Beer versus Whiskey- Beer Wins 8PM battle
This post was first published on September 24, 2011.
RADICO KHAITAN LIMITED V. CARLSBERG INDIA PRIVATE LIMITED, decided on 16th September, 2011 by Delhi High Court
The plaintiff- Radico Khaitan Ltd. has been continuously and extensively carrying on an established and reputed business in respect of manufacture and sale of alcoholic beverages in India, as well as numerous countries across the world directly by itself and through its affiliates, subsidiaries, licensees, etc. The plaintiff adopted the mark 8 PM in the year 1997 in relation to whiskey and has been extensively using the same since 1999. The Plaintiff is the Registered Proprietor of the 8 PM/8PM family of marks not only in India but also in other jurisdictions. The mark 8 PM is registered in India. The Plaintiff is also using the trademark 8 PM for its other products like 8 PM Bermuda XXX Rum (2003), 8PM ROYALE (label) (2003), 8 PM EXCELLENCY Brandy (2005), 8 PM BERMUDA WHITE ORIGINAL CARIBBEAN RUM (2005).
The defendant Carlsberg India Pvt Ltd. is engaged in the manufacturing and marketing of alcoholic beverages more specifically beers. The Defendant has been using the brand PALONE/OKACIM PALONE in relation to its strong beers overseas. The brand was launched by the defendant in India in the year 2007 but it was not clicked in the Indian Market. Therefore, the Defendant in Feb, 2011 launched PALONE 8 (alleged to be a super strong beer) in India, numeral 8 being used in a prominent fashion and in fact as a primary mark. It was for the first time that a beer comprising approximately 8% Alcohol By Volume was launched in India. PALONE 8 traces its roots to the earlier brands OKOCIM PALONE as well as BALTIKA 8, GRIMBERGEN GOLD 8 and DRAGON 8. Defendant filed an application for registration of the marks ‗PALONE 8 labels’, PALONE 8 DUMDAR MELA’, and 8 KA DUM’ with the Trade Marks Registry. The product under the PALONE 8 label became a great success.
1) Whether the defendant is passing off its product as that of the plaintiff by using the trademark “PALONE 8” or not?
2) Whether the plaintiff is entitled to the injunction claimed by it or not?
3) Whether there is an infringement of the registered trademark “8 PM”?
It was held that the plaintiff had failed to make out any case of infringement of trademarks and passing off. In substance, the following reasons were given:
(i) Plaintiff has no registration for the numeral 8′ per se and no registration in respect of beer. It is common to the trade. The defendant is not using the numeral 8 per se.
(ii) The goods viz. beers and whiskey are totally different, and belong to different segments as a class of consumers is different; it is impossible for one to buy whiskey for a beer or vice-versa; even illiterate consumers will not be confused.
(iii) The labels/packaging/bottles of 8 PM whiskey and PALONE 8 beer are totally different. Therefore, there has been no confusion and deception.
(iv) Plaintiff’s whiskey is priced at approximately INR 300 whereas the Defendant’s beer bearing the label PALONE 8 is priced at INR 65. The plaintiff’s sale of products and 8 PM is lower than defendant’s sale.
Thus, the plaintiff has not been able to make out a prima facie case of infringement for the grant of the injunction.
However, the only relief given by the court to the plaintiff about its grievance is that the defendant has to use the mark PALONE and numeral-8 together in the same line. Also, the defendant is allowed to use the numeral-8 in different writing styles and in a different colour other than golden colour.
Plaint was dismissed on the above grounds.
Authors: Kumar Anjani and Swati
Image from here