LANDMARK CASES ON TRADE MARK INFRINGEMENT OF LIQUOR BRANDS

LANDMARK CASES ON TRADE MARK INFRINGEMENT OF LIQUOR BRANDS

1. Carlsberg India Pvt. Ltd vs. Radico Khaitan Ltd.
   
   

Facts: Radico Khaitan Ltd., a manufacturer of alcoholic beverages was the plaintiff. The company was using the numeral i.e. 8 from 2006 itself till now, and they were generating scores of profit which was added onto their revenue turnover. Their sale during the years 2006-2007 till 2010-2011, was 2136.4 million to 2565.9 million. Later, Carlsberg started selling beer by launching the product in February 2011 under the trademark PALONE 8 with the numeral 8 being used in the same font and color as alike the one used by Radico.

Below are the products of Radico and Carlsberg respectively:

Radico:

1. 8PM BERMUDA XXX RUM

2. 8PM ROYALE

3. 8PM EXCELLENCE BRANDY

4. 8PM BERMUDA WHITE ORIGINAL with a slogan: “AATH KE THAATH”

Carlsburg:

1. PALONE8 WITH A SLOGAN: ‘8 KA DUM”

Dispute:

Related to the usage of numeral i.e. 8, color, identical font and identical font size with which the numeral, 8, is printed on the bottle “distinguishing & identifying feature of its mark.”

Idea of adding Slogan on 8 to make the product distinctive.

Price differentiation among the products is substantial.

Arguments by Radico:

Radico contends that Carlsberg is selling beer under the trademark Palone8 with numeral 8 being used in the same font size, same font and color. From the point of a reasonable person involved the trade in any way, and from the perspective of the practices prevalent in the industry i.e. to see what other players are doing in the same industry, it can potentially create confusion in the minds of the consumers.

By adding the slogan on numeral 8, Carlsberg essentially portrays the idea of Radico’s trademark which emerges in the minds of the consumers. They can associate and connect to Radico’s trademark i.e. 8PM while looking at the Carlsberg beer bottle with the label prominently displaying the numeral 8PM in the same font and size and with the same color and styling like that of Radico’s slogan.

Arguments by Carlsberg:

There are various alcoholic drinks brands in the market having reference to the numeral 8 like Signature and Bacardi. They contended that Numeral 8 was public juris which meant, it was a public right which is common to the trade in alcohol. Registration of the trademark Palone8 was under class 32 of Trademark Act 1999, and both the products belong to different class. Further, as the alcohol consuming consumers are very much aware, informed and can distinguish the features of beer / whisky/ rum/ brandy which are registered under the class 33 of trademark act 1999, it would not mislead the consumers.

Radico’s slogan “AATH KE THAATH” with numeral 8 showcases & somehow connects the numeric value to the luxury of Eight (8) empowering it in such a way. While on the other hand, Carlsberg using the slogan 8 “KA DUM” regarding numeral 8, shows the potency of eight rather than intending to mislead the consumers. Both belong to different class and both are different products. Even the other products like:

– WHISKY under SIGNATURE with numeral 8, displayed prominently on the label,

– Bacardi’s 8 RUM

Similarly, there are other various brands in alcoholic industry which uses the same concept to make their product distinctive either by adding numeral or by adding the slogans.

The reason about the price differentiation is substantial, Radico’s product i.e. whisky price is costing Rs.300 per bottle while Carlsberg product i.e. beer price is costing Rs. 65 per bottle. Well, if products belong to the different class and category, having distinct feature by itself then there will a cost differentiation. Beer cannot be sold at that range of price where Whisky and Rum are being sold.

Judgment:

On 20th December 2011, the Delhi High Court held the case in favour of Carlsberg and dismissed Radico’s prayer for injunction.

1 The plaintiff has registered his trademark as 8PM for advertising its product in the market and,

2. Both the goods & products have dissimilarity and both belong to different sections and class and beer is only a dilution of alcohol and not as such alcohol,

3 And after applying the test of distinctiveness which includes numeral and considering the facts that Numeral 8 was public juris which meant, it was a public right which is common to the trade in alcohol. Merely by the stylized written form of the numeral 8, it cannot be a sufficient ground for Radico to obtain an injunction.

4. The decisive question is a simple trade dress analysis of the overall “look and feel” of the label, independent of its contents. Further, on comparing the two labels, it can be seen that there is no prima facie cause of any consumer confusion and damages caused, that would lead to infringement.

5.  It can be further seen that Radico had registration for a composite mark ‘8 PM’ and referring to Section 17 of the Trade Marks Act, a registered proprietor of a composite mark cannot seek exclusivity with respect to individual components of a Trade Mark. Since no exclusivity was claimed, there is no question of any infringement since the only common aspect in both the marks is the numeral 8.

• Allied Blenders &Distillers vs. Shree Nath Heritage Liquor pvt.
  Petitioner: Allied Blenders & Distillers

Respondent: Shree Nath Heritage Liquor Pvt.

Trademark: Officer’s Choice

Decision making Authority: Delhi High Court

Facts:

The Plaintiff had filed a suit for permanent injunction restraining the defendant from selling, distributing, advertising or dealing in alcoholic beverages especially Indian made Foreign Liquor (IMFL) or goods of any description bearing trade mark ‘Collector’s Choice’ or any other mark deceptively similar to plaintiff’s trade mark ‘Officer’s Choice’.

Issue:

Whether the marks of Allied Blenders & Distillers and Shree Nath Heritage Liquor, are similar and whether there is any likelihood of confusion between the two.

Sections/Acts Referred:

Section 2(h) of the Trademarks act 1999

Appellant Argument:

The plaintiff in their arguments stated that: the Indian whisky Officer’s Choice had become well-known on account of the fact that they had become the leading brand of whiskey across the world and had obtained the third position in the leading brands of spirits.

Officer’s Choice had become the largest whisky brand in world and also became the third largest spirit brand on planet behind HiteJinro’s Korean Soju Jinro, and Diageo’s Smirnoff vodka. The Plaintiff’s contention was that defendant had applied for registration for the trade mark Collector’s Choice. The mark Collector’s choice was devoid of any distinctive character. By using the word Choice in the trademark, the plaintiff stated that the defendant was taking undue advantage of the similarity that would occur due to the utilization of the name Choice in the trademark Collector’s choice. It would therefore cause the plaintiff to suffer a loss whenever the defendant sold his products under the name Collector’s choice, would lead the consumers into believing that the defendant’s good is that of the plaintiff’s officer’s Choice.

Respondent’s argument:

The defendant stated that marks similar to that of Officer’s Choice had been accepted in the past by learned examiners, which proved that usage of these words had become customary. The defendant in their arguments relied on Kerly‟s Law of Trade Marks and Trade Names stating that the fundamental basis for infringement of a trade mark is that the trade mark of the defendant should not be similar to that of the plaintiff’s and there should be no likelihood of confusion which would include the likelihood of association. The defendant also relied upon the case of Allied Blenders & Distilleries Pvt. Ltd. Vs. John Distillers Ltd., where it was held that there was no deceptive similarity or confusion between the marks Officer’s Choice and Original Choice in-spite of both having similar acronym of, OC.

The defendant also relied upon previous judgments on the basis of which, the defendant stated that the plaintiff’s mark and the defendant’s mark were visually and phonetically different from each other. Therefore there should not be any form of injunction against the defendant.

Judgment:

The court stated that the use by defendant of the trade mark was not for a long time and for large sale figures, while the loss sustained by the plaintiff by allowing the defendant to use the mark during the pendency of the suit would be irreparable. The court further stated that it failed to see any form of a loss that may have occurred to the defendant who was only a new entrant in the market and who had hardly used the mark and who was yet to build any form of goodwill or reputation. The court also stated that the defendant had not given any sale figures under its mark ‘Collector’s Choice’ and by making use of mark Collector’s Choice, was taking unfair advantage of the registered trade mark of the plaintiff. Therefore the defendant was restrained during pendency of suit from selling, distributing, advertising or otherwise dealing in goods bearing any mark/ label similar or deceptively similar to plaintiff’s mark/label ‘Officer’s Choice’ or from doing anything leading to passing off their goods as goods and business of the plaintiff.

• Rhizome Distilleries P. Ltd & Ors. vs Pernod Ricard

Fact:

The plaint was filed by Pernod Ricard S.A. France and Ors. alleging that the defendants’ (Rhizome Distilleries P. Ltd. and Ors.) whisky, Imperial Gold, was an imitation of and was structurally, as well as phonetically, similar to the Plaintiffs reputed trademark IMPERIAL BLUE and the registered trademark IMPERIAL RED. Also, the Defendants were said to have imitated the ROYAL STAG whisky label, in both the front and the rear panels. The whisky label was said to have used the trade dress which was an imitation of the ROYAL STAG trade dress in respect of colour combination, get up, shape and design of bottle and ROYAL STAG label.

Arguments by Pernod:

-the word ‘imperial’ had acquired secondary meaning in India and, therefore, it had exclusive rights over use of the word for alcohol products;

-Rhizome had adopted the word ‘imperial’ dishonestly in order to pass off its products as those of Pernod; and

– Pernod had used the trademark IMPERIAL BLUE continuously and uninterruptedly in India since 1997.

Arguments by Rhizome:

-there could be no claim for exclusivity over the word ‘imperial’, as it is used in common parlance; and

-the word ‘imperial’ was an obvious choice for whisky because of its laudatory nature.

Held:

The single judge of the Delhi High Court issued an interim order restraining Rhizome from manufacturing, selling, offering for sale, advertising, and directly or indirectly dealing in whisky or any other alcoholic beverages under the trademark IMPERIAL GOLD, or any other trademark/trade dress that was deceptively similar to Pernod’s. On appeal by Rhizome, the division bench of the Delhi High Court set aside the interim order of the single judge, holding as follows:

-The word ‘imperial’ is used by several other alcohol manufacturers for their products (eg, Imperial Tribute, Imperial Famous and Tetley’s Imperial). No exclusive or proprietary rights can   be claimed by either of the parties in respect of the word ‘imperial, as it is used in common parlance and may be found in every dictionary.

-The word ‘imperial’ is laudatory in nature, as it alludes to royalty or grandeur.

-Secondary meaning may be acquired over a number of years. Pernod started marketing its product only in 1997.

-Both Pernod and Rhizome owned registered trademarks under the Indian Trademarks Act for their competing brands. Therefore, the division bench upheld Rhizome’s appeal and set aside the order of the single judge. It held that Rhizome was allowed to market Imperial Gold whisky, provided that:

-the word ‘Rhizome’ was displayed prominently; and

-the Imperial Gold packaging was changed to avoid confusion with Pernod’s products. Pernod appealed to the Supreme Court: It contended that allowing the use of the word ‘imperial’ would  encourage infringers and other unscrupulous traders to copy Pernod’s trademark, thereby causing irreparable damage to the public at large. However, the Supreme Court refused to give any relief to Pernod and upheld the division bench’s decision.

• Bacardi and Company Limited v. Bhahety Overseas Private Limited &Ors

Facts:

Bacardi and Company Limited (“Plaintiff”) manufactures and sells rum-based alcoholic beverages which are also mixed with various fruit essences. These drinks are popularly known as “BREEZER”. Bahety Overseas Private Limited & Ors. (“Defendants”) also manufactures drinks but which are alcohol-free fruit-based beverages. These drinks are known as “FREEZMix”.

The Plaintiff alleged that the Defendants’ product infringes the plaintiff’s registered trademark and therefore seek for injunction against the defendants’ products. The word mark “BREEZER” and the shape mark of the bottle which is a well-known alcoholic drink have been duly registered under class 32 and 33.

Issue: The problem arose when the Defendants got their mark – “FREEZMix” registered and used it in a way which amounted to infringement of Plaintiffs’ mark. The fonting and styling of the Defendants’ mark was such which was deceptively similar to that of the Plaintiff’s mark.

Held: In furtherance of dealing with the problem, the Court took the view of the third person perception. It stated that the people are more likely to get confused between the brands when they see the word “FREEZ” printed similarly to that of “BREEZER”. The consumers will not check the registration of the wordmark claiming it to be valid. Here, the Court applied the test of average man’s intelligence and his imperfect recollection. After examining all the clauses of section 29 of the Act, it was realized that section 29(2) envisages under which circumstances any situation shall be observed as infringement. If the mark (1) causes confusion in the public minds and (2) leads the public to believe of any association between the registered mark and the infringing mark.

The court observed that the Plaintiff has a prima facie case for grant of interlocutory injunction on the basis of infringement of the registered marks. As a result of the analysis, the Defendants are injuncted from using the mark “FREEZ” or “FREEZMix” or any other sign, mark or domain name which even distantly are similar/ identical to that of the Plaintiffs’ mark. The Court also stopped the Defendants to use a design for its bottle which may be deceptively similar to that of the Plaintiffs’.

• Scotland Scotch Whiskey Association vs. Khoday India Limited

Facts: Khoday India Ltd (KIL) started producing ‘Peter Scot’ whisky in 1968 and got the trademark registered in 1974. After 13 years, the Scotch Whisky Distillers Association (SWDA), an industry body of distillers, blenders and exporters of Scotch whisky, moved the Assistant Registrar Trademarks for cancellation of the registered trademark ‘Peter Scot’ on the ground of its deceptive similarity to a foreign mark (Scotch whisky).

Arguments: Khoday argued that it had adopted the mark PETER SCOT because its distillery had been set up by a Scot called Peter Warren. Therefore, the mark PETER SCOT referred to Warren’s first name and nationality. Khoday also contended that the Scotch Whisky Association was not an aggrieved party and, consequently, was not entitled to file rectification proceedings against the PETER SCOT mark. The court held that the association itself was not an aggrieved party, since it was incorporated only to protect the interests of its members and carried out no manufacturing or trading activities. However, it was entitled to seek rectification in conjunction with whisky manufacturer John Walker, which is a member of the association.

Held: The registrar held that the word ‘Scot’ is evocative of scotch whisky. Therefore, when used in relation to whisky produced outside of Scotland, the word ‘Scot’ would deceive the average consumer into thinking that such whisky was a variant of scotch whisky, whether the word was used by itself or in association with another word (eg, ‘Peter’). Accordingly, the registrar held that the mark PETER SCOT should be removed from the Register of Trademarks.

The Madras High Court affirmed the registrar’s decision. The court also held that the fact that a mark has been registered does not give indefeasible rights in the mark if the registration is contrary to Section 11 of the Trademarks Act. Therefore, the expungement of the PETER SCOT mark was permissible even though the mark had been registered with effect from July 3 1971 and the rectification proceedings were initiated only in 1986. Further, the fact that the Scotch Whisky Association had been inactive for a long period of time did not amount to acquiescence, particularly since the statute does not prescribe a limitation period for filing rectification proceedings.

The Supreme Court opined that the Division Bench had committed a serious error insofar it failed to take into consideration the arguments vouched by Khoday and the contents of its label. Taking into consideration the averments of SWA, the various provisions of the Act, the Supreme Court opined that the issues that were principle consideration revolved around the delay in filling a rectification application and whether the lower courts had been misdirected in law by SWA ‘s co-parties.

The Court opined that a consideration to the term “Scot” as a sufficient ground to render the mark “Peter Scot” is deceptive or confusing. They added that the onus of proof lay upon SWA and the discharge of the same needed to be accounted for. Further, on the issue of a reasonable period, the Court opined that the same would not merely depend upon the nature of action initiated before a statutory authority but also upon the purport and object of the statute.