Delhi High Court: Plaintiff, Allied Blenders and Distillers (P) Ltd. filed the present suit under Sections 134 and 135 of the Trade Marks Act, 1999 seeking an injunction against defendant, Hermes Distillery (P) Ltd.’s labels. Prathiba M. Singh, J.*, restrained defendant from manufacturing, selling, offering for sale whisky or any other liquor products under the impugned label 
. The injunction did not preclude defendant from using the red and white color combination in a manner to not cause any confusion or deception or be imitative of plaintiff’s mark/label ‘OFFICERS CHOICE’.
Background
Plaintiff was one of the leading manufacturer and sellers of alcoholic beverages under various trade marks, namely, ‘OFFICER’S CHOICE’, ‘OFFICER’S CHOICE BLUE’, ‘OFFICER’S CHOICE BLACK’, ‘CLASS VODKA’, etc. The products under the mark ‘OFFICER’S CHOICE’ were launched by plaintiff in 1988 and in 2014, ‘OFFICER’S CHOICE’ was declared as the largest selling whisky in the world. Plaintiff submitted that it had been using the mark ‘OFFICER’S CHOICE’ in a distinctive design, color scheme, layout, and get-up as its label, which had become uniquely associated with its products. The white base, red font style, and lettering of the logo were considered original artistic work under Section 2(c) of the Copyright Act, 1957. Plaintiff further claimed to own the copyright subsisting in the artistic work underlying the label ‘OFFICER’S CHOICE PRESTIGE WHISKY’, duly registered in 2013.
Defendant, Hermes Distillery (P) Ltd. was also engaged in blending and bottling liquor brands and allied products. Plaintiff discovered defendant’s activities in 2019 when ‘PEACE MAKER PRESTIGE WHISKY’ with the impugned label was launched in small quantities in Haryana, Assam, and North Karnataka.
Plaintiff submitted that the positioning of brand names, font style and colour, product description, placement of marks, colour scheme, border design and central design element, were almost identical. Defendant contended that there was no consistency in plaintiff’s marks, and it had been changing its labels from time to time. Further, the use of the color combination, red and white was common to the trade and several other manufacturers used similar combination of colors for their products. Defendant also submitted that this Court lacked territorial jurisdiction as it had not sold the impugned product under the mark ‘PEACE MAKER’ in Delhi, nor had they acquired a license for its sale in Delhi and neither defendant nor plaintiff had a registered or branch office in Delhi, nor were they conducting business there.
Comparison of plaintiff’s and defendant’s labels
Analysis, Law, and Decision
The issue for consideration was “whether the use of defendant’s label violated plaintiff’s rights and whether it constituted infringement or passing off?”.
The Court opined that though the labels were not identical, there were some clear elements of similarities between them like, (a) use of the ribbon like feature in plaintiff’s and defendant’s labels; (b) placement of white window in red background; (c) placement of insignia/coat of arms; and (d) placement of other descriptive matter.
The Court relied on Parle Products (P) Ltd. v. J.P. and Co., Mysore, (1972) 1 SCC 618 and S.M. Dyechem Ltd. v. Cadbury (India) Ltd., (2000) 5 SCC 573, wherein the test for comparing the labels was not one of identity but of similarity. The Court further relied on Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11 and opined that the plank of similarity had to be tested from that of a customer with average intelligence, imperfect collection, or a hazy recollection.
The Court opined that considering the large-scale of plaintiff’s products under the ‘OFFICER’S CHOICE’ mark, defendant was obviously aware of the ‘OFFICERS CHOICE’ products and labels, and it was the overall combination of various elements that made the label confusingly and deceptively similar and not any specific single feature.
The Court further opined that “confusion need not be between products but could also be one of affiliations, sponsorship, or connection as well. A consumer might presume that defendant’s product was a differently priced product, emanating from plaintiff. Moreover, the Court must put itself in a realistic position to see how bottles were stacked on bar counters. These venues were typically not brightly lit and were usually dimly lit. In such a setting, if a consumer ordered plaintiff’s product and the bartender served defendant’s product, owing to the broad similarity of the labels, the consumer might not even be able to tell that the product served was that of defendant’s and not of plaintiff’s. The test was not of the standard of a connoisseur but that of an ordinary consumer or lay-person. Even the purchase at liquor outlets would include consumers who could be from varying strata of society and might not be able to discern fully the distinguishing features. Confusion as to affiliation or sponsorship was a clear possibility”.
The Court relied on Skechers Usa Inc v. Pure Play Sports, 2016 SCC OnLine Del 3339 and opined that it was inclined to hold in plaintiff’s favour as in the past, similar labels with different marks had already been injuncted. The Court found the following similarities in both the labels:
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The lower half of the label had a red background, and the upper half had a white background;
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There was a gold line, between the upper and lower half;
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The lettering, on the lower red half of the label, was in white, and the lettering, in the upper white half of the label was in red;
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The placement of the trade marks ‘OFFICERS CHOICE’ (in the case of plaintiff’s label) and ‘PEACE MAKER’ (in the case of defendant’s label) were similar, and covered a major portion of the upper white half of the label;
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Both labels had an outer gold border;
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The use of certain insignia was also similar. The intricate differences could not be noticed in the emblem/insignia.
The Court opined that the overall appearance of the two labels was similar at first glance, constituting similar trade dress and therefore, the two labels were deceptively similar as perceived by a person of average intelligence and imperfect recollection. The Court was convinced, prima facie, that there was a clear attempt to indulge in “smart copying” which would still be copying. The differences, in fact, showed that extraordinary effort had been put by defendant in identifying the differences. The broad similarities were so obvious at first look, the differences were nudged into oblivion.
The Court noted that the trade mark application of defendant was filed by one of its directors, a resident of Delhi and defendant was also carrying on business in Delhi and had a godown in Delhi. The Court relied on Indian Performing Rights Society Ltd. v. Sanjay Dalia, (2015) 10 SCC 161; Banyan Tree Holding (P) Ltd v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780; and Burger King Corporation v. Techchand Shewakramani, 2018 SCC OnLine Del 10881, and held that at this stage, the Court was not inclined to uphold the objection of territorial jurisdiction and if required, an issue on jurisdiction could be framed at a later stage.
The Court opined that defendant’s label was clearly imitative of plaintiff’s label and the use of defendant’s label would constitute a misrepresentation likely to result in passing off, which might or might not result in the sale of the product and it was well settled that even initial interest confusion was actionable. The Court further opined that irreparable harm would be caused if the interim injunction was not granted as plaintiff’s products were well-established products in the market, whereas defendant’s product had only been recently introduced under the impugned labels.
The Court thus restrained defendant from manufacturing, selling, offering for sale whisky or any other liquor products under the impugned label 
. The injunction did not preclude defendant from using the red and white color combination in a manner to not cause any confusion or deception or be imitative of plaintiff’s mark/label ‘OFFICERS CHOICE’.
The Court, after considering that the products were liquor products, gave thirty days to defendant for exhausting the existing stock.
The matter would next be listed on 02-02-2024 before the Roster Bench.
[Allied Blenders @ Distillers (P) Ltd. v. Hermes Distillery (P) Ltd., 2024 SCC OnLine Del 217, decided on 15-01-2024]
*Judgment authored by: Justice Prathiba M. Singh
Advocates who appeared in this case:
For the Plaintiff: Pravin Anand, Shrawan Chopra, Achyut Tewari, Advocates
For the Defendant: J. Sai Deepak, N. K. Bhardwaj, Anju Agrawal, Bikash Ghorai, Avinash Kumar Sharma, Advocates
