The main legal point established in the judgment is that the similarity between trade marks must be analyzed from the standpoint of an average person with imperfect recollection, and once essential elements such as the eyebrow device and color combination are altered, the trade marks may not be considered deceptively similar or confusing.

( 1 ) THIS order shall dispose of IA 1717/2004 filed under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908. The plaintiffs have the filed the suit for permanent and mandatory injunction, passing off, infringement of trade mark, rendition of accounts, delivery up, damages and for unfair competition. The plaintiff no. 1 (Diageo North America Inc) is a corporation organised and existing under the laws of the State of Connecticut, USA. The plaintiff no. 2 (UDV India Ltd) is an Indian company and has been licensed by plaintiff no. 1 to use various brands and trade marks, one of which is the trade mark SMIRNOFF which is in question in the present proceedings.

( 2 ) THE plaintiffs claim to be the registered proprietors of the trade mark smirnoff label under reg. no. 189744 dated 31. 03. 1959; the PIERRE SMIRNOFF label under reg. no. 202251 dated 04. 05. 1961; the SMIRNOFF mark with eyebrow device under reg. no. 904318 dated 17. 02. 2000. It is stated by the plaintiffs that while SMIRNOFF is disclaimed in the first registration there is no disclaimer in the other two. In particular, reg. no. 904318 " SMIRNOFF with eyebrow device " according to the plaintiffs, gives the plaintiffs the exclusive right to the use of SMIRNOFF under section 28 of the Trade Marks Act, 1999.

( 3 ) IT is also contended by the plaintiffs that they are admittedly the prior users of SMIRNOFF, internationally since 1930 and in India since 1994. The defendant has adopted the mark BRISNOFF only in July 2003. By way of this application the plaintiffs are seeking an interim injunction restraining the defendant from using the trade mark BRISNOFF and the eyebrow device or any other trade mark or trade marks which are deceptively or confusingly similar to the plaintiffs registered trade mark SMIRNOFF and the eyebrow device in respect of any goods or of manufacturing or authorising the manufacture, sale or offering for sale, marketing, advertising, promoting, displaying or in any other manner whatsoever using the trade marks infringing the plaintiffs rights in and to their registered trade mark SMIRNOFF and/or the eyebrow device. An injunction is also sought in respect of passing off the defendant's goods as those of the plaintiffs'.

( 4 ) VARIOUS arguments have been advanced by the counsel for the parties

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however, the issue, in main, is whether the trade mark BRISNOFF is deceptively or confusingly similar to the plaintiffs' registered trade mark SMIRNOFF. The respective trade marks are used by the plaintiffs and the defendant in respect of vodka. The plaintiffs' trade mark SMIRNOFF is represented, according to the plaintiffs, in a unique and distinctive art shape with a red background and golden border and white lettering. This is referred to as the eyebrow device. A visual representation of the same is as under: -- according to the plaintiffs, the defendant has been using the trade mark brisnoff which is deceptively and confusingly similar to the plaintiffs' mark smirnoff. The defendant is also alleged to have represented its trade mark brisnoff in a stylised manner which is virtually identical to the eyebrow device of the plaintiffs. A visual representation the defendant's trade mark BRISNOFF using the eyebrow device is as under:-

( 5 ) FOR a proper appreciation of the similarities or dissimilarities between the trade mark of the plaintiffs and that of the defendant, admitted photographs of the bottles in which the vodka manufactured by each of them is marketed are given as under: -- [the SMIRNOFF bottle] [the BRISNOFF bottle]

( 6 ) IT ought to be pointed out that in the course of arguments, the learned counsel for the defendant had indicated that the defendant was willing to give up the eyebrow device. The learned counsel also submitted that the colour combination which is being used by the defendants could also be altered and the defendant would have no difficulty or problem in giving up the colour combination used by it