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IN THE HIGH COURT OF DELHI AT NEW DELHI
PRADEEP NANDRAJOG & PRATIBHA RANI, JJ.
SHREE NATH HERITAGE LIQUOR PVT. LTD. & Ors. – Appellants
Versus
ALLIED BLENDER & DISTILLERS PVT. LTD. – Respondent
FAO (OS) 368 & 493 of 2014
Decided On : 06-07-2015
In two separate appeals, the Delhi High Court addressed trademark infringement, passing off, and copyright infringement claims arising from the use of similar marks and labels for whisky products. The Court applied legal principles and factors to determine the likelihood of confusion among consumers and assess the validity of the claims.
Fact of the Case:
The first appeal involved the use of the mark 'Collector's Choice' for whisky by Shree Nath Heritage Liquor Pvt. Ltd., while the second appeal concerned the use of the mark 'Officer's Special' for whisky by Sentini Bio Products Pvt. Ltd. The respondent in both appeals was Allied Blenders and Distillers Pvt. Ltd., the owner of the trademark 'Officer's Choice' for whisky.
Finding of the Court:
The Court held that the marks 'Collector's Choice' and 'Officer's Special' were deceptively similar to the respondent's mark 'Officer's Choice' based on their semantic similarity and the likelihood of confusion among consumers. The Court also found that the appellant's labels were deceptively similar to the respondent's labels, considering the overall impression created by the visual elements and the use of the deceptively similar marks. Additionally, the Court determined that the appellant's label for 'Officer's Special' infringed the respondent's copyright in its label.
Issues: The key issues addressed by the Court included: 1. Whether the appellant's marks 'Collector's Choice' and 'Officer's Special' were deceptively similar to the respondent's mark 'Officer's Choice', considering factors such as semantic similarity, phonetic similarity, and the overall impression created. 2. Whether the appellant's labels were deceptively similar to the respondent's labels, taking into account the visual elements, color combinations, and the use of the deceptively similar marks. 3. Whether the appellant's label for 'Officer's Special' infringed the respondent's copyright in its label, considering the originality and substantial reproduction of protectable elements.
Ratio Decidendi: The Court applied the following legal principles and factors in reaching its decision: 1. Similarity of marks: The Court considered the semantic similarity between the marks, focusing on the ideas conveyed by the words 'Collector' and 'Officer' in the context of whisky. The Court also examined the phonetic similarity and the overall impression created by the marks. 2. Class of consumers: The Court recognized that the class of purchasers for whisky products is likely to include both discriminating and casual purchasers, and the likelihood of confusion should be assessed considering the behavior and expectations of both types of consumers. 3. Intention of the appellant: The Court inferred the appellant's intention from its knowledge of the respondent's trademark and its subsequent adoption of deceptively similar marks and labels, suggesting a dishonest intent to capitalize on the goodwill of the respondent's mark. 4. Copyright infringement: The Court applied the principles of copyright law, including the originality of the respondent's label and the substantial reproduction of protectable elements in the appellant's label, to determine copyright infringement.
Final Decision: The Court dismissed both appeals, holding that the appellant's use of the marks 'Collector's Choice' and 'Officer's Special' infringed the respondent's trademark 'Officer's Choice' and constituted passing off. Additionally, the Court found that the appellant's label for 'Officer's Special' infringed the respondent's copyright in its label. The Court issued an injunction restraining the appellants from using the impugned marks and labels and awarded costs to the respondent.
PRADEEP NANDRAJOG, J.
1. Shree Nath Heritage Liquor Pvt. Ltd. (the appellant of FAO (OS) No.368/2014) impugns the order dated July 01, 2014 passed by the learned Single Judge disposing of IA No.20759/2013 filed by M/s. Allied Blenders and Distillers Pvt. Ltd. (the plaintiff) confirming the ex-parte ad-interim injunction granted on December 19, 2013 restraining Shree Nath Heritage from using the mark ‘Collector’s Choice’ for its product (whisky) during the pendency of the suit. M/s. Sentini Bio Products Pvt. Ltd. (the appellant of FAO (OS) No.493/2014) impugns the order dated July 01, 2014 allowing IA No.1685/2009 filed by M/s. Allied Blenders and Distillers Pvt. Ltd. (the plaintiff) confirming the ex-parte ad-interim order restraining M/s. Sentini Bio Products Pvt. Ltd. from using the mark ‘Officer’s Special’ for its alcoholic beverages and in particular Indian made foreign liquor during the pendency of the suit.
2. The two appeals thus pertain to marks used for whisky, ‘Officer’s Choice’ of the respondent and ‘Collector’s Choice’ and ‘Officer’s Special’ of the two appellants.
3. Briefly stated, the facts relevant and giving rise to the two appeals are as follows:
a. The respondent is a company incorporated under the Indian Companies Act and is in the business of manufacturing and marketing alcoholic beverages, including Indian Made Foreign Liquor. The respondent’s alcoholic beverages are sold under various trademarks and labels, out of which one is ‘Officer’s Choice’. It is the respondent’s case that ‘Officer’s Choice’ is one of its most popular trademarks and was adopted in the year 1988. The respondent further claims that its whisky under the mark ‘Officer’s Choice’ is one of the highest selling whiskies in the world. The respondent is also the registered proprietor of the trademark ‘Officer’s Choice’ in various classes such as classes 32, 33, 34 etc.
b. The appellant of FAO (OS) No.368/2014 is also incorporated under the Indian Companies Act and is engaged in the business of manufacturing, blending and bottling of Indian Made Foreign Liquor. It is the appellant’s case that its mark and label ‘Collector’s Choice’ was adopted in the year 2013. The parties however dispute the exact month of the appellant’s adoption. The appellant of FAO (OS) No.493/2014 is also incorporated as a company under the Indian Companies Act and sells Indian made foreign liquor under the mark and label ‘Officer’s Special’ and the product was launched in December, 2008 after obtaining approval of the label ‘Officer’s Special’ from the excise authorities in the State of Andhra Pradesh in March, 2008 and in the State of Chattisgarh in May, 2008.
c. The respondent filed CS (OS) No.2589/2013 on the original side of this Court against the appellant of FAO (OS) No.368/2014 claiming violation of its trademark ‘Officer’s Choice’, CS (OS) No.247/2009 against the appellant of FAO (OS) No.493/2014 claiming violation of its trademark ‘Officer’s Choice’, and against the appellant of FAO (OS) No.493/2014 additionally claiming violation of the copyright in its label.
d. It is the respondent’s case that, being the prior owner and registered proprietor of the trademark ‘Officer’s Choice’, it has exclusive rights in the said trademark. The appellant’s trademark ‘Collector’s Choice’ and ‘Officer’s Special’ conveys the same idea as that of the respondent’s trademark ‘Officer’s Choice’, i.e. Choice of a person holding an office of authority and is deceptively similar to the respondent’s said mark. Hence, it is highly likely that consumers will confuse the appellant’s ‘Collector’s Choice’ and ‘Officer’s Special’ as that of the respondents.
e. According to the appellant of FAO (OS) No.368/2014, the mark ‘Collector’s Choice’ was used by it to emphasize upon the unique characteristics of its product and stature of the customers of its product since the word ‘Collector
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