion.
35. Learned Senior Counsel for the defendant has also cited various
authorities, essentially for the proposition that no exclusivity could be
claimed in the mark ―PRIDE‖, as it is laudatory in nature, and that
there is no deceptive similarity between the marks of the plaintiff and
the impugned mark of the defendant, to wit, the judgements of the
Supreme Court in J.R. Kapoor v. Micronix India20, Khoday
Distilleries Ltd v. Scotch Whisky Association21 and the judgements
of this Court in Rhizome Distilleries P Ltd v. Pernod Ricard S.A.
2013 (53) PTC 1 (Del) (DB)
AIR 1960 SC 142
1994 FSR 690
1994 Supp (3) SCC 215
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France22, Allied Blenders & Distillers v. Paul P. John23, Roland
Corpn v. Sandeep Jain24, Delhivery P. Ltd v. Treasure Vase
Ventures Pvt Ltd25, Schering Corpn v. Alkem Labs26, Radico
Khaitan Ltd v. Calsberg India Pvt Ltd27, Phonepe v. Ezy Services28,
AstraZeneca UK Ltd v. Orchid Chemicals & Pharmaceuticals Ltd29
and S.K. Sachdeva v. Shri Educare Ltd30.
Analysis
36. The plaintiff has alleged, against the defendant, both
infringement of the plaintiff's registered trademarks as well as passing
off, by the defendant, of its product as that of the plaintiff.
The legal position
37. Infringement and passing off are, in law, distinct torts, the
former being statutory and the latter arising from common law. This
distinction finds statutory recognition in Section 27(2) of the Trade
Marks Act, which engrafts a disclaimer that nothing in the Trade
Marks Act ―shall be deemed to affect rights of action against any
person for passing off goods or services as the goods of another person
or services provided by another person, or the remedies in respect
(2008) 10 SCC 723
166 (2010) DLT 12 (DB)
2008 (38) PTC 568 (Del) (DB)
277 (2021) DLT 677
2020 (84) PTC 179 (Del)
2010 (42) PTC 772 (Del)
2011 (48) PTC 1 (Del)
MANU/DE/0775/2021
ILR (2007) Del 874
(2016) 65 PTC 614 (Del)
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thereof.‖ An action for passing off is, therefore, independent of the
Trade Marks Act.
38. Several judicial pronouncements have recognised the distinction
between infringement and passing off. In Satyam Infoway v. Sifynet
Solutions Pvt. Ltd31 , the Supreme Court noted that an action for
passing off is based on the goodwill that the trader has in the trade
name, whereas an action for infringement is based on the trader's
proprietary right in the trade name. An action for passing off is
intended, as per the said decision, to preserve the reputation of the
plaintiff and to safeguard the public against being deceived into
believing the goods of one person to be those of another. The raison
d' etre of passing off is that one cannot carry on one's business, or
deal with one's goods, so as to make the public believe that the
business or goods belong to another. It is, therefore, intended as a
means of protection against unfair competition.32 Passing off is,
therefore, an action for deceit, which seeks to proceed against one who
passes off one's goods as those of another, whereas an action for
infringement is a statutory remedy conferred on the proprietor of a
registered trade mark, for vindication of his exclusive right to use the
trademark in relation to the goods in respect of which it is registered.33
39. Though an action based on deceit, fraud is not a necessary
element to maintain a successful prosecution for passing off if,
otherwise, it is clear that the defendant has imitated or adopted the
(2004) 6 SCC 145
Laxmikant V. Patel v. Chetanbhat Shah & Ors. (2002) 3 SCC 65, (2002) 3 SCC 65
Kaviraj Pt. Durga Dutt (ibid);Cadila Health Care Ltd v. Cadila Health Care Ltd , (2001) 5 SCC 73
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plaintiff's trademark, in a manner as would confuse the public into
believing the goods of the defendant to be those of the plaintiff.34
Passing off, therefore, requires proof of misrepresentation, even if not
of intent.35 Though the intent of the defendant is, therefore, not
relevant for establishing an allegation of passing off, by the defendant,
of its goods or services as those of the plaintiff, the intent may be
relevant at the stage of final adjudication, to decide the relief to which
the plaintiff would be entitled.36 Passing off may, therefore, be alleged
by a claimant who owns sufficient proprietary interest in the goodwill
attached to the trade mark or name which is imitated by the defendant,
and which is likely to be damaged by the alleged misrepresentation.37
Proof of actual damage is, however, not necessary.38
40. Different judicial authorities have delineated, differently, albeit
with a large degree of overlap, the ingredients and indicia of passing
off. The troika of the existence of a prima facie case, balance of
convenience and irreparable loss, which classically governs grant of
injunction apply, equally, to passing off.39 Laxmikant V. Patel32,
relying on Oertil V. Bowman40, identifies the three determinative
issues in adjudicating on a claim of passing off as (i) whether the
plaintiff's product had come into existence prior to commencement of
user by the defendant, (ii) whether the plaintiff had acquired goodwill
in the property by the use of the mark in question and (iii) whether the
Wockhardt Ltd v. Torrent Pharmaceuticals Ltd. and Anr., (2018) 18 SCC 346,
Laxmikant V. Patel (ibid), S. Syed Mohideen v. P. Sulochana Bai, , (2016) 2 SCC 683
Wockhardt (ibid), Satyam Infoway (ibid)
Wockhardt (ibid), Satyam Infoway (ibid)
Khoday Distilleries (ibid)
Wockhardt (ibid), Satyam Infoway (ibid), S Syed Mohideen (ibid)
Wockhardt (ibid), Laxmikant V. Patel (ibid)
1957 RPC 388 (CA)
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disputed mark or getup had become distinctive of the plaintiff's goods
or services. Satyam Infoway31 identifies the following ingredients of
passing off:
(i) There must be sale, by the defendant, of its
goods/services in a manner which is likely to deceive the public
into thinking that the goods/services are the plaintiff's.
(ii) The plaintiff is not required to prove long user to
establish reputation. Reputation could be established on the
basis of the volume of the plaintiff's sales and the extent of its
advertisement.
(iii) The plaintiff has to establish
(a) misrepresentation by the defendant to the public,
though it is not necessary to prove malafide,
(b) likelihood of confusion in the minds of the public,
the public being potential customers/users of the
goods/services in question, that the goods or services are
those of the plaintiff, applying the test of ―imperfect
recollection of person of ordinary memory‖,
(c) loss, or likelihood of loss, and
(d) goodwill, possessed by the plaintiff as a prior user.
Cadila Health Care33 defines passing off as (i) misrepresentation (ii)
made by a trader in the course of trade, (iii) to prospective customers
or ultimate consumers of goods or services supplied by him, (iv)
calculated to injure the business or the goodwill of another (i.e. that
such injury is reasonably foreseeable), (v) causing actual damage to
the business or goodwill of the plaintiff, or which has the probability
of doing so.
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41. The Supreme Court held, in Mahendra & Mahendra Paper
Mills v. Mahindra & Mahindra , that likelihood of confusion or
deception is a matter to be determined by the Court, and no witness is
entitled to depose in that regard. In examining the likelihood of
causing confusion, the judgement held that the Court was required to
consider, in conjunction, inter alia, (i) the nature of the market, (ii) the
class of customers, (iii) the extent of reputation, (iv) the trade channels
through which the goods or services were available and (v) existence
of connection in the course of trade. In this process, the Court was
required to assess the likelihood of deception of confusion by
examining (i) the nature of the marks, i.e. whether they are word
marks/label marks/composite marks, (ii) the degree of similarity
between the competing marks, (iii) the nature of goods, (iv) the
similarity in nature, character and performance of the goods of the
parties, (v) the class of purchasers, and the degree of care which they
would be expected to exercise while purchasing the goods or services
and (vi) the mode of purchasing goods and placing orders.42
42. Where a clear case of passing off is found to exist, Laxmikant
V. Patel32 holds that, ordinarily, ex parte injunction is to be granted
and a local commissioner appointed.
43. On the aspect of deceptive similarity, too, there is wealth of
authority. The onus to prove confusion or deception is on the plaintiff
(2002) 2 SCC 147
Mahendra & Mahendra (ibid), Cadila Health Care (ibid)
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so alleging.43 ―Confusion‖ was perhaps most precisely defined by the
Supreme Court, in Cadila Health Care33, as meaning the state of mind
of a customer who, on seeing a mark, thinks that it differs from the
mark on the goods which he has previously bought, but it is doubtful
whether the impression is not due to imperfect recollection.
Following on this, the ingredients of confusion or deception have been
set out in decision after decision. Even so, in Khoday Distilleries21,
Amritdhara Pharmacy15 and Cadila Health Care33, the Supreme
Court has cautioned that the tests to be applied would depend on the
facts of each case and that precedents, in such matters, are valuable
only for the tests enunciated therein, and not on facts.
44. Khoday Distilleries21 holds that, in assessing deceptive
similarity, the look, the sound and the nature of the goods are all
relevant considerations. Surrounding circumstances are also,
according to the said decision, relevant. The question, in each case, is
that of first impression.44 This is especially so in the case of phonetic
similarity, where the Court must avoid a meticulous comparison of the
words, syllable by syllable, and must provide for the effect of careless
pronunciation and speech, on the part of the buyer walking into the
shop as well as the shop assistant.45 The matter has to be examined
from the point of view of a person of average intelligence and
imperfect recollection, assessing how such a purchaser would react to
the trademark, and the association that he would form, and how he
Kaviraj Pt Durga Dutt Sharma (ibid); Cadila Health Care (ibid)
Mahendra & Mahendra (ibid), Corn Products (ibid), Cadila Health Care (ibid)
Cadila Health Care (ibid), F. Hoffman La-Roche v. Geoffrey Manners & Co. Pvt. Ltd ,
(1969) 2 SCC 716, Aristoc v. Rysta Ltd, 62 RPC 65 (HL)
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would connect the trademark with the goods which he purchases.46
The issue has to be examined by viewing the situation in the course of
legitimate use of the latter trademark in a market in which both the
marks are assumed to be in use by traders.47 The following classic
test, as enunciated in the Pianotist case48, has been approved, many
times over, by judicial authorities in this country49:
―You must take the two words. You must judge them, both by
their look and by their sound. You consider the goods to
which they are to be applied. You must consider the nature
and kind of customer who would be likely to buy those
goods. In fact you must consider all the surrounding
circumstances; and you must further consider what is likely to
happen if each of those trade marks is used in a normal way
as a trade mark for the goods of the respective owners of the
marks.‖
45. K. R. Krishna Chettiar v. Shri Ambal & Co50 held that the
Court is required to assess whether, if the two marks were used in a
normal and fair manner, there was likelihood of confusion or
deception. There are no objective standards possible, for the degree of
similarity which is likely to cause deception and, in every case, the
matter has to be examined from the viewpoint of the purchasers of the
goods.51 The resemblance may be phonetic, visual or in the basic idea
represented by the plaintiff's mark.52 On the applicability of phonetic
and visual tests, to assess deceptive similarity, while F. Hoffman-La
Roche45 and Cadila Health Care33 hold that both tests are required to
be applied, K. R. Krishna Chettiar50, as also Cadila Health Care33
Mahendra & Mahendra Paper Mills (ibid), Corn Products Refining Co (ibid), Cadila Health Care
(ibid)
Amritdhara Pharmacy (ibid), Cadila Health Care (ibid)
Re. Pianotists Co's Application, (1906) 23 RPC 774
Ref. Cadila Health Care (ibid), Amritdhara Pharmacy (ibid) and F. Hoffman-La Roche (ibid)
(1969) 2 SCC 131
Amritdhara Pharmacy (ibid), Cadila Health Care (ibid), Kaviraj Pt Durga Dutt Sharma (ibid)
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itself, hold that ocular similarity would be sufficient to base a finding
of possibility of confusion or deception, even if the marks are visually
dissimilar.
46. The two most important considerations, while examining the
issue of deceptive similarity, have been identified, in Amritdhara
Pharmacy15 as being (i) the persons whom the resemblance must be
likely to deceive or confuse and (ii) the rules of comparison to be
applied. Apart from this decision, the nature of the consumer who
would be purchasing the goods, or availing the services, has been held
to be a relevant consideration in several judicial pronouncements,
including J.R. Kapoor20, Khoday Distilleries21 and Cadila Health
Care33.
47. Section 17(1) of the Trade Marks Act confers, on the proprietor
of a trademark which consists of several matters, consequent to its
registration, the exclusive right to the use of the trademark taken as a
whole. Section 17(2) clarifies the position by ordaining that, where a
trademark (i) contains any part which is not subject of a separate
application by the proprietor for registration as a trademark, or (ii)
which is not separately registered by the proprietor as a trademark or
(iii) contains any matter which is, to the trade or (iv) contains any
matter which is otherwise offered non-distinctive character, the
registration of the whole mark would not confer, on its proprietor, any
exclusive right in a part of the registered mark. This principle stands
reiterated, by the Supreme Court, in Registrar of Trademarks v.
Corn Products Refining Co (ibid), Amritdhara Pharmacy (ibid), Cadila Health Care (ibid)
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Ashok Chandra Rakhit . That the mark has to be considered as a
whole, as a customer would ordinarily not split, into its components
while trying to recollect whether he has seen that before, has been held
in Amritdhara Pharmacy15 and Cadila Health Care33. F. Hoffman-
La Roche45 holds that the test is whether the totality of the proposed
trademark is likely to cause deception/confusion or mistake in the
minds of persons accustomed to the existing trademark (the issue
before the court in the said case was whether the proposed trademark
deserved to be registered or not). Amritdhara Pharmacy15 and Cadila
Health Care33 also hold that the common part of words forming
competing marks would not be decisive and that overall similarity of
the composite words is required to be seen, having regard to the
circumstances that the marks are on like goods of similar description.
48. The principle that exclusivity cannot be claimed over part of a
composite mark (known, otherwise, as the ―anti-dissection rule‖) is,
however, subjected to the exception that exclusivity can be claimed
over a part of a composite mark, if that part is shown to be the
dominant part of the mark. The ―anti-dissection rule‖ is, therefore,
subject to the ―dominant part‖ test. The decision most often cited for
this proposition, and which has been followed in several subsequent
judgements, is the Division Bench pronouncement of this Court in
South India Beverages v. General Mills Marketing Inc. 54 .
49. Section 955 of the Trade Marks Act postulates absolute grounds
AIR 1955 SC 558
2014 SCC OnLine Del 1953
9. Absolute grounds for refusal of registration -
(1) The trade marks -
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on which an application for registration of a trade mark can be
refused. Thus, marks which are not distinctive, which are common to
the trade, or which are purely descriptive of the goods or services in
respect of which they are used, cannot be registered. The proviso to
section 9(1), however, engrafts an exception to this principle, by
permitting registration of marks which have acquired a distinctive
character owing to longevity of use, or which are ―well-known
trademarks‖ within the meaning of Section 2(1)(zg) of the Trade
Marks Act. Thus, it was held, in J.R. Kapoor20 that no exclusivity can
be claimed over a descriptive mark, or even over a descriptive part of
a mark. The Supreme Court in F. Hoffman-La Roche45 and this
Court in Rhizome Distilleries22 held, similarly, that no exclusivity
could be claimed over laudatory, generic or common words. The
effect of the proviso to Section 9(1) was, however, recognised by the
judgement of the Division Bench of this Court in Marico Ltd. v. Agro
(a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of mass or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or the
type of production of the goods or rendering of the service or other characteristics of the
goods or service;
(c) which consist exclusively of marks of indications which have become
customary in the current language or in the bona fide and established practices of the
trade, shall not be registered:
PROVIDED that a trademark shall not be refused registration if before the date of application for
registration it has acquired a distinctive character as a result of the use made of it or is a well-known
trademark.
(2) A mark shall not be registered as a trademark if -
(a) it is of such a nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities
of any class or section of the citizens of India;
(c) it comprises all contains scandalous or obscene matter;
(d) each use is prohibited under the Emblems and Names (Prevention of Improper
Use) Act, 1950.
(3) A mark shall not be registered as a trademark it consists exclusively of -
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
Explanation: For the purposes of this section, the nature of goods or services in relation to which the
trademark is used or proposed to be used shall not be a ground for refusal of registration."
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Tech Foods Ltd.56 , which held that a descriptive mark could also be
registered if it had acquired a secondary meaning. Even so, the
decision cautions courts to lean against treating a descriptive mark as
distinctive, unless the mark had several years' longevity of usage, and
was identified with one and one person alone.
50. The following judgements would serve to illustrate the practical
applicability of the above principles:
(i) In Laxmikant V. Patel , the plaintiff was running a
colour studio under the name ‗Muktajivan Colour Studio'. The
defendant started a colour studio, a little distance away, using
the same name ‗Muktajivan'. The business of the plaintiff and
defendant were identical. Intent to pass off the defendant's
business as that of the plaintiff was, it was held, apparent. The
argument that the defendant was unaware of the plaintiff's
business was held to be irrelevant, as the case was clearly one of
passing off. Injunction was, therefore, granted.
(ii) ‗Sify' and ‗Siffy' were held to be phonetically and
visually similar, so that the mark ‗Siffynet' was held to infringe
the plaintiff's mark ‗Sify'. The mere addition of the suffix ‗net'
after ‗Siffy' would, it was held, make no difference.57
(iii) In the case of the marks ‗Gluvita' and ‗Glucovita', it was
held that there was likelihood of confusion, as the marks were
2010 (44) PTC 736 (Del)
Satyam Infoway (ibid)
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identical except for the single syllable ‗co' between ‗Glu' and
‗vita' in the latter. The addition of this syllable, it was held,
was insufficient to enable buyers to distinguish between the
marks. Additionally, it was held that the case was one of idea
infringement, as both marks conveyed the idea of glucose and
vitamins, and their health benefits.58
(iv) ‗Amritdhara' and ‗Lakshmandhara' were held to be
deceptively similar, as both were used in connection with
medicinal preparations, and, given their overall structural and
phonetic similarity, consumers, who could be either illiterate or
illiterate, were likely to be confused.59
(v) In K.R. Krishna Chettiar50, the Supreme Court was
concerned with the use of the marks ‗Sri Ambal' and ‗Sri
Andal', Andal and Ambal both being goddesses worshipped in
the south of India. The marks were visually distinct, but were
used in the context of the same product; (ironically), snuff. The
Supreme Court held that there was likelihood of deception, as
(a) the suffix ‗Sri', in the two marks constituted the subsidiary
part thereof, with the distinctive parts being ‗Ambal' and
‗Andal', (b) the marks were phonetically strikingly similar, (c)
in such circumstances, visual distinction or difference, though it
existed, was irrelevant, as the essential features of the marks
were deceptively similar and (d) customers were unlikely, on
seeing the marks, to recollect the difference between the two
Corn Products Refining Co (ibid)
Amritdhara Pharmacy (ibid)
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deities Ambal and Andal.
(vi) In F. Hoffman-La Roche45, however, the Supreme Court
held that as the marks ‗Dropovit' and ‗Protovit' were used in
the context of prescription drugs, there was little chance of
confusion between them, as the drugs would be sold on
prescription and the customer would also be on his guard.
(vii) ‗Mahendra & Mahendra' was held, in Mahendra &
Mahendra Paper Mills41, to be deceptively similar to
‗Mahindra & Mahindra', despite dissimilarity in the goods in
respect of which the marks were used, on the ground that,
owing to extensive usage, the latter mark had acquired
distinctiveness and a secondary meaning, and was exclusively
associated with the appellant before the Supreme Court. Use of
the former mark was, therefore, it was held, liable to dilute the
goodwill in the latter. Injunction was, therefore, affirmed.
(viii) In Khoday Distilleries21, it was held that the mark ‗Peter
Scot', though not used in the context of Scotch whisky, was
entitled to registration, as buyers of Scotch whisky were
educated and niche, and would not be likely to be confused into
believing that ‗Peter Scot' related to a brand of Scotch whisky.
It may be noted, however, that this was not a case of alleged
infringement, but was in the nature of an action by the Scotch
Whisky Association, opposing the registration of the mark
‗Peter Scot' on the ground that the market could confuse
customers into believing that the product was Scotch whisky.
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(ix) The discerning nature of imbibers of alcoholic beverages
(in that case vodka) was also held, by the Division Bench of this
Court in Diageo North America v. Shiva Distilleries.60, to
obviate any possibility of confusion, by customers, between the
marks ‗Smirnoff' and ‗Brisnoff'. Besides, the marks were also
found not to be phonetically similar.
(x) In Nandhini Deluxe v. Karnataka Co-operative Milk
Producers Federation Ltd.61, the Supreme Court held that the
use of the mark ‗Nandhini', for restaurants, meat, fish, poultry
etc., did not infringe the existing mark ‗Nandini', which was
used for milk, despite the phonetic similarity between the two
marks, as (a) the services/goods in respect of which the marks
were used were different, (b) both were generic words, one
representing a cow and the other the name of a goddess, (c) the
claim for registration for milk, in respect of the mark
‗Nandhini', had been given up and (d) the marks were visually
completely dissimilar.
(xi) ‗Micronix' was held, in J.R. Kapoor20 not to infringe
‗Microtel', as (a) the logos were visually similar, (b) the suffix
‗micro' was generic and descriptive of the microchip
technology used in the products, over which no exclusivity
could be claimed, (c) consumers of such products were
discerning and would be able to distinguish between them and
(d) if one were to ignore the suffix ‗micro', the remainder of the
143 (2007) DLT 321
(2018) 9 SCC 983
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two marks, i.e. ‗nix' and ‗tel' were dissimilar both phonetically
and otherwise.
51. It is apparent, from a reading of the Trade Marks Act, that actus
reus, and not mens rea alone, is necessary to constitute a tort of
infringement. Equally does this principle apply to passing off.
Deceptive - or, at the very least, confusing - similarity is the sine qua
non both for infringement and passing off. Absent confusion or
deception, there can, quite obviously, be neither infringement nor
passing off.
52. Nonetheless, two important principles, which do not emanate
directly from the Trade Marks Act but are obviously enunciated in
furtherance of its objectives and to ensure its proper implementation,
have evolved over a period of time. These are that (i) where there is
clear imitation with an intent to deceive, the Court must not bend
backwards to presume that the intent is not successful, and (ii) where
there is intent to deceive, the Court must pay greater attention to the
similarities between the competing marks, and avoid searching,
instead, for dissimilarities. The former owes itself to the exhortation
of Lord Lindley, LJ in Slazenger & Sons v. Feltham & Co.62 and the
latter to the words of Justice Kekewich in Munday v. Carey63.
53. Lindley, LJ, observed, in Slazenger62, thus:
―One must exercise one's common sense, and, if you are
driven to the conclusion that what is intended to be done is to
deceive if possible, I do not think it is stretching the
(1889) 6 RPC 531
(1905) R.P.C. 273
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imagination very much to credit the man with occasional
success or possible success. Why should we be astute to say
that he cannot succeed in doing that which he is straining
every nerve to do?‖
54. Kekewich, J. spoke thus, in Munday63:
"Where you see dishonesty, then even though the similarity
were less than it is here, you ought, I think, to pay great
attention to the items of similarity, and less to the items of
dissimilarity."
55. Suffice it to state that both these principles have been applied by
this Court in a plethora of judgements, with which I do not deem it
necessary to burden this decision.
Applying the law
Infringement qua BLENDERS PRIDE mark
56. Applying the above legal principles, first, to the contention of
the plaintiff that the defendant's mark ‗CASINOS PRIDE' infringes
the plaintiffs ‗BLENDERS PRIDE' registered word mark, there is
substance in the contention of learned Senior Counsel for the
defendant that the plaintiff cannot claim exclusivity over the ‗PRIDE'
part of the mark. ‗PRIDE', etymologically, merely denotes the quality
of the product, especially when used in context with the preceding
expression ‗BLENDERS'. It is, therefore, prima facie laudatory in
nature, apparently intended to signify the pride that the blenders would
have in their product. That apart, it is a word of common usage, and
cannot be treated as distinctive, or as being capable of distinguishing
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the product of the plaintiff from that of any other manufacturer of
whisky.
57. That being so, any claim for exclusivity over the ‗PRIDE' part
of the ‗BLENDERS PRIDE' marks would be hit by Section 17(1) as
well as 17(2)(b) of the Trade Marks Act. 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.
58. The law, as contained in the judicial authorities cited supra,
permits a departure from this principle only where the part of the
mark, in respect of which exclusivity is being claimed, is the dominant
part of the mark. Though Mr. Hemant Singh has sought to contend
that ‗PRIDE' does constitute the dominant part of the ‗BLENDERS
PRIDE' mark, the contention is not easy to accept. The plaintiff has
not placed any material on record which could lead to a prima facie
conclusion that, over a period of time, the public has indelibly come to
associate the ‗PRIDE' suffix with the plaintiff's product. The test of
discerning the dominant part in a mark is, essentially, a ‗plain glance'
test. At a plain glance, if one part of the mark stands out over the
others, it would constitute the dominant part of the mark. That, again,
has to be assessed from the perspective of the man in the street, who
intends to purchase the product, or avail the service. Else, if one part
of the composite mark has, by dint of longevity of usage, become
identified with the plaintiff, it could be treated as the dominant part of
the mark. To apply the ‗dominant part' test and, thereby, overcome
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the Section 17 proscription against claiming exclusivity over a part of
a registered mark, the Court must be able, definitively, to come to a
conclusion that, in the perception of the customer of the goods, or the
person availing the service, one part of the mark would stand out from
the rest. Having said that, psychoanalysis is not the virtue of any
judge, and the matter must, ultimately, rest with the dispassionate
appreciation of the judge herself, or himself.
59. ‗PRIDE' being a plainly generic, commonplace and laudatory
expression in the ‗BLENDERS PRIDE' mark, one would be inclined,
rather, to treat the initial the ‗BLENDERS' part of the plaintiff's mark
as the dominant part thereof, if at all. I say ―if at all‖ because it is also
apparent that, even as a whole, ‗BLENDERS PRIDE' is purely
descriptive of the plaintiff's product, which is blended whisky.
60. For this reason, I am also unable to accept the submission, of
Mr Hemant Singh, that the only purpose for anyone to use ‗PRIDE' as
a part of her, or his, mark, in respect of whisky, can be to imitate the
plaintiff, and capitalize on the plaintiff's goodwill. ‗PRIDE' being a
purely laudatory expression, the desire of any manufacturer, of any
product, to use ‗PRIDE' as a part of the trade name of the product is
perfectly understandable, and the plaintiff just happens, in my opinion,
to be one such manufacturer. It is clearly not open to the plaintiff to
arrogate, to itself, all rights to use ‗PRIDE' as a part of its brand name,
qua whisky or otherwise.
61. Any attempt to claim exclusivity in respect of the ‗PRIDE' part
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of the plaintiff's ‗BLENDERS PRIDE' mark, and allege infringement
on the ground that another manufacturer is using a mark including
‗PRIDE' as a part thereof, must necessarily fail.
62. Applying the J.R. Kapoor test, 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. No case
of idea infringement can, either, be said to exist. One does not blend
in a casino, and blenders don't play dice.
63. Visually, too, there is no similarity in the ‗BLENDERS PRIDE'
device mark of the plaintiff and the ‗CASINOS PRIDE' device mark
of the defendant. This is obvious when the marks are viewed plainly.
Indeed, Mr. Hemant Singh did not even seek to argue device mark
infringement, insofar as the defendant's ‗CASINOS PRIDE' mark was
concerned, when viewed vis-à-vis the plaintiffs ‗BLENDERS PRIDE'
mark. The plea of infringement, by the defendant's mark, of the
plaintiffs ‗BLENDERS PRIDE' mark was vis-à-vis the plaintiffs
‗BLENDERS PRIDE' word mark, and not vis-à-vis the plaintiffs
‗BLENDERS PRIDE' device mark.
64. I am unable to convince myself that any case of infringement,
by the defendant's ‗CASINOS PRIDE' mark, of the plaintiffs
‗BLENDERS PRIDE' mark, can be said to exist.
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Infringement qua IMPERIAL BLUE marks
65. Even less convincing is the contention of Mr. Hemant Singh
that the defendant's ‗CASINOS PRIDE' bottle, label or packaging
infringes the plaintiffs ‗IMPERIAL BLUE' registered marks.
66. The plaintiff does not possess any registration in respect of the
colours used in its ‗IMPERIAL BLUE' mark, or in any individual part
of the design, including the dome shape. ―Mark‖ is defined, in
Section 2 (m) of the Trade Marks Act as including ―a device, brand,
heading, label, ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours or any combination
thereof‖. It was open, therefore, to the plaintiff, to seek registration in
respect of the combination of colours used in its label, or for the shape
of its bottle. It has not done so. What it has obtained are registrations
of the label in full, and the labelled bottle, as individual device marks.
Any claim to exclusivity in respect of a part of such device marks
may, therefore, again infract Section 17(2), as well as the law
regarding ‗anti-dissection', as there is precious little for the Court to
hold, even prima facie, that the individual elements of the plaintiffs
registered marks, such as the blue colour, the golden dome, or the
arrangement of letters on the label, or even the shape of the bottle,
have acquired secondary meaning over a period of time, or have
become indelibly associated with the plaintiffs ‗IMPERIAL BLUE'
whisky.
67. One has, therefore, in examining the claim of infringement, by
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the defendant's ‗CASINOS PRIDE' mark, of the plaintiffs
‗IMPERIAL BLUE' registered marks, to examine the marks as a
whole, and cannot afford to concentrate on any individual feature of
the plaintiff's mark, such as the blue colour or the golden dome
shaped design, unless a prima facie view could be taken that the
individual parts have indelibly come to be associated with the
plaintiff's product.
68. Viewed thus, it cannot be said, prima facie, that the defendant's
mark infringes the plaintiffs. For one, the name of the product, which
figures prominently on the two labels, are entirely different, with the
plaintiffs being ‗IMPERIAL BLUE' and the defendants ‗CASINOS
PRIDE'. The name figures prominently on the label, and is by itself
sufficient to hold that the labels of the plaintiff and the defendant are
clearly distinguishable from one another. Besides, the arrangement of
letters and overall appearance of the defendant's mark can also not be
said to be deceptively similar to that of the plaintiff, especially where
the names of the products are thus completely dissimilar. Viewed
purely as rival trademarks, I am unable, prima facie, to hold that the
defendants ‗CASINOS PRIDE' infringes any of the plaintiffs
‗IMPERIAL BLUE' marks.
69. Mr. Hemant Singh seeks to contend that the defendant's
―CASINOS PRIDE‖ label copies the essential features of the
plaintiff's ―IMPERIAL BLUE‖ label. I am unable to accept the
contention. The most ―essential‖ feature in any label would be the
name of the product. There is no similarity, whatsoever, between the
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names, ―IMPERIAL BLUE‖ and ―CASINOS PRIDE‖. Had the
essential features of the label, ―IMPERIAL BLUE‖ label been copied
or duplicated in the ―CASINOS PRIDE‖ label, so as to outweigh the
differences, the distinction between ―IMPERIAL BLUE‖ and
―CASINOS PRIDE‖ might have ceded place. That, however, is not so.
Barring the fact that the background of the ―CASINOS PRIDE‖ mark
is blue, and a thin golden dome shaped border is also present on the
―CASINOS PRIDE‖ label, no other features of similarity rest between
the labels. Usage, by the defendant of white lettering cannot be
regarded, in my view, as copying of an ―essential‖ feature of the
plaintiff's ―IMPERIAL BLUE‖ mark. Be it noted, at the cost of
repetition, that the plaintiff does not hold any separate trademark
registration either regarding the blue colour or regarding the golden
dome shaped border.
70. The claim, of the plaintiff, of infringement, by the defendant's
‗CASINOS PRIDE' mark, of the plaintiffs registered ‗BLENDERS
PRIDE' or ‗IMPERIAL BLUE' marks cannot, therefore, in my view,
prima facie sustain.
71. Which brings us to the issue of passing off.
72. Passing off, as noticed hereinabove, is a tort independent of the
Trade Marks Act. It does not owe its identity to statute. It is
essentially predicated on the prohibition, of any person, to pass off his
goods or services as those of another. It is not, therefore, conditioned
or corseted by any of the controls which exist in the Trade Marks Act
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with respect to infringement. The Court is not required, therefore,
while examining the claim of passing off, to feel itself bound by the
specific ingredients of the tort of infringement, as statutorily contained
in the Trade Marks Act.
73. A person is not permitted, in law, to pass off his goods, or
services, as those of another. If the manner in which the person is
marketing his product, especially the label or mark used by the person
concerned, indicates an attempt to pass off its goods as those of
another, a prima facie case of passing off exists. Though conclusive
proof of mens rea, or mala fide, is not essential for succeeding in an
action for passing off, a possibility of the defendants goods being
regarded, by a customer of average intelligence and imperfect
recollection, as emanating from the plaintiff's stable, must be found to
exist. At the Order XXXIX stage, this finding, obviously, need only
be prima facie.
74. Infringement is a mark specific tort, whereas passing off is
product specific. Relief in an action for infringement is, therefore,
aimed at protecting the mark whereas relief in an action for passing off
protects the product and the goodwill and reputation commanded by
the product. The comparison in an infringement case is, therefore,
mark to mark, whereas the comparison, in a case of passing off, is,
product to product. So long as sufficient factors are found to exist, as
would indicate that the defendant seeks to pass off its product as that
of the plaintiff, the tort of passing off stands committed. This act of
passing off may be by use of a single mark of the plaintiff, a
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combination of the plaintiff's marks, copying of the plaintiff's
distinctive trade dress, or by any other means. For this reason, while it
is not open, in an action for infringement, to allege that one mark
infringes two marks, or vice-versa, it is always open to a plaintiff to
show that, by combining distinctive features of different marks of its
goods, the defendant is seeking to create an overall picture of
association between the products of the defendant and the plaintiff so
as to persuade a person of average intelligence and imperfect
recollection to believe that the defendants' product emanates from the
plaintiff.
75. When, with this legal position in mind, one views the
defendants ‗CASINOS PRIDE' label, the manner in which it is
employed, and the manner in which the product is sold, it does appear,
prima facie, that the defendant is seeking to create an association, in
the mind of a customer of its product, with the plaintiff. The
coincidences are just too many. The defendant has used the mark
‗CASINOS PRIDE' while, incidentally, the mark of the plaintiff is
‗BLENDERS PRIDE'. Again incidentally, the mark is used in the
form of white colours on a blue background, similar to the colour
combination in which the plaintiff packages and markets its
IMPERIAL BLUE' whisky. Again, incidentally, the defendant's
product also contains a golden dome shaped design, which is present
on the plaintiff's label. The shape of the defendant's bottle is identical
to that of the plaintiff. Though, viewed individually, these likenesses
may not suffice to justify a conclusion even prima facie of
infringement, by the defendant's ‗CASINOS PRIDE' marks, as used
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by it, infringes the plaintiff's ‗BLENDERS PRIDE' or ‗IMPERIAL
BLUE' marks, the defendant has, as Mr. Hemant Singh correctly puts
it, 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 plaintiffs ‗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. Applying Munday63, in view of the apparent dishonest intent
of the defendant, the similarities between the defendant's and the
plaintiff's labels would have to be accorded precedence over the
dissimilarities. The intent of the defendant, therefore, to pass off its
‗CASINOS PRIDE' whisky as that of the plaintiff appears, prima
facie, to be apparent.
76. ―CASINOS PRIDE‖ may not, therefore, infringe ―BLENDERS
PRIDE‖ within the meaning of Section 29 of the Trade Marks Act,
inter alia because of the proscription contained in Section 17. The
―CASINOS PRIDE‖ label, even as affixed on the bottle, may not,
similarly, infringe the ―IMPERIAL BLUE‖ marks of the plaintiff,
again for want of imitation of a sufficient number of prominent
essential features. The superimposition of the ―CASINOS PRIDE‖
label on a trade dress which has the possibility of bringing to mind the
plaintiff and its products, however, betokens an apparent intent to
making the unwary customer believe that ―CASINOS PRIDE‖ is
perhaps a cheaper product from the plaintiff's brewery. Once such
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intent is thus apparent, following the principle enunciated in
Slazenger62, the Court would presume that the intention of creating, in
the mind of the customer of average intelligence and imperfect
recollection, the impression of an association between the Defendant's
product and the plaintiff, or that the ―CASINOS PRIDE‖ whisky is
also manufactured by the plaintiff, is successful.
77. I am, therefore, prima facie of the view that a case of passing
off, by the defendant, of its product as that of the plaintiff does exist,
on the facts before the Court.
Conclusion
78. An interlocutory injunction, in terms of the relief sought in this
application, shall, therefore, issue. The defendant, its directors,
partners as the case may be, assignees in business, sister concerns,
associates, agents, dealers, distributors, stockists are restrained from
manufacturing, marketing, selling or exporting the IMFL
manufactured by it under the impugned ―CASINOS PRIDE‖ marks,
reproduced in para 3 of this judgment, pending disposal of the suit.
79. The application is allowed accordingly.
C. HARI SHANKAR, J.
MARCH 2nd, 2022
r.bararia/dsn/SS
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