Delhi High Court Grants Injunction Against Deceptively Similar Liquor Label, Emphasizing 'Overall Similarity' and 'Initial Interest Confusion' in Trademark Suit (Order XXXIX Rule 1&2 CPC) - 2025-04-27

Delhi High Court Restrains Distillery Over Deceptively Similar Whisky Label to 'Officer's Choice'

New Delhi: In a significant ruling concerning trademark protection for product labels and trade dress, the Delhi High Court has granted an interim injunction restraining Hermes Distillery Pvt. Ltd. from using a label for its ' PEACE MAKER ' whisky product, finding it deceptively similar to the well-established 'OFFICER'S CHOICE' whisky label of Allied Blenders and Distillers Ltd.

Justice Prathiba M.Singh , presiding over an application under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, held that while the brand names 'OFFICER'S CHOICE' and ' PEACE MAKER ' are different, the overall get-up, layout, and colour combination of the Defendant's label were imitative of the Plaintiff's label, likely causing confusion among consumers.

Case Background

Allied Blenders and Distillers Ltd. (formerly Pvt. Ltd.), a leading manufacturer of alcoholic beverages, filed a suit seeking an injunction against Hermes Distillery Pvt. Ltd. The Plaintiff claimed extensive use and registration of the 'OFFICER'S CHOICE' trademark and its distinctive labels since 1988. The 'OFFICER'S CHOICE' brand is asserted to be one of the largest-selling whiskies globally, with significant sales and promotional expenditure over the years. The Plaintiff contended that its label, particularly the "new label" adopted in 2009 with a specific combination of red, white, and gold colours, distinctive border, centrally aligned coat of arms, and layout, constitutes an original artistic work and has acquired unique association with its products, functioning as a trade dress.

The grievance arose when the Plaintiff discovered the Defendant's ' PEACE MAKER PRESTIGE WHISKY' using an impugned label with a similar get-up, launched around October 2019. The Plaintiff alleged that the similarities in the labels extended beyond mere colour combination to specific design elements, placement of text, and overall appearance, leading to deceptive similarity and potential passing off.

Arguments Presented

The Plaintiff argued that the overall look and feel of the two labels were "almost identical," highlighting similarities such as the positioning, font style, and colour of brand names (red with golden accents), prominent display of ' Prestige Whisky,' similar placement of marks in the upper half, shared red, white, and golden-yellow colour scheme, identical gold border design dividing the label, and a centrally placed right-upward slanting gold line. The Plaintiff cited various previous judgments where their 'OFFICER'S CHOICE' label had been protected.

The Defendant countered that the Plaintiff lacked consistency in using its labels over the years, making it unclear which specific label had acquired distinctiveness. They argued that the red and white colour combination was common to the trade, presenting examples of other liquor products using similar colours. The Defendant contended that without showing that the label itself had acquired goodwill independent of the brand name, there could be no case for infringement or passing off, especially since the word marks ('OFFICER'S CHOICE' vs. ' PEACE MAKER ') were clearly different. The Defendant also raised an objection regarding territorial jurisdiction, arguing that they had no sales or license in Delhi and their website was merely informational. They further submitted that consumer buying behaviour for liquor relies heavily on brand names, and differences in brand names, bottle shapes, and prices would prevent confusion.

Court's Analysis and Findings

Justice Singh carefully compared the two labels and, applying the tests laid down by the Supreme Court in cases like Parle Products v. J.P. & Co. Mysore and S.M. Dyechem Ltd. v. Cadbury (India) Ltd. , emphasized that the comparison is not of identity but of similarity, judged from the perspective of a consumer with average intelligence and imperfect or hazy recollection. The Court noted clear similarities: the ribbon-like feature, placement of the white window in the red background, placement of insignia/coat of arms, and placement of descriptive matter.

The judgment pointed out that the Defendant's use of red and white labels for other products (brandy and rum) was distinguishable, but the impugned ' PEACE MAKER ' whisky label incorporated a combination of features that made it confusingly similar to the Plaintiff's. The Court observed that if the products were stacked together, a consumer might presume the Defendant's product emanated from the Plaintiff's line.

Applying the concept of "initial interest confusion," the Court noted that confusion need not result in an actual sale but can arise merely from the initial impression, such as seeing bottles in a dimly lit bar. Citing Skechers USA INC v. Pure Play Sports and Shree Nath Heritage Liquor Pvt. Ltd. v. Allied Blender & Distilleries Pvt. Ltd. , the Court affirmed that confusion as to affiliation or sponsorship is a clear possibility due to the overall similarity.

The Court rejected the Defendant's argument that label distinctiveness must be shown independently of the mark, stating that the Plaintiff's broad colour scheme and get-up had been used consistently for decades and, as a large-selling whisky, had clearly attained distinctiveness.

Significantly, the Court characterized the Defendant's label as an attempt at "smart copying," where enough similarities are employed to confuse the public while introducing just enough differences to complicate legal challenges, referencing Baker v. Master Printers Union of New Jersey . The chart of differences provided by the Defendant was found to inadvertently highlight the broad similarities.

On the issue of territorial jurisdiction, the Court found a prima facie case in favour of the Plaintiff, noting the Defendant's director residing in Delhi, the Defendant carrying on business, and having a godown in Delhi. This objection was not upheld at the interim stage, with the possibility of framing an issue on jurisdiction later.

Regarding the argument that red and white were common to trade, the Court agreed that no monopoly exists on the colours themselves but found that the Defendant's specific combination , layout, and get-up were imitative and not shared by the third-party labels shown by the Defendant. The Court also noted the Defendant's earlier attempts to modify the label during the proceedings, which were later abandoned to contest the matter.

Decision and Implications

Finding a prima facie case, balance of convenience, and potential for irreparable harm in favour of the Plaintiff, the Delhi High Court granted an interim injunction. Hermes Distillery Pvt. Ltd. is restrained from manufacturing, selling, offering for sale, or dealing in whisky or any other liquor products under the impugned ' PEACE MAKER ' label.

The injunction, however, explicitly permits the Defendant to use the red and white colour combination in a manner that does not cause confusion, deception, or imitation of the Plaintiff's mark/label.

The Defendant has been directed to file accounts of sales for the ' PEACE MAKER ' whisky under the impugned label and is granted 30 days to exhaust existing stock after preparing an inventory in the Plaintiff's representative's presence.

The matter is listed before the Roster Bench on February 2, 2024, for further proceedings. The Court clarified that the observations made in the interim order are prima facie and for the purpose of deciding the injunction application only.

This ruling underscores the judiciary's approach to protecting trade dress and labels in the liquor industry, emphasizing the importance of overall impression and the potential for initial interest confusion, even when different word marks are used.