201910.28
13

Meso v Liberty: Bombay High Court upholds ‘common to the trade’ defence

Can the use of a house mark be sufficient to identify the origin of the goods so as to avoid confusion and deception?

The parties in Meso Private Limited v Liberty Shoes Ltd (Commercial Appeal No 362 of 2019 in COMM Notice of Motion (L) No 1184 of 2019) were vying for the rights to the marks LEGEND and FLIRT for perfumes. The case was originally brought by Meso Private Limited before the Bombay High Court to restrain the defendants, Liberty Shoes Ltd and others (collectively ‘Liberty’), from using the marks LEGEND and FLIRT in relation to perfumes. An ex parte injunction was granted in favour of Meso. However, the court set the injunction aside after hearing the arguments of both parties. The court concluded that the marks LEGEND and FLIRT are commonly used. In addition, Meso was using them with the brand name Devon, while Liberty was using them in conjunction with its house mark. Therefore, no confusion would be caused. Meso then challenged the order of the single judge before the Division Bench (two-judge bench) of the Bombay High Court.

Background

Meso is the registered proprietor of the marks LEGEND and FLIRT, which it acquired from a third party. The marks LEGEND and FLIRT have been registered in Class 3 since 1988 and 1994, respectively. Meso sells perfumes under the names Legend and Flirt and the bottles are packaged in boxes bearing the house mark DEVON.

Liberty Group, which was established in 1954, manufactures, markets and exports footwear, lifestyle products and fashion accessories, among other things. Liberty then ventured into the luxury lifestyle market and, in October 2018, introduced the brand Liberty Lifestyle. Liberty announced the launch of perfumes under the marks LEGEND and FLIRT to be sold on e-commerce websites and on its own website at ‘www.libertylifestyle.co.in‘.

Meso’s request that Liberty stop using the marks LEGEND and FLIRT in relation to perfumes was not acted upon by Liberty, which led to the present suit.

On appeal, Meso contended as follows:

  • It is the registered proprietor of the marks LEGEND and FLIRT. As Liberty did not claim prior use, infringement was clear.
  • The argument that LEGEND and FLIRT are common to the trade was not tenable; there was no evidence placed on the record to establish said defence.
  • If the defendant raises a defence of ‘common to the trade’ and fails to establish such defence, an injunction should follow. To establish that marks are common to trade, the use by other parties must be substantial and extensive.

Liberty argued that the ‘common to the trade’ defence was not its primary defence, but an ancillary one. The use of the marks in conjunction with its house mark would remove the likelihood of confusion and, therefore, an injunction should not be granted.

Division Bench decision

The Division Bench, after considering the parties’ arguments and the case law, held as follows:

  • The argument that LEGEND and FLIRT are arbitrary as they have no connection whatsoever to perfumes and, therefore, deserve the highest protection, was not acceptable. The dictionary meaning of ‘legend’ is “a famous person, especially in a particular field, admired by other people”. ‘Flirt’ denotes the attraction between sexes. Human interactions are also founded on the olfactory senses and perfumes enhance such interactions. Literature is replete with the belief that perfumes contain pheromones which may enhance attractiveness, and the names Legend and Flirt suggest that the wearer of the perfumes will be perceived in a particular manner or will have certain desirable qualities. Thus, the contention that LEGEND and FLIRT are arbitrary marks with no connection to perfumes could not be accepted as an absolute proposition.
  • With regard to the use of a house mark and the likelihood of confusion, the court observed that this will depend on the facts and circumstances of each case. To assess the likelihood of confusion, the court must consider the mode of purchasing the goods, the class of consumers, the surrounding circumstances and the degree of similarity.
  • The packaging of the perfumes marketed by Meso under the marks LEGEND and FLIRT had the word ‘Devon’ written prominently on it; the marks and the word ‘Devon’ appeared on the same side of the packaging. The packaging of the perfumes marketed by Liberty also had the marks and the word ‘Liberty’ written on the same side. Thus, Meso was selling its products as ‘Devon Legend’ and ‘Devon Flirt’, while Liberty was selling them as ‘Liberty Legend’ and ‘Liberty Flirt’.
  • Liberty placed on the record that the marks LEGEND and FLIRT were used in conjunction with house marks by various established brands, including for perfumes in Class 3.
  • Liberty is selling its products through e-commerce websites and its own website at
  • libertylifestyle.co.in’, and consumers are aware that Liberty is not selling perfumes under the house mark DEVON. The examples cited by Meso of biscuits and fruit juice did not correspond to premium lifestyle products, such as perfumes, and were not appropriate. The choice and selection of perfume is far more deliberate.
  • The average consumer of perfumes does not choose them casually and is influenced by the blends and fragrance, among other things. Thus, Liberty’s defence that use of LEGEND and FLIRT along with its house mark would not cause confusion had to be accepted at this stage, which sustained the refusal of an injunction.

In view of the above, the Division Bench dismissed the appeal.

Comment

The decision seems to give greater weight to house marks, and less weight to sub-brands, when determining confusion. From the point of view of consumers, both house marks and sub-brands play a role when buying a product. While a particular set of consumers may make a purchase based on the strength of a house mark, there may be a number of consumers who find sub-brands to be equally attractive. Thus, both should be factored in when determining consumer confusion.