Pernod Ricard India Private Limited & Another vs Karanveer Singh Chhabra

2.1. 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 a whole, and not by extracting a single component for comparison – When viewed in their entirety, the appellants’ marks – ‘BLENDERS PRIDE’, ‘IMPERIAL BLUE’, and ‘SEAGRAM’S’ are structurally, phonetically, and visually distinct from the respondent’s mark ‘LONDON PRIDE’ – The mere presence of the common word ‘PRIDE’ which is a generic and laudatory term, does not render the competing marks deceptively similar in the absence of an overall resemblance – Thus, under the anti-dissection rule, no case for infringement or passing off is made out – Upon a holistic comparison, the overall commercial impression of ‘LONDON PRIDE’ is substantially different from 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 – 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. [Paras 32.4, 33.4, 34.6]

2.2. 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. [Para 45]

2.3. The courts below also correctly observed that the products in question are premium and ultra-premium whiskies, targeted at a discerning consumer base –Such consumers are likely to exercise greater care in their purchase decisions – The distinct trade dress and packaging reduce any likelihood of confusion – The shared use of the laudatory word ‘PRIDE’, in isolation, cannot form the basis for injunctive relief –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. [Paras 46, 49]

3. 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 – 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. [Paras 50, 51]

4. 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 – 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 – Although the appellants hold registrations for the composite marks, no evidence was adduced to demonstrate that any particular element, such as bottle shape, color scheme, or the word “PRIDE”, had acquired distinctiveness or secondary meaning –Trademark protection extends only to distinctive identifiers – Descriptive or commonplace elements fall outside the ambit of protection unless distinctiveness is proved. [Paras 53-55]

5. Significantly, the appellants’ earlier challenge to United Spirits’ use of the term ‘PRIDE’ in the mark “Royal Challenger American Pride” was unsuccessful – The Punjab and Haryana High Court held that the appellants did not possess an independent registration for the word ‘Pride’, but only for the composite mark ‘Blenders Pride’ – Accordingly, they could not claim any exclusive or enforceable rights over the standalone word ‘Pride’ – The Court further observed that having failed to object to the registration of the impugned mark before the Trade Marks Registry, the appellants were estopped from asserting such rights subsequently – This decision was upheld by this Court in SLP (C) No. 17674/2023 dismissed on 06.09.2023 – Therefore, the appellants’ present attempt is contrary to law and settled principles of equity. [Para 56]

6. There is no ground to interfere with the concurrent findings of the Commercial Court and the High Court – Appellants have failed to establish a prima facie case of deceptive similarity that could justify the grant of interim injunction. [Para 57] Trade Marks Act, 1999 – Scheme of – Elucidated: Held: 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. [Para 18.8] Trademarks – ‘Infringement’ and ‘Passing off’ – Distinction between:

Held: 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 be identical or deceptively similar to the registered mark, no further evidence of confusion or deception is necessary – However, in a passing off action, the plaintiff must prove: (i) the existence of goodwill or reputation in the mark, (ii) a misrepresentation made by the defendant, and (iii) a likelihood of damage to the plaintiff’s goodwill – While an intent to deceive is not a necessary element in either action, passing off requires proof of a likelihood of confusion or deception – Actual deception or damage need not be proved – the test is whether confusion is probable in the mind of the average consumer due to the similarity in the marks or the overall get-up of the goods – Another key distinction is that in a passing off 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 – 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 – 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. [Paras 29.1-29.5]

Trademarks – ‘Infringement’ and ‘Passing off’ – Principles governing grant of injunction – Discussed:

Held: 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 trademark infringement actions broadly apply to passing off claims as well – That said, a fundamental distinction remains: while a registered proprietor may, upon proving infringement, seek to restrain all use of the infringing mark, a passing off action does not by itself confer an exclusive right – The grant of injunction, whether for infringement or passing off, is ultimately governed by equitable principles and is subject to the general framework applicable to proprietary rights – Where actual infringement is established, that alone may justify injunctive relief; a plaintiff is not expected to wait for further acts of defiance – Grant of 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. [Paras 36.1-36.4]

Trademarks – Evaluation of competing trademarks – Courts not expected to adopt a mechanical, side-by-side comparison of the marks – Judicial scrutiny is guided by interpretative doctrines. [Para 4]

Trademarks – Principle governing trademark infringement and passing off – Similarity and Distinctiveness: Name, Colour Scheme, and Trade Dress – Discussed. [Paras 31, 31.1-31.8] Trademarks – Principle governing trademark infringement and passing off – Rule of Anti-Dissection – Discussed. [Paras 32, 32.1-32.3]

Trademarks – Principle governing trademark infringement and passing off – Dominant Feature Test – Discussed. [Paras 33, 33.1-33.3]

Trademarks – Principle governing trademark infringement and passing off – No Exclusive Right Over Common or Descriptive Terms – Discussed. [Paras 34, 34.1-34.5]

Trademarks – Principle governing trademark infringement and passing off – Average Consumer Test and Doctrine of Imperfect Recollection – Discussed. [Paras 35, 35.1-35.6] Trademarks – Recent evolution of Trademark jurisprudence in the United Kingdom – Post-sale confusion doctrine – Discussed. [Paras 40-40.6]