Case title:
Pernod Ricard India Pvt Ltd v. Frost Falcon Distilleries Ltd
Date of Order:
2nd March 2022
Bench:
Hon’ble Mr. Justice C. Hari Shankar
Parties:
Plaintiff: Pernod Ricard India Pvt Ltd
Defendant: Frost Falcon Distilleries Ltd
SUBJECT:
The High Court of Delhi (hereinafter referred to as ‘the High Court’ or ‘the Court’) dealt with the instant case which involved a dispute over the alleged infringement of the petitioner's registered trademarks, "BLENDERS PRIDE" and "IMPERIAL BLUE," by the respondent's use of the mark "CASINOS PRIDE" on Indian Manufactured Foreign Liquor (IMFL). The petitioner argued that "PRIDE" is a distinguishing feature, while the respondent contended that the term is generic and descriptive. The court rejected the petitioner's claim of exclusive rights to "PRIDE," emphasizing the need to consider the mark. While finding no prima facie case of infringement for "IMPERIAL BLUE," the court granted an interlocutory injunction against the respondent for passing off, citing an apparent intent to deceive consumers.
IMPORTANT PROVISIONS:
The Trade Marks Act, 1999:
- Section 2
- Section 154
- Section 51
- Section 557
- Section 13
- Section 17
- Section 27
- Section 995
- Section 9
OVERVIEW:
- The case involves two products owned by the plaintiff, namely "BLENDERS PRIDE" and "IMPERIAL BLUE," both of which hold registered trademarks falling under Classes 34 and 33 of the Trademark Classification Categories.
- The plaintiff has a substantial history of using the "BLENDERS PRIDE" brand since 1995, and the "IMPERIAL BLUE" brand has been in use since 1997.
- The defendant is accused of utilizing the disputed "CASINOS PRIDE" mark since August 2, 2017, which the plaintiff argues is confusingly like its own marks.
- A key contention is that both the plaintiff's and defendant's products belong to the same market sector, namely Indian Manufactured Foreign Liquor (IMFL), and are distributed in similar locations.
- The plaintiff, in response to the defendant's move to register the contested "CASINOS PRIDE" trademark under Class 33, filed an opposition, further escalating the legal dispute.
ISSUES RAISED:
- Whether Defendant's impugned marks infringe the Plaintiff's registered trademarks?
- Whether a case of passing off can be made against the defendant?
ARGUMENTS ADVANCED BY THE PLAINTIFF:
- Plaintiff held registered trademarks for "BLENDERS PRIDE" and "IMPERIAL BLUE" in Classes 34 and 33, respectively.
- The plaintiff emphasized its extensive history of using the "BLENDERS PRIDE" brand since 1995 and the "IMPERIAL BLUE" brand since 1997, highlighting the reputation and goodwill associated with these products.
- Both "BLENDERS PRIDE" and "IMPERIAL BLUE" were recognized as "well-known marks" by the Delhi High Court and the Madras High Court under Section 2(1)(zg) of the Trade Marks Act, 1999.
- As per Austin Nichols & Co. v. Arvind Behl and Rhizome Distilleries v. UOI, the plaintiff argued that these marks have become source identifiers closely associated with the plaintiff.
- Both the plaintiff's and defendant's products fall within the same market sector of Indian Manufactured Foreign Liquor (IMFL), implying that consumers might easily confuse the products.
- The defendant intentionally deviated from the mark it sought to register by using a blue background, mimicking the plaintiff's packaging.
- The plaintiff opposed the defendant's application to register the "CASINOS PRIDE" trademark under Class 33, indicating a proactive effort to prevent the alleged infringement.
- The defendant's use of "PRIDE" violated the plaintiff's brand reputation, emphasizing that "PRIDE" is not a term descriptive of alcoholic beverages and, therefore, should not be used by others in this context.
ARGUMENTS ADVANCED BY THE DEFENDANT:
- The defendant had legitimately and honestly created and adopted the "CASINO PRIDE" mark on May 25, 2016, and has been using it publicly since August 2, 2017.
- The defendant’s usage of the mark, therefore, predates the plaintiff's claim.
- The defendant relied on Section 17 of the Trade Marks Act to argue that the plaintiff cannot assert exclusivity regarding a part of its composite mark "BLENDERS PRIDE."
- The plaintiff's attempt to register the mark "PRIDE" was unsuccessful.
- By filing the lawsuit, the plaintiff was indirectly seeking exclusivity over the term.
- The term "PRIDE" was commonly used by various manufacturers in the industry, suggesting that it lacks distinctiveness.
- The use of "PRIDE" in "CASINO PRIDE" does not constitute trademark infringement.
JUDGEMENT ANALYSIS:
- The court ruled that the Plaintiff cannot assert exclusive rights to the "PRIDE" component of the "BLENDERS PRIDE" mark.
- Section 17(2)(b) was found to be applicable to the "PRIDE" portion of the mark due to its lack of distinctiveness as a generic, common, and laudatory term.
- Affirming the Plaintiff's right, the court held that the Plaintiff can use the entire "BLENDERS PRIDE" mark under Section 17(1) of the Trade Marks Act.
- While acknowledging the potential exception of the dominant portion, the court applied the "plain glance" test and found no similarity between the "BLENDERS PRIDE" and "CASINO PRIDE" marks.
- The court held the Defendant liable for passing off its product as that of the Plaintiff. It invoked the presumption that the intention to deceive consumers about the association between "CASINOS PRIDE" and the plaintiff's brewery was successful, given the apparent deceptive intent.
CONCLUSION:
The High Court rejected the petitioners' claim of exclusive rights to the term "PRIDE" within the "BLENDERS PRIDE" mark, correctly applying Section 17 of the Act and the anti-dissection rule. The judgment emphasized considering the mark, denying any monopoly over "PRIDE." While finding no prima facie case of infringement concerning the distinct "IMPERIAL BLUE" mark due to the absence of individually registered elements with secondary meaning, the Court granted an interlocutory injunction against the defendant's use of "CASINOS PRIDE" pending the suit, based on the apparent intent to deceive consumers, supporting the claim of passing off.
