BATTLE OF PRIDE: PERNOD RICARD INDIA PVT. LTD. VS.  FROST FALCON DISTILLERIES LTD

BRIEF FACTS

In this case, the plaintiff is a private limited company dealing in manufacturing of liquor and alleges that defendant’s mark ‘Casino Pride’, the label on the bottle and it’s design along with the packaging in which the bottle is sold, all infringes the plaintiff’s registered trademarks which are ‘Blender’s Pride’ and ‘Imperial Blue’ and also passes off the goods associated with the plaintiffs business. The products of both plaintiff and defendant belongs to the same segment i.e. IMFL (Indian made foreign liquor) and caters to the same customer base and are sold by the same outlets. It was also judicially established in , Austin Nichols & Co. v. Arvind Behl (in respect of―BLENDERS PRIDE) and by the High Court of Madras in Rhizome Distilleries v. UOI (in respect of ―IMPERIAL BLUE) the mark of the plaintiff stands recognized as ‘well-known trademarks’ within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.

PLAINTIFF’S CONTENTIONS

1. The learned council submitted that the defendant has, by its label, its bottle, and the package in which the bottle is sold, deliberately infringed the plaintiff’s registered ‘Blender’s Pride’ and ‘Imperial Blue’ marks.
2. The council also submitted that plaintiffs mark has been registered in favour of the predecessor of the plaintiff on 25th March, 1994 and they have been using ‘Blender’s Pride’ with ‘Pride’ being the distinctive feature in respect of whiskey. Hence, use of word ‘Pride’ by others would cause damage to the plaintiffs business.
3. It is also submitted by the learned council that there is no compulsion for anyone to use word ‘Pride’ as part of their mark as it is not descriptive of alcohol beverages and hence use of word ‘pride’ by the defendant is clearly the deceive public inti mistaking the product of the defendant with that of plaintiffs and to capitalize on plaintiff’s goodwill.
4. It has been submitted that Blender’s pride and Casino’s pride are phonetically similar.
5. It has been submitted that the trade dress of the plaintiff’s product has also been copied to confuse the consumer which includes name and other writings on the blue background with dome shaped insignia in gold and name of the product written one below other which are the essential features of the plaintiff’s mark.
6. The council claimed copyright infringement as according to him the distinctive features of the trade dress in which plaintiff sells ‘Imperial Blue’ IMFL constitutes ‘artistic work’ according to section  Section 2(c) of the Copyright Act, 1957 and the plaintiff‘s impugned label and packaging infringing copy thereof within the meaning of Section 2(m) over which the plaintiff is entitled to protection by Section 51 and the defendant is liable to be injuncted against use of copy right by Section 55.

DEFENDANT’S CONTENTIONS

1. Learned council of the defendant submits that the defendant had no mala fide intentions and had honestly with bona fide intentions adopted ‘Casino’s Pride’ mark on 25^th May, 2016 and has been using it since 2^nd August 2017.
2. Section 17 of the Trademark act has been invoked by the defendant to contend that the plaintiff cannot claim exclusivity over part of mark ‘Blender’s Pride’ and 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 which was previously rejected by the Registrar.
3. It has been submitted that the defendant has not infringed the plaintiff’s ‘Blender’s Pride’ in any manner as the suffix ‘Pride’ has been used by several manufacturers in this trade and hence it cannot be contended that ‘Pride’ is the dominant feature of the plaintiff’s mark.
4. It has been submitted that no exclusivity can be claimed in term ‘Pride’ until it creates a secondary meaning in the mind of the consumer and hence no case of infringement can be made against the person who uses ‘Pride’ as a part of their mark of alcoholic beverages.
5. The learned council also submits that the trade dress of the defendant’s marl ‘Casino’s Pride’ which includes label, packaging, shape , colour combination etc. are distinct from that of plaintiff’s both trademarks ‘Blender’s Pride’ and ‘Imperial Blue’
6. The defendant also denies the deceptive similarity between ‘Casino’s Pride’ and “Blender’s Pride’ as they are not phonetically or visually similar.
7. The council submits that no case of infringement can be made by combining two marks and alleging deceptive similarity, and submits that only similarity between the plaintiff’s and defendants mark is ‘blue colour’.

LEGAL POSITION

In an action for infringement, the Plaintiff on account of it being a registered trade mark in dispute claims to have an exclusive right to use the mark concerning those goods. However, a passing off by a person of his goods as those of another, in essence, is an action of deceit. An action for trade mark infringement is a statutory remedy and on the other hand, an action for passing off is a common law remedy. In an action for infringement of the plaintiff’s trademark, it is immaterial that the outfit, outer covering and other written marks on the goods originate from a different source than that of a registered proprietor’s trade mark. The liability of the defendant in such a case may be absolute. However, in case of passing off of trade mark, the defendant may escape liability if he can show that the material added by him is sufficient to distinguish his goods from that of the plaintiff’s goods. Trade mark Act, 1999 does not have an explicit provision that specifically describes passing off but there are n no. of common law judgments that lets the courts draw its meaning as to whether the infringement of trade mark done is in such a way that the mark is not only deceptively similar to the trade mark of that other company but itis also capable of creating or is creating confusion for the customers, which ultimately results in damage for business of the company. The fundamental principle behind the tort of passing off is that “A man is not to sell his goods under the pretense that they are the goods of another man”.

Several judicial pronouncements have recognised the distinction between infringement and passing off are- In Satyam Infoway v. Sifynet Solutions Pvt. Ltd, The Supreme court held that 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, In Laxmikant V. Patel relying on Oertil V. Bowman the three determinative issues in adjudicatingon a claim of passing off were identified, 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.

LEGAL APPLICATION

1. According to the court, plaintiff’s mark contains word ‘Pride’ is not dominant part of the mark “Blender’s Pride” on applying the dominant test.  ‘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.
2. If 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 respectively. No case of idea infringement can, either, be said to exist. Also, there is no similarity visually in the ‘Blenders Pride’ device mark of the plaintiff and the ‘casinos pride’ device mark of the defendant.
3. 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.Thus, according to the court no case can be made in this term.
4. Hence, the court did not sustain the prima facie case of infringement of plaintiff’s mark ‘Blender’s Pride’ and ‘Imperial Blue’ with ‘Casino’s Pride’
5. According to the court, case of passing off can be made as passing off protects the reputation and goodwill of the product while infringement protects only the mark.
6. Defendant’s mark ‘Casino’s Pride’ does may leave an impression on the consumer’s mind that it is a low cost product line of the Plaintiff’s ‘Blender’s pride’ or ‘Imperial Blue’ as incidently the shape of the bottle is similar with the blue background label along with the golden combination.
7. Defendant’s mark may not infringe Plaintiff’s mark but label on the trade dress of the defendant may possibly confuse the consumers that defendants product belongs to the plaintiffs brewery.

CONCLUSION

It was held by the court, that there was a prima facie case of passing off by the defendant and the trade dress of the defendant’s ‘Casino’s Pride’ would create an impression in the mind of the consumers that the product of the defendant belongs to the product line of plaintiff and hence, interlocutory injunction was passed.

IA 2821/2021 CS (COMM) 94/2021