Brief Facts:
Pernod Ricard S.A., the plaintiffs’ parent firm, purchased a portion of the Seagram Group in December 2001. The Seagram Company Ltd. awarded “Pernod Ricard S.A.” its many brand names, service marks, trademarks, and logos as well as the goodwill of the company. The trademark “SEAGRAM’S” is still used for alcoholic beverages sold under different Pernod Ricard Group brands, including Seagram’s Blenders Pride and others…The plaintiffs claim that since 1995, through the plaintiff no. 2, the plaintiff nos. 1 and 3 and their predecessors have been engaged in the business of bottling and marketing alcoholic beverages in India under the name “Seagram India Pvt. Ltd.” with the trade mark SEAGRAM serving as the key and distinctive characteristic. The plaintiff number 3 is alleged to be the owner of the SEAGRAM Marks, and the plaintiff number 2 is alleged to be a licenced user of the SEAGRAM Marks since 1995 under the name “Seagram India Pvt. Ltd.” The plaintiffs have been using the SEAGRAM Marks since 1940 both globally and in India since 1995. The sales of the goods bearing the mark Royal Stag rose from 4.04 Crore in the year 1995 to Rs. 848.68 Crore in the year 2008. The plaintiff has obtained the registration of the mark Royal Stag both in India and outside India. The plaintiff no. 1 assigned trademark registrations for ROYAL STAGto the plaintiff no. 2 vide the Intellectual Property Rights Agreement dated 27.06.2018.
Plaintiff’s Complaint:
Plaintiff learned that the defendant had submitted an application to the Trade Marks Registry for the registration of the mark “ROYAL CHAMP.” In light of this, plaintiff’s nos. 1 and 2 submitted their Notice of Opposition. The plaintiffs learned, in the fourth week of December 2009, that the defendant was producing, bottling, and distributing bourbon with the trade mark ROYAL CHAMP and under a label confusingly similar to the plaintiff’s ROYAL STAG label. Additionally, it was discovered that the defendant was utilising bottles having SEAGRAM Marks stamped on them.
Ad-Interim Order”
On Feb 16, 2010 the court passed an ad-interimorder restraining the defendant from manufacturing, selling or dealing in whiskey or any other alcoholic beverages under the impugned trademark ‘SEAGRAM’S’ and/or ‘ROYAL CHAMP orRoyal Stag as it may lead to confusion in the minds of consumer leading to trademark infringement.
Contension of the plaintiff’s Counsel:
The plaintiff’s attorney claims that the defendant’s trade dress and ROYAL CHAMP label create an overall misleading likeness with the plaintiff’s ROYAL STAG brand. The well-known mark ROYAL STAG of the plaintiff is deceptively similar in structure and phonetics to the defendant’s mark ROYAL CHAMP. All the elements that combined make the plaintiff’s ROYAL STAG trade dress unique has been duplicated by the defendant. The defendant’s bottle contains a label attached to the front panel that shares the same colour scheme as the plaintiffs’ ROYAL STAG label: cream, burgundy, and gold. The front panel features two broad ribbon devices with gold borders and a burgundy background, and the trade mark ROYAL CHAMP is shown there in large, capital letters in the same colour as the devices. Therefore the use of mark by the defendant leads to infringement of plaintiff’s statutory rights as well as common law rights which results in passing off, dilution and unfair competition by the defendants.
Prayer of the plaintiff:
The plaintiffs filed the current lawsuit, asking among other things for a decree of permanent injunction prohibiting the defendant, its officers, business assigns, distributors, licensees, and dealers from producing, selling, offering for sale, advertising, dealing in whiskey or any other alcoholic beverages under the contested trade mark/logo/label SEAGRAM’S and/or ROYAL CHAMP or any other trade mark/logo/label that may be confusingly similar to. The plaintiffs also ask for the rendering of the defendant’s profit accounts or, in the alternative, a judgement of Rs. 20 lakh (Rupees Twenty lakh rupees) plus court expenses.
Courts Order :
The Court reffered to Harry Reynolds v. Laffeaty’s Ltd. where the test of the commonness of the idea between two marks was applied in deciding the question of similarity between them, again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks are reasonably likely to cause confusion between them. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
The court was of the view that in this instance, the defendant’s use of the trade names ROYAL CHAMP and the confusingly similar logo to the plaintiffs’ SEAGRAM logo was obviously meant to mislead the unsuspecting consumer and to capitalise on the goodwill and reputation of the plaintiffs. Thus the suit is decreed in terms of prayers of the plaint. The defendant shall also pay to the plaintiff a sum of Rs.20 Lakh as damages and costs of the suit.
DUCTUS EDGE 