The Delhi High Court
CORAM: HON’BLE MR. JUSTICE C. HARI SHANKAR
Advocate representing plaintiff Mr. Abhijeet Rastogi
Advocate representing defendant Ms. Prity Sharma
- Facts:
- The defendant’s mark “Casino Pride,” the label on the bottle and its design, as well as the packaging in which the bottle is sold, all allegedly infringe on the plaintiff’s registered trademarks, “Blender’s Pride” and “Imperial Blue,” as well as passing off the goods associated with the plaintiff’s business. The plaintiff is a private limited company that deals in the manufacture of liquor.
- “BLENDERS PRIDE” and “IMPERIAL BLUE,” both of which hold registered trademarks in Class 34 and 33, respectively, in the Trademarks classification. The Plaintiff has been utilizing the “BLENDERS PRIDE” trademark since 1995 and the “IMPERIAL BLUE” trademark since 1997.
- Conversely, Defendant has been using the contested “CASINOS PRIDE” trademark since August 2, 2017, which has been alleged to bear a confusing resemblance to the Plaintiff’s trademark.
- Furthermore, it was asserted that both the Plaintiff’s and Defendant’s products fall within the same category, specifically, Indian Made Foreign Liquor (“IMFL”), and consequently share the same customer base and are accessible through identical distribution channels.
- The Defendant sought registration for the “CASINOS PRIDE” trademark under Class 33, but the Plaintiff opposed this application.
- With respect to the facts, the two issues were raised:
- Whether Defendant’s impugned marks infringe the Plaintiff’s registered trademarks?
- Whether a case of passing off can be made against the defendant?
- Contentions of plaintiff:
- The learned counsel presented the argument that the defendant deliberately violated the plaintiff’s registered trademarks, namely, ‘Blender’s Pride’ and ‘Imperial Blue,’ through the design of its label, bottle, and packaging for the said bottle.
- Furthermore, the counsel asserted that the plaintiff’s mark had been officially registered in favor of the plaintiff’s predecessor on March 25, 1994. The plaintiff has consistently employed ‘Blender’s Pride,’ with ‘Pride’ being the distinctive element in relation to whiskey. Consequently, any use of the term ‘Pride’ by other entities could potentially harm the plaintiff’s business interests.
- The learned counsel also contended that there is no mandatory requirement for any entity to incorporate the term ‘Pride’ within their trademark, as it lacks a descriptive association with alcoholic beverages. Therefore, the defendant’s utilization of the term ‘Pride’ appears to be a deliberate attempt to mislead the public into confusing the defendant’s product with that of the plaintiff and to capitalize on the goodwill associated with the plaintiff’s brand.
- Moreover, it was argued that ‘Blender’s Pride’ and ‘Casino’s Pride’ exhibit phonetic similarities.
- Furthermore, it was asserted that the defendant has copied the trade dress of the plaintiff’s product with the intention to confuse consumers. This trade dress includes the use of specific names and inscriptions against a blue background, along with a dome-shaped insignia in gold, and the arrangement of the product’s name. These elements are integral to the plaintiff’s trademark.
- Additionally, the counsel claimed copyright infringement, asserting that the distinctive elements of the trade dress used by the plaintiff for ‘Imperial Blue’ Indian Made Foreign Liquor (IMFL) qualify as ‘artistic work’ under Section 2(c) of the Copyright Act, 1957. Consequently, the plaintiff’s contested label and packaging are deemed to be infringing copies thereof, as defined by Section 2(m). Accordingly, the plaintiff is entitled to protection under Section 51 of the Copyright Act, and the defendant should be enjoined from any further use of the copyrighted material, as stipulated by Section 55.
- Contentions of Defendant:
- The Defendant refuted the accusation of trademark infringement and maintained that they had genuinely and in good faith conceived and adopted the “CASINOS PRIDE” mark on May 25, 2016, openly using it since August 2, 2017.
- To support their stance, the Defendant invoked Section 17 of the Act, arguing that the Plaintiff cannot assert exclusive rights over a component of its composite mark, namely, “BLENDERS PRIDE.” It was brought to the Court’s attention that the Plaintiff had attempted, unsuccessfully, to register the standalone mark “PRIDE.” The Defendant contended that this case represented an indirect endeavor by the Plaintiff to secure exclusivity for the “PRIDE” mark.
- Furthermore, the Defendant emphasised that the term “PRIDE” was employed by numerous manufacturers and had thus become a common term in the trade. Consequently, “PRIDE” could not be considered the predominant element of the Plaintiff’s “BLENDERS PRIDE” mark. The Defendant further asserted that “PRIDE” was in the public domain, as it is either generic, descriptive, commendatory, or common, and has not acquired a secondary meaning in the perception of the consuming public. Hence, the Defendant refuted any infringement resulting from the usage of “PRIDE” in “CASINOS PRIDE.”
- The Defendant also rejected any notion of deceptive similarity between the marks and denied any grounds for idea infringement.
- Regarding the alleged infringement of the “IMPERIAL BLUE” mark, the Defendant contended that the way “CASINOS PRIDE” was presented on the label, with diagonal golden lines, the particular shade of blue used, and the arrangement of features on the label, were distinctly different from those employed in the “IMPERIAL BLUE” label.
- The Defendant asserted that the label, overall appearance, packaging, shape, color combination, and arrangement of features on the “CASINOS PRIDE” label were unique and divergent from both of the Plaintiff’s marks.
- Additionally, the Defendant argued that there was no likelihood of confusion due to significant differences in pricing and distinct consumer bases for the respective products.
- Rationale:
The court initially addressed the issue of trademark infringement concerning the plaintiff’s registered wordmark, “BLENDERS PRIDE.” It ruled that the plaintiff could not lay claim to exclusive rights over the “PRIDE” component of the mark. The court considered “PRIDE” to have an inherently laudatory character, as it etymologically signifies the quality of the product.
Furthermore, the court determined that “PRIDE” was a commonly used word that failed to distinguish the plaintiff’s product from those of other manufacturers. The court emphasized that, under Section 17(1) of the Act, the plaintiff’s exclusive right rested on the entirety of the “BLENDERS PRIDE” trademark. Any assertion of exclusivity regarding the “PRIDE” element of the mark was compromised by Section 17(2)(b) due to its inherent lack of distinctiveness.The court concluded that “PRIDE” was a universally generic, commonplace, and laudatory term within the “BLENDERS PRIDE” brand, and it was reasonable for any entity to desire to incorporate “PRIDE” into their product’s trade name.
However, the exception arose when considering the dominant part of the brand. To evaluate whether “PRIDE” constituted a dominant element within the “BLENDERS PRIDE” mark, the court employed the “plain view” test, considering how customers perceived the products or services. Regarding the plaintiff’s “BLENDERS PRIDE” device brand and the defendant’s “CASINOS PRIDE” device brand, the court found no visual similarity between them.
Additionally, the court applied the J.R. Kapoor principle, stating that “once the common ‘PRIDE’ portion of Plaintiff’s and Defendant’s trademarks is ignored, the remaining portions of the trademarks are entirely distinct. There is no phonetic, visual, or other similarity between the ‘BLENDERS’ and ‘CASINOS’ parts of the plaintiffs’ and defendants’ marks.”For these reasons, the court determined that no trademark infringement case regarding the “BLENDERS PRIDE” mark could be established. Subsequently, the court turned its attention to the alleged infringement of the “IMPERIAL BLUE” trademark. Referring to the definition of “trademark” in Section 2(m) of the Act, the court affirmed that the plaintiff had the freedom to register individual elements of the design, such as the color scheme or the gold dome, but not the mark as a whole.
The plaintiff possessed records of the complete label and the labeled bottle as individual device markings. Thus, as per Section 17(2) of the Act, no claim could be made for individual components of the marks. Furthermore, these individual elements had not acquired secondary significance over time, nor were they closely associated with the plaintiff’s “IMPERIAL BLUE” whisky. After a preliminary examination, the court found no evidence of infringement.Dismissing the plaintiff’s contention that the defendant had copied essential features of the plaintiff’s “IMPERIAL BLUE” label, the court emphasized that the most crucial feature on any label was the product’s name.Regarding the counterfeiting issue, the court made a distinction between the tort of forgery and the tort of infringement. It noted that, in considering the former, it was not constrained by the specific elements of the infringement tort.
The court found that conclusive evidence of common sense or bad faith was not required to establish the crime of counterfeiting. The presence of certain compelling factors indicating that the defendant was attempting to pass off their product as that of the plaintiff sufficed.The court thoroughly examined all similarities between the defendant’s mark and the plaintiff’s mark and concurred with the plaintiff’s argument. It was determined that the defendant had skillfully combined features from the “BLENDERS PRIDE” and “IMPERIAL BLUE” marks in a manner that could lead a reasonably intelligent customer, with prior knowledge of the plaintiff’s beverages, to wrongly associate the defendant’s product with the plaintiff’s.
The court also relied on Munday v. Carey (1905) 22 RPC 273, asserting that due to the defendant’s unmistakably dishonest intent, it was appropriate to prioritise similarities between designations over differences. Since the intention to deceive consumers into believing that “CASINOS PRIDE” was an inferior product compared to the plaintiff’s brewery was evident, the court concluded that the intention had indeed succeeded.
As a result, the court held the defendant accountable for passing off.
- Inference:
The court ruled against the Petitioners’ claim of trademark infringement regarding their “BLENDERS PRIDE” mark. The court applied the appropriate legal provisions and principles, noting that “BLENDERS PRIDE” must be considered as a whole mark, not giving exclusivity to the “PRIDE” element alone.
The court also rejected the Petitioners’ claim regarding infringement of the “IMPERIAL BLUE” mark, finding that the names were dissimilar, the labels distinguishable, and no semblance of deceptive similarity. Since the individual elements of the registered mark were not individually registered, they lacked secondary meaning and could not be associated with the product.
The High Court recognised the difference between infringement, governed by statutes, and passing off, derived from common law. While the Defendant’s intent and harm demonstration are irrelevant for passing off claims, deception or confusion is required for both infringement and passing off.
The court’s decision aligned with established legal frameworks, principles, and judicial precedents regarding trademarks.
- Drawbacks :
1) Defendant seems to exploit lacunae subsisting in section 17 of Trade mark act, 1999, as he is trying to use the suffix “Pride” and pass off his good as that of plaintiff’s under the shield of the above mentioned provision.
2) By passing this decree the illiterate or semi-literate consumers can be deceived easily because they won’t be able to distinguish between the suit goods thereby causing confusion. This scenario was widely discussed in M/S. Vrajlal Manilal & Co. v. Adarsh Bidi Co 1995 (15) PTC 88 (DEL).
.SHUBHAM MAHADIK 2ND LLB
— ILS LAW COLLEGE, PUNE