INTRODUCTION
The plaintiff, a manufacturer and distributor of wine, spirits and liquors has registered Trade Mark for the names “Blenders Pride”, “Imperial Blue” and “Seagram’s”, filed an appeal in the Hon’ble High Court of Madhya Pradesh under Order 43 Rule 1 (r) of Code of Civil Procedure, 1908[1] read with Section 13 of the Commercial Courts Act, 2015[2]; challenging the order dated 26-11-2020[3] passed by the Commercial Court of Law at Indore, which had dismissed the plaintiff’s plea for a temporary injunction against the respondent’s use of the word “London Pride”, the plaintiff having alleged the infringement of the plaintiff’s Trade Marks “Blenders Pride” and “Imperial Blue” by the defendant- by way of use of the word ‘Pride’ and adopting a trade dress similar to the bottle of “Imperial Blue”, so as to exploit the good will and the reputation of the plaintiff.
The plaintiff had thus, inter alia, prayed for a decree for temporary injunction under Order 39 Rule 1 and Rule 2 of the CPC[4] and for a permanent injunction, restraining the defendant or any associated body from selling, offering to sell, manufacturing and advertising under the Trade Mark ‘London Pride’.
THE PLAINTIFFS’ ARGUMENTS
As may be summarised, are that the word ‘Pride’ is “the most essential and distinctive component of their mark ‘Blenders Pride’” and that it is the plaintiff who has built a sizeable goodwill in the Indian Markets by utilizing the same since 1995. Further, the whiskey sold under the mark ‘Imperial Blue’ has a distinctive label, packaging and trade dress; all of which have been alleged to have fraudulently been imitated by the defendant in the bottle sold under the Trade Mark ‘London’s Pride’. Moreover, the plaintiff further alleged that the defendant’s bottles bear the plaintiff’s Trade Mark ‘Seagram’s’; thus illegally benefitting from the plaintiff’s hard earned influence and concurrently damaging the plaintiff’s commercial value in the Indian markets.
The plaintiffs also contended that the Trial Court erred in permitting the word “pride” to be compared with the defendant’s, by way of splitting the Trade Mark of the plaintiff, and that insufficient gravity was granted to the general similarity of these marks. Reliance was placed on cases including Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories[5], Parle Products Ltd. vs. J.P. & Co.[6] and Amritdhara Pharmacy vs. Satya Deo Gupta[7] by the plaintiff’s counsel in the process of the same. It was also argued that the lower court erred in not considering a consumer’s imperfect recollection and average intelligence while deciding the case, which led to an erroneous assessment.
THE DEFENDANT’S ARGUMENTS
Per contra, the defendant argued that the impugned order was unerring and intra vires, and that the evaluation made so as to adjudge upon the similarities and dissimilarities of the Trade Marks was carried out according to the procedure laid down by law. They further pointed out the fact that the products of both the parties were sold in boxes instead of being sold as loose bottles, and that there exists no similarity between the boxes pertinent enough to cause confusion and thus deception. It was further argued by the defendant that the plaintiffs had built up an insufficient case which only prima facie exists in the latter’s favour and that the plaintiffs have failed to establish any actual pecuniary damages. They further placed reliance on decisions made by the Apex Court in Best sellers retail (India) Pvt. Ltd. vs. Aditya Birla Nuvo Ltd. & others[8], Uttaranchal Road Transport Corporation vs. Mansaram Nainwal[9] and The Punjab Cooperative Bank Ltd. Vs. The Commissioner of Income Tax[10], among others.
RATIO DECINDENDI
Reliance was placed upon the principles as regards grant of interim injunction pending suit as have been laid down in the Hon’ble Supreme Court’s order in Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd.[11], and Wander Ltd. and another Vs. Antox India[12] while deciding the present appeal and it was further stated that “In an appeal against refusal of temporary injunction by the trial Court, the Appellate Court will not interfere unless it is shown that the trial Court has acted illegally or perversely since relief regarding grant of temporary injunction is a discretionary relief. Merely because two views were possible, it would not be sufficient to dislodge the order of the trial Court. If it appears that a plausible view has been taken, interference shall be declined.”[13]
The Hon’ble Court further discarded the contention of the plaintiffs’ side with regards to the splitting up and dissecting the Trade Marks of the contesting parties in the decision appealed against. It was further held that there exists no similarity between either the Trade Marks or the Trade Dress of all three bottles and boxes in question and that a man of average intelligence with imperfect recollection would not be confused while identifying and differentiating amongst the same. Furthermore, it was pointed that the plaintiff does not possess any registration in respect of the colours used in the mark “Imperial Blue”, or in any individual part of the design as could have been done by the same under Section 2 (m) of the Trade Marks Act, 1999[14].
As for the emphasis laid on the word ‘Pride’ by the plaintiffs, it was stated in the Hon’ble Court’s judgment that “Protection of Trade Mark is available only for a complete trade mark and not any word therein unless the same is registered as a whole as well as in part as separate trade mark. The plaintiffs have not got the word ‘Pride’ separately registered as a trade mark. The word ‘PRIDE’ denotes quality of the product when used in context with ‘BLENDERS’. It is laudatory in nature, signifying the pride of blenders in their product. Pride is a noun and is of common usage which even otherwise cannot be registered being a generic word. It cannot be treated as distinctive or as being capable of distinguishing the product of plaintiffs from that of any other manufacturer of whisky. The complete trade mark has to be used and protected as such and its holder cannot bifurcate the same on his own.”[15] And further that the term ‘Pride’ is publici juris common to trade, including the liquor trade, and was thus disregarded.
CONCLUSION
The issue of deceptive similarity depends upon the consumers whom the product in question influences and is thus likely to deceive, as well as the rules of comparison that have to be applied while ascertaining the similarities and the dissimilarities between the product.
Building upon the first point, it was highlighted by the Hon’ble Court that given the products’ nature falling under the categories of ‘premium’ and ‘ultra premium’ whiskey, it is safe to presume that the consumers of said products would majorly be literate persons having reasonable intelligence and would thus be able to distinguish amongst the same even with imperfect recollection and average intellect. “Liquor consumers of scotch whiskey are educated and discerning type. They are literate persons belonging to the affluent class of society.”[16] The test of deceptive similarity as laid down by the Apex Court in Khoday Distilleries Limited vs. The Scotch Whisky Association[17] was applied to reach upon the aforementioned conclusion.
As for the second point under consideration, the Hon’ble Court concluded that the learned Trial Court did not commit any error in having found no similarity peculiar enough to deceive the consumers of neither the plaintiffs’ products nor the defendants’.
The impugned appeal was thus found to be devoid of any merit and was thus dismissed; further, the Trial Court was directed to proceed with the matter on merits and to reach to a conclusion upon the matter in an expeditious manner within a set time frame of nine months.
SLP IN SUPREME COURT
Unsatisfied by the judgement of the lower court, the plaintiff decided to file an SLP in the Hon’ble Supreme Court challenging this decision passed by the Hon’ble High Court of Madhya Pradesh. Subsequently, the Apex Court issued notice on a Special Leave Petition challenging a Madhya Pradesh High Court judgment on the trademark dispute between Pernod Ricard India Pvt Ltd and JK Enterprises. Senior Advocate Mukul Rohatgi on behalf of the plaintiff showcased the bottles, emphasising the alleged similarities in trade dress and bottles in front of the bench, comprising CJI DY Chandrachud, Justice J.B. Pardiwala, and Justice Manoj Misra. The decision in the present case is till pending before the Hon’ble Apex Court for its final decision.
AUTHOR: Ms. Archi Jain, pursuing BBA LLB from Amity University Madhya Pradesh
[1] Order 43 Rule 1 (r) of Code of Civil Procedure, 1908
[2] Section 13 of the Commercial Courts Act, 2015
[3] order dated 26-11-2020
[4] Order 39 Rule 1 and Rule 2 of the CPC
[5] Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980
[6] Parle Products Ltd. vs. J.P. & Co., AIR 1972 SC 1359
[7] Amritdhara Pharmacy vs. Satya Deo Gupta, AIR 1963 SC 449
[8] Best sellers retail (India) Pvt. Ltd. vs. Aditya Birla Nuvo Ltd. & others, (2012) 6 SCC 792
[9] Uttaranchal Road Transport Corporation vs. Mansaram Nainwal, (2006) 6 SCC 366
[10] The Punjab Cooperative Bank Ltd. Vs. The Commissioner of Income Tax, AIR 1940 PC 230
[11] Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd., (1999), 7 SCC 1
[12] Wander Ltd. and another Vs. Antox India, 1990 (Supp) SCC 727
[13] This case law
[14] Section 2 (m) of the Trade Marks Act, 1999
[15] Cross reference this case
[16] Cross reference this case
[17] Khoday Distilleries Limited vs. The Scotch Whisky Association, 2008 (10) SCC 723
