Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, CS (Comm) 94/2021, decided on 02.03.2022
The Delhi High Court in Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, CS (Comm) 94/2021, rendered on 02.03.2022, dismissed the trademark infringement action of Pernod Ricard India Private Limited (hereinafter referred to as “the plaintiff“), but held Frost Dalcon Distilleries Limited (hereafter “the defendant“) liable for the passing off its products as plaintiff and issued a protective injunction in terms of the relief sought by the plaintiff.
The Plaintiff has two products that are the subject of this case, “BLENDERS PRIDE” and “IMPERIAL BLUE“, both with registered trademarks in Classes 34 and 33, respectively, of the Trademark Classification Categories. The plaintiff has used the “BLENDERS PRIDE” brand since 1995 and the “IMPERIAL BLUE” brand since 1997.
On the other hand, Defendant has been using the impugned “CASINOS PRIDE” mark since 02.08.2017, which was claimed to be confusingly similar to Plaintiff’s mark.
It was also alleged that Plaintiff’s and Respondent’s products belong to the same segment, namely Indian Made Foreign Liquor (“IMFL“), have the same customer base and are available from the same outlets.
The Defendant requested registration of the contested trademark “CASINOS PRIDE” under Class 33, but the Claimant filed an opposition request. With respect to the objection, Plaintiff’s two main allegations against Respondent were as follows:
- Whether Defendant’s impugned marks infringe the Plaintiff’s registered trademarks?
- Whether a case of passing off can be made against the Defendant?
The Plaintiff alleged that the Defendant knowingly infringed the Claimant’s trademarks “BLENDERS PRIDE” and “IMPERIAL BLUE”.
Plaintiff explained that in two cases, namely Austin Nichols and Co. v Arvind Behl 2006 (32) PTC 133 (Del) and Rhizome Distilleries v UOI 2016 (65) PTC 132 (Mad), the High Court of Delhi ( hereinafter referred to as “the Court”) and the Madras High Court have recognized both “BLENDERS PRIDE” and “IMPERIAL BLUE” as trademarks with a reputation within the meaning of Section 2(1)(zg) of the Trademarks Act, 1999 ( hereinafter “the law“), claiming that both marks were so closely associated with the plaintiff that they had become source identifiers.
The plaintiff told the court that in an effort to match the plaintiff’s trademark as closely as possible, the defendant also used a blue background on the packaging in which the plaintiff markets its product, a deliberate diversion from the mark that the defendant wanted to register.
In support of the infringement claim of “BLENDERS PRIDE“, Plaintiff argued that the word “PRIDE” in “BLENDERS PRIDE” was a distinguishing feature, and its use by Defendant would damage the reputation of Plaintiff’s trademark and result in irreparable loss.
The Plaintiff alleged that no one is obliged to use the word “PRIDE” for their alcoholic beverage because it is not a descriptive term for alcoholic beverages. The plaintiff further claimed that “CASINOS PRIDE” has no etymological meaning, and the word “PRIDE” is only used to capitalize on the plaintiff’s goodwill and reputation and to mislead consumers into confusing the products with or mistaking them for related to those of the plaintiff.
In addition, Plaintiff highlighted the phonetic similarity between the phrases “BLENDERS PRIDE” and “CASINOS PRIDE.”
To support the “IMPERIAL BLUE” infringement claim, the plaintiff alleged that the product is sold with a distinctive trade dress that includes the name and other writing on the label in white letters on a blue background with a dome-shaped insignia on the gold and the name of the product written in two words, one under the other.
The Plaintiff alleged that the Respondent copied these essential characteristics onto its “CASINOS PRIDE” label and applied them to the bottle and bottle packaging.
The Plaintiff further alleged that Plaintiff’s use of an identical bottle and the label affixed thereto violated the Plaintiff’s trademark “IMPERIAL BLUE”, which was separately registered by the Plaintiff. The Plaintiff also relied on Section 154 of the Act to claim exclusivity over the individual parts of the mark, such as the blue color, gold dome, etc. and claimed that its “IMPERIAL BLUE” registrations constitute a set of trademarks within the meaning of Section 154 of the Act. The defendant copied “PRIDE”, which is the distinctive part of the “BLENDERS PRIDE” brand, and the blue colour, gold dome, general dress and commercial image of the “IMPERIAL BLUE” brands to create a label and packaging design that would result in confusion or a connection between the competing products.
Finally, the plaintiff alleged copyright infringement because the distinctive features of the IMFL trade dress “IMPERIAL BLUE” constituted an artwork within the meaning of Section 2(c)5 of the Copyright Act 1957 and was the contested copyright of the plaintiff. The label and packaging constitute an infringing copy within the meaning of Section 2(m), for which Plaintiff is entitled to protection under Section 51, and Defendant may obtain an injunction against the use of the copyright owner’s rights.
Rather, the defendant denied the allegation of trademark infringement and asserted that the defendants honestly and in good faith thought up and adopted the “CASINOS PRIDE” trademark on May 25, 2016, and had openly used it since May 2, 2016, August 2016
The Defendant relied on Section 17 of the Act to claim that Plaintiff could not claim exclusivity with respect to any part of its composite mark “BLENDERS PRIDE”. The Respondent also informed the court that Plaintiff attempted to register the trademark “PRIDE” but did not, arguing that this case was an indirect attempt by Plaintiff to seek exclusivity with respect to the trademark “PRIDE“.
The defendant also noted that the word “PRIDE” is used by various manufacturers and has consequently become common in the industry. Therefore, “PRIDE” cannot be the dominant part of Plaintiff’s “BLENDERS PRIDE” trademark. Defendant also argued that “PRIDE” was publici juris because it was “general, descriptive, laudatory or general” and had not acquired a secondary meaning in the minds of the consumer public. Therefore, the defendant denied any infringement of the law for using “PRIDE” in “CASINOS PRIDE“.
The defendant also denied any deceptive similarity between the marks and also dismissed any claims of infringement of an idea. The defendant denied the infringement of the “IMPERIAL BLUE” trademark and asserted that the inscription “CASINOS PRIDE” on the label between diagonal gold lines, the shade of blue used on the labels and the arrangement of the label features on the labels are completely different from those used on the “IMPERIAL BLUE” label.
Defendant claimed that the label, clothing, packaging, shape, color scheme, and arrangement of features on the “CASINOS PRIDE” label are distinct and distinct from Plaintiff’s trademarks.
The Respondent further argued that there was no likelihood of confusion since the Respondent’s label had sufficient additional content. The Respondent also noted the price difference between the products and their different consumer tribes.
Judgment with reasoning
The court first dealt with the question of infringement of the plaintiff’s registered word mark “BLENDERS PRIDE“. The court ruled that the plaintiff could not claim exclusivity over the “PRIDE” portion of the mark. Since “PRIDE” etymologically indicates the quality of the product, the court affirmed that prima facie it has a laudatory character.
The court also found that it was a common word that did not distinguish the plaintiff’s product from that of other manufacturers. The court found that “Section 17(1) plaintiff’s right would be the BLENDERS PRIDE trademark as a whole. Any claim of exclusivity of the “PRIDE” part of the mark would be affected by Section 17(2)(b) as it is inherently non-distinctive.”
The Court concluded that “PRIDE” was a clearly general, common and laudatory expression in the brand “BLENDERS PRIDE“, and everyone’s desire to use “PRIDE” as part of the trade name of the product is perfectly understandable”.
The only exception is the dominant part of the brand. The court used the “plain view” test to determine whether “PRIDE” is a dominant component of the “BLENDERS PRIDE” mark, given the customer’s perception of the products or the person using the service. With regard to the plaintiff’s “BLENDERS PRIDE” device brand and the defendant’s “CASINOS PRIDE” device brand, the court found that there was no similarity between the two brands to the naked eye.
The court also applied the J.R. Kapoor, stating that “once the common ‘PRIDE’ portion of Plaintiff’s and Defendant’s trademarks is ignored, the remaining portion of the trademarks are entirely different. It is evident that there is no phonetic, visual or other similarity between the parts “BLENDERS” and “CASINOS” of the plaintiffs’ and defendants’ marks.”
For the above reasons, the court decided that no case of infringement of the mark “BLENDERS PRIDE” could be determined. The court then turned to the question of infringement of the “IMPERIAL BLUE” trademark. Relying on the definition of “trademark” in Section 2(m) of the Act, the court found that the plaintiff was free to register any individual part of the design, such as the color scheme, gold dome, etc., but not her.
Plaintiff only had records of the label in its entirety and the labelled bottle as individual device markings. Therefore, with regard to Section 17 (2) of the Act, no claim can be made to individual elements of the marks. The court further noted that these individual elements did not acquire secondary importance over time, nor were they closely associated with the plaintiff’s IMPERIAL BLUE whisky. After a preliminary examination, the court found no evidence of an infringement. Rejecting the plaintiff’s contention that the defendant copied essential features of the plaintiff’s “IMPERIAL BLUE” label, the court found that “the ‘most essential’ feature on any label would be the name of the product. The last On the forgery issue, the court noted the difference between the tort of forgery and the tort of infringement, noting that in considering the first claim, it was not bound by the specific elements of the tort of infringement.
The Court found that conclusive evidence of common sense or bad faith is not essential in proving that the crime of counterfeiting was committed and the presence of certain sufficient factors which would indicate that the defendant is attempting to sell his product as the of issuing the plaintiff is enough.
The Court examined all similarities between the Defendant’s mark and the Plaintiff’s mark and agreed with the Plaintiff’s argument that Defendant “deftly combined features of the marks “BLENDERS PRIDE” and “IMPERIAL BLUE” in the imagination of a customer with of average intelligence and imperfect memory, having previously purchased and being aware of plaintiff’s “BLENDERS PRIDE” and “IMPERIAL BLUE” beverages, is dangerously likely to lead to a conclusion of an association between the defendant’s product and the plaintiff’s.” The court also relied on Munday v. Carey, (1905) 22 RPC 273, holding that because of the defendants’ manifestly dishonest intent, it was appropriate to give similarities between designations precedence over differences. Since the intention to make consumers believe that “CASINOS PRIDE” was a cheaper product than that of the plaintiff’s brewery is evident, the court decided that the court would assume that the intention was successful.
As a result, the court found the defendant liable for misrepresenting its product as that of the plaintiff.
The Delhi High Court, after examining the parties’ arguments, ruled that Pernod Ricard could not initiate infringement proceedings as the phrase/term “PRIDE” was common in the liquor trade and that Pernod Ricard could not claim an infringement of exclusivity using the word “PRIDE” instead of claiming its rights to its trademarks “BLENDERS PRIDE” and “IMPERIAL BLUE” as a whole by applying the “anti-dissection” rule.
The anti-dissection rule requires that when hearing composite mark infringement cases, courts must consider the composite marks in their entirety as a whole, rather than breaking them down into their component parts and comparing them with corresponding parts of a competing mark to determine the likelihood of confusion.
The Delhi High Court found that although the registered marks were different, in the present case, all the essential requirements for a finding of counterfeiting were met.
In its conclusions, the court additionally justified the broadcast right by saying that Frost Falcon had combined distinctive features of different brands to suggest an association with Pernod Ricard, which could cause confusion among customers with its label “CASINOS PRIDE“, the way how the trademark has been used and the product has been sold.
For the reasons explained by the Delhi High Court in the case of Pernod Ricard India Private Limited v Frost Falcon Distilleries Limited, an injunction against counterfeit goods or services can be granted even though no trademark infringement has been found.
Plaintiffs’ “BLENDERS PRIDE” trademark infringement lawsuit is based on their assertion that they have an exclusive right to “PRIDE” as the dominant party to the “BLENDERS PRIDE” trademark. The Court correctly applied art. 17 of the Act, as well as the anti-dissection rule to believe that “BLENDERS PRIDE” must be considered as a whole and be denied any exclusivity on “PRIDE”.
The Court based the previous observation on the reasoning that the consumer would not divide it into components. Plaintiff had an even weaker case for infringement of the trademark “IMPERIOR BLUE” as there was no prima facie case as the names were different, the labels were distinguishable, and no misleading similarity was found.
The Court rightly observed that the individual elements of the plaintiff’s trademark, being unregistered, acquired no secondary meaning, nor could they be associated with the product. Therefore, no case of infringement could be inferred.
The High Court reiterated the distinction between infringement and passing off, the former being legal and the latter being common law. Although the defendant’s intent and proof of actual harm were found to be irrelevant to passing off the charge, the Court found that deception or at least confusion is the sine qua non for both the offense and for the store.
This Court’s decision is consistent with the trademark regulatory framework, consolidated principles and case law.
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