Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited by Ekansh Agarwal NMIMS
•Transferir como PPTX, PDF•
1 gostou•103 visualizações
This presentation is intended to highlight the key facts of the case registered by the plaintiff, Pernod Richard India Pvt. Ltd., which is in the business of manufacturing liquor with the trade names "Blenders Pride" and "Imperial Blue," which had been registered and in use since 1994 and 1997, respectively. The plaintiff claims that the defendant's mark CASINOS PRIDE, the defendant's label, the design of the bottle in which the defendant distributes its product, and the packaging in which the bottle is packed infringe on the plaintiff's registered trademarks. The plaintiff's and defendant's products are admittedly in the same segment, namely Indian-Made Foreign Liquor (IMFL), and hence serve the same client base. As a result, they can be found in the same market. To oversee this issue High Court passed a judgement which was in favour of both the parties By Ekansh Agarwal NMIMS
Recomendados
Mais conteúdo relacionado
Mais de Ekansh Agarwal
Mais de Ekansh Agarwal (20)
Último
Último (20)
Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited by Ekansh Agarwal NMIMS
- 1. Pernod Ricard India Vs Frost Falcon Distilliers By- Ekansh Agarwal MBA(tech) EXTC (70431019001) Roll no- J001
- 2. Table of contents 01 05 04 02 • Issues • Judgement • Analysis 06 03 Introduction Legal Counsel Facts Products of the company Conclusions Litigation • Facts of the case • Advocate’s Name • Judge Name
- 3. Introduction The plaintiff claims that the defendant's mark CASINOS PRIDE, the defendant's label, the design of the bottle in which the defendant distributes its product, and the packaging in which the bottle is packed infringe on the plaintiff's registered trademarks. The plaintiff's and defendant's products are admittedly in the same segment, namely Indian-Made Foreign Liquor , and hence serve the same client base.
- 4. History of the companies Pernod Ricard India Frost Falcon Distilliers Frost Falcon Distilliers
- 5. Products of the company (I) Premium and International Brands Chivas Regal, Ballantine's, The Glenlivet, Royal Salute and Jameson Irish whiskey Seagram Whiskey Royal Stag, Royal Stag Barrel Select, Blenders Pride, Blenders Pride Reserve Collection, Imperial Blue, 100 Pipers and more White spirits category ABSOLUT vodka, Jacob’s Creek and Campo Viejo wines, Martell cognac, Beefeater and Monkey 47 gins, Kahlúa and Malibu liqueurs, Mumm and Perrier-Jouët champagnes Pernod Ricard India (P) Ltd. is a wholly owned subsidiary of Pernod Ricard SA and is a fast-growing multinational alcoholic beverage company that delivers quality products to its consumers across the country. It deals in -
- 6. Products of the company (II) Cheap Whiskies Santara, Dhanno , Malta and more Based in Gurugram, Frost Falcon Distilleries Limited is a unique alcohol beverage manufacturer that serves customers all across the nation with high-quality goods.
- 7. Litigation Plaintiff Defendant Frost Falcon Distilleries Limited launched a product named “CASINOS PRIDE” which has same exact label and packaging as of the plaintiff Pernod Richard India Pvt. Ltd filed for protecting trade name and packaging of "Blenders Pride" and "Imperial Blue"
- 8. Legal Counsel (dated 02.03.2022) HON'BLE MR. JUSTICE C. HARI SHANKAR Mr.Abhijeet Rastogi Ms.Prity Sharma Judge name Pernod Ricard India Pvt. Ltd. advocate name Frost falcon distilleries limited advocate name
- 9. Facts of the case Situation of the case Both "BLENDERS PRIDE" and "IMPERIAL BLUE," which are the Plaintiff's two goods and the focus of this lawsuit, have registered trademarks under Classes 34 and 33 of the Trademarks classification categories, respectively. History Plantiff has been using the names since 1995 and 1997 Issue Conversely, the Defendant has allegedly been using the disputed "CASINOS PRIDE" mark since 02.08.2017 Problem Both goods are sold in the same shops and are part of the same market category, known as "Indian Made Foreign Liquor" (IMFL). Problems 01 02 03
- 10. Conclusion Issues ● Whether a case of passing off can be made against the Defendant? ● Whether the Defendant’s impugned marks infringes the Plaintiff’s registered trademarks? Analysis Judgement Plaintiffs’ "BLENDERS PRIDE" trademark infringement lawsuit is based on their assertion that they have an exclusive right to "PRIDE" as the dominant party to the "BLENDERS PRIDE" trademark. The Court rightly observed that the individual elements of the plaintiff’s trademark, being unregistered, acquired no secondary meaning, nor could they be associated with the product. The distinction between infringement and passing off—the former being statutory and the latter resulting from common law—was emphasised by the High Court. The Court emphasised that deceit or at the very least confusion is the sine qua non for both infringement and passing off, even though the Defendant's motive and the demonstration of real damage were deemed immaterial to prove an accusation of passing off.
Notas do Editor
- The Plaintiff alleged that the Defendant knowingly infringed the Claimant’s trademarks “BLENDERS PRIDE” and “IMPERIAL BLUE”. Plaintiff explained that in two cases, namely Austin Nichols and Co. v Arvind Behl 2006 (32) PTC 133 (Del) and Rhizome Distilleries v UOI 2016 (65) PTC 132 (Mad), the High Court of Delhi ( hereinafter referred to as “the Court”) and the Madras High Court have recognized both “BLENDERS PRIDE” and “IMPERIAL BLUE” as trademarks with a reputation within the meaning of Section 2(1)(zg) of the Trademarks Act, 1999 ( hereinafter “the law“), claiming that both marks were so closely associated with the plaintiff that they had become source identifiers. The plaintiff told the court that in an effort to match the plaintiff’s trademark as closely as possible, the defendant also used a blue background on the packaging in which the plaintiff markets its product, a deliberate diversion from the mark that the defendant wanted to register. In support of the infringement claim of “BLENDERS PRIDE“, Plaintiff argued that the word “PRIDE” in “BLENDERS PRIDE” was a distinguishing feature, and its use by Defendant would damage the reputation of Plaintiff’s trademark and result in irreparable loss. The Plaintiff alleged that no one is obliged to use the word “PRIDE” for their alcoholic beverage because it is not a descriptive term for alcoholic beverages. The plaintiff further claimed that “CASINOS PRIDE” has no etymological meaning, and the word “PRIDE” is only used to capitalize on the plaintiff’s goodwill and reputation and to mislead consumers into confusing the products with or mistaking them for related to those of the plaintiff. In addition, Plaintiff highlighted the phonetic similarity between the phrases “BLENDERS PRIDE” and “CASINOS PRIDE.” To support the “IMPERIAL BLUE” infringement claim, the plaintiff alleged that the product is sold with a distinctive trade dress that includes the name and other writing on the label in white letters on a blue background with a dome-shaped insignia on the gold and the name of the product written in two words, one under the other. The Plaintiff alleged that the Respondent copied these essential characteristics onto its “CASINOS PRIDE” label and applied them to the bottle and bottle packaging. The Plaintiff further alleged that Plaintiff’s use of an identical bottle and the label affixed thereto violated the Plaintiff’s trademark “IMPERIAL BLUE”, which was separately registered by the Plaintiff. The Plaintiff also relied on Section 154 of the Act to claim exclusivity over the individual parts of the mark, such as the blue color, gold dome, etc. and claimed that its “IMPERIAL BLUE” registrations constitute a set of trademarks within the meaning of Section 154 of the Act. The defendant copied “PRIDE”, which is the distinctive part of the “BLENDERS PRIDE” brand, and the blue colour, gold dome, general dress and commercial image of the “IMPERIAL BLUE” brands to create a label and packaging design that would result in confusion or a connection between the competing products. Finally, the plaintiff alleged copyright infringement because the distinctive features of the IMFL trade dress “IMPERIAL BLUE” constituted an artwork within the meaning of Section 2(c)5 of the Copyright Act 1957 and was the contested copyright of the plaintiff. The label and packaging constitute an infringing copy within the meaning of Section 2(m), for which Plaintiff is entitled to protection under Section 51, and Defendant may obtain an injunction against the use of the copyright owner’s rights. Rather, the defendant denied the allegation of trademark infringement and asserted that the defendants honestly and in good faith thought up and adopted the “CASINOS PRIDE” trademark on May 25, 2016, and had openly used it since May 2, 2016, August 2016. The Defendant relied on Section 17 of the Act to claim that Plaintiff could not claim exclusivity with respect to any part of its composite mark “BLENDERS PRIDE”. The Respondent also informed the court that Plaintiff attempted to register the trademark “PRIDE” but did not, arguing that this case was an indirect attempt by Plaintiff to seek exclusivity with respect to the trademark “PRIDE“. The defendant also noted that the word “PRIDE” is used by various manufacturers and has consequently become common in the industry. Therefore, “PRIDE” cannot be the dominant part of Plaintiff’s “BLENDERS PRIDE” trademark. Defendant also argued that “PRIDE” was publici juris because it was “general, descriptive, laudatory or general” and had not acquired a secondary meaning in the minds of the consumer public. Therefore, the defendant denied any infringement of the law for using “PRIDE” in “CASINOS PRIDE“. The defendant also denied any deceptive similarity between the marks and also dismissed any claims of infringement of an idea. The defendant denied the infringement of the “IMPERIAL BLUE” trademark and asserted that the inscription “CASINOS PRIDE” on the label between diagonal gold lines, the shade of blue used on the labels and the arrangement of the label features on the labels are completely different from those used on the “IMPERIAL BLUE” label. Defendant claimed that the label, clothing, packaging, shape, color scheme, and arrangement of features on the “CASINOS PRIDE” label are distinct and distinct from Plaintiff’s trademarks.The Respondent further argued that there was no likelihood of confusion since the Respondent’s label had sufficient additional content. The Respondent also noted the price difference between the products and their different consumer tribes.
- 1.9 Legal Counsel -: 1) Pernod ricard India private limited Plaintiff Name-: Mr. Hemant Singh, Ms. Mamta Rani Jha, Mr. Waseem Shuaib Ahmed Advocate Name-: Mr.Abhijeet Rastogi 2) Frost falcon distilleries limited Defendant : Mr. Sachin Datta, Sr. Adv. With Mr. Sidhartha Das, Mr. Gajanand Kirodiwal Advocate Name : Ms.Prity Sharma. Judge Name-: HON'BLE MR. JUSTICE C. HARI SHANKAR Judgment date-: 02.03.2022
- Both "BLENDERS PRIDE" and "IMPERIAL BLUE," which are the Plaintiff's two goods and the focus of this lawsuit, have registered trademarks under Classes 34 and 33 of the Trademarks classification categories, respectively. The plaintiff has been utilising the trademarks "BLENDERS PRIDE" and "IMPERIAL BLUE" since 1995 and 1997, respectively. Conversely, the Defendant has allegedly been using the disputed "CASINOS PRIDE" mark since 02.08.2017, which is confusingly similar to the Plaintiff's mark. Additionally, it was claimed that the Plaintiff's and Defendant's goods are sold in the same shops and are part of the same market category, known as "Indian Made Foreign Liquor" (IMFL).The Plaintiff filed an application to oppose the defendant's application to register the contested mark "CASINO PRIDE" under Class 33. Regarding the opposition, the following is a discussion of the two primary claims made by the Plaintiff against the Defendant:
- 1.8 Judgement of the case The court first addressed the issue of infringement of the plaintiff's registered word mark "BLENDERS PRIDE". The court ruled that the plaintiff could not claim exclusivity over the "PRIDE" portion of the trademark. Since "PRIDE" etymologically refers to the quality of a product, the court confirmed that it has a prima facie laudatory character. The court also found that it was a common word that did not distinguish the plaintiff's product from that of other manufacturers. The court found that “the plaintiff's right under Section 17(1) would be the BLENDERS PRIDE trademark as a whole. Any claim to the exclusivity of the "PRIDE" part of the trademark would be affected by § 17 para. 2 letter (b) because it is inherently non-distinctive.” The court concluded that “PRIDE” is clearly a generic, common and complimentary term in the brand “BLENDERS PRIDE” and that everyone's desire to use “PRIDE” as part of a product trade name is perfectly understandable. The only exception is the dominant part of the brand. The court applied the "plain view" test to determine whether "PRIDE" is the dominant component of the "BLENDERS PRIDE" mark given the customer's perception of the products or the person using the service. Regarding the plaintiff's device mark "BLENDERS PRIDE" and the defendant's "CASINOS PRIDE" device mark, the court found that there is no visual similarity between the two marks. The court also used J.R. Kapoor and stated that “once the common part of the 'PRIDE' marks of the plaintiff and the defendant is ignored, the remaining part of the marks are completely different. It is clear that there is no phonetic, visual or other similarity between the "BLENDERS" and "CASINOS" portions of the plaintiffs' and defendants' trademarks." For the above reasons, the court held that a case of infringement of the "BLENDERS PRIDE" trademark cannot be determined. The court then turned to the question of infringement of the "IMPERIAL BLUE" trademark. The court relied on the definition of "trademark" in § 2 letter (m) of the Act that the plaintiff was free to register any individual part of the design, such as the color scheme, the gold dome, etc., but not her . The plaintiff only had records of the label as a whole and of the marked bottle as the marking of individual devices. Therefore, with regard to § 17, paragraph 2 of the Act, it is not possible to claim individual elements of stamps. The court further noted that these individual elements did not become secondary in importance over time, nor were they closely associated with the plaintiff's IMPERIAL BLUE whisky. After a preliminary examination, the court found no evidence of infringement. The court rejected the plaintiff's claim that the defendant had copied essential elements of the plaintiff's "IMPERIAL BLUE" label, finding that the "most essential" element on any label would be the name of the product. Finally, on the issue of forgery, the court noted the difference between the tort of forgery and the tort of infringement, stating that it was not bound by the specific elements of the tort in assessing the first claim. The court found that convincing evidence of common sense or bad faith is not essential to prove that the crime of counterfeiting has been committed and the presence of certain sufficient factors to show that the defendant is trying to sell its product because it is issued by the plaintiff. enough. The court reviewed all the similarities between the defendant's mark and the plaintiff's mark and agreed with the plaintiff's argument that the defendant "skillfully combined the characteristics of the trademarks 'BLENDERS PRIDE' and 'IMPERIAL BLUE' in the imagination of a customer of average intelligence and imperfect memory." , who had previously purchased and had knowledge of the plaintiff's beverages 'BLENDERS PRIDE' and 'IMPERIAL BLUE' is dangerously likely to lead to an inference of connection between the defendant's product and the plaintiff's product." The court also relied on Munday v. Carey, (1905 ) 22 RPC 273 and held that because of the manifestly dishonest intent of the defendants, it was appropriate to give preference to the similarities between the marks over the differences. As there is a clear intention to make consumers believe that "CASINOS PRIDE" is a cheaper product than the plaintiff's brewery, the court held that the court will assume that the intention was successful. Consequently, the court found the defendant liable for misrepresenting its product as that of the plaintiff. 2.0 Analysis Plaintiffs’ “BLENDERS PRIDE” trademark infringement lawsuit is based on their assertion that they have an exclusive right to “PRIDE” as the dominant party to the “BLENDERS PRIDE” trademark. The Court correctly applied art. 17 of the Act, as well as the anti-dissection rule to believe that BLENDERS PRIDE” must be considered as a whole and be denied any exclusivity on “PRIDE”. The Court based the previous observation on the reasoning that the consumer would not divide it into components. Plaintiff had an even weaker case for infringement of the trademark “IMPERIOR BLUE” as there was no prima facie case as the names were different, the labels were distinguishable, and no misleading similarity was found. The Court rightly observed that the individual elements of the plaintiff’s trademark, being unregistered, acquired no secondary meaning, nor could they be associated with the product. Therefore, no case of infringement could be inferred. The High Court reiterated the distinction between infringement and passing off, the former being legal and the latter being common law. Although the defendant’s intent and proof of actual harm were found to be irrelevant to passing off the charge, the Court found that deception or at least confusion is the sine qua non for both the offense and for the store. This Court’s decision is consistent with the trademark regulatory framework, consolidated principles and case law. 2.1 Conclusion The distinction between infringement and passing off—the former being statutory and the latter resulting from common law—was emphasised by the High Court. The Court emphasised that deceit or at the very least confusion is the sine qua non for both infringement and passing off, even though the Defendant's motive and the demonstration of real damage were deemed immaterial to prove an accusation of passing off. The court's ruling is consistent with the trademark law system's guiding principles and recognised jurisprudential precedents.