Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2010 Supreme(Mad) 2990

High Court of Judicature at Madras
THE HONOURABLE MRS. JUSTICE PRABHA SRIDEVAN & THE HONOURABLE MR. JUSTICE G.M. AKBAR ALI
SNJ Distilleries Ltd rep by its Director, Chennai & Another
Versus
M/s. Imperial Spirits Private Ltd.,
O.S.A.Nos.456 of 2009 and 8 of 2010 & M.P.Nos.1 of 2009 and 1 of 2010
Decided on : 23-07-2010

Advocates appeared:
For the Appellants:P.S. Raman, Advocate General, R. Krishnamurth, Senior Counsel for A.A. Mohan, Advocate.
For the Respondent:Sathish Parasaran, Advocate.

In a passing off action, the court focuses on the similarity between competing marks to determine deception or likelihood of causing confusion. The prior user of the mark is entitled to the relief of injunction without any geographical restriction.

Headnote:
PASSING OFF - TRADEMARK - [Indian made Foreign Spirit, Passing off action, injunction, trademark, deceptive similarity, prior user, generic term, descriptive term, likelihood of confusion, geographical restriction] - The court discussed the deceptive similarity between the trademarks, the prior user of the mark, the generic and descriptive nature of the terms used, and the likelihood of confusion in the market. The court found that the appellant was the prior user of the mark and that there was deceptive similarity and likelihood of causing confusion in the market. The court also held that the appellant was entitled to the relief of injunction without any geographical restriction and dismissed the appeal of the respondents.
Fact of the Case:

The plaintiff, a part of Imperial Group of Companies, filed a passing off action against the defendants for using a deceptively similar trademark 'Brihans Gold Napoleon Brandy' in Tamil Nadu. The plaintiff claimed to be the prior user of the mark 'Imperial Gold Napoleon Brandy' and sought an injunction against the defendants.
Finding of the Court:

The court found that the appellant was the prior user of the mark and that there was deceptive similarity and likelihood of causing confusion in the market. The court also held that the appellant was entitled to the relief of injunction without any geographical restriction and dismissed the appeal of the respondents.
Issues: The issues included whether the appellant was the prior user of the brand 'Imperial Gold Napoleon Brandy', whether the respondents' mark 'Brihans Gold Napoleon Brandy' was deceptively similar to that of the appellant's brand, and whether the geographical restriction imposed by the lower court was correct.
Ratio Decidendi: The court held that in a passing off action, what is to be seen is the similarity, not the dissimilarity, between the competing marks to determine whether there is deception or likelihood of causing confusion. The court also emphasized that the appellant was entitled to the relief of injunction without any geographical restriction.
Final Decision: The court dismissed the appeal of the respondents and allowed the appeal of the appellants, granting the plaintiff an injunction for the State of Tamil Nadu as well. No costs were awarded.

Judgment :-

G.M. AKBAR ALI, J.,

1. Both the appeals are directed against the order dated 12. 2009 I.A.No.1102 of 2009 in C.S.No.955 of 2009 of the learned single Judge in a "passing off" action, granting an injunction in favour of the plaintiff against the defendants only in respect of the areas where already the plaintiff established his business, namely, Karnataka, Kerala, Goa, Pondicherry and Himachal Pradesh and not in respect of Tamil Nadu, where the defendants are selling their product. The learned Single Judge made it clear that the defendants could sell their product "BRIHANS GOLD NAPOLEON BRANDY in Tamil Nadu with the said name, but the defendants are injuncted from selling their product with the trade mark BRIHANs GOLD NAPOLEON BRANDY in the areas namely, Karnataka, Kerala, Goa, Pondicherry and Himachala Pradesh and in those areas the defendants could sell their product without using the word "GOLD" before the word "NAPOLEON".

Assailing that portion of the order against them both the parties are before us.

2. The facts leading to the "passing off " action is as follows:

The plaintiff is a part of Imperial Group of Companies, having the Head Office in Kerala and has been in the business of manufacturing and selling Indian made Foreign Spirit (hereinafter referred as IMFS). They were selling the products mainly in the States of Kerala, Karnataka, Himachel Pradesh and Union Territory of Pondicherry. They have adopted a product Imperial Gold Napoleon Brandy in the year 2006 and has been marketing the same in the above said States. They have also applied for a licence to manufacture their brands of IMFS in the State of Tamil Nadu and more particularly, manufacturing and selling their trade mark Gold Napoleon Brandy. However, the first defendant managed to obtain a licence in the State of Tamil Nadu for their brand Brihans "Gold Napoleon Brandy", which is deceptively similar to that of the plaintiff. The adoption and use of the trade mark Brihans "Gold Napoleon Brandy" by the defendants in respect of a product to be sold in the State of Tamil Nadu is clearly with the dishonest intention of encasing upon the reputation and goodwill of the plaintiffs trademark Imperial Gold Napoleon Brandy. This amounts to "passing off" of the defendants product which is deceptively similar to that of the plaintiffs product. Therefore, a suit for permanent injunction was filed with an application for an interim injunction.

3. The application was resisted by the defendants on various grounds. It is contended that the second plaintiff is one of the Indias premier manufacturer of IMFS and their trade mark "Brihans Napoleon Brandy" is exceptionally famous throughout the country. The first defendant is the licensee for the usage of "Brihans Gold Napoleon Brandy", a derivative product of "Brihans Napoleon Brandy" for the State of Tamil Nadu. According to the defendants, the word "Napoleon" and its variant/derivatives including prefixes and suffixes such as "Gold" is used by hundreds of Companies in the International and National market. According to them, the word "Gold" is used to signify a certain higher quality of a brand and the plaintiff cannot claim any exclusive right in the generic word "Gold" or "Napoleon". It is also contended that as far as Tamil Nadu is concerned, the 1st defendant has already obtained licence to manufacture "Brihans Gold Napoleon Brandy" and the sales turn over is in crores. It is further contended that the defendants mark "Brihans Gold Napoleon Brandy" is different from the applicants mark "Imperial Gold Napoleon Brandy". The shape, colour scheme, style of writing are completely different and the shape of the bottles are also different. According to the defendants the customers of spirits and alcoholics, beverages are knowledgeable and would not be confused or misled merely on the basis of presence of common descriptive/generic words such as "Gold" and "Napoleon".

4. While considering the above arguments and also co

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