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....INJUNCTION 74 VIII RECENT EVOLUTION OF TRADEMARK JURISPRUDENCE IN THE UK - THE POST- SALE CONFUSION DOCTRINE 82 IX SUMMARY OF FINDINGS 91 X CONCLUSION 97 I. INTRODUCTION 1. The Law of trademarks has been aptly described by Justice Frankfurter of the United States Supreme Court in the following words : "The protection of trademarks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trademark is a merchandising shortcut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a trademark exploits this human propensity by making every human effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same - to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trademark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress". - Mishawaka Rubber and ....
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....sociation in the minds of consumers, thereby enabling the defendant to unjustly benefit from the plaintiff's established reputation. This analysis is guided by the perspective of an average consumer with imperfect recollection, who is not expected to retain or compare marks with exact precision. II. FACTUAL MATRIX 6. This appeal arises from the judgment dated 03.11.2023 passed by the High Court of Madhya Pradesh at Indore Hereinafter referred to as "the High Court" in Misc. Appeal No. 232 of 2021, whereby the High Court dismissed the appellants' challenge to the order dated 26.11.2020 passed by the Commercial Court (District Judge Level), Indore For short, "the Commercial Court" in Case No. COMMS 3 of 2020 and IA No.01 of 2020. 7. By the order dated 26.11.2020, the Commercial Court rejected the application filed by the appellants under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure For short, "CPC". For ease of reference, the reliefs sought in the interlocutory application are reproduced below: "... to grant an order of interim injunction restraining the Defendant, its proprietors, partners as the case may be, assigns in business, sister concerns, associates, agents,....
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....NR 2,700 Crores for the financial year 2018-19. Both brands today enjoy formidable goodwill and reputation, domestically and internationally. 11. In May 2019, the appellants became aware that the respondent has been marketing whisky under the mark 'LONDON PRIDE', using packaging that was deceptively similar to that of the appellants. The mark adopted by the respondent was not only phonetically and visually similar to 'BLENDERS PRIDE', but also copied the colour combination, get-up and trade dress of 'IMPERIAL BLUE' label. Further, the respondent used 'SEAGRAM'S' embossed bottles of the appellants' mark 'IMPERIAL BLUE', for the sale of its LONDON PRIDE whisky, which also amounts to an infringement of the appellants' registered SEAGRAM'S trademark. 12. Aggrieved by the respondent's actions, the appellants instituted Civil Suit No. 3 of 2020 before the Commercial Court, seeking a decree of permanent injunction restraining the respondent from trademark infringement, passing off, copyright violation, and also prayed for reliefs, such as, rendition of accounts, damages, and delivery up of infringing material. An application under Order XXXIX Rules 1 and 2 CPC, was also filed seeking an....
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....h the anti- dissection rule and the doctrine of overall similarity. 14.5. In an infringement analysis, the test is whether there is a likelihood of confusion or association in the mind of the public. This is a matter for judicial determination and not dependent on testimonial evidence. The law protects against the likelihood of confusion itself; there is no requirement to prove actual deception or damage. Trademarks are remembered by their overall commercial impression, and even minor variations may be perceived by consumers as brand extensions or sub-brands. 14.6. In the present case, the composite mark 'LONDON PRIDE' is deceptively similar to the registered word mark 'BLENDERS PRIDE'. Both are used for identical goods - Indian Made Foreign Liquor (IMFL Whisky) - and are sold through the same trade channels. The term 'PRIDE' which is neither generic nor descriptive in the context of alcoholic beverages, forms the essential and dominant part of the appellants' mark. The respondent's use of this term, combined with another descriptive term, results in an overall similarity that is likely to mislead an average consumer with imperfect recollection. 14.7. The label and packaging of ....
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....euticals Ltd (supra), this Court affirmed that similarity between marks must be assessed from the perspective of an average consumer with imperfect recollection. 14.13. The respondent's reliance on Khoday Distilleries Ltd v. Scotch Whisky Association 2008 (10) SCC 723 is misplaced. That decision involved a claim that the use of the term "SCOT" in the mark 'PETER SCOT' might mislead consumers into believing the product was Scotch whisky. The Court held that such consumers were discerning, but the context was specific to origin misrepresentation. The present case involves not the geographic origin of whisky, but deceptive similarity between brands. Moreover, Khoday Distilleries was not a case of trade mark infringement or passing off, but one concerning cancellation of registration under Section 9 of the Trade Marks Act, and is therefore inapplicable. 14.14. The continuous use of SEAGRAM'S embossed bottles by the respondent constitutes an infringement of the appellants' registered word mark. However, the Appellate Court failed to return any finding on this crucial issue. 14.15. Reference was made to the concept of "Injurious association", wherein the similarity of brands leads con....
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.... registered with the Excise Department of Madha Pradesh. According to the learned counsel, there exists no visual, phonetic, or structural similarity between their mark and those of the appellants. The appellants, therefore, lack a prima facie case, and the elements of irreparable harm and balance of convenience are also not in their favour. However, the factual assertions concerning the appellants' trademarks, their registration status, and usage were not disputed. 15.1. Learned Senior Counsel further contended that the label used by the appellants for their products under the trademark 'IMPERIAL BLUE' and the label of the respondent's product sold under 'LONDON PRIDE' are entirely distinct, with no elements of visual or conceptual overlap. It was submitted that there is no deceptive similarity between the labels that could lead to confusion in the minds of consumers. 15.2. It was additionally, submitted that the impugned order represents a proper and lawful exercise of jurisdiction by the Commercial Court, which thoroughly evaluated the marks and packaging of both parties before arriving at its conclusion. A holistic comparison of the trademarks and packaging reveals that the t....
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....confusion; (m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof; (q) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork; (v) "registered proprietor", in relation to a trade mark, means the person for the time being entered in the register as proprietor of the trade mark; (w) "registered trade mark" means a trade mark which is actually on the register and remaining in force; (zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and- (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as propr....
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....advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. (3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented- (a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or (b) by virtue of law of copyright. (4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12. Explanation.-For the purposes of this section, earlier trade mark means- [(a) a registered trade mark or an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E or convention application referred to in section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks;] (b) a trade mark which, on the date of the application for registration of the tra....
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....been used in India; (ii) that the trade mark has been registered; (iii) that the application for registration of the trade mark has been filed in India; (iv) that the trade mark- (a) is well-known in; or (b) has been registered in; or (c) in respect of which an application for registration has been filed in, any jurisdiction other than India, or (v) that the trade mark is well-known to the public at large in India. (10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall- (i) protect a well-known trade mark against the identical or similar trade marks; (ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark. (11) Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with o....
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....isions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. 29. Infringement ....
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....sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark; (c) imports or exports goods under the mark; or (d) uses the registered trade mark on business papers or in advertising. (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising- (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and refere....
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....plain reading of the above provisions indicates that Section 2(h) defines "deceptively similar" as a mark that so nearly resembles another mark as to be likely to cause confusion or deception. This definition forms the cornerstone of the test applied in registration refusals and infringement disputes. Section 2(m), (q), (v), (w), (zb) respectively define mark, package, registered proprietor, registered trademark, and trademark, laying the foundational terms used throughout the Act. 18.2. Section 9(1) bars registration of trademarks that are deceptive, non- distinctive, or commonly used in trade. However, the proviso carves out an exception where such marks have acquired distinctiveness through prolonged and exclusive use - commonly referred to as having acquired a "secondary meaning". 18.3. Section 11 prohibits registration of marks identical or similar to earlier marks for identical or similar goods or services, where a likelihood of confusion exists. It further extends protection to well-known trademarks, even across dissimilar goods or services, thereby recognizing the doctrine of dilution. 18.4. Section 15 permits registration of series marks, provided that the differences b....
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....judicial precedents on trademark infringement and passing off, to assess whether, in the present case, the appellants are entitled to the relief of interim injunction. 19.1. In the Privy Council decision of Coca-Cola Company of Canada Ltd. v. Pepsi-Cola Company of Canada Ltd. 1942 SCC OnLine PC 7 : AIR 1942 PC 40 (5J) the issue pertained to alleged infringement under the Unfair Competition Act, 1932. Both parties were using their respective marks - Coca-Cola and Pepsi-Cola - for similar non-alcoholic beverages in the same market. The Privy Council upheld the lower court's finding that no infringement had occurred. It observed that although both marks contained the common term "cola", the word was descriptive in nature and not capable of exclusive appropriation. The essential and distinctive features of the competing marks were identified as "Coca" and "Pepsi", which were held sufficient to distinguish the respective goods. The ruling underscored that trademark protection does not extend to ordinary, descriptive, or laudatory terms unless they have acquired a secondary meaning or distinctiveness. Consequently, the mere presence of the shared term "Cola" was held inadequate to estab....
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...."None at all." It was argued that this answer proved the fact found in the judgment of the Chancellor viz. (as quoted by the President of the Exchequer Court from a report of the case) that "the uncontradicted evidence shows that substitutions were made by employees of the defendants of a product other than Coca-Cola for that beverage when calls for the same were made." 6. The learned President relied on this judgment "as very formidable support to the plaintiff's contention that ... there is likelihood of confusion"; but in their Lordships' opinion he was not entitled to refer to or rely upon a judgment given in proceedings to which neither the plaintiff nor the defendant was a party, as proving the facts stated therein. Those facts are in no way proved thereby, nor are they in any way proved by the answer of Guth which has been quoted above. Guth could not of his own knowledge either quarrel or agree with the Chancellor's decision as to what it was that had happened in the numerous stores, and was described by the word "substitutions". There was accordingly no evidence before the Exchequer Court of confusion actual or probable. In these circumstances, the question f....
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....riate for the purpose as appears above) had been adopted in Canada as an item in the naming of different beverages. The proper comparison must be made with that fact in mind. 8. Numerous cases were cited in the Courts of Canada and before the Board in which the question of infringement of various marks has been considered and decided; but except when some general principle is laid down, little assistance is derived from authorities in which the question of infringement is discussed in relation to other marks and other circumstances. The plaintiff claimed that by virtue of S. 23(5)(b), Unfair Competition Act, 1932 its registered mark was both a word mark and a design mark; and their Lordships treat it accordingly. If it be viewed simply as a word mark consisting of g "Coca" and "Cola" joined by a hyphen, and the fact be borne in mind that Cola is a word in common use in Canada in naming beverages, it is plain that the distinctive feature in this hyphenated word, is the first word "Coca" and not "Cola". "Coca" rather than "Cola" is what would remain in the average memory. It is difficult indeed impossible, to imagine that the mark Pepsi-Cola as used by the defendant, in which the d....
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....ally similar, and likely to mislead or confuse an average consumer of imperfect recollection. The court, accordingly, granted an injunction restraining the respondent from using the impugned mark. The following paragraph is apposite in this regard: "15. Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used." 19.3. In Amritdhara Pharmacy v. Satya Deo Gupta (supra), this Court had extensively analysed the principles governing distinctiveness and likelihood of confusion in trademarks. It held that the marks 'Amritdhara' and 'Lakshmandhara' were deceptively si....
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....t market.... For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be. adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks, that it differs from the mark on goods which' he has previously bought, but is doubtful whether that impression is Dot due to imperfect recollection. (See Kerly on Trade Marks, 8th edition, p. 400.) " 7. ... We must consider, the overall similarity of the two composite words 'Amritdhara' and 'Lakshmandhara'. We do not think that the learned Judges of the High Court were right in Paying that no Indian would mistake one 'for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meanings of the composite words as 'current of nectar' or current of Lakshman'. He would go more by the overall structural and phonetic similar....
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...... 12. On a consideration of all the circumstances, we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of s. 10(1) of the Act and Registrar was right in the view he expressed. The High Court was in error taking a contrary view." 19.4. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (supra), the appellant who was the registered proprietor of the trademark 'Navaratna Pharmacy', instituted a suit for infringement and passing off against the respondent, who was manufacturing ayurvedic medicines under a similar name. The appellant alleged that the respondent's use of the name was likely to cause confusion among consumers. This court held that the claim of infringement was not made out, as the two marks were not sufficiently similar to deceive or confuse the public within the meaning of the Trade Marks Act. However, the Court upheld the passing off claim, observing that the overall similarity in name and trade dress could mislead consumers and adversely affect the goodwill of the appellant's business. The following paragra....
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.... further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. 29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to ....
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....ed to conduct a detailed comparison. It was held that an average consumer, possessing imperfect recollection, could easily be misled due to the visual, phonetic, and structural similarities in the competing products. Accordingly, the Court ruled in favour of the plaintiff, and restrained the defendant from continuing use of the impugned mark. The relevant paragraph is extracted below for better appreciation: "9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance tha....
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.... take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.' It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. [62 RPC 65] the House of Lords was considering the resemblance between the two words 'Aristoc' and 'Rysta'. The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for th....
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.... stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered: (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works. (b) The degree of resemblance between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trade marks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods. (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. 36. Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case." 19.7. In Khoday Distilleries....
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....f those trademarks is used in a normal way as a trade mark of the goods of the respective owners of the marks would also be a relevant factor. 76. Thus, when and how a person would likely be confused is a very relevant consideration. 77. Where the class of buyers, as noticed hereinbefore, is quite educated and rich, the test to be applied is different from the one where the product would be purchased by the villagers, illiterate and poor. Ordinarily, again they, like tobacco, would purchase alcoholic beverages by their brand name. When, however, the product is to be purchased both by villagers and town people, the test of a prudent man would necessarily be applied. It may be true that the tests which are to be applied in a country like India may be different from the tests either in a country of England, the United States of America or Australia. 78. We however, do not mean to suggest that in a case of this nature, the Heightened Scrutiny Test should be applied as urged on behalf of the appellant. Bollinger, J. v. Costa Brava Wine Co. Ltd., whereupon Mr Desai has strongly relied upon, makes such a distinction. Bollinger, J. was a case on demurrer. It was concerned with sale o....
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....of the defence counsel, the person can recover for loss or it must be shown that his case falls within the class of actionable wrongs stating: (Bollinger cases, All ER p. 810H-I) "... But the law may be thought to have failed if it can offer no remedy for the deliberate act of one person which causes damage to the property of another. There are such cases, of course, but they occur, as a rule, when the claims of freedom of action outweigh the interests of the other persons who suffer from the use which a person makes of his own property." It was in the aforementioned fact situation, the learned Judge proceeded to determine as to whether the description "Spanish champagne" is calculated to deceive, holding that the plaintiff has a right to bring any action. ... 80. Referring to Kerly on Trade Marks, which we have referred to hereinbefore, the learned Judge said: [Bollinger (No. 2) case, All ER p. 566 E-F] And it has been said that regard should not be had to "unusually stupid people, fools or idiots". Moreover, if the goods are expensive and not of a kind usually selected without deliberation and the customers generally educated persons these are all matters to be consider....
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....very nerve to do?" 81. The Bollinger test, 48 was not only applied in Warnink (Erven) BV v. J. 51 Townend & Sons (Hull) Ltd. but in all the cases which have been referred to by Mr Desai to which the different High Courts of India as also to which we have taken note of. However, tests laid down in Australia and the United States in respect of selfsame goods as noticed hereinbefore are somewhat different. 82. But then we are concerned with the class of buyer who is supposed to know the value of money, the quality and content of Scotch whisky. They are supposed to be aware of the difference of the process of manufacture, the place of manufacture and its origin. Respondent 3, the learned Single Judge as also the Division Bench of the High Court, therefore, failed to notice the distinction, which is real and otherwise borne out from the precedents operating in the field. (See Kerly's Law of Trade Marks and Trade Names, 13th Edn., p. 600) 83. Had these tests been applied the matter might have been different. In a given case probably we would not have interfered but we intend to do so only because wrong tests applied led to a wrong result. 84. So far as the applicability of th....
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....bly and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar,J. in Printers (Mysore) Private Ltd. v. Pothan Joseph [(1960) 3 SCR 713 : AIR 1960 SC 1156] : (SCR 721) "... These principles are well established, but as has been observed by Viscount Simon in Charles Osenton & Co. v. Jhanaton [1942 AC 130] '...the law as to the reversal by a court of appeal of an order made by a judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case'." The appellate judgment does not seem to defer to this principle. .... 19.9. In Anand Prasad Agarwalla v. Tarkeshwar Prasad and others (2001) 5 SCC 568, this Court emphasized that while considering an application for a temporary injunction, the court must avoid conducting a mini-trial or delving into the merits of the case in detail. The exercise at that stage is limited to determining whether a prima facie case exists, along with considerations of balance of conve....
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....xistence of the prima facie right and infraction of the enjoyment of his property or the right is a condition precedent for the grant of temporary injunction. Prima facie case is not to be confused with prima facie title which has to be established on evidence at the trial. Only prima facie case is a substantial question raised, bona fide, which needs investigation and a decision on merits. Satisfaction that there is a prima facie case by itself is not sufficient to grant injunction. The Court further has to satisfy that noninterference by the court would result in "irreparable injury" to the party seeking relief and that there is no other remedy available to the party except one to grant injunction and he needs protection from the consequences of apprehended injury or dispossession. Irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely one that cannot be adequately compensated by way of damages. The third condition also is that "the balance of convenience" must be in favour of granting injunction. The Court while granting or refusing to grant injunction should exe....
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....and the labels of the competing products carried distinct names and logos. No imitation capable of misleading consumers was found in the respondent's product. Moreover, the bottle produced by the appellants during the hearing did not bear any such embossed mark. Accoridngly, the Court held that the appellants had failed to establish a prima facie case, and that the balance of convenience did not favour them. Dismissing the application for interim injunction, the Court held that the mere use of the word 'PRIDE' by the respondent could not amount to imitation of the appellants' trademarks. Aggrieved by the said order, the appellants preferred an appeal before the High Court. 23. The High Court, upon consideration of the material on record, concurred with the findings of the Commercial Court and held that the respondent's use of the word 'PRIDE' was unlikely to mislead or confuse a consumer of average intelligence. Products such as those in question are generally identified and purchased by their complete names, or more commonly, by their first words. In the appellants' trademark, the first word is 'BLENDERS', whereas in the respondent's mark, it is 'LONDON'. There is absolutely no s....
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....ted element. Such dissection is impermissible under Section 28(1) of the Trade Marks Act, 1999. According to the learned Senior Counsel, these settled principles are equally applicable at the interlocutory stage while adjudicating an application for interim relief. 25.1. It is further contended that the comparison should have been conducted from the standpoint of an average consumer with imperfect recollection. A holistic comparison of the products reveals that essential features - such as the bottle shape, label structure, and the distinctive colour combination of dark blue, light blue, and gold - are deceptively similar and likely to cause confusion. However, the Commercial Court erroneously presumed that purchasers of premium and ultra-premium whisky are discerning and unlikely to be misled. 25.2. It is also submitted that the respondent has dishonestly adopted the essential and distinctive elements of the appellants' registered trademarks. Such conduct amounts to an actionable tort and warrants the grant of an interim injunction, even in the absence of further proof of passing off. 26. On the other hand, the respondent contends that there is no similarity between the compet....
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....res thick golden borders with a dark blue background. 29. Before delving further, it is important to note that a passing off action is a common law remedy designed to protect the goodwill and reputation of a trader against misrepresentation by another, which causes or is likely to cause confusion among consumers. As observed by James L.J, in Singer Manufacturing Co v. loog, 1880 18 Ch.D. 395, p.412 "no man is entitled to represent his goods as being the goods of another man". A passing off action applies to both registered and unregistered marks, and is rooted in the principle that one trader should not unfairly benefit from the reputation built by another. In contrast, an action for trademark infringement is a statutory remedy under the Trade Marks Act, 1999 available only in relation to registered trademarks. It is intended to safeguard the exclusive proprietary rights that registration confers. 29.1. A key distinction between the two lies in the requirements of proof. In an infringement action, the plaintiff is not required to establish the distinctiveness or goodwill of the mark - registration, by itself, affords the right to seek protection. If the impugned mark is shown to ....
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....commercial origin of goods or services in the minds of consumers. The likelihood of confusion remains the cornerstone of both infringement and passing off actions. 31.1. A registered trademark is infringed when a person, in the course of trade, uses a mark that is identical or deceptively similar to a registered trademark in relation to similar goods or services. Section 2(1)(h) of the Trade Marks Act, 1999 defines 'deceptively similar' to mean 'a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion'. 31.2. Whether a trade mark is likely to deceive or cause confusion is a question of fact. Courts have consistently held that the broad and essential features of the rival marks must be considered. The assessment focuses on visual appearance, phonetic similarity, the nature of the goods, the class of purchasers, and the manner of sale. 31.3. As held in Parker - Knoll Ltd v. Knoll International Ltd. 1962 RPC 265, proof of an intention to deceive is not required; a likelihood of confusion is sufficient to establish infringement or passing off. The evaluation must be made from the standpoi....
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.... origin. 31.7. Colour combinations are treated similarly to single colours combined with other distinctive elements. A specific combination of colours may be prima facie registrable depending on its manner of presentation. For example, colours used within a defined geometric shape may qualify for registration. Where colours are applied to packaging or labels, the burden of proving acquired distinctiveness is higher. In such cases, the proprietor must show that the colour scheme functions as a badge of origin. Ultimately, trademark law seeks to protect indicators of source - both inherently and through acquired distinctiveness - which were previously protectable only through the more demanding process of a passing off action. 31.8. Trade dress, encompassing the overall visual appearance of a product - including packaging, layout, colour schemes, and graphics - also enjoys protection. Indian courts have recognized that a deceptively similar trade dress, even in the absence of a word mark, may mislead consumers and constitute passing off, particularly where visual cues trigger brand association and market confusion. 31.9. Applying the foregoing principles to the present case, we ar....
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....note that consumers seldom engage in detailed, analytical comparisons of competing marks. Purchasing decisions are instead based on imperfect recollection and the general impression created by a mark's sight, sound, and structure. The anti-dissection rule thus aligns the legal test for infringement with the actual behaviour and perception of consumers in the marketplace. 32.3. Consequently, in disputes involving composite marks, the mere presence of a shared or generic word in both marks does not, by itself, justify a finding of deceptive similarity. Courts must undertake a holistic comparison examining visual, phonetic, structural, and conceptual elements, to assess whether the overall impression created by the rival marks is likely to mislead an average consumer of ordinary intelligence and imperfect memory. If the marks, viewed in totality, convey distinct identities, the use of a common element - particularly if it is descriptive or laudatory - will not by itself amount to infringement. 32.4. In the present case, the appellants' attempt to isolate the word 'PRIDE' as the basis of comparison is legally untenable. Trademark similarity must be assessed by considering the mark as....
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....ment dominates. Similarly, in trademark analysis, the presence of common elements across marks does not automatically indicate a likelihood of confusion. What matters is the relative prominence and distinctiveness of the elements. Just as the milk in the second example visually and qualitatively overwhelms the water, a dominant feature in a mark can subsume other components and shape consumer perception. Therefore, while assessing deceptive similarity, due weight must be given to the dominant element, without disregarding the composite nature of the mark. 33.3. The dominant feature of a mark is typically identified based on factors such as its visual and phonetic prominence, placement within the mark (with initial components often carrying greater perceptual weight), inherent distinctiveness, and the degree of consumer association it has generated. The dominant element functions as the "hook" that captures the consumer's attention and facilitates brand recall. For instance, in composite marks such as 'BLENDERS PRIDE' or 'IMPERIAL BLUE', the terms 'BLENDERS' and 'IMPERIAL' may be regarded as dominant, owing to their distinctive and less frequently used character. In contrast, eleme....
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....s extensively used as part of various trademarks. Judicial notice may be taken of multiple registrations under Class 33 - such as McDowell's Pride, Highland Pride, Royal Pride, and Pride of India - all incorporating the term 'PRIDE'. This widespread usage illustrates that the word is publici juris, not inherently distinctive, and therefore incapable of exclusive appropriation in the absence of compelling evidence of secondary meaning. 34.3. The appellants' mark 'BLENDERS PRIDE' is a composite trademark, comprising the suggestive term 'BLENDERS' - alluding to the craft of blending spirits - and the laudatory word 'PRIDE'. By contrast, the respondent's mark 'LONDON PRIDE', couples a geographical term with the same non-distinctive word 'PRIDE'. The mere presence of a shared generic or descriptive element is insufficient, by itself, to support a claim of deceptive similarity. 34.4. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra), this Court reaffirmed that deceptive similarity must be assessed holistically, taking into account factors such as the nature of the marks, the class of purchasers, mode of purchase, and the overall circumstances surrounding the trade. 34.....
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....ods: greater care may be exercised when purchasing luxury items than in the case of everyday consumer goods. 35.2. The test is equally relevant to both inherent and acquired distinctiveness. A mark has inherent distinctiveness if, by its very form and appearance, it identifies trade origin to the average consumer at the time of registration. A mark may acquire distinctiveness if, through consistent and prolonged use, it becomes associated by a significant portion of the relevant public with a particular commercial source - even if the consumer cannot name the source precisely. What matters is not that the consumer knows the producer, but that the mark serves as an indicator of origin. 35.3. However, the test has limitations. In cases involving product shapes or designs, where the features serve a technical function or add substantial value, policy considerations may override consumer perception. While the average consumer may identify the essential characteristics of a product's shape or configuration, their opinion is not determinative in assessing registrability, especially where legal prohibitions against functional or aesthetic monopolies come into play. 35.4. The doctrine o....
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....ks - 'BLENDERS PRIDE', 'IMPERIAL BLUE', and 'SEAGRAM'S' - convey distinct commercial impressions, when compared with the respondent's mark 'LONDON PRIDE'. The overall visual appearance, phonetic structure, and trade dress - though sharing some generic elements such as use of blue and gold - are sufficiently different. These structural and conceptual dissimilarities between the marks outweigh any incidental similarities, negating the likelihood of confusion in the mind of a consumer of average intelligence and imperfect recollection. (F) LEGAL PRINCIPLES GOVERNING GRANT OF INJUNCTION 36. The Trade Marks Act, 1999 does not prescribe any rigid or exhaustive criteria for determining whether a mark is likely to deceive or cause confusion. Each case must necessarily be decided on its own facts and circumstances, with judicial precedents serving to illuminate the applicable tests and guiding principles rather than to dictate outcomes. 36.1. As a general rule, a proprietor whose statutory or common law rights are infringed is entitled to seek an injunction to restrain further unlawful use. However, this remedy is not absolute. The considerations governing the grant of injunctions in tra....
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....arm is presumed. (v) Public interest: In matters involving public health, safety, or widely consumed goods, courts may consider whether the public interest warrants injunctive relief to prevent confusion or deception in the marketplace. 36.4. In conclusion, the grant of an interim injunction in trademark matters requires the court to consider multiple interrelated factors: prima facie case, likelihood of confusion, relative merits of the parties' claims, balance of convenience, risk of irreparable harm, and the public interest. These considerations operate cumulatively, and the absence of any one of these may be sufficient to decline interim relief. 37. Earlier, the appellants were unsuccessful in asserting a similar claim regarding the use of the word 'Pride'. In Pernod Ricard India (P) Ltd. v. United Spirits Ltd. 2023 SCC OnLine P&H 477 : (2023) 3 RCR (Civil) 162 the appeal arose from the dismissal of an application under Order XXXIX Rules 1 and 2 CPC, wherein the appellant, Pernod Richard India Private Ltd, had sought an interim injunction restraining United Spirits Ltd from using the mark "Royal Challenge American Pride". By order dated 17.01.2022, the commercial court reje....
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....sent appeal, the bone of contention revolves around primarily the two trade marks i.e. "Blenders Pride" on one hand owned by the appellant and "Royal Challenge American Pride", a trade mark duly registered by the respondents on the other hand are on loggerheads. In the light of the express provisions whereby the trade mark or a part of trade mark has been infringed, it is a requirement of law as per Sections 15 and 17 of the Act that the part of the trade mark has to be registered separately and admittedly in the present case, the appellant is holder of the registered trade mark titled "Blenders Pride" collectively, and, therefore, the entire thrust of the argument and the case built up by the appellant that there is infringement by the respondents is only on the basis of a common word "Pride". At the outset, in the absence of any registration of the word "Pride" independently and separately, disentitles the appellant to any stay qua the same. Further the act and conduct of the appellant also demonstrates that they themselves have foregone their right and have never objected to the use of the word "Pride" separately. Reliance has been placed on multiple litigations especially the o....
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....itioner, we clarify that it is well settled proposition of law that decisions on interlocutory applications are only made to protect rival interests pending suit. Somehow the interim applications itself are treated as final decision but it is not so. In all such cases, interim arrangements should be made and the trial should proceed rather than to spend time only on interlocutory applications. That protects the petitioner against the apprehension that the impugned judgment may be cited in other Court qua petitioner's cases of a similar nature. Needless to say that the trial Court will not be influenced at the stage of final decision based on evidence recorded with the observations at the interlocutory stage whether of the trial Court or the High Court. The special leave petition is dismissed." 38. In Bajaj Auto Ltd v. TVS Motor Co. Ltd (2009) 9 SCC 797, this Court expressed grave concern over the inordinate delays in the adjudication of intellectual property disputes in India. It observed that litigation in matters involving copyright, trademarks, and patents is often prolonged, with the real contest revolving around interim injunctions, while final adjudication remains elusiv....
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....y unsatisfactory state of affairs, and hence we had passed the abovequoted order in the abovementioned case to serve the ends of justice. We direct that the directions in the aforesaid order be carried out by all courts and tribunals in this country punctually and faithfully. 5. In the present case, although arguments were advanced at some length by the learned counsel for both the parties, we are of the opinion that instead of deciding the case at the interlocutory stage, the suit itself should be disposed of finally at a very early date. Hence, without going into the merits of the controversy, we direct the respondent-defendant to file written statement in the suit, if not already filed, on or before the last date for closing of the Madras High Court for Dussehra holidays. We would request the learned Single Judge who is trying the suit to commence the hearing of the suit on the reopening of the Madras High Court after Dussehra holidays and then carry it on a day-to-day basis. No adjournment whatsoever ordinarily will be granted and the suit shall be finally disposed of on or before 30-11-2009." 39. We have carefully examined the judicial precedents both in support of and agai....
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....rs to the confusion that occurs not at the point of purchase, but rather after the product has been bought and is seen in use by others. This form of confusion can arise, for example, when a consumer knowingly purchases counterfeit goods - such as imitation Rolex watches or knockoff Adidas or Nike apparel - or when automobiles are inspired from more premium offerings. In such cases, while the purchaser may not be deceived, the public at large may be misled into associating the infringing goods with the original brand, thereby diluting the brand's reputation and goodwill. 40.3. The underlying harm in post-sale confusion lies in the deceptive appearance of legitimacy, which can impair the distinctiveness and perceived exclusivity of the genuine product. This is especially relevant in sectors like fashion, luxury goods, automobiles, and food items, where brand visibility and public perception are essential aspects of consumer engagement and brand equity. 40.4. However, in the present case, the goods in question are not intended for public display and are for private consumption. Therefore, the doctrine of post- sale confusion, while significant, is not directly applicable to the fac....
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....oses of that case, at paras 16-20. It is appropriate also for the purposes of this appeal to set out those points: "16. First, the average consumer is both a legal construct and a normative benchmark. They are a legal construct in that consumers who are ill- informed or careless and consumers with specialised knowledge or who are excessively careful are excluded from consideration. They are a normative benchmark in that they provide a standard which enables the courts to strike a balance between the various competing interests involved, including the interests of trade mark owners, their competitors and consumers. 17. Secondly, the average consumer is neither a single hypothetical person nor some form of mathematical average, nor does assessment from the perspective of the average consumer involve a statistical test. They represent consumers who have a spectrum of attributes such as age, gender, ethnicity and social group. For this reason the European case law frequently refers to 'the relevant public' and 'average consumers' rather than, or interchangeably with, 'the average consumer': see, for example, Intel Corpn Inc v CPM United Kingdom Ltd (Case C-252/07) [2008] ECR I-8823....
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.... if there is some similarity, even faint, between the marks at issue that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public." The CJEU also referred to this requirement for a global assessment even if the degree of similarity was only faint, at para 60 of its judgment in European Union Intellectual Property Office v Equivalenza Manufactory SL (Case C-328/18 P) EU:C:2020:156 ("Equivalenza"). At para 60 the CJEU stated: "... It is only if there is some similarity, even faint, between those signs that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion in the mind of the relevant public (see, to that effect, judgment of 24 March 2011, Fe....
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....rned with footwear is the UK adult population generally: see the judgment of Miles J at para 122. 37. In Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc (Case C-39/97) [1999] ETMR 1; [1998] All ER (EC) 934, para 29, the CJEU explained what amounts to a likelihood of confusion in the following terms: "... the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion..." 38. In order to try to ensure consistency of decision making, a standard summary of the principles established by these authorities, expressed in terms referable to the registration context, has been adopted in this jurisdiction. The current version was set out by Arnold LJ in Match Group LLC v Muzmatch Ltd [2023] EWCA Civ 454; [2023] Bus LR 1097, para 27, as being: "(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, b....
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.... the context in which the sign has been used." (i) The context in which the sign has been used. 82. The same pragmatic approach to the level of attentiveness in relation to post- sale confusion was applied on appeal in the judgment of the CJEU (First Chamber). The relevant paragraphs in the judgment are paragraphs 40-43. At para 40 the CJEU stated: "40. Where it is established in fact that the objective characteristics of a given product mean that the average consumer purchases it only after a particularly careful examination, it is important in law to take into account that such a fact may reduce the likelihood of confusion between marks relating to such goods at the crucial moment when the choice between those goods and marks is made." 94. It is perhaps obvious, and certainly an inevitable conclusion drawn from experience, that reasonable minds, and in particular reasonable judicially trained minds, each faithfully applying the relevant law and principles, will come to different conclusions about the answer to these multifactorial questions. While of course the decision of an appellate court trumps that of the court below, the law has imposed structured constraints design....
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.... or association in the minds of consumers arising from an overall resemblance between the competing marks. The applicable standard is that of an average consumer with imperfect recollection. 42. While comparing rival marks, Courts must assess the marks in their entirety, rather than dissecting composite trademarks into isolated components. The dominant feature of a mark may assist in crossing the preliminary threshold of analysis, but the ultimate inquiry must focus on the overall impression created by the mark - especially in the context of the relevant goods, trade channels, and target consumers. The proper test is not to place the two marks side by side to identify dissimilarities, but to determine whether the impugned mark, when viewed independently, is likely to create an impression of association or common origin in the mind of the average consumer. Even if a particular component of a mark lacks inherent distinctiveness, its imitation may still amount to infringement if it constitutes an essential and distinctive feature of the composite mark as a whole. 43. Section 17(1) of the Trade Marks Act, 1999 grants exclusive rights only in respect of the mark as registered. Section....
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....cking in bona fides. 49. In the liquor industry, where advertising is highly restricted, brand recognition rests predominantly on packaging and consumer loyalty. Unless the imitation is deliberate and intended to mislead, the chance of confusion is minimal. The allegation of counterfeiting in the present case appears to be speculative and unsupported by credible evidence. 50. The appellants' attempt to combine elements from two distinct marks - 'BLENDERS PRIDE' and 'IMPERIAL BLUE' - to challenge the respondent's mark 'LONDON PRIDE', constitutes a hybrid and untenable pleading. Each mark must be assessed independently, and cherry-picking generic or unregistered features from multiple marks to fabricate a composite case of infringement is not legally sustainable. 51. It is not in dispute that the word "PRIDE" is not registered as a standalone mark. Nor can the appellants claim exclusivity over common elements like bottle shape or color schemes that are generic and widely used in the industry. While the composite marks 'BLENDERS PRIDE' and 'IMPERIAL BLUE' are protected, their individual elements - lacking distinctiveness - are not independently enforceable. 52. The piece-meal appr....