2025 (8) TMI 993 - SC - Indian Laws

Appeal dismissed: no prima facie deceptive similarity between whisky marks; interim relief refused, trial to proceed within four months

PERNOD RICARD INDIA PRIVATE LIMITED & ANOTHER Versus KARANVEER SINGH CHHABRA

PERNOD RICARD INDIA PRIVATE LIMITED & ANOTHER Versus KARANVEER SINGH CHHABRA - 2025 INSC 981 1. ISSUES PRESENTED AND CONSIDERED 1. Whether, on a prima facie assessment at the interlocutory stage, the plaintiff is entitled to an interim injunction restraining the defendant from using an impugned mark, get-up and trade dress on the ground of alleged trademark infringement and/or passing off. 2. Whether the impugned mark and trade dress are identical with or deceptively similar to the registered/commercially used marks of the plaintiff so as to cause likelihood of confusion in the mind of the average consumer with imperfect recollection. 3. The correct analytical approach for assessing similarity: application and interplay of the anti-dissection rule, the dominant-feature test, and the overall-impression (average consumer) test. 4. Whether descriptive or laudatory elements (e.g., the word 'PRIDE') and commonly used colour/packaging features are capable of exclusive appropriation absent evidence of acquired distinctiveness (secondary meaning). 5. Whether alleged copying of packaging, bottle shape or embossing (trade dress) establishes prima facie infringement or passing off at interlocutory stage. 6. The standard and scope for appellate interference with discretionary interlocutory orders refusing injunctions. 2. ISSUE-WISE DETAILED ANALYSIS Issue A - Entitlement to interim injunction in trademark infringement / passing off (Legal framework) Sectional and equitable principles govern interim relief: a plaintiff must show a serious triable question (prima facie case), likelihood of confusion (for statutory infringement) or misrepresentation and likely damage to goodwill (for passing off), balance of convenience, and risk of irreparable harm. Courts apply the American Cyanamid-style cumulative consideration at interlocutory stage, avoiding a mini-trial. (Precedent treatment) Authorities require a limited, prima facie assessment without detailed adjudication of merits; appellate courts should not substitute discretion unless trial court acted arbitrarily, perverse, or ignored settled principles. (Interpretation & reasoning) The Court applied the cumulative test: it examined whether, on available material, there is a prima facie case of deceptive similarity or passing off and whether irreparable harm and balance of convenience favour interim relief. The Court found the prima facie similarity lacking and that appellant failed to prove irreparable injury beyond speculative harm. (Ratio vs. Obiter) Ratio: Interim injunction refused where, on holistic comparison, marks and trade dress did not prima facie create a real likelihood of confusion. Obiter: observations on broader jurisprudential developments (e.g., post-sale confusion) not material to result. (Conclusion) Interim injunction declined; direction given for expeditious trial disposition. Issue B - Test of deceptive similarity: anti-dissection rule, dominant-feature test, average consumer with imperfect recollection (Legal framework) The statutory touchstone is 'deceptively similar' (one likely to deceive or cause confusion) assessed from the standpoint of an average consumer with imperfect recollection. The anti-dissection rule mandates holistic comparison; nevertheless courts may identify dominant or essential features as part of that holistic assessment. (Precedent treatment) Courts have repeatedly emphasised holistic, multi-factorial tests (visual, phonetic, conceptual similarity; nature of goods; class of consumers; surrounding circumstances). Anti-dissection is a fundamental rule, but dominant features may be given weight where they shape overall impression. (Interpretation & reasoning) The Court rejected mechanical dissection of composite marks (isolating 'PRIDE') and emphasised overall commercial impression. It recognised the utility of identifying dominant elements but stressed that dominance cannot displace the holistic inquiry. On the facts, initial components (e.g., 'BLENDERS' v. 'LONDON') and overall trade dress did not prima facie convey the same commercial origin. (Ratio vs. Obiter) Ratio: Holistic comparison anchored in the average-consumer test governs prima facie assessment; anti-dissection forbids isolating generic elements to found infringement. Obiter: illustrative analogies (milk/water) and academic commentary on perception. (Conclusion) No deceptive similarity found on prima facie assessment; anti-dissection and average-consumer tests applied to deny interim relief. Issue C - Availability of protection for descriptive/laudatory or commonly used terms and colour/packaging elements (Legal framework) Sectional provisions limit exclusivity over non-distinctive parts of composite marks; descriptive, laudatory or customary terms in trade are not monopolizable unless secondary meaning (acquired distinctiveness) is shown. Colour combinations and trade dress may obtain protection only if they function as badges of origin through distinctiveness or reputation. (Precedent treatment) Prior decisions emphasise that common words used across many marks cannot be exclusively appropriated; the onus to show acquired distinctiveness lies on the proprietor. Multiple registrations with identical or similar components in the market reduce the likelihood that consumers will rely on that component alone. (Interpretation & reasoning) The Court treated 'PRIDE' as a laudatory/common element (publici juris) used in various registrations, and concluded appellants failed to prove that the term or colour scheme had acquired secondary meaning identifying their goods exclusively. Colour/packaging similarities, where generic or common, were insufficient without evidence that they serve as a source identifier. (Ratio vs. Obiter) Ratio: Generic or laudatory components do not warrant exclusive protection absent evidence of acquired distinctiveness; incidental colour similarities do not establish prima facie infringement. Obiter: references to industry practice and examples of other marks using the term. (Conclusion) No exclusive right over the standalone word or generic trade-dress elements; therefore these cannot form the sole basis for interim relief. Issue D - Trade dress, bottle shape and alleged embossing as evidence of infringement (Legal framework) Trade dress and product configuration may be protected if non-functional and distinctive (or having acquired distinctiveness); allegations of physical imitation require credible evidence of the contested features. (Precedent treatment) Courts protect trade dress where the overall get-up is likely to mislead; but findings rest on concrete evidence of copying and distinctiveness, and trial courts must avoid speculative inferences at interlocutory stage. (Interpretation & reasoning) The Court examined the asserted factual matrix (bottle shape, dome-label, colour palette, embossing). It found material differences in packaging and rejected the embossing claim because the bottle produced in evidence lacked the asserted mark; appellants failed to adduce invoices or witnesses to corroborate alleged copying. The alleged combination of traits from multiple plaintiff marks to create a composite claim was rejected as impermissible aggregation. (Ratio vs. Obiter) Ratio: Unsupported factual assertions of embossing/copying cannot constitute a prima facie case; trade dress claims require reliable evidence of similarity and distinctiveness. Obiter: remarks on limits of relying on advertising-restricted industries for trade dress recognition. (Conclusion) Trade dress and bottle/embossing allegations were factually unsupported on record and did not establish a prima facie case. Issue E - Standard of appellate interference with interlocutory orders refusing injunctions (Legal framework) Appellate interference is limited: higher courts will not re-weigh materials or substitute their discretion unless the trial court's exercise was arbitrary, perverse, or founded on an identifiable error of principle; evaluative findings are interfered with only for demonstrable legal or logical flaw. (Precedent treatment) Authorities require deference to trial court fact-findings and exercise of discretion; appellate courts ask whether there is a logical or legal error undermining the conclusion rather than whether they would have reached a different outcome. (Interpretation & reasoning) The Court deferred to concurrent findings below that no prima facie deceptive similarity existed, and held that the lower courts applied settled authorities and reasoning; no perversity, caprice or legal error was demonstrated to justify interference. (Ratio vs. Obiter) Ratio: Concurrent discretionary interlocutory findings are not to be disturbed absent identifiable errors; appellate relief is narrowly circumscribed. Obiter: commentary on the need for expeditious trial of IP suits. (Conclusion) No appellate intervention warranted; concurrent orders dismissing interim relief sustained. Issue F - Applicability of novel doctrines (post-sale confusion) to the present facts (Legal framework) Post-sale confusion addresses consumer confusion arising after purchase when goods are publicly seen in use, potentially diluting reputational exclusivity; doctrine primarily recognised in other jurisdictions and fact-sensitive. (Precedent treatment) Emerging in foreign jurisprudence; not yet central to Indian law except as a concept for future consideration where goods are publicly displayed. (Interpretation & reasoning) The Court noted the doctrine's conceptual relevance but found it inapplicable: goods here are privately consumed and not typically publicly displayed, so post-sale confusion is not a material consideration in the interlocutory assessment. (Ratio vs. Obiter) Obiter: acknowledgement of the doctrine's existence and potential future relevance. Not material to the decision. (Conclusion) Post-sale confusion doctrine not engaged on the facts; does not support interim relief. 3. OVERALL CONCLUSION On the materials before the court at the interlocutory stage, no prima facie case of infringement or passing off was established: the impugned sign and get-up do not, in their overall impression, create a likelihood of confusion in the mind of an average consumer with imperfect recollection; common or laudatory elements and generic trade-dress features cannot be monopolised absent proof of acquired distinctiveness; trade dress/bottle/embossing allegations lacked credible evidentiary support; and appellate intervention in concurrent discretionary refusals of interim relief is unwarranted. Accordingly, the interlocutory relief was properly denied and the matter directed to trial for final adjudication within a specified timeframe.