Case Comment on Delhi High Court holding “No Deceptive Similarity in the marks “Officers’s Choice” & “Fauji”

Case comment: M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr.

The Hon’ble Delhi High Court has recently held that there is no deceptive similarity between the marks “Officer’s Choice” and “Fauji” and has rejected Allied Blenders and Distillers Pvt Ltd’s trademark infringement suit for its mark ‘Officer’s Choice’ against the owner of another alcoholic beverage, ‘Fauji’. An Image depicting the marks is reproduced here for the sake of convenience.

officer choice

The Plaintiff in this case argued that the plaintiff’s trademark “Officer’s Choice” and the defendants‟ trademark “Fauji” are conceptually and deceptively similar as the idea behind plaintif’s trademark and the defendant’s trademark is similar.

“Fauji” is a commonly used Hindi language phrase which means a “Military Officer”. Furthermore that the plaintiff and defendants are in the same trade/business and are using their respective mark with respect to goods of identical description i.e. whisky; the likelihood of the confusion amongst the consumer is very high.

The Plaintiff’s counsel also contended that the plaintiff’s and defendant’s labels are conceptually and deceptively similar as it can be clearly seen  that “Fauji” is written in red color slanting upward in a stylized font and has a similar color combination as that of the plaintiff’s product.  I feel that the argument was correct, however the cases which were produced in support of the same were the ones where in the infringing mark was a direct hindi translation of the original mark or a synonym of the original mark eg. “Peacock” and “Mayur” , “Surya” and “Bhaskar” ,”Sun” and “Suraj” . This actually weakened their case , since in the present case Fauji (military man) cannot be said to be a plain Hindi translation of the word “Officer” as Officer does not necessarily means a Military officer .

In light of the above, I personally feel that the Counsel should have focused more on proving deceptive resemblance and not that infringing mark is a translation of the original mark.

How to determine Deceptive Resemblance?

For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection”.[1]

Now in the instant case of  M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav &Anr, it can be clearly seen that the plaintiff is manufacturer of whiskey under the brand name “Officer’s Choice”, the price of the said whiskey ranges from INR 200 to INR 500 for 750ml bottle. Similarly the defendant who is also manufacturer of whiskey under the brand name Fauji is selling its whiskey at a price of INR 200 for its750 ml bottle.

Same Consumer Base

It is however to be noted that INR 500 is for the Officer’s Choice reserve collection and a price as low as INR 200 is for the basic collection. This fact clearly proves that  the consumer base for both Officer’s Choice and Fauji is the same and basically comprises of poor people; people who cannot afford drinking expensive whiskey.

This group of consumer is not assumed to be literate enough and more or less relies upon their memory with respect to appearance of the product, rather than its name. It is in same analogy as Patients asking for “Red Pill” for Viagra and  Purple Pill for “Astrazenca’s Nexium” which has been given protection of the colour Purple and Indian drug Giant Dr Reddy was directed to change the colour of its drug which was a generic version of Nexium.

Similar Packaging

Since the overall packaging of both the whiskey is similar the mark is used in Red Italics in similar fonts and white background, it is most likely to deceive the consumer base and create confusion. In addition to this Fauji bottle also epaulette[2] (on which stars are placed according to rank) which is a part of “Ofiicer’s Choice” packaging is also present on “Fauji” Bottle with minor modifications. The contentions presented before the court were majorly of translation as a result of which the Hon’ble court in the instant case just failed to consider the visual aspect.

Whereas Hon’ble Delhi High Court itself in its previous judgement has relied heavily on trade dress and overall appearance of the product, in order to determine trademark infringement. In its 2008 judgement[3] delivered by, Reva Khetrapal, J , the court allowed the plaintiff’s application wherein it claimed that the defendant has infringed plaintiffs’ trade mark IMPERIAL BLUE by adopting the trade mark IMPERIAL GOLD and has used the trade dress, get up, colour combination and label of ROYAL STAG, thus committing acts of infringement of trade mark and passing off.

Similar was the 2003 judgement of Delhi High Court , wherein the court reinforced the role played by trade dress and the need for its protection to avoid consumer confusion. Herein, the plaintiff sought an interim injunction against the defendant’s use of the trade dress and colour combination of red and white in relation to identical products (tooth powder). It is to be noted that the trademarks used by the two parties, Colgate and Anchor, were completely distinct. However, the court held that[4]:

“It is the overall impression that a consumer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. If the illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, get up or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one’s own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.”

Conclusion

Making reliance on the precedents given by Delhi High Court itself it can be easily concluded that in cases of trademark infringement, trade dress plays a very important role. In the instant case of M/S Allied Blenders and Distillers Pvt. Ltd. v. Govind Yadav & Anr., it is my humble opinion that had the Plaintiff’s counsel pressed more upon the overall packaging of the two whiskeys i.e. Officer’s Choice and Fauji it would have given them a better mileage while arguing the case.

Author: Mr. Shubham Borkar, Senior Associate – Litigation and Business Development and Anjali Jain– Intern, at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at shubham@khuranaandkhurana.com or at www.linkedin.com/in/shubhamborkar.

References:

[1]Kerly , Trade Marks, 8th Edition, p. 400.

[2] an ornamental shoulder piece on an item of clothing, especially on the coat or jacket of a military uniform.

[3]PernodRicard S.A. France and Ors. Vs. Rhizome Distilleries Pvt. Ltd. and Ors.,2009 (39) PTC 367.

[4]Colgate Palmolive Co v Anchor Health and Beauty Care Pvt Ltd 2003 (27) PTC 478 (Del).

 

 

Leave a Reply

Categories

Archives

  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010