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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
Nitin Jamdar, C. V. Bhadang,, JJ.
Meher Distilleries Private Limited - Appellant
Versus
Sg Worldwide Inc & Ors. - Respondents
Commercial Appeal (L) No. 10963 of 2021, Interim Application (L) No. 8940 of 2020 and Commercial IP Suit (L) No. 8936 of 2020
Decided On : 23-08-2021
TRADEMARK - INFRINGEMENT - SIMILARITY - DECEPTIVE SIMILARITY - LIKELIHOOD OF CONFUSION - SUB-BRAND - DESCRIPTIVE MARK - HOUSE MARK - ESTOPPEL - COSTS - SECTION 29 OF THE TRADE MARKS ACT, 1999.
Fact of the Case:
Plaintiff, a registered proprietor of the trademark THE ASWA for alcoholic beverages, filed a commercial suit for trademark infringement against Defendants, who launched a single malt whiskey using the mark ASA VA. Plaintiff sought an interim injunction to restrain Defendants from using ASAVA as a trademark. The learned Single Judge dismissed the interim application, prompting Plaintiff to file this commercial appeal.
Finding of the Court:
1. The impugned order erred in concluding that there was no visual, phonetic, or structural similarity between the rival marks, THE ASWA and ASAVA, without applying the settled tests for determining similarity. 2. The impugned order erred in holding that ASAVA, though styled as a descriptor/sub-brand, was not a trademark without analyzing the facts of the case in the context of the statutory provisions. 3. The impugned order erred in relying on an absolute proposition that the use of a house mark with a product mark would obviate the likelihood of confusion in respect of expensive consumable products, without examining the facts of the case. 4. The impugned order erred in holding that all consumers of single malt whiskey are discerning and aware of different national and international brands, without considering the nuances of the manner of purchase and the class of consumers. 5. The impugned order erred in finding that Plaintiff had suppressed the application for registering the mark THE ASWA, which dis-entitled Plaintiff from applying for equitable relief. 6. The impugned order erred in finding that a Plaintiff who applies for registration of the mark of the defendant-infringer is estopped from contending that they are similar.
Issues: 1. Whether there was visual, phonetic, or structural similarity between the rival marks, THE ASWA and ASAVA? 2. Whether ASAVA, though styled as a descriptor/sub-brand, was a trademark? 3. Whether the use of a house mark with a product mark would obviate the likelihood of confusion in respect of expensive consumable products? 4. Whether all consumers of single malt whiskey are discerning and aware of different national and international brands? 5. Whether Plaintiff had suppressed the application for registering the mark THE ASWA? 6. Whether a Plaintiff who applies for registration of the mark of the defendant-infringer is estopped from contending that they are similar?
Ratio Decidendi: 1. The test for determining similarity between trademarks is not a microscopic analysis but a holistic assessment of how an average consumer would perceive the marks. 2. A sub-brand or descriptor may also be a trademark if it is used to distinguish the goods or services of one person from those of others. 3. The use of a house mark with a product mark does not automatically obviate the likelihood of confusion; the facts of each case must be examined. 4. The likelihood of confusion must be assessed considering the full spectrum of potential purchasers and the manner of purchase. 5. Suppression of material documents may be considered while deciding the grant of an equitable remedy, but it is not for the plaintiff to place before the Court what can be taken as a defense by the defendant. 6. The principle of estoppel cannot be applied to a plaintiff who applies for registration of the mark of the defendant-infringer without reference to any legal or statutory principle.
Final Decision: The appeal was allowed. The impugned order was quashed and set aside. Interim Application (L) No.8 940 of 2020 in Commercial IP Suit (L) No.8936 of 2020 was restored to file to be disposed of in light of the observations in the judgment. The Registry was directed to place the interim application before the learned Single Judge for Directions in the week commencing from 30th August 2021, so that the learned Judge could fix a schedule for time-bound completion of arguments on the interim application. There was no order for costs.
JUDGMENT
Nitin Jamdar, J. - The Appellant-Meher Distilleries is a registered proprietor of the trademark THE ASWA for the class alcoholic beverages. Respondent No.2- Radico Khaitan launched a product in the same class, a single malt whiskey, using the mark ASA VA. Appellant filed a commercial suit for trademark infringement and took out an interim application to restrain the Respondents from using ASAVA as a trademark. The learned Single Judge by the impugned order dismissed the interim application. Challenging the judgment and praying for a restraint order, Appellant has filed this commercial appeal under Section 13 of the Commercial Courts Act, 2015.
2. The Appellant-Meher Distilleries is referred to as the Plaintiff. HG Worldwide Corporation as Defendant No.1and Radico Khaitan Limited as Defendant No.2.
3. Plaintiff produces and deals with alcoholic beverages. The distillery of the Plaintiff is in village Aswa in Dahanu Taluka of Palghar District in the State of Maharashtra. On 11 April 2014, Plaintiff applied for registration of the trademark THE ASWA under the Trade Marks Act, 1999(the Act). The application was granted in the year 2016, and Plaintiff got registration of the trademark THE ASWA under Registration No.2716867 in Class-33 in respect of whiskey, vodka, brandy, rum, gin, wine, alcoholic coolers, alcoholic mixes, country liquor. Plaintiff was researching before launching the product. Plaintiff sought permission to use the label with trademark THE ASWA as per the State Excise Rules and was granted the same on 18 August 2020.
4. Plaintiff came to know that Defendant No.2 was manufacturing and exporting a single malt whiskey to Defendant No.1 under the trademark ASAVA. The Excise Department approved Defendant No.2's label for the product in question on 3 September 2020. Defendant No.1-HG Worldwide United States imports and markets alcoholic beverages from Defendant No.2. Plaintiff filed Commercial I.P. Suit No.8926/2020 on 11 December 2020, joining Defendant Nos.1 and 2 as party defendants. The Plaintiff contended that the Defendants trademark ASAVA is identical/deceptively similar to the Plaintiffs trademark THE ASWA, the goods in respect of which the Defendants are using the trademark are identical to the goods in which the Plaintiff has registered the trademark, and it will likely to cause confusion on the part of the public or is likely to have an association with the registered trademark. Plaintiff alleging infringement sought prayer for restraining the Defendants from using the mark ASAVA. Plaintiff also sought damages.
5. Plaintiff took out Interim Application (L) No.8 940/2020 wherein the averments and grounds taken in the plaint were reiterated. The Plaintiff prayed that the Defendants be restrained from infringing the Plaintiffs registered trademark THE ASWA bearing Registration No.2716867 in Class 33, by using the impugned trademark ASAVA and any other trademark identical with or deceptively similar to the Plaintiffs registered trademark THE ASWA in relation to alcoholic beverages including single malt whiskey and any other goods which similar to the goods in relation to which the Plaintiff had the registration for the trademark THE ASWA. Plaintiff also sought the appointment of receiver and to seize and take charge, possession and control of the goods bearing the trademark ASAVA.
6. Plaintiff moved for an ex pane ad-interim before the learned Single Judge on 14 December 2020. The learned Single Judge directed the Plaintiff to give notice to the Defendants and, accordingly, the Defendants were served.
7. Defendant No.2 filed its reply, briefly stating as follows.
Defendant No. 2 was earlier known as Rampur Distillery, which was established in the year 1943 and, in the year 1992, it adopted house/ trademark "RADICO" and has launched various products. The word ASAVA is a Sanskrit term meaning an alcoholic beverage or fermented drink, and it has been adopted bonafide by Defendant No.2. It is stated that Asav means w
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