In the matter of :-
PERNOD RICARD INDIA PRIVATE LIMITED …..APPELLANTS
Versus
KARANVEER SINGH CHHABRA TRADING AS J.K. ENTERPRISES …..RESPONDENT
Date of the Order: – 03.11.2023
The present appeal was filed by plaintiffs/appellants against the order dated 26.11.2020 passed by the Commercial Court, Indore, whereby their application under Order 39 Rule 1 and 2 of the CPC for issuance of temporary injunction has been rejected.
PLAINTIFF NO.1(PERNOD RICARD INDIA PRIVATE LIMITED) PLAINTIFF NO.2(PERNOD RICARD USA LLC)
The plaintiffs were in business of manufacturing and distribution of wines, liquors and spirits. They were manufacturing and selling whisky in the name of ‘Blenders Pride’ and ‘Imperial Blue’. The trademarks of plaintiffs in relation to above mentioned trademarks were registered and plaintiff no.1 trademark Seagram was also registered and which is presently used in India and Internationally and which appears on their products sold under various brands.
The trade mark of plaintiffs namely;Blenders Pride was adopted in 1973 and was registered in favour of Seagram’s Company Limited. The plaintiffs become proprietors of the said trade mark in India with effect from 27.06.2018. Blenders Pride is now marketed with a distinctive label and Seagram’s logo.
The case of plaintiffs was that, Pride is the most essential and distinctive component of their mark ‘Blenders Pride’ which they have been using since 1995. The same has distinctive features and has acquired considerable goodwill and reputation in India. They are also using another mark ‘Imperial Blue’ since 1997 and are selling whisky under the same in distinctive label, packaging and trade dress. The same has also acquired goodwill and reputation. The plaintiffs obtained registration in respect of their trademark in Class -33. Likewise, the trade mark ‘Seagram’s’ is a registered trade mark of plaintiff No.2 of Class-33.
Plaintiff’s allegation was that the defendant is imitating all the aforesaid trade marks of plaintiffs and has filed a Trade Marks application of a trade mark London Pride in class-33 which has been objected to by plaintiffs. The plaintiffs acquired knowledge that defendant is selling London Pride whisky which is deceptively similar to its Blenders Pride trade mark. The whiskey of defendant is being sold by putting label, using packaging, getup and trade dress deceptively similar to Imperial Blue. Their bottles bear the trade mark Seagram’s. Plaintiffs are the prior users of all their trade marks and their products are having enormous sale in the country.
Another allegation of plaintiff was that the defendant with the manner of its packaging, getup and trade dress was practicing misrepresentation and fraud to deceive the customers. It is impinging upon the trade mark, goodwill and reputation of plaintiff’s trademarks and is deriving illegal benefits by doing the same which is causing enormous monitory loss, injury and damage to plaintiffs.
The defendant contested the application for issuance of temporary injunction by filing its reply submitting that it is the proprietor of London Pride and is a registered copyright owner of the artistic work London Pride and all other intellectual properties connected therewith. He is manufacturing and selling liquor in the brand name of London Pride in Madhya Pradesh. His trademark London Pride is entirely different in name, style and composition from any of the earlier registered trademarks.
The brand name London Pride is also registered with the Excise Department of State of Madhya Pradesh. There is no similarity between the mark of defendant London Pride and the marks of plaintiffs as is being contended by them who have no prima facie case, irreparable injury or balance of convenience in their favour. The defendant however did not dispute the facts regarding plaintiff’s trademarks and their registration and the fact that they are being used by them.
Trial Court observed that two brands of the parties when put to comparison, the only significant similar feature is the word ‘PRIDE’. There is no other similarity visible in the two. The packaging, style, shape and logo; are all different. The word ‘Pride’ is commonly used in common parlance. It cannot be said that exclusivity in respect of the same is attributed to plaintiffs. Pride is a distinct word and is not used as suffix of any word. The mark has to be compared as a whole. Merely by using word ‘Pride’ in its trademarks it cannot be said that defendant has imitated plaintiff’s trademarks.
The packaging of brands of plaintiffs and defendant shows remarkable differences. The bottles of the two products are distinctively identifiable. Plaintiff’s bottle has embossing of ‘Seagram Quality’. Eventually, it was held that overall no similarity is found in defendant’s brand which can be said to be such imitation of plaintiff’s trademarks, which would deceive the consumers of their products. In consequence plaintiff’s application for issuance of temporary injunction was rejected.
HON’BLE HIGH COURT CONSIDERED OPINION
grant of temporary injunction is a discretionary relief
Hon’ble High Court Observed that, in an appeal against refusal of temporary injunction by the trial Court, the Appellate Court will not interfere unless it is shown that the trial Court has acted illegally or perversely since relief regarding grant of temporary injunction is a discretionary relief.
High Court said that the bottles which have been produced before us and the pictures which have been reproduced at various places in the pleadings, there does not appear to be any similarity in both of them. The height and colour of the bottles is itself quite different. Blenders Pride is round in shape whereas London Pride is cylindrical in shape. The label fixed upon both of them is having entirely different pattern. Even a man of average intelligence with imperfect recollection, would not be in any manner confused with the identity of both the bottles. At a glance, he would be able to make out that both are not similar at all.
Likewise, the boxes in which the bottles are sold are also different in their shape itself. While the box of Blenders Pride is much broader the box of London Pride is not so. The writings on the boxes are different. By merely looking at both the boxes, consumer can very easily make out as to which is the box of Blenders Pride and which is the box of London Pride. This is also the factual position as regards comparison of the box of Imperial Blue whisky with the box of London Pride whisky. Rather they are even more distinct as the box of London Pride has a flag kind of printing over it.
In so far as comparison of respective bottles of Imperial Blue and London Pride is concerned, it is in fact difficult to make out any similarity in them.
NO SIMILARITY BETWEEN MARKS OF THE PLAINTIFF AND DEFENDANT
Overall appearance of defendant’s mark cannot be said to be deceptively similar to marks of plaintiffs. Thus, examining the marks of plaintiffs with the mark of defendant as a whole, neither there is any visual nor phonetic nor structural similarity between any of the boxes or bottles of the plaintiffs with that of the boxes or bottles of the defendant. It is not a matter of mere dissimilarity but is a case of there being no actual similarity. It hence cannot be prima facie held that defendant’s mark infringes the mark of plaintiffs.
Much emphasis has been laid on behalf of plaintiffs on the commonality of the word ‘Pride’ in Blenders Pride and London Pride bottles. However, it is to be seen that registration of trade mark of plaintiffs is in the name of ‘Blenders Pride’ and not ‘Pride’. It is not only a single word ‘Pride’ which has been registered in name of plaintiffs but the entire name i.e. ‘Blenders Pride’ which has been registered. It was open for plaintiffs to have got the word ‘Pride’ registered separately under the provisions of Section 15 of the Trade Marks Act, 1999.
Complete trademark is protected.
Protection of Trade Mark is available only for a complete trade mark and not any word therein unless the same is registered as a whole as well as in part as separate trade mark. The plaintiffs have not got the word ‘Pride’ separately registered as a trade mark. The word ‘PRIDE’ denotes quality of the product when used in context with ‘BLENDERS‘. It is laudatory in nature, signifying the pride of blenders in their product. Pride is a noun and is of common usage which even otherwise cannot be registered being a generic word. It cannot be treated as distinctive or as being capable of distinguishing the product of plaintiffs from that of any other manufacturer of whisky. The complete trade mark has to be used and protected as such and its holder cannot bifurcate the same on his own.
Merely by use of the word ‘Pride’ by the defendant there cannot be any misconception or misapprehension in the mind of the consumer, a common man, which may lead to any confusion in his mind. It cannot be lost sight of the fact that the products such as the present one are known by and are purchased by their entire name and if not then more often by their first word.
The first word of the trade mark of plaintiffs is ‘Blenders’ whereas that of the defendant is ‘London’. There is absolutely no similarity in them leave aside any dissimilarity. ‘PRIDE‘ being a generic, common place and laudatory expression in ‘BLENDERS PRIDE’ mark, the common man would certainly treat ‘BLENDERS’ part of plaintiff’s mark as the dominant part. Thus, even going by the name of product of both the parties, there would be no possibility for a common man to be confused or being misled by the name of product of defendant.
The word Pride is publici juris .
From the documents, which are available on record, it reveals that Pride is publici juris common to trade and there are 48 variants of trade mark in class 32 and 33 with the word ‘Pride’ and many of them are registered with the Excise Authority as well for sale and purchase of liquor. Plaintiff’s stand of claiming exclusivity in respect of ‘PRIDE‘ part of its ‘BLENDERS PRIDE‘ mark, alleging infringement on the ground that defendant is using a mark including ‘PRIDE‘ as a part thereof, hence cannot be accepted.
In view of the aforesaid discussion, Hon’ble High Court was of the considered opinion that the trial Court has not committed any error. As a result, the appeal is found to be devoid of any merits and is hereby dismissed.
Read, Reviewed & Edited by
Neeraj Gogia, Advocate