Blenders Pride v. London Pride | 'Premium Whiskey Consumers Will Be Able To Differentiate': MP High Court In Trademark Infringement Suit

In a legal battle involving competing whiskey brands, Madhya Pradesh High Court has refused to pass a temporary injunction against the makers of ‘London Pride’ for alleged trademark infringement of registered trademarks of ‘Blenders Pride’ & ‘Imperial Blue’.The Division Bench of Justices Pranay Verma and S.A. Dharmadhikari held that the ‘test of deceptive similarity’, as enunciated in Khoday Distilleries Limited v. The Scotch Whisky Association (2008), would vary depending upon the nature and kind of consumers who are likely to buy such goods. Turning to the factual matrix of the current case, the division bench noted that the trademarks of the concerned parties are under the category of ‘premium’ and ‘ultra premium’ whiskey.“….It can be safely presumed with a sufficient deal of certainty that the consumers of such products would be mostly literate and having reasonable intelligence to distinguish between the bottles of Blenders Pride/Imperial Blue and that of London Pride. Even if they are of average intelligence with imperfect recollection, they would be able to differentiate between the rival competing brands… Liquor consumers of scotch whiskey are educated and discerning type. They are literate persons belonging to the affluent class of society.”, the bench sitting at Indore noted in the judgment.The plaintiffs, Pernod Ricard India and Pernod Ricard USA LLC, have been manufacturing the whiskey brands, ‘Blenders Pride’ and ‘Imperial Blue’. On the other hand, the defendant has been selling whiskey under the name ‘London Pride’.According to the plaintiffs, London Pride whisky is deceptively similar to its Blenders Pride trade mark. Additionally, London Pride is being sold by putting labels, using packaging, getup and trade dress deceptively similar to Imperial Blue’s registered Seagram trademark registered in Class 33. The plaintiffs approached the High Court after trial court refused interim relief.Further ObservationsThe court referred to a catena of decisions to propound the settled law that ‘class of purchasers who are likely to buy the goods bearing the marks they require, their education, intelligence and the degree of care’ are instrumental while deploying the ‘test of deceptive similarity’.While agreeing with the trial court’s finding that there is no discernible similarity between the defendant’s and plaintiffs’ marks to infer an imitation, the High Court has also instructed the trial court to decide the matter on merits expeditiously, preferably within nine months.The mere use of the word ‘Pride’ by the defendant company alone wouldn’t be sufficient enough to establish that the same can likely deceive a prospective consumer, the court observed. The products manufactured by both parties are ‘known by and purchased by their entire name’ or ‘more often by their first word’, the court further explained. “…The first word of the trade mark of plaintiffs is ‘Blenders’ whereas that of the defendant is ‘London’. There is absolutely no similarity in them leave aside any dissimilarity. ‘PRIDE' being a generic, common place and laudatory expression in ‘BLENDERS PRIDE’ mark, the common man would certainly treat ‘BLENDERS’ part of plaintiff's mark as the dominant part. The question of comparison of the words ‘Imperial Blue’ and ‘London Pride’ does not even arise…”The term Pride is ‘publici juris’ common to trade with 48 variants of trademarks in Class 32 and 33 with the word ‘Pride’. The court further pointed out that many such trademarks are registered with the excise authority for the sale and purchase of liquor, and hence exclusivity cannot be claimed in respect of ‘Pride’ as a part of ‘Blenders Pride’ Mark. The court reasoned that protection afforded under the Trademark Act for a registered trademark is only concerning a ‘complete trademark’ and not any specific word within. To avail such protection, the plaintiffs should also have separately registered ‘Pride’ as a trademark under Section 15 of the Trademarks Act, 1999, the court explained. However, that common term cannot be said as a term that distinguishes the product of the plaintiffs compared to other products made by other whiskey manufacturers, the court concluded.With respect to the Imperial Blue Seagram’s Mark, the court also rejected the arguments put forward by the appellants/ plaintiffs as follows:“The plaintiff does not possess any registration in respect of the colours used in its Imperial Blue mark, or in any individual part of the design, including the dome shape. In terms of Section 2 (m) of the Trade Marks Act, 1999 the plaintiffs could have sought registration in respect of combination of colours used in their label or for the shape of their bottle. That has not been done by them…”, the court opined while adding that any claim of exclusivity with regards to individual elements of the mark will contravene Section 17(2) of the Trademarks Act.Before making the above observations, the court also discussed in length about the striking...

Blenders Pride v. London Pride | 'Premium Whiskey Consumers Will Be Able To Differentiate': MP High Court In Trademark Infringement Suit

Sebin James

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