TaxTMI 
TaxTMI 
2025 (8) TMI 993
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....CONSUMER TEST AND IMPERFECT RECOLLECTION 70 (F)LEGAL PRINCIPLES GOVERNING GRANT OF INTERIM 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 ....
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....mponent of a mark that is likely to influence consumer perception. The purpose of this doctrine is to determine whether the impugned mark creates a deceptive association 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: ".....
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....oholic beverages, except beers", followed by Registration No. 3327621 on 03.08.2016 for the same mark in the same class. The brand 'IMPERIAL BLUE' achieved an annual turnover exceeding INR 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 violatio....
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.... excluding any part. The Appellate Court erroneously dissected the mark 'BLENDERS PRIDE' and compared "BLENDERS" with "LONDON", ignoring the distinctive and dominant component "PRIDE" - thus violating both 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 respo....
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....g and literate, thereby ruling out the likelihood of confusion. However, the test of imperfect recollection applies regardless of a consumer's education or economic background. In Cadila Health Care ltd v. Cadila Pharmaceuticals 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 app....
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....the goodwill attached thereto. It was further contended that the respondent's mark is entirely dissimilar in name, appearance, and composition from any of the appellants' earlier registered trademarks. The brand 'LONDON PRIDE' is also 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 prop....
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....tions and interpretation. - (1) In this Act, unless the context otherwise requires, - (h) "deceptively similar".- 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; (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- ....
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....s identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair 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 a....
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....les dealing with the goods or services, to which that trade mark applies. (8) Where a trade mark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act. (9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:- (i) that the trade mark has 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 agains....
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....therwise of a non- distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered. 27. No action for infringement of an unregistered trade mark.- (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof." 28. Rights conferred by registration.-(1) Subject to the other provisions 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 c....
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.... (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he- (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for 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....
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....ies the court- (i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use; and (ii) that when he became aware of the existence and nature of the plaintiff's right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or (c) where in a suit for passing off, the defendant satisfies the court- (i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark for the plaintiff was in use; and (ii) that when he became aware of the existence and nature of the plaintiff's trade mark he forthwith ceased to use the trade mark complained of." 18.1. A 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....
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..... Importantly, courts are authorized to grant ex parte and interlocutory relief to prevent continued misuse or dilution of trademarks during the pendency of litigation. 18.8. In essence, the Trade Marks Act, 1999 provides a comprehensive statutory framework for protecting registered trademarks, while also preserving the rights of prior users through passing off actions. The Act clearly distinguishes between absolute and relative grounds for refusal of registration and provides effective enforcement mechanisms. Crucially, the guiding test is the likelihood of confusion in the mind of an average consumer - not actual confusion - which serves as the touchstone for both refusal of registration and infringement proceedings. In the present case, the issues of similarity, reputation, and consumer confusion must be analyzed within this statutory scheme. VI. JUDICIAL PRONOUNCEMENTS 19. Before proceeding further to analyse the facts of the case, we deem it necessary to refer and consider the 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 Coun....
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....t. No evidence of (to put it shortly) confusion either actual or probable was adduced. It was contended that a statement by a witness called by the defendant (one Charles Guth) was proof of actual confusion. Guth was general manager of a United States company which owns the capital stock of the defendant. He was also President of a New York company called Loft Incorporated which owned a large number of candy stores in New York at which Coca-Cola was sold. Subsequently the sale of Coca-Cola was discontinued, and Pepsi-Cola was sold at the stores. A passing off action was brought by the Delaware Coca-Cola Company against Loft Incorporated. The judge of the Court of Chancery, Delaware, dismissed the action holding that Loft Incorporated was not responsible for the acts of its agents of which evidence had been given. In the course of his cross-examination in the Exchequer Court Guth was asked "Then you have no quarrel with the Chancellor's decision as to the facts expressed in his opinion?" and he answered "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....
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.... Americana). Cola would therefore appear to be a word which might appropriately be used in association with beverages and in particular with that class of non-alcoholic beverages colloquially known by the description of "soft drinks". That in fact the word "Cola" or "Kola" has been so used in Canada is established by the second of the two circumstances before referred to. The defendant put in evidence a series of 22 trade marks registered in Canada from time to time during a period of 29 years, viz., from 1902 to 1930, in connexion with beverages. They include the mark of the plaintiff and the registered mark of the defendant. The other 20 marks consist of two or more words or a compound word, but always containing the word "Cola" or "Kola". The following are a few samples of the bulk; - "Kola Tonic Wine" "La-Kola" "Cola-Claret", "Rose-Cola", "Orange Kola" "O'Keefe's Cola", "Royal Cola". Their Lordships agree with the Supreme Court in attributing weight to those registrations as showing that the word Cola (appropriate 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 fac....
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....y or for the conditions under which or the class of persons by whom they were produced or for their place of origin. The defendant therefore has not adopted for use in Canada in connexion with its wares a trade mark which in any way offends against the provisions of S. 3, Unfair Competition Act, 1932. Their Lordships will humbly advise His Majesty that this appeal and the cross appeal should be dismissed. The plaintiff will pay the costs of the appeal and the defendant will pay the costs of the cross appeal with the usual set-off. Appeal dismissed." 19.2. In Corn Products Refining Co., v. Shangrila Food Products Ltd. AIR 1960 SC 142, the appellant, who was the registered proprietor of the trademark Glucovita used in relation to glucose-based food products, sought an injunction against the respondent who had commenced marketing a similar product under the mark Gluvita. The primary contention was one of deceptive similarity and passing off. This court held that the two marks - Glucovita and Gluvita - were phonetically and visually similar, and likely to mislead or confuse an average consumer of imperfect recollection. The court, accordingly, granted an injunction restrain....
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....rpose are "likely to deceive or cause confusion." The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registerable by reason of cl. (a) of s.8, or sub-s. (1) of s.10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by the resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market.... For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be li....
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....tance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mar is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with. a similar name..... 9. Nor do we think that the High Court was. right in thinking that the appellant was claiming a. monopoly in the common Hindi word 'dhara'. We do not think that is quite the position here. What the appellant is claiming is its right under s.21 of the Act, the exclusive right to the use of its trade mark, and to oppose the registration of a trade mark which go nearly resembles its trade mark that it is likely to deceive or cause confusion.... 12. On a consideration of all the circumstances, we have come to the conclusion that the overall si....
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....onferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expres....
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....res of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff." 19.5. In Parle Products (P) Ltd., v. J.P. & Co., Mysore (1972) 1 SCC 618, this Court laid down the test for deceptive similarity in trademark infringement. The dispute concerned the plaintiff's registered trademark and distinctive packaging for "Glucose Biscuits", and the defendant's use of similar packaging and get-up for their biscuits marketed under the name "Glucobiscuit". The Court observed that the two marks, taken with their overall packaging and presentation, were deceptively similar - particularly given the class of consumers targeted, namely children and the general public, who are not expected to conduct a detailed comparison. It was held that an average consumer, possessing ....
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....nts there was similarity and in how many others there was absence of it." 19.6. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra), it was held that even minor differences may be insufficient if the overall impression conveyed by the marks is likely to deceive or cause confusion. The applicable test is not one of exact or absolute similarity, but whether the essential and distinctive features of the plaintiff's mark have been appropriated by the defendant in a manner likely to mislead or confuse the average consumer. The following paragraph is apposite in this regard: "16. Dealing once again with medicinal products, this Court in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. (P) Ltd. [(1969) 2 SCC 716] had to consider whether the word "Protovit" belonging to the appellant was similar to the word "Dropovit" of the respondent. This Court, while deciding the test to be applied, observed at pp. 720-21 as follows: (SCC para 7) "The test for comparison of the two word marks were formulated by Lord Parker in Pianotist Co. Ltd.'s application [(1906) 23 RPC 774] as follows: 'You must take the two words. You must judge of them, both....
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.... a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case Lord Johnston said: '... we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop.' " On the facts of that case this Court came to the conclusion that taking into account all circumstances the words "Protovit" and "Dropovit" were so dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view." 19.6.1. Further, in the same decision, this Court laid down the parameters to be applied in a passing off action involving deceptive similarity of marks. The relevant paragraph is usefully extracted below: "35. Broadly state....
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....actual or likely confusion. Furthermore, in actions for passing off, an intention to deceive must be established, and mere similarity in names without such intent is insufficient. Although "Scotch" constitutes a protected geographical indication, the Court found that "Peter Scot" was a bona fide and honest adoption, not intended to exploit the reputation of Scotch whisky. Ultimately, it was held that no actionable confusion or deception had been proved, and accordingly, the injunction sought by the respondents was rightly declined. The decision reaffirms that the test of deceptive similarity must be applied holistically, having regard to the overall impression created by the mark, rather than focusing merely on phonetic or structural resemblance in isolation. The following paragraphs are pertinent in this regard: "75. The tests which are, therefore, required to be applied in each case would be different. Each word must be taken separately. They should be judged by their look and by their sound and must consider the goods to which they are to be applied. Nature and the kind of customers who would likely to buy goods must also be considered. Surrounding circumstances play an....
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....rapes grown there; and (5) the defendants are producing a wine not produced in that geographical area and are selling it under the name of 'Spanish Champagne'." It was noticed: (Bollinger case, All ER p. 805 B-D) "The well-established action for 'passing off' involves the use of a name or get- up which is calculated to cause confusion with the goods of a particular rival trader, and I think it would be fair to say that the law in this respect has been concerned with unfair competition between traders rather than with the deception of the public which may be caused by the defendant's conduct, for the right of action known as a 'passing-off action' is not an action brought by the member of the public who is deceived but by the trader whose trade is likely to suffer from the deception practised on the public but who is not himself deceived at all." Before the learned Judge, the plaintiffs claimed that their goodwill in the name or description "champagne" is injured by the defendants' conduct to which the counsel for the defendants did not contest the correctness of the statement. The learned Judge, referring to Mayor ....
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....l ER pp. 567 1-568 C] There is thus, in my view, a considerable body of evidence that persons whose life or education has not taught them much about the nature and production of wine, but who from time to time want to purchase Champagne, as the wine with the great reputation, are likely to be misled by the description "Spanish Champagne". Something was said on the subject of the burden of proof. Well, burden of proof is something which may shift in the course of an action. It appears to me that when the plaintiffs have shown that a description used by the defendants contains an untruthful statement that a wine which is not Champagne is Champagne, they have gone some way to establishing their case, and the Court might require to be satisfied that such an untrue statement was so clearly qualified as to be not likely to mislead. But, however, that may be, I am satisfied on the evidence that a substantial portion of the public are likely to be misled. And as Lord Justice Lindley said in Slazenger & Sons v. Feltham & Co. 50, RPC at p. 537: "One must exercise one's common sense, and, if you are driven to the conclusion that what is intended to be done is to....
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.... to the very scope and nature of the appeals before it and the limitations on the powers of the appellate court to substitute its own discretion in an appeal preferred against a discretionary order. The second pertains to the infirmities in the ratiocination as to the quality of Antox's alleged user of the trademark on which the passing-off action is founded. We shall deal with these two separately. 14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court....
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....being no dispute as to ownership of the land and the possession was admittedly with a stranger and hence temporary injunction is not permissible. Therefore, we are of the view that the Division Bench has very correctly appreciated the matter and come to the conclusion in favour of the respondents. In these circumstances, we dismiss these appeals. We may notice that the time-bound directions issued by the Division Bench will have to be adhered to strictly by the parties concerned and the suits should be disposed of at an early date but not later than six months from the date of the communication of this order." 19.10. In a more recent decision in Ramakant Ambalal Choksi Vs. Harish Ambalal Choksi and Others 2024 SCC OnLine SC 3538, this Court reaffirmed the narrow scope of appellate interference with orders granting or refusing interlocutory injunctions. It was held that unless the discretion exercised by the trial court is shown to be perverse, arbitrary, or capricious, appellate courts ought not to substitute their views. The following paragraphs are relevant in this connection: "33. In the case of Anand Prasad Agarwal v. Tarkeshwar Prasad, (2001) 5 SCC 568, it was held....
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.... application for interim injunction. The main suit, being Civil Suit No. 3 of 2020 instituted by the appellants before the Commercial Court is still pending adjudication. 21. During the pendency of the suit, the appellants filed an application under Order XXXIX Rules 1 and 2 CPC seeking an interim injunction to restrain the respondent from manufacturing, selling, offering for sale, advertising, or otherwise dealing in whiskey under the trademark 'LONDON PRIDE', or any packaging or label bearing a trademark that is identical or deceptively similar to the appellants' registered trademarks viz., 'IMPERIAL BLUE', 'BLENDERS PRIDE', or 'SEAGRAM'S', alleging infringement and passing off. 22. Upon a comparison of the rival marks, the Commercial Court found that the only common element was the word 'PRIDE', and that no other similarity was discernible. The packaging, style, bottle shape, and logos of the two brands were found to be entirely different. The Court also examined whether a consumer of the appellants' product 'BLENDERS PRIDE' would likely be deceived by the respondent's product 'LONDON PRIDE', and concluded that 'PRIDE' is a commonly used word in ordinary parlance, over whi....
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....demarks related to 'premium' or 'ultra-premium' whiskey, and that consumers of such products can reasonably be presumed to be literate and possess sufficient intelligence to distinguish between 'BLENDERS PRIDE/IMPERIAL BLUE' and 'LONDON PRIDE'. Even consumers of average intelligence with imperfect recollection would be able to differentiate between the rival brands. The High Court affirmed the Commercial Court's finding that there was no deceptive similarity in the respondent's mark that could constitute imitation of the appellants' trademarks. The High Court found no infirmity in the conclusions drawn by the Commercial Court and dismissed the appeal. It directed the Commercial Court to proceed with the trial of the suit on merits and to dispose it of expeditiously - preferably within nine months of receipt of the certified copy of the High Court's order - without being influenced by any observations made in the course of interlocutory proceedings. Aggrieved thereby, the appellants have preferred the present appeal before this Court. 25. The principal contention advanced by the learned Senior Counsel for the appellants is that the appellants' registered trademarks ought to ha....
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....bears any deceptive similarity to the appellants' registered trademarks, so as to mislead or confuse an average consumer, by juxtaposing the facts with the settled legal position. The competing marks are : 28. In support of their claim, the appellants in their affidavit, highlighted the following overall similarities between their three registered trademarks and the respondent's mark: (i) The shape of the bottles is identical. (ii) The shape of the "dome structure" used in the label on the box and bottle is identical. (iii) The color combination used on the label and packaging includes dark blue, light blue, golden and white. (iv) The names of the brands (IMPERIAL BLUE v LONDON PRIDE) in both cases, are written in white against a dark blue background, within an identically shaped dome. (v) The trademark name is written in white lettering below the emblem, with "BLUE" centered below "IMPERIAL" and "PRIDE" centered below "LONDON." (vi) The outer packaging features thick golden borders, and the inside of the packaging is dark blue. (vii) The top-middle section of the label contains an emblem-Seagram's Crest Device in go....
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....ff action, the defendant's goods need not be identical to those of the plaintiff - they may be allied or even unrelated, provided the misrepresentation is such that it affects or is likely to affect the plaintiff's business reputation. In contrast, infringement requires that the unauthorised use relate to the same or similar goods or services for which the trademark is registered. 29.4. Additionally, in an infringement suit, it is not necessary for the plaintiff to establish use of the mark; even a registered proprietor who has not commenced use can sue for infringement. However, in a passing off action, the plaintiff must demonstrate prior and continuous use, and that the mark has acquired distinctiveness in the minds of the public. 29.5. Thus, while both actions seek to prevent unfair competition and protect against consumer confusion, an action for infringement offers broader statutory protection based solely on registration and ownership. In contrast, passing off is grounded in equitable principles and imposes a higher evidentiary burden to safeguard commercial goodwill under common law. APPLICABILITY OF LEGAL PRINCIPLES 30. We shall now proceed to apply the legal p....
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....iate the mark with a particular source. Similarly, geographical terms like Simla or Liverpool, or generic trade terms, are generally not registrable unless they have acquired distinctiveness through long and exclusive use. The more distinctive a mark - whether inherently or through acquired reputation - the stronger its position in infringement or passing off actions. 31.5. In the case of composite marks - those contained multiple elements, such as words and logos - the overall impression created by the mark is relevant. However, proprietors cannot claim exclusive rights over individual components, particularly, non-distinctive or descriptive elements. Courts have often required disclaimers of such generic parts at the time of registration. For instance, in Tungabhadra Industries Ltd v. Registrar of Trade Marks AIR 1959 SC 989, the registration of "Diamond T" in a diamond-shaped logo was granted, but the word "Diamond" was required to be disclaimed due to its non-distinctiveness. 31.6. Short marks, especially those consisting of two-letter or minimal-character combinations, are treated cautiously. These are often considered non-distinctive, because they tend to resemble abbre....
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....holistically, the competing marks do not create such an overall resemblance as is likely to cause confusion or deception in the mind of an average consumer exercising imperfect recollection. (B) RULE OF ANTI-DISSECTION 32. A foundational principle in trademark law is that marks must be compared as a whole, and not by dissecting them into individual components. This is known as the anti-dissection rule, which reflects the real-world manner in which consumers perceive trademarks - based on their overall impression, encompassing appearance, sound, structure, and commercial impression. In Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals Laboratories (supra), this Court underscored that the correct test for trademark infringement is whether, when considered in its entirety, the defendant's mark is deceptively similar to the plaintiff's registered mark. The Court expressly cautioned against isolating individual parts of a composite mark, as such an approach disregard how consumers actually experience and recall trademarks. 32.1. While Section 17 of the Trade Marks Act, 1999 restricts exclusive rights to the trademark as a whole and does not confer protection over ind....
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....which is most distinctive, memorable, and likely to influence consumer perception. While the anti-dissection rule requires marks to be compared in their entirety, courts may still place emphasis on certain prominent or distinguishing elements, especially where such features significantly contribute to the overall commercial impression of the mark. 33.1. The principles of the anti-dissection rule and the dominant feature test, though seemingly in tension, are not mutually exclusive. Identifying a dominant feature can serve as an analytical aid in the holistic comparison of marks. In certain cases, an infringing component may overshadow the remainder of the mark to such an extent that confusion or deception becomes virtually inevitable. In such instances, courts - while maintaining a contextual and fact-specific inquiry - may justifiably assign greater weight to the dominant element. However, emphasis on a dominant feature alone cannot be determinative; the ultimate test remains whether the mark, viewed as a whole, creates a deceptive similarity likely to mislead an average consumer of ordinary intelligence and imperfect recollection. 33.2. An analogy that aptly illustrates the....
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....om either of the appellants' marks. The trade dress, label design, colour scheme, typography, and brand presentation are all distinctive and unrelated. Moreover, the term 'LONDON' introduces a geographical identifier that conveys a distinct brand identity, divergent from 'BLENDERS' or 'IMPERIAL'. The respondent's mark, therefore, does not imitate the dominant features of the appellants' marks. As such, there exists no real likelihood of confusion or false association in the mind of an average consumer exercising ordinary caution and imperfect recollection. (D) NO EXCLUSIVE RIGHT OVER COMMON OR DESCRIPTIVE TERMS 34. It is a well-established principle of trademark law that generic, descriptive, or laudatory terms - particularly those commonly used in a given trade - cannot be monopolized by any one proprietor. Even where such terms form part of a registered trademark, protection does not extend to those elements per se unless it is affirmatively shown that they have acquired secondary meaning - i.e., that the term has come to be exclusively and distinctively associated with the plaintiff's goods in the perception of the consuming public. 34.1. In Godfrey Philips India Ltd....
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....d legal principles, it is evident that the marks 'BLENDERS PRIDE' and 'LONDON PRIDE' are visually, phonetically, and conceptually distinct. The appellants cannot assert monopoly over the common term 'PRIDE', and no actionable similarity arises merely from its use in the respondent's mark. In the absence of demonstrable confusion or misrepresentation, the respondent's use does not amount to infringement under Section 29 nor does it constitute passing off. (E) AVERAGE CONSUMER TEST AND IMPERFECT RECOLLECTION 35. The average consumer test is a central standard in trademark and unfair competition law. It assesses whether there exists a likelihood of confusion between two marks, or whether a mark lacks distinctiveness or is merely descriptive. The test is grounded in the perception of the average consumer - a person who is reasonably well-informed, observant, and circumspect, but not an expert or overly analytical. As held by the European Court of Justice in Lloyd Schuhfabrik Meyer v. Klijsen Handel BV Case C-342/97; [2000] F.S.R. 77, ECJ, the average consumer forms an overall impression of a mark rather than dissecting it into individual components. 35.1. A key feature of this....
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....umer's memory. 35.5. The foundational test for assessing deceptive similarity remains the Pianotist Test, as laid down in Pianotist Co. Ltd's Application (1906) 23 RPC 774 at p. 777 by Justice Parker. Indian courts continue to apply this holistic standard, which requires consideration of the visual and phonetic similarity of the marks, the nature of the goods, the class of consumers, and all surrounding circumstances. Justice Parker framed the test as follows: "You must 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 applied, the nature and kind of customer who would be likely to buy the goods, and all the surrounding circumstances. You must further consider what is likely to happen if each of these trademarks is used in a normal way for the respective goods. If, considering all these circumstances, you come to the conclusion that there will be confusion - not necessarily that one trader will be passed off as another - but that there will be confusion in the mind of the public leading to confusion in the goods, then registration must be refused." 35.6. This multifactorial framework compl....
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.... rights. Where actual infringement is established, that alone may justify injunctive relief; a plaintiff is not expected to wait for further acts of defiance. As judicially observed, "the life of a trademark depends upon the promptitude with which it is vindicated." 36.3. The principles laid down in American Cyanamid Co. v. Ethicon Ltd ( 1975 ) AC 396 continue to guide the Courts while determining interim injunction applications in trademark cases. The following criteria are generally applied: (i) Serious question to be tried / triable issue: The plaintiff must show a genuine and substantial question fit for trial. It is not necessary to establish a likelihood of success at this stage, but the claim must be more than frivolous, vexatious or speculative. (ii) Likelihood of confusion / deception: Although a detailed analysis of merits is not warranted at the interlocutory stage, courts may assess the prima facie strength of the case and the probability of consumer confusion or deception. Where the likelihood of confusion is weak or speculative, interim relief may be declined at the threshold. (iii) Balance of convenience: The court must weigh the inconve....
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....ter stage. The following paragraphs from the High Court's decision are pertinent in this regard : "24. Learned counsel for the respondent has summarised his arguments on the following issues: 24.3. Estoppel The admissions made by the appellant-plaintiff before the Registry, especially when the appellant is claiming a right at the time of registration is important and will debar the appellant-plaintiff from any relief and if not disclosed in the plaint, amounts to material concealment. The reply of the plaintiff at the time of registration of its mark, in response to the objection raised by the Registrar, in which the plaintiff gave up any right over the word "Pride" and rather claimed right over "BLENDER'S" is an important factor. The relevant portion of plaintiff's reply in respect of their own admission and claim is reproduced below: "We submit that the subject mark is a unique combination of word BLENDER'S and PRIDE which in combination or in isolation have no reference whatsoever with the goods for which registration is sought by the applicants." "...We further submit that it is a well-settled principle that the marks hav....
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....emonstrate as to how he is facing any irreparable loss or injury which could not be compensated in terms of money and as to how the balance of convenience lies in its favour. Both the companies are well reputed and well established in their field and are rather competitors. The similarities of the single word cannot be taken as an infringement and/or passing off and, hence, we do not find any merit in the present appeal and in fact, any interim relief granted to the appellant will adversely affect the open market and might lead to monopolistic trade activity by the appellant. 40. Accordingly, the present appeal stands dismissed." 37.1. The appellant thereafter challenged the decision of the High Court by filing Special Leave Petition (C) No. 17674/2023 before this Court. The SLP was dismissed by order dated 06.09.2023, wherein, the Court declined to interfere, observing as follows: "After hearing learned counsel for the parties at length, the impugned orders being concurrent which is for the purposes of determination of interim arrangement pending suit cannot in any manner influence the final determination of the suit, we would not like to interfere under Artic....
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....e unhappy that the matter has been pending in the High Court at the interlocutory stage for such a long time as the suit was filed in December 2007 and yet even written statement has not been filed. 4. Recently, we have held in Shree Vardhman Rice & General Mills v. Amar Singh Chawalwala [(2009) 10 SCC 257] as follows: "... Without going into the merits of the controversy, we are of the opinion that the matters relating to trade marks, copyrights and patents should be finally decided very expeditiously by the trial court instead of merely granting or refusing to grant injunction. Experience shows that in the matters of trade marks, copyrights and patents, litigation is mainly fought between the parties about the temporary injunction and that goes on for years and years and the result is that the suit is hardly decided finally. This is not proper. Proviso (a) to Order 17 Rule 1(2) CPC states that when the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the court finds that, for exceptional reasons to be recorded by it the adjournment of the hearing beyond the foll....
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....at the rival marks, when assessed in their entirety, do not exhibit such visual, phonetic, or structural similarity as would give rise to a real and tangible likelihood of confusion in the mind of an average consumer possessing imperfect recollection. The overall trade dress, distinctive components, and market presentation of the respondent's product serve to sufficiently distinguish it from that of the appellants. Accordingly, the allegation of deceptive similarity is not borne out on a prima facie assessment, and no case is made out warranting the grant of interim relief. VIII. RECENT EVOLUTION OF TRADEMARK JURISPRUDENCE IN THE UK - THE POST-SALE CONFUSION DOCTRINE 40. The recent decision of the Supreme Court of the United Kingdom in Iconix Luxembourg Holdings SARL (Respondent) v Dream Pairs Europe Inc and another (Appellants) [ 2025 ] UKSC 25 marks a significant development in trademark jurisprudence, particularly concerning the principle of post-sale confusion. The judgment not only reaffirms the established principles governing similarity of marks and likelihood of confusion, but also reinforces the appellate standard of review regarding findings of fact by a trial Co....
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....larity of marks, likelihood of confusion, and the limits of appellate interference with trial court findings. 40.6. For better appreciation, the relevant portions of the judgment are extracted below: "(b)The functions of a trade mark and the right of an owner of a registered trade mark: 16. In L'Oréal SA v Bellure NV (C-487/07) [2010] Bus LR 303, para 58, the CJEU gave a non-exhaustive list of the various functions of a registered trade mark, referring to "not only the essential function...but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising". 17. In SkyKick UK Ltd v Sky Ltd [2024] UKSC 36; [2025] Bus LR 251, para 54, Lord Kitchin (with whom the other Justices agreed) outlined the essential function of a registered trade mark as being: "... in particular, to guarantee the identity of the origin of the goods or services in relation to which it is used. In more colloquial terms, it is a badge of origin and its purpose is to permit the consumer, without any possibility of confusion, to distinguish the goods or services of one ....
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....at many consumers of whom the average consumer is representative would not be confused. To the contrary, if, having regard to the perceptions and expectations of the average consumer, the court considers that a significant proportion of the relevant public is likely to be confused, then a finding of infringement may properly be made. 18. Thirdly, assessment from the perspective of the average consumer is designed to facilitate adjudication of trade mark disputes by providing an objective criterion, by promoting consistency of assessment and by enabling courts and tribunals to determine such issues so far as possible without the need for evidence. .... ... 20. Fifthly, the average consumer rarely has the opportunity to make direct comparisons between trade marks (or between trade marks and signs) and must instead rely upon the imperfect picture of the trade mark they have kept in their mind." (g) Similarity of the sign to the trade mark 31. It is sufficient for the purposes of this appeal to state that the test for the similarity of the sign to the trade mark was set out by the CJEU in Sabel BV v Puma AG (Case C251/95) [1998] 1 CMLR 445 w....
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....t case Floyd LJ also addressed the issue of taking forward the court's assessment of the degree of similarity to the global assessment of the likelihood of confusion. He stated at para 60(iv) that: "In conducting the global appreciation test the court must take forward its assessment of the degree of similarity perceived by the average consumer between the mark and sign." (h) Likelihood of confusion on the part of the public 34. If the sign is at least similar to the trade mark, then the court is required to assess whether "there exists a likelihood of confusion on the part of the public". 35. The public does not (always) mean everyone but instead means the relevant public. So, in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (C299/99) [2003] Ch 159, para 63, the CJEU, citing Gut Springenheide GmbH v Oberkreisdirektor des Kreises Steinfurt─Amt für Lebensmittelüberwachung (Case C210/96) [1998] ECR I-4657, para 31, identified the relevant public as the "average consumer of the category of goods or services in question". In Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (C-342/97) [1999] ECR I-3819; [1999] All....
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....o the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater....
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....esources) wishes to challenge the first instance decision of the trial judge. The reasons for these constraints are set out in a string of well-known authorities including, in the intellectual property context, Fage UK Ltd v Chobani UK Ltd [2014] EWCA Civ 5; [2014] FSR 29, per Lewison LJ at para 114. The reasons there set out relevantly include the following: (i) The trial is not a dress rehearsal. It is the first and last night of the show. ... 95. In Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8; [2024] Bus LR 532 this court reviewed those constraints in a trade mark context. After citing from the Fage case this court in a joint judgment said, at paras 49-50 : "49. That does not, however, mean the appeal court is powerless to intervene where the judge has fallen into error in arriving at an evaluative decision such as whether an activity was or was not targeted at a particular territory. It may be possible to establish that the judge was plainly wrong or that there has been a significant error of principle; but the circumstances in which an effective challenge may be mounted to an evaluative decision are not limited to such cases....
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....n-distinctive elements unless such elements have acquired secondary meaning. Sections 27(2) and 29 preserve the right to institute passing off actions and define the contours of infringement, respectively. Notably, Section 29(3) presumes confusion only where identical marks are used for identical goods - a condition not met in the present case as the marks. 44. Applying the settled legal standards - including the anti-dissection rule, the overall similarity test, and the perspective of an average consumer - we prima facie find no deceptive similarity between the competing marks that would give rise to confusion. 45. In the present case, the marks - 'BLENDERS PRIDE' and 'LONDON PRIDE' - are clearly not identical. Though the products are similar, the branding, packaging, and trade dress of each are materially distinct. The Commercial Court and High Court have rightly held that the term 'PRIDE' is publici juris, and commonly used in the liquor industry. The dominant components - 'BLENDERS', 'IMPERIAL BLUE', and 'LONDON' - are entirely different both visually and phonetically, producing distinct overall impressions. 46. The courts below also correctly observed that the product....
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....lants - seeking to combine unrelated features from their own marks - has undermined their claim. Apart from the shared use of a common term, there is no meaningful similarity between the marks. Key elements such as packaging, typography, bottle design, and label layout are materially distinct. In a market segment, where consumers are more discerning, the likelihood of confusion is negligible. 53. The appellants' contention that the Commercial Court dissected the marks mechanically is belied by the High Court's holistic analysis. The High Court correctly noted that 'BLENDERS PRIDE' uses a round bottle, whereas 'LONDON PRIDE' adopts a cylindrical form. The labels, cartons, and design motifs are entirely different. These variations eliminate the possibility of confusion. 54. The comparison between 'IMPERIAL BLUE' and 'LONDON PRIDE' reveals even greater divergence. The marks differ in word arrangement, label structure, and packaging. No similarity exists - visual, phonetic, or structural - that can support a claim for infringement or passing off. Since resemblance is a sine qua non for both causes of action, the appellants' claim must fail. 55. Although the appellants hold reg....