The case of Pernod Ricard India Private Limited vs A B Sugars Limited & Another, decided on 31st October 2023 by the High Court of Delhi, is a critical precedent in the domain of trademark protection and the doctrine of deceptive similarity in the context of the alcoholic beverage industry. This case revolves around a claim of infringement and passing off, brought by Pernod Ricard India Private Limited, a well-established player in the spirits market, in relation to their whisky brand "Imperial Blue."

The plaintiff alleged that the defendants had introduced a product named "Imperial Gold" with packaging and branding designed to mimic and exploit the goodwill of "Imperial Blue." The court's decision on the plaintiff's application for interim injunction highlights the principles surrounding protectable elements of trade dress, phonetic similarity, and the concept of deceptive resemblance.

Factual Background
Pernod Ricard India Pvt. Ltd. is the registered proprietor of the trademark "Imperial Blue," launched in 1997, and has since built considerable goodwill and recognition in the Indian market. The brand is one of the top-selling whiskies in India, enjoying substantial market penetration and extensive advertisement outreach.

The mark is registered under Class 33 of the Trade Marks Act, 1999, covering alcoholic beverages. In 2023, the plaintiff discovered that A B Sugars Limited, in collaboration with a marketing company, had launched a competing whisky product titled "Imperial Gold." The plaintiff alleged that the use of the word "Imperial," coupled with a similar color scheme, typography, and bottle shape, amounted to both infringement and passing off.

They claimed that the defendants' product was intentionally designed to confuse consumers and misappropriate the brand equity of "Imperial Blue."
The plaintiff pointed out specific similarities in the label layout, combination of gold and blue colors, the placement and design of product descriptors, as well as the shape and appearance of the bottle itself. They contended that these similarities were not coincidental but indicative of a deliberate attempt to ride upon the reputation of "Imperial Blue."

Procedural Background
A commercial civil suit bearing number CS(COMM) 789/2023 was filed by the plaintiff before the Delhi High Court. The plaintiff sought a permanent injunction to restrain the defendants from manufacturing, selling, marketing, or dealing in any product using the term "Imperial Gold," or any other mark deceptively similar to "Imperial Blue."

The present order was passed on the plaintiff's application for an interim injunction under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The court had to assess whether the plaintiff had established a prima facie case for interim protection, the balance of convenience, and the likelihood of irreparable harm.

Issues Involved
The primary issue was whether the use of "Imperial Gold" by the defendants amounted to trademark infringement and passing off by being deceptively similar to the plaintiff's registered trademark "Imperial Blue." A related issue was whether the word "Imperial" was inherently distinctive or had acquired secondary meaning sufficient to warrant exclusive proprietary rights. The court also had to determine whether the similarities in packaging, color combination, bottle design, and overall trade dress justified an interim injunction in favor of the plaintiff.

Submissions of the Parties
The plaintiff contended that "Imperial Blue" was a well-known mark and that the word "Imperial" had, over the years, become the dominant identifier of its brand. They emphasized that the defendants' product, "Imperial Gold," copied this dominant portion of the mark, and used similar packaging and branding elements to cause confusion.

The plaintiff argued that the consumers, particularly in the alcoholic beverage market, would likely be misled by the similarities, thereby causing irreparable damage to the brand's goodwill. They relied on several judicial precedents to support their argument, especially emphasizing that even partial adoption of a well-known mark constitutes infringement and that trade dress and packaging also enjoy protection under trademark law.

In contrast, the defendants submitted that the word "Imperial" is a dictionary word, commonly used and not distinctive by itself. They argued that the plaintiff could not claim monopoly over a generic or laudatory term and that the suffixes "Blue" and "Gold" created a sufficiently distinct identity. Further, they contended that the packaging was not deceptively similar, and their brand was independently created without any intention of misleading consumers or exploiting the plaintiff's reputation.

Discussion on Judgments and Contextual References
The plaintiff relied heavily on the Supreme Court's decision in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, where the court held that in cases involving health and safety, a stricter standard must be applied to determine deceptive similarity. Though whisky is not a medicinal product, the court considered this principle relevant because it underscored the need to assess consumer confusion from a public interest perspective.

The judgment laid out various factors to be considered when evaluating similarity, such as the nature of marks, similarity in appearance and sound, nature of goods, class of purchasers, and the manner of purchasing.

Another significant citation was Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449. In this case, the court held that phonetic similarity could be sufficient to establish infringement or passing off, particularly where the overall impression conveyed by the marks is similar. This was particularly relevant in the present case because the court had to evaluate the phonetic identity of "Imperial Blue" and "Imperial Gold."

The plaintiff also cited F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., AIR 1970 SC 2062. In that case, the court observed that ordinary consumers are not expected to have a perfect recollection of trademarks and that decisions must consider the overall impression formed in the mind of the average purchaser. This supported the plaintiff's argument that even subtle similarities could lead to deception, especially when products are marketed to the same consumer base and sold through identical channels.

Each of these cases helped the court affirm that trademark protection is not limited to exact replicas and extends to cases where there is a likelihood of confusion or association due to visual, structural, or phonetic similarity.

Reasoning and Analysis by the Court
Justice C. Hari Shankar noted that the plaintiff was the registered proprietor of the mark "Imperial Blue" and had extensively used the mark over a long period, thus establishing both statutory and common law rights. The court held that the plaintiff had established a strong prima facie case that the word "Imperial" had become a distinctive identifier of its brand. Even if "Imperial" was a dictionary word, the long-standing and exclusive association with "Imperial Blue" had imbued it with a secondary meaning.

Upon examining the packaging of "Imperial Gold," the court found striking visual and structural similarities with "Imperial Blue." These included the use of blue and gold colors, identical font styles, label layout, and overall trade dress. The judge held that the defendants' adoption of such elements could not be considered accidental or bona fide. The visual similarity, combined with phonetic overlap, created a high probability of confusion in the minds of consumers.

The court observed that trademark infringement does not require proof of actual confusion; a likelihood of confusion is sufficient. Moreover, in passing off cases, even without registration, goodwill and reputation must be protected from misappropriation. The balance of convenience favored the plaintiff as the brand was well-established, whereas the defendants' product had been recently launched. The potential for irreparable harm to the plaintiff's goodwill outweighed the commercial loss to the defendants. The court emphasized that where a mark has acquired distinctiveness and is associated with a particular source, it deserves strong protection, particularly against competitors attempting to trade upon its goodwill.

Final Decision
The Delhi High Court allowed the plaintiff's application for interim injunction and restrained the defendants from manufacturing, selling, or advertising any whisky product under the name "Imperial Gold" or any other name that was deceptively similar to "Imperial Blue." The injunction extended to the trade dress and packaging elements that resembled those of the plaintiff's product. The order will remain in effect until the final adjudication of the suit.

Law Settled in This Case
This case reaffirmed that:
A common or dictionary word can become distinctive and monopolizable if it acquires secondary meaning through prolonged and exclusive use. Trademark protection extends not only to the name but also to the visual elements such as color schemes, bottle shapes, and trade dress. In assessing deceptive similarity, the court considers phonetic, visual, and structural resemblance, along with the overall commercial impression. Even in interim stages, courts can restrain infringing use where the mark enjoys goodwill and a strong prima facie case is made out. The law favors preventing confusion rather than remedying it post facto.

Case Title: Pernod Ricard India Private Limited Vs A B Sugars Limited & Another
Date of Order: 31st October 2023
Case Number: CS(COMM) 789/2023
Neutral Citation: 2023:DHC:7749
Court: High Court of Delhi
Presiding Judge: Hon'ble Mr. Justice C. Hari Shankar

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539