This post discusses an appeal before the Division Bench (DB, Two Judge bench) of the High Court of Madhya Pradesh against the order of the Commercial Court, Indore. The Plaintiff, Pernod Ricard India Private Limited, (Pernod Ricard) had filed the suit against the Defendant, Karanveer Singh Chhabra Trading as J.K. Enterprises (Karanveer) alleging infringement of trademark, copyright, passing off, delivery up, etc. The Commercial court, Indore concluded that ‘the marks as a whole are not similar and Pernod Ricard will not be able to claim exclusivity over the bluish shade.’

Brief facts

1. Pernod Ricard is engaged in the manufacturing and distribution of wines, liquors and spirits and ‘Blenders Pride’ and ‘Imperial Blue’ are two of their well-known whiskies. The marks ‘Blenders Pride’ and ‘Imperial Blue’ have been used in relation to whisky since 1995 and 1997 respectively.
2. The marks ‘Blenders Pride’ and ‘Imperial Blue’ are registered in class 33. ‘Pride’ is the prominent and distinctive component of the mark ‘Blenders Pride’ . Both brands have acquired goodwill and reputation in the market on account of extensive use and are exclusively associated with them.
3. Karanveer’s use of the mark ‘London Pride’ in relation to whisky is deceptively similar to ‘Blenders Pride’ and a label which is similar to Imperial Blue The use of a deceptively similar mark ‘London Pride’ and similar trade dress is in bad faith and misrepresentation to defraud the customers.
4. Pernod Ricard thus, sought injunction to restrain Karanveer from using the mark London Pride and the infringing label.

Karanveer countered the injunction application on the following:

1. He is the proprietor of ‘London Pride’ and is a registered copyright owner of the artistic work and all other intellectual properties connected therewith.
2. They manufacture and sell ‘London Pride’ branded whisky in Madhya Pradesh, and their mark is entirely different from the earlier registered trademarks.

The trial court, rejected the injunction application, primarily holding:

1. the rival packaging, style, logo, etc., are different,
2. the only common element in the rival marks is the word ‘Pride,’ which is used in common parlance, and none can claim exclusive rights,
3. the marks compared as a whole are not similar, and Pernod Ricard cannot claim exclusivity over the bluish shade.

Appeal at the High Court

1. The trial Court’s approach in splitting the marks is illegal. The marks ought to have been compared as a whole to adjudicate visual, phonetic, and structural similarity. However, the Court split up the word ‘Pride’ while comparing the marks, which is erroneous.
2. The comparison between rival marks should be done with the viewpoint of a man of average intelligence with imperfect recollection, which has not been done by the Court below. The finding that purchasers of ‘premium’ and ‘ultra-premium’ whisky are not likely to be deceived is contrary to the settled position of law.
3. Karanveer’s act of dishonestly adopting a previously existing registered trademark is an actionable tort that calls for the issuance of a temporary injunction without any further proof of other ingredients.

Karanveer contended:

1. The trial court has passed the impugned order in sound exercise of jurisdiction and calls for no interference.
2. Overall comparison of the marks shows that the colour scheme, heading, writing, logo, and other particulars are entirely different, and there is no chance of confusion.

Findings of the DB

1. As the grant of injunction is a discretionary relief, the Appellate Court will not interfere unless it is shown that the trial Court has acted illegally or perversely.
2. The contention that the trial Court has dissected the rival marks to hold that there are no similarities is not likely to succeed. A comparison of the products, i.e., the bottles, evidence that there does not appear to be any similarity.
3. The labels fixed on the products have entirely different patterns, and there is no chance of confusion even for a man of average intelligence with imperfect recollection.
4. On a comparison of the rival marks as a whole, ‘Blenders Pride’ and ‘London Pride, ‘ there is no visual, structural, or phonetic similarity. It is not a mere dissimilarity but a case of no actual similarity. Thus, no prima facie case of trademark infringement is made out.
5. The contention regarding the commonality of the word ‘Pride’ in ‘Blenders Pride’ and ‘London Pride’ should not succeed. In the instant case, it is to be noted that the registration is for the entire name ‘Blenders Pride’ and not individually for the the word ‘Pride.’ The word ‘Pride’ denotes the quality of the product when used in context with ‘Blenders’, and it is laudatory in nature. Pride is a noun of common usage that, anyway, cannot be registered as a generic word.
6. The use of the word ‘Pride’ cannot cause any misconception in the mind of the consumer. The first word of the rival marks is ‘Blenders’ and ‘London’, and there is absolutely no similarity. In this regard, the question of comparison of the words ‘Imperial Blue’ and ‘London Pride’ do not even arise.
7. Documents on record evidence that the word ‘Pride’ is common to the trade used by several entities and, thus, to claim exclusivity in respect of the ‘Pride’ part of its ‘Blenders Pride’ mark, to allege infringement cannot be accepted.
8. Pernod Ricard does not have 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. Moreover, there is no material on record which evidence that individual elements of their registered marks, namely, the blue colour, the golden dome, or the arrangement of letters on the label, or even the shape of the bottle, have acquired secondary meaning or become associated with them.
9. In the instant case, the rival marks are being used in respect of ‘premium’ or ‘ultra-premium’ whisky and it can be safely presumed that the consumers of such products would be mostly literate and have reasonable intelligence to distinguish between the bottles of ‘Blenders Pride’/’ Imperial Blue’ and that of ‘London Pride.’

Considering the above, the High Court held that the trial court’s order requires no interference and accordingly dismissed the appeal filed by Pernod Ricard.