28 October 2018
Could Exclusivity be Claimed Over the Word IMPERIAL for Alcohol?
First Publication Date: 24th December 2009
The plaint was filed by Pernod Ricard S.A. France and Ors. alleging that the defendants’ (Rhizome Distilleries P. Ltd. and Ors.) whisky, Imperial Gold, was an imitation of and was structurally, as well as phonetically, similar to the Plaintiffs reputed trademark IMPERIAL BLUE and the registered trademark IMPERIAL RED. Also, the Defendants were said to have imitated the ROYAL STAG whisky label, in both the front and the rear panels. The whisky label was said to have used the trade dress which was an imitation of the ROYAL STAG trade dress in respect of colour combination, get up, shape and design of bottle and ROYAL STAG label.
The bottling styles of the Plaintiff and the Defendants are shown below:
Pernod Ricard claim to be the world’s co-leader in wines and spirits. They have their presence on every continent and sell alcoholic beverages across the world. Some of their brands are ROYAL SALUTE, CHIVAS REGAL, BEEFEATER, BALLANTINES, KALHUA, BLENDERS PRIDE etc. One of their brands, IMPERIAL BLUE is a registered trademark in India since 1997 as is IMPERIAL RED and ROYAL STAG.
The Defendants, Rhizome distilleries, is a distillery unit in the state of Andhra Pradesh-India. Their brand, IMPERIAL GOLD, is also a registered trademark in India and was being sold in Hyderabad and Delhi.
The suit filed by the Plaintiffs was for a permanent injunction restraining infringement of registered trademark, copyright, passing off, dilution, unfair competition, rendition of accounts of profits, deliver-up, etc.
The Civil Court ruled in favour of the Plaintiff and the Defendants were restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in whisky or any other alcoholic beverages under the trademark Imperial Gold or the impugned label/trade dress pertaining thereto or any other trademark/label/trade dress as may be deceptively similar to the trademark of the Plaintiff/Respondent viz. IMPERIAL BLUE, IMPERIAL RED or ROYAL STAG.
The Defendants appealed against the ruling in the HIGH COURT OF DELHI. The Appellants argued that the Plaintiffs were aware of the Defendants’ application for registration of their brand and intention to manufacture and sell their brand. They contented that since the Plaintiffs had allowed the Appellants to build a reputation and substantial sales for their brand, IMPERIAL GOLD, an injunction ought not to have been granted. They also argued that no exclusivity can be claimed for the use of the word IMPERIAL which is not just to be found in common parlance, but is also an obvious choice for whisky etc. because of the laudatory effect it has on the product.
The learned Single Judge passed a Judgment after perusing through a plethora of precedents cited at the Bar, one among which was the case Payton & Co. v. Snelling Lampard & Co. (1900) 17 RPC 48. The case highlighted the principle to be borne in mind in passing off action as to the scope of a buyer being deceived. In the case, Lord Romer, LJ had said that “it is a misconception to refer to the confusion that can be created upon an ignorant customer”. In another case (Schweppes’ case) Lord Halsbury had said that “if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived”.
The HIGH COURT had this to say: “It is our analysis that no exclusive or proprietary rights can be claimed by either of the parties before us in respect of the word IMPERIAL which is not only in common parlance to be found in every dictionary, but also is laudatory in nature as it alludes to royalty or grandeur. With respect, we are not convinced that IMPERIAL refers only to royalty, empowering only such persons to take litigative umbrage. Illusions of royalty and grandeur are one of the sentiments resulting from imbibing spirits, and, therefore, IMPERIAL may justifiably be seen as descriptive”.
The HIGH COURT also opined that Plaintiffs/Respondents had adequate knowledge of the Defendants intention to use the trademark IMPERIAL GOLD; however the Plaintiffs did nothing as the Defendants’ sales grew and the Defendants had obtained a substantial share of the market. Delay and acquiescence had thus stepped in to counter the Plaintiffs claim for an ad interim injunction.
It will be interesting to note whether in the future the term IMPERIAL is given the same treatment if chosen as a trademark for another set of goods/services other than Alcohol.