Summary
The Court declined an interim injunction to the proprietors of the registered whisky marks BLENDERS PRIDE, IMPERIAL BLUE and SEAGRAM'S against the respondent's LONDON PRIDE, holding on a prima facie view that, compared as wholes from the standpoint of an average consumer with imperfect recollection, the rival marks, labels and trade dress are not deceptively similar; the shared word PRIDE is a laudatory term common to the liquor trade over which no exclusivity can be claimed under Section 17(2) of the Trade Marks Act, 1999, and the appellants could not combine features of two distinct marks to construct a case of infringement.
Issues
- Whether the appellants were entitled to an interim injunction restraining the respondent from using the mark, get-up and trade dress of LONDON PRIDE on the ground that it infringes or passes off their registered trademarks BLENDERS PRIDE, IMPERIAL BLUE and SEAGRAM'S.
- How the anti-dissection rule and the dominant feature test are to be applied together in comparing composite marks.
- Whether a proprietor of a composite registered mark can claim exclusive rights over a common or laudatory component such as the word PRIDE, or over a colour scheme and bottle shape, without proof of secondary meaning.
- What standard governs appellate interference with a trial court's discretionary refusal of an interlocutory injunction in a trademark action.
Provisions considered
- Section 2(1)(h), Trade Marks Act, 1999A mark is deceptively similar if it so nearly resembles another as to be likely to deceive or cause confusion; whether confusion is likely is a question of fact assessed on the broad and essential features of the rival marks, the nature of the goods, the class of purchasers and the manner of sale, from the viewpoint of an average consumer with imperfect recollection. (¶¶ 18.1, 31.1, 31.2, 31.3)
- Section 17, Trade Marks Act, 1999Registration of a composite mark confers exclusive rights in the mark as a whole (sub-section (1)); sub-section (2) withholds exclusive rights over any part that is not separately registered or is common to the trade or non-distinctive. Courts may identify dominant features as an aid, but only in the context of the overall impression. PRIDE, not being separately registered and being common to the liquor trade, could not be monopolised. (¶¶ 18.4, 32.1, 43, 51)
- Sections 28 and 29, Trade Marks Act, 1999Registration confers the exclusive right to use the mark and to sue for infringement; Section 29 defines infringement by use of an identical or deceptively similar mark for the same or similar goods, with a presumption of confusion under Section 29(3) only where identical marks are used for identical goods. BLENDERS PRIDE and LONDON PRIDE are not identical, so no presumption arose and no infringement under Section 29 was prima facie shown. (¶¶ 18.6, 34.6, 43, 45)
- Sections 9(1), 11, 15, 27(2) and 135, Trade Marks Act, 1999Surveyed as the statutory framework: Section 9(1) bars registration of non-distinctive or customary marks unless they have acquired distinctiveness; Section 11 bars registration of marks likely to cause confusion with earlier marks and protects well-known marks; Section 15 permits separate registration of parts of a mark; Section 27(2) preserves the common law action for passing off; and Section 135 empowers the court to grant interim and final relief in suits for infringement or passing off. (¶¶ 18, 18.2, 18.3, 18.4, 18.5, 18.7, 18.8)
- Order XXXIX Rules 1 and 2, Code of Civil Procedure, 1908The application for interim injunction was tested on the settled requirements of a prima facie case, balance of convenience and irreparable injury, without conducting a mini-trial; the Court also reiterated that in trademark, copyright and patent suits the hearing should proceed day to day under the proviso to Order XVII Rule 1(2) and be decided within about four months. (¶¶ 7, 19.9, 19.10, 36.3, 36.4, 38)
Held
- Infringement is a statutory remedy available only for registered marks, where registration itself confers the right and no proof of goodwill is needed once deceptive similarity is shown; passing off is a common law remedy requiring proof of goodwill, misrepresentation and likely damage, and prior continuous use. Neither requires an intention to deceive or proof of actual confusion; the test is the probability of confusion in the mind of the average consumer. (¶¶ 29, 29.1, 29.2, 29.3, 29.4, 29.5)
- Under the anti-dissection rule marks must be compared as wholes, reflecting how consumers perceive and recall them; the presence of a shared generic or laudatory word in two composite marks does not by itself establish deceptive similarity where the marks viewed in totality convey distinct identities. The appellants' attempt to isolate PRIDE as the basis of comparison was untenable. (¶¶ 32, 32.1, 32.2, 32.3, 32.4)
- The dominant feature test is not inconsistent with the anti-dissection rule but is an analytical aid within the holistic comparison: due weight may be given to the element that captures attention and drives recall, but emphasis on a dominant feature cannot alone be determinative. In BLENDERS PRIDE and IMPERIAL BLUE the dominant elements are BLENDERS and IMPERIAL, while PRIDE and BLUE are commonplace in the liquor industry; LONDON PRIDE, with its geographical identifier and different trade dress, does not imitate those dominant features. (¶¶ 33, 33.1, 33.2, 33.3, 33.4)
- Generic, descriptive or laudatory terms common to a trade cannot be monopolised even when they form part of a registered mark, unless secondary meaning is proved. PRIDE is a laudatory word in wide use in Class 33 marks and is publici juris; duration of use, turnover or marketing spend alone cannot displace its laudatory character, and the appellants adduced no consumer survey or similar evidence of secondary meaning. (¶¶ 34, 34.1, 34.2, 34.3, 34.5, 34.6, 55)
- The comparison is made from the standpoint of an average consumer who is reasonably well informed and circumspect but relies on an imperfect recollection and first impression, applying the multifactorial Pianotist test of look, sound, goods, class of customer and surrounding circumstances; the degree of attentiveness varies with the goods, and purchasers of premium and ultra-premium whisky are likely to exercise greater care. (¶¶ 35, 35.1, 35.4, 35.5, 35.6, 35.7, 46)
- An interim injunction in a trademark action depends cumulatively on a triable issue, the prima facie likelihood of confusion, balance of convenience, irreparable harm and the public interest; absence of any one may justify refusal. An appellate court will not substitute its own discretion for that of the trial court unless the discretion was exercised arbitrarily, capriciously, perversely or in disregard of settled principles. (¶¶ 19.8, 19.10, 36.3, 36.4, 39, 40.1)
- A claimant cannot combine elements from two distinct registered marks (here the word PRIDE from BLENDERS PRIDE and the colour scheme of IMPERIAL BLUE) to construct a hybrid case of infringement against a single rival mark; each mark must be assessed independently, and unregistered or generic features such as bottle shape or colour scheme are not independently enforceable. (¶¶ 47, 50, 51, 52)
- On the facts, the rival marks, labels, cartons, bottle forms and design motifs are materially distinct and the shared use of blue and gold is insufficient; the allegation that the respondent used bottles embossed with the appellants' name was rightly rejected since the bottle produced bore no such embossing and no invoice or witness supported it. The appellants' earlier unsuccessful challenge to the mark Royal Challenge American Pride, upheld by this Court in SLP, was also noted. (¶¶ 31.9, 45, 48, 53, 54, 56, 57)
- The doctrine of post-sale confusion recognised in the United Kingdom and the United States, concerning confusion among the public when goods are seen in use after purchase, is relatively novel in Indian law and was not applicable to whisky meant for private consumption; the question was left open for a future case. (¶¶ 40.2, 40.3, 40.4, 40.5)
Result
Appeal dismissed; concurrent orders refusing interim injunction upheld; Commercial Court directed to try and dispose of the suit on merits within four months of receipt of the judgment, uninfluenced by the interlocutory observations; no order as to costs.