INTRODUCTION
In a current trademark dispute between competing whiskey manufacturers, Madhya Pradesh Excessive Courtroom refused to go a brief injunction towards the makers of ‘London Satisfaction’ for the alleged trademark infringement of registered emblems of ‘Blenders Satisfaction’ & ‘Imperial Blue’. The Courtroom held that there was no prima facie case of trademark infringement.
Earlier than delving into the case, let’s temporary ourselves with the idea of trademark, perceive what misleading similarity is, and what are the components used to find out it. This weblog explores the sensible software of the “check of misleading similarity” within the context of trademark infringement, utilizing a current case involving a trademark dispute between competing whiskey manufacturers.
WHAT IS A TRADE MARK?
In right now’s market pushed economic system the place companies are in intense competitors, commerce marks play a significant function. It helps in focus of market energy by way of commercials and different methods.
A trademark is principally an indication or image which identifies the products and companies of a given enterprise and distinguishes them from comparable items or companies of rivals within the commerce.
MEANING AND SCOPE OF DECEPTIVE SIMILARITY
When an individual will get his trademark registered, he enjoys worthwhile rights to make use of the trademark in reference to the required items or companies. In case, there could be any infringement upon his rights through the use of a mark an identical or deceptively just like his trademark, the proprietor can safeguard their mark by authorized motion for infringement and search an injunction.
The idea of “deceptively comparable” is enshrined underneath Part 2(1)(h) of the Commerce Marks Act, 1999[1] because the diploma to which two emblems resemble one another by way of their look, sound, connotion, or industrial impression.
CRITERIA FOR DETERMINATION OF DECEPTIVE SIMILARITY
The components to find out the misleading similarity between the 2 marks had been established way back by the Hon’ble Supreme Courtroom within the matter of Cadila Healthcare Ltd. vs. Cadila Prescribed drugs Ltd.[2]. It dominated that the next components must be taken into consideration in figuring out whether or not a mark is misleading:-
a) The character of the marks i.e. whether or not the marks are phrase marks or label marks or composite marks
b) The diploma of resembleness between the marks, phonetically comparable and therefore comparable in concept.
c) The character of the products
d) The similarity within the nature, character and efficiency of the products of the rival merchants
e) The category of purchasers who’re seemingly to purchase the products bearing the marks they require, primarily based on their stage of schooling, intelligence, and a level of care they’re more likely to train when buying or utilizing the products
f) The mode of buying the products
g) Another surrounding circumstances which can be related.
BLENDERS PRIDE v LONDON PRIDE: A COMPREHENSIVE LEGAL ANALYSIS
BACKGROUND OF THE CASE
In a trademark infringement go well with titled Pernod Ricard India Personal Restricted & Anr. v. Karanveer Singh Chhabra[3] the place the plaintiffs, Pernod Ricard India and Pernod Ricard USA LLC, manufactures and sells wines, liquors and spirits. They manufacture and promote whiskey within the identify of ‘Blenders Satisfaction’ and ‘Imperial Blue’. Alternatively, the defendants promote whiskey underneath the identify ‘London Satisfaction’.
The Plaintiff filed a trademark infringement go well with towards the Defendant and has accused the Defendant of infringing Mental Property Rights by the next actions:
- That, the time period “Satisfaction” is recognized because the essential and distinctive factor within the ‘Blenders Satisfaction’ mark, holding distinctive options and has acquired appreciable goodwill and repute in India. Moreover, they make the most of one other mark, ‘Imperial Blue,’ to promote whisky underneath the identical in distinctive label, packaging and commerce gown. The plaintiff alleges that the defendant is imitating all of those emblems.
- That, the whiskey of defendant is being bought by placing label, utilizing packaging, getup and commerce gown deceptively just like Imperial Blue. Thus, training misrepresentation and fraud to deceive the purchasers.
- That, the defendant is impinging upon the commerce mark, goodwill and repute of plaintiff’s emblems and is deriving unlawful advantages by doing the identical, inflicting monumental monitory loss, harm and injury to plaintiffs.
ARGUMENTS ADVANCED BY PLAINTIFF AND RESPONDENT
The plaintiffs contended that London Satisfaction whiskey displays misleading similarity to the Blenders Satisfaction trademark. Moreover, they make the most of one other mark, ‘Imperial Blue,’ to promote whiskey underneath the identical in distinctive label, packaging and commerce gown. The plaintiff alleged that the defendant is imitating all of those emblems. Thus, training misrepresentation and fraud to deceive the purchasers, and deriving unlawful advantages.
By the impugned order made by the trial Courtroom, it was held that total no similarity is present in defendant’s model which might be mentioned to be of such imitation of plaintiff’s emblems. It was contented that the trial Courtroom’s method was each unlawful and misguided. That, the whole registered trademark ought to’ve been in contrast with defendant’s trademark with out dissecting any of the emblems to adjudicate visible, phonetic and structural similarity. It has, nevertheless, cut up up the phrase ‘Satisfaction’ and has then made the comparability between the 2 marks. Splitting up of a registered phrase “TM’ is impermissible even in response to Part 28(1) of the Commerce Marks Act, 1999[4].
The defendant contented that they personal the rights to ‘London Satisfaction’ and maintain registered copyright for the related inventive work and different associated mental properties. His trademark London Satisfaction is completely totally different in identify, and composition from any of the sooner registered emblems. The defendant has supported the impugned order, and submitted {that a} thorough examination of the plaintiffs’ emblems compared to these of the defendant demonstrates that there isn’t a discernible similarity that would result in confusion within the thoughts of a shopper making a purchase order.
DECISION AND FINDINGS
The Madhya Pradesh HC upheld the trial Courtroom’s judgement that no similarity is discovered within the defendant’s mark which might be mentioned to be such imitation of plaintiff’s commerce mark which may deceive the shoppers of plaintiff’s merchandise. The Courtroom held that findings arrived at by the Trial Courtroom are simply and authorized, and refused to go a brief injunction towards the makers of ‘London Satisfaction’ for the alleged trademark infringement.
It’s not disputed that the 2 names’ Blenders Satisfaction and London Satisfaction are in use in respect of the identical description of products, specifically, whiskey. In Carew Phipson Ltd. v. Deejay Distilleries (P) Ltd.[5] the Bombay Excessive Courtroom acknowledged that, “In my view, when a buyer goes to a store to purchase the plaintiffs’ product, he is not going to ask for ‘Duet’ or ‘Gin N Lime’ or ‘Gin N Orange’ however he’ll ask for a ‘Blue Riband Gin N Lime’ or ‘Blue Riband Tango Gin N Orange’. Equally, it’s apparent that when a buyer goes to purchase the plaintiff’s product, he’s positively not going to ask for ‘Satisfaction’, relatively he’ll ask for a ‘Blenders Satisfaction’, isn’t it?
It’s also pertinent to notice that the commerce mark of the events are in respect of ‘premium’ or ‘extremely premium’ whisky. The Division Bench of Justices Pranay Verma and S.A. Dharmadhikari noticed that, “It may be safely presumed with a ample deal of certainty that the shoppers of such merchandise could be largely literate and having affordable intelligence to differentiate between the bottles of Blenders Satisfaction/Imperial Blue and that of London Satisfaction. Even when they’re of common intelligence with imperfect recollection, they’d be capable of differentiate between the rival competing manufacturers shoppers of scotch whiskey are educated and discerning kind. They’re literate individuals belonging to the prosperous class of society.”
One of many components to find out the misleading similarity laid down in Cadila Well being Care vs. Cadila Prescribed drugs[6] case was to find out the category of purchasers who’re seemingly to purchase the products, primarily based on their stage of schooling, intelligence, and a level of care they’re more likely to train when buying or utilizing the products. The character of the shoppers who could be buying the products has been held to be a related consideration additionally in J.R. Kapoor Vs. Microlx India[7], and Kaviraj Pandit Durga Dutt Sharma[8] during which it was held that the category of purchasers who’re seemingly to purchase the products bearing the marks they require, their schooling, intelligence and the diploma of care they’re more likely to train in buying and/or utilizing the products could be a related issue for deciding the query of misleading similarity.
On plaintiffs’ rivalry that Satisfaction is probably the most important and distinctive element of their mark ‘Blenders Satisfaction’ which they’ve been utilizing since 1995 on the commonality of the phrase ‘Satisfaction’ in Blenders Satisfaction and London Satisfaction bottles. With that context, the Courtroom noticed that Satisfaction is ‘publici juris’ widespread to commerce with 48 variants of emblems in Class 32 and 33 with the phrase ‘Satisfaction’. The plaintiff can’t be given exclusivity over the ‘PRIDE’ as part of ‘Blenders Satisfaction’ Mark. The Courtroom reasoned that safety afforded underneath the Trademark Act for a registered trademark is simply regarding a ‘full trademark’ and never any single time period. The plaintiffs may have gotten the phrase ‘Satisfaction’ registered individually underneath the provisions of Part 15 of the Commerce Marks Act, 1999[9]. Nevertheless, Satisfaction is a noun and is of widespread utilization which even in any other case can’t be registered being a generic phrase. It can’t be handled as distinctive or as being able to distinguishing the product of plaintiffs from that of every other producer of whisky.
Additional, it was held that inspecting the marks of plaintiffs with the mark of defendant as an entire, there isn’t a visible, phonetic or structural similarity between any of the packing containers or bottles of the plaintiffs with that of the packing containers or bottles of the defendant.
Pernod Ricard India Pvt Ltd. has now filed a petition earlier than the Hon’ble Supreme Courtroom towards the judgement handed by the Madhya Pradesh HC. In the course of the court docket proceedings, each bottles earlier than the court docket had been displayed. On the form of the bottle, CJI reminded of his Bombay Excessive Courtroom judgment on Vodka bottles, Gorbatschow Wodka Kg v. John Distelleries Ltd.[10]. The bench led by CJI opined that the defendant’s bottle had a distinct form to that of the plaintiff. It was additional mentioned that the time period “Satisfaction” is a generic phrase.
On the side of misleading similarity, the Counsel illustrated misleading similarity circumstances the place the disputes have arisen between numerous model names, together with Royal Stag-Indian Stag, Imperial Blue-Imperial Gold, Johnny Walker-Captain Walker, and others. The matter is now pending earlier than the Hon’ble Supreme Courtroom for additional listening to. Keep tuned for extra updates!
CONCLUSION
In circumstances of trademark disputes, the method of adjudicating such disputes varies from case to case primarily based on the distinctive circumstances of the dispute at hand. There are numerous judicial dictums whereby courts have decided the misleading similarity as per the info and particular particulars inherent to every case.
The comparability between two marks entails a important evaluation on the diploma of similarity between the marks and their respective merchandise, and the chance of confusion it might trigger within the thoughts of a shopper. To ascertain infringement regarding a registered trademark, it’s important to show that the infringing mark is both an identical or deceptively just like the registered mark. The usage of the mark ought to have the potential to create deception or confusion.
To conclude, the ruling emphasizes the significance of contemplating the general impression of the marks, the character of shoppers, and the distinctiveness of the weather in query when evaluating trademark disputes. By emphasizing the significance of an total evaluation, the ruling reinforces the idea {that a} complete understanding of the emblems and their influence on shoppers is essential in reaching a good and simply resolution in trademark disputes.
[1] Commerce Marks Act, 1999, S 2(1)(h)
[2] Cadila Healthcare Ltd. vs. Cadila Prescribed drugs Ltd. (2001) 5 SCC 73
[3] Pernod Ricard India Personal Restricted & Anr. v. Karanveer Singh Chhabra, [2023]MISC. APPEAL No. 232 of 2021
[4] Commerce Marks Act, 1999, S 28(1)
[5] Carew Phipson Ltd. v. Deejay Distilleries (P) Ltd. AIR 1994 Bom 231
[6] Cadila Well being Care vs. Cadila Prescribed drugs (2001) 5 SCC 73
[7] J.R. Kapoor Vs. Microlx India, (1994) Supp (3) SCC 215
[8] Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980
[9] Commerce Marks Act, 1999, S 15
[10] Gorbatschow Wodka Ok.G. v. John Distilleries Restricted, [2011] (47) PTC 100 (Bom)
