Trademark tiff between Masculine drink makers and its challengers!

Just days after I bought my first bottle of the ‘must have’ “Knock-out” pepper spray, I came across a trademark dispute between the makers of this product and manufacturers of the beer brand “Knock-Out”. What came next were a series of interesting case laws, and evidences, and finally the verdict of Delhi High Court Justice Bhat.
The Case:  Skol Breweries v. Unisafe Technologies- alleged infringement, passing off and unfair competition.
The plaintiff (Skol) filed for a permanent injunction against the defendant (Unisafe), accusing the later to have been using its trademark “Knock-Out” inappropriately with an intent to harm Skol’s business. Skol is a beer manufacturer with the brand name “Knock-Out” and proved the brand’s existence since 1986, through yearly sales, and yearly expenditure.
Unisafe has a self defence pepper spray under the trademark “KNOCKOUT” in the market and also possess the domain name of its website as www.knockoutspray.com. To this Skol has raised objection on the grounds of wrongful intention to monetarily benefit from its trademark’s reputation. Also Skol alleged that their punch line of the alcoholic beverage “manliness and manhood” has been tempered with to get Unisafe’s punch line “if your daughter gets raped tomorrow, then who is to blame, you or her,” which according to Skol is a direct hit on its audience perception.
Unisafe in its defence stated that it had been using the trade mark since April, 2004, and Skol woke up suddenly after 2 years to realize the impact on its business. Also both the products belong to different class, and are available from completely different type of outlets, evading any chance of confusion. Another argument it gave was that as per Section 11 (sic 2 (1)(zg)) of the Trade Marks Act, 1999, “Knock out” is a common English word and thus cannot be used as a trademark, but, Unisafe’s use of the same word is justified as the product directly relates to its name, i.e. the spray will knock out any attacker. In course of the hearing, Unisafe, however, chose to withdraw and the case was accordingly heard ex-parte.
Presiding over the matter Justice Bhat cited many international and national cases such as, Schering Corporation v. Alkem Laboratories, Sona Spices Pvt. Ltd. v. Soongachi Tea Industries Pvt. Ltd. [2007 (34) PTC 91 (Del)] and First Computers v. A. Guruprasad [1996 PTC (16) 27 (Mad) (DB)], British Petroleum Company Ltd v. European Petroleum Distributors Ltd. [1968 RPC 54], Daimler Chrysler AG v. Alavi [2001] RPC 42 to clarify that “nobody can claim exclusive right to use any generic word, abbreviation, or acronym which has become publici juris.” SBL Limited v. Himalaya Drug Company [67 (1997) DLT 803 (DB)]. It was also stated that to get a trademark protection in such cases, the protection seeker should add a related prefix or suffix.
The Judgment of Sabel BV v. Puma AG [1998] RPC 199 case was also cited as the test of similarity or confusion i.e., “The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case .That global appreciation of the visual, aural or conceptual similarity or the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.”
The court after considering all factors and evidences, judged that those evidences were not sufficient enough to decide in favor of either of the party. Justice Bhat dismissing the petition stated that, acceptance of Skol’s argument would mean accepting that it is “masculine” or “manly” to “indulge and persist in such unwarranted attentions towards women”! If pondered in the direction of connecting both the brands somehow, it will lead to an undertone meaning that drink Knock Out beer, become macho, attack a girl, and get knocked out by the pepper spray, which indeed will be a funny link!

Case No.  CS(OS) 472/2006, I.A. No. 3194/2006

Author – Ms. Ritika Kishore,

Patent Consultant, IIPRD.

The Author of the Blog can be reached: iiprd@iiprd.com.

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