Delhi High Court: In a case wherein the plaintiff, Pernod Ricard India (P) Ltd, filed a suit seeking permanent injunction against the defendants for its product ‘Imperial Blue’ whiskey, Prathiba M. Singh, J.*, granted permanent injunction, thereby restraining the defendants from manufacturing, selling, offering for sale, advertising or in any other manner using the impugned ‘Imperial VAT No. 1′ product label, packaging, get up and trade dress, including the shape of the bottle or any other packaging or label which was deceptive, or imitative of the plaintiff’s packaging/label/get up under the mark ‘Imperial Blue’.
In the present case, Defendant 3, Galestorm Distillery (P) Ltd. was engaged in the bottling and blending of Indian Made Foreign Liquor such as Whisky. Defendant 3 was approached by Defendants 1 and 2, namely, Gagan Wine Trade and Financiers Ltd.; and Green Valley Town Planners (P) Ltd respectively, to manufacture and blend goods being whisky under the trade mark/label ‘Imperial VAT No. 1’.
The plaintiff’s suit related to the packaging, label, and the overall get-up of the plaintiff’s product labelled ‘Imperial Blue’ whiskey. The plaintiff submitted that it had trade mark registrations for the mark ‘Imperial Blue’; the label; the three-dimensional bottle; the packaging and had rights in respect of various other elements constituting the distinctive packaging of the plaintiff. The grievance of the plaintiff was that the defendants who were selling ‘Imperial VAT No. 1’ whiskey, had imitated the entire label, get-up, font size, manner of writing, colour combination and placement of elements including the shape of the bottles.
Comparison of plaintiff’s and defendant’s product:
Plaintiff’s ‘Imperial Blue’
Defendants’ ‘Imperial VAT No. 1’
The plaintiff submitted that the following features were imitative in nature-
The overall colour combination, comprising predominantly of a blue label, brands written in white colour, borders and textual material in golden colour;
The identical manner of writing the brands with “Imperial” written in an arched-manner, and the remaining portion of the brand written below it;
The insignia with the crest device placed on top of the label in golden colour, right above the depiction of the trade mark.
The plaintiff claimed that it had the rights for the mark ‘Imperial Blue’, and various elements forming the part of the whole product including the label, packaging, colour combination, get up, various depicted on the said product. It was alleged that the defendants had deliberately imitated the distinctive elements of the plaintiff’s packaging and products, and hence an injunction was sought in the suit along with the damages and other relief.
Analysis, Law, and Decision
The Court noted that the defendants had agreed to modify the packaging, the colour and the other writing styles, fonts, etc and the proposed label, carton, colour scheme, packaging and shape of bottle was acceptable to the plaintiff. As far as the already manufactured stock was concerned, the Court permitted the defendants to dispose the 2806 bottles of manufactured/packed whiskey, within three months by either destroying or recycling and thereafter giving confirmation of the same to the plaintiff. The Court directed the defendants to not use the manufactured stock of packaging or labels bearing the mark ‘Imperial VAT No.1’ under the impugned packaging, which were infringing in nature. Further, the defendants agreed to use the coat of arms , that was used earlier, without the words ‘Green Valley’. Thus, the Court held that the defendants shall not manufacture any fresh stock carrying the impugned cartons/labels and packaging.
The Court granted permanent injunction, thereby restraining the defendants, their directors, distributors, retailers, assigns etc., or any one acting for or on their behalf, from manufacturing, selling, offering for sale, advertising or in any other manner using the impugned ‘Imperial VAT No.1′ product label, packaging, get up and trade dress, including the shape of the bottle or any other packaging or label which was deceptive, or imitative of the plaintiff’s packaging/label/get up under the mark ‘Imperial Blue’. The Court allowed the defendants to use the mark ‘Imperial Vat No.1’ as their trade mark for any fresh manufacture under the label/get-up/trade dress. The Court further allowed the defendants to use the proposed packaging/label/get up along with the emblem/coat of arms without the mark/name ‘Green Valley’.
[Pernod Ricard India (P) Ltd. v. Gagan Wine Trade and Financiers Ltd., 2023 SCC OnLine Del 5711, decided on 13-09-2023]
*Judgement authored by – Justice Prathiba M. Singh
Advocates who appeared in this case :
For the Petitioner: Mr. Hemant Singh, Mr. Sambhav Jain, Mr. Anuraj Tirthankar, Mr. Akhil Saxena, Advocates
For the Respondents: Mr. Shailen Bhatia, Ms. Ekta Nayyar Saini, Mr. Arnav Chatterjee, Mr. Nakul Mehta, Advocates