'Indian Stag' Liquor Deceptively Similar To ‘Royal Stag’ But No Case Of Passing Off Since Former Only Exported: Delhi High Court

The Delhi High Court has confirmed an interim order passed in 2019 restraining two manufacturers/sellers from dealing in liquor and alcoholic beverages under the mark “Indian Stag” in a trademark infringement suit filed by Indian whiskey brand “Royal Stag”.Justice C. Hari Shankar said that the interim order passed by a co-ordinate bench on July 25, 2019 shall remain confirmed pending the disposal of the trademark infringement suit.It was simultaneously ruled that no case of passing off was made out against the defendant manufacturers (AB Sugars Limited and Ian Macleod India Private Limited) which only export their products abroad without selling any bottle in India.“While, therefore, a prima facie case of infringement, by the use of the INDIAN STAG marked by the defendants, of the plaintiff’s ROYAL STAG mark, for IMFL, is made out, warranting interim injunction as sought, no case of passing off can, in my opinion, be said to exist, prima facie,” the court said.Passing offOn the issue of passing off, it was underlined that the standard of proof to sustain a charge of passing off is higher than that which is required to sustain a charge of infringement. The court opined that given the difference in the visual appearance of labels of both the products and the fact that the defendants’ product is entirely exported, any finding of passing off would require a satisfaction that in foreign markets, consumers might mistake the defendants’ goods for the plaintiffs.“Though mens rea need not be shown to exist for a plea of passing off to succeed, nonetheless, passing off is, classically, a tort of deceit. The character and complexion of passing off is not far removed from its normal etymological connotation. A defendant can be found guilty of passing off if the facts indicate that the defendant is passing off its goods, or services, as those of the plaintiff,” it said.Deceptive similarityJustice Shankar further observed that the mark “Indian Stag” has to be held to be deceptively similar to the mark “Royal Stag” and that the use of the Stag device by the defendant would exacerbate confusion.“A stag is an animal. Though liquor, consumed in excess, may evoke animalistic tendencies in the imbiber, the word STAG cannot, in any manner of speaking, be regarded as descriptive of alcoholic beverages. Once that is so, applying the reasoning contained in the afore-noted decisions, the marks INDIAN ROYAL STAG and INDIAN STAG, have necessarily to be regarded as deceptively similar. Both are used for IMFL,” the court said.Upon analysis of judicial precedents on phonetic and visual similarity, it was added that the use of the word “STAG” by defendant manufacturers rendered their “INDIAN STAG” mark phonetically and structurally similar to the plaintiff’s mark “ROYAL STAG”.Furthermore, the court said that if a consumer of average intelligence and imperfect recollection, who has a taste for the proverbial good life, imbibes ROYAL STAG whisky and sometime later comes across the defendants’ INDIAN STAG whisky, there is every likelihood of him believing that the two marks are associated.“The market place is not, therefore, crowded. It is occupied by just two solitary brands. These brands being ROYAL STAG and INDIAN STAG, and reflecting the figure of a stag in each case, the possibility of likelihood of an association between the two marks, in the minds of a consumer of average intelligence and imperfect recollection, cannot be ruled out,” the court said.Principle of acquiescencePertinently, the defendant manufacturers had invoked the principle of acquiescence and submitted that INDIAN STAG has been sold since several years through outlets (overseas and in the UAE) at which ROYAL STAG is sold, yet the plaintiff allowed the sale to continue without demur.On this, the court observed that the conditions of Section 33 of the Trade Marks Act (which talks about effect of acquiescence) were not satisfied and thus, the plea of acquiescence had necessarily to fail.“Once a particular exigency, and its sequelae, are specifically provided for by statute, that provision would prevail. It is only, therefore, where the conditions of Section 33 are strictly satisfied that acquiescence can be pleaded by the defendant as a defence to injunction, even where infringement is found to exist. The onus to establish existence of the conditions envisaged by Section 33 would, however, be on the defendant,” the court said.Publici juris marksJustice Shankar stated that a mark which is publici juris and which is legitimately available to the public for enjoyment and exploitation, cannot be monopolised by a private individual. Holding that the mark “STAG” was not ineligible for registration as a trademark, the court concluded that the same was not publici juris.“The publici juris principle is actually conceptually circular in nature. Registration, and registration alone, confers the right to monopolise a trademark and to proceed against those who use it, or something...

'Indian Stag' Liquor Deceptively Similar To ‘Royal Stag’ But No Case Of Passing Off Since Former Only Exported: Delhi High Court

Nupur Thapliyal & Debby Jain

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