Supreme Court: In the present case, an appeal was filed against the judgment dated 3-11-2023 passed by the Madhya Pradesh High Court, whereby the appellants’ challenge to the order dated 26-11-2020 passed by the Commercial Court, was dismissed. The Commercial Court had rejected the appellants application for interim injunction restraining the respondent from using the mark ‘LONDON PRIDE’ alleging that it was deceptively similar to the appellants marks, ‘BLENDERS PRIDE’, ‘IMPERIAL BLUE’, and ‘SEAGRAM’S’, amounting to trade mark infringement.
The Division Bench of J.B. Pardiwala and R. Mahadevan*, JJ., opined that trade mark similarity must be assessed by considering the mark as a whole, and not by extracting a single component for comparison and mere presence of the common word ‘PRIDE’ which was a generic and laudatory term, did not render the competing marks deceptively similar in the absence of an overall resemblance. The appellants’ marks, ‘BLENDERS PRIDE’, ‘IMPERIAL BLUE’, and ‘SEAGRAM’S’, when viewed in entirety were structurally, phonetically, and visually distinct from the respondent’s mark ‘LONDON PRIDE’. Further, the appellants’ attempt to combine elements from ‘BLENDERS PRIDE’ and ‘IMPERIAL BLUE’, to challenge the respondent’s mark ‘LONDON PRIDE’, constituted a hybrid and untenable pleading. The Court therefore dismissed the appeal as there was no prima facie case for grant of interim injunction.
Background
The appellants were engaged in the manufacture and distribution of wines, liquors, and spirits, and sold whisky under the registered trade marks ‘BLENDERS PRIDE’ and ‘IMPERIAL BLUE’. They also had a registered mark ‘SEAGRAM’S’, which served as the house mark of Appellant 1, Pernod Ricard India (P) Ltd. In 1945, the appellants’ predecessor, Seagram Company Limited obtained registration of the mark SEAGRAM’S in Class 33, for “Whisky” and in 1994, for mark ‘BLENDERS PRIDE’ covering “Wines, Spirits and Liqueurs”. The mark ‘BLENDERS PRIDE’ was in extensive worldwide use since 1973 for whisky products. In 1997, Seagram Co. launched whisky under the mark ‘IMPERIAL BLUE’ in India and got it registered in Class 33 for “alcoholic beverages, except beers”.
In 2019, the appellants got to know that the respondent was marketing whisky under the mark ‘LONDON PRIDE’, using packaging that was deceptively similar to them. It was submitted that respondent used ‘SEAGRAM’S’ embossed bottles of the appellants’ mark ‘IMPERIAL BLUE’, for the sale of its ‘LONDON PRIDE’ whisky, which amounted to infringement of SEAGRAM’S mark. The appellants sought a decree of permanent injunction restraining the respondent from trade mark infringement, passing off, copyright violation, etc. By order dated 26-11-2020 and judgment dated 3-11-2023, the Commercial Court and the Madhya Pradesh High Court, respectively, dismissed the interim injunction application. Thus, the appellants were before this Court.
Analysis, Law, and Decision
Similarity and Distinctiveness — Name, Colour Scheme and Trade Dress
The Court stated that to assess whether a trade mark was likely to deceive or cause confusion, the focus was on visual appearance, phonetic similarity, the nature of the goods, the class of purchasers, and the manner of sale. The Court opined that the respondent’s mark, when viewed in totality, was not deceptively similar to the appellants registered marks, ‘BLENDERS PRIDE’, ‘IMPERIAL BLUE’, and ‘SEAGRAM’S’, which were inherently distinctive.
The Court observed that although both parties’ trade dress and colour schemes featured elements of blue and gold, such similarities were insufficient to establish deceptive similarity and even the placement of elements, design of labels, font styles, and emblems differed in material respects. The Court opined that the competing marks did not create such an overall resemblance as was likely to cause confusion or deception in the mind of an average consumer exercising imperfect recollection.
Rule of Anti-Dissection
The marks must be compared as a whole, and not by dissecting them into individual components, as consumers perceive trade marks based on their overall impression, encompassing appearance, sound, structure, and commercial impression. The Court stated that while Section 17 of the Trade Marks Act, 1999 restricted exclusive rights to the trade mark as a whole and did not confer protection over individual, non-distinctive components per se, courts might still identify dominant or essential features within a composite mark to assess the likelihood of confusion. However, it did not permit treating such features in isolation and must be evaluated in the context of the overall commercial impression created by the mark.
The Court stated that in disputes involving composite marks, the mere presence of a shared or generic word in both marks did not, by itself, justify a finding of deceptive similarity. The appellants’ attempt to isolate the word ‘PRIDE’ as the basis of comparison was legally untenable. The Court opined that trade mark similarity must be assessed by considering the mark as a whole, and not by extracting a single component for comparison. The appellants’ marks, ‘BLENDERS PRIDE’, ‘IMPERIAL BLUE’, and ‘SEAGRAM’S’, when viewed in entirety were structurally, phonetically, and visually distinct from the respondent’s mark ‘LONDON PRIDE’. The mere presence of the common word ‘PRIDE’ which was a generic and laudatory term, did not render the competing marks deceptively similar in the absence of an overall resemblance. Thus, under the anti-dissection rule, no case for infringement or passing off was made out.
Dominant Feature Test
In composite marks such as ‘BLENDERS PRIDE’ or ‘IMPERIAL BLUE’, the terms ‘BLENDERS’ and ‘IMPERIAL’ might be regarded as dominant, owing to their distinctive and less frequently used character. The elements such as ‘PRIDE’ or ‘BLUE’ were relatively generic, descriptive, or commonplace in the liquor industry, like other marks ROCKFORD PRIDE, ROYAL PRIDE, or OAK PRIDE. The Court opined that such shared or non-distinctive terms could not be monopolized, unless it was established that they had acquired secondary meaning through extensive and exclusive use, and were uniquely associated with specific goods in the minds of the public.
The Court stated that the overall commercial impression of ‘LONDON PRIDE’ was substantially different from either of the appellants’ marks. The trade dress, label design, colour scheme, typography, and brand presentation were all distinctive and unrelated. The term ‘LONDON’ introduces a geographical identifier that conveyed a distinct brand identity, divergent from ‘BLENDERS’ or ‘IMPERIAL’. The respondent’s mark, therefore, did not imitate the dominant features of the appellants’ marks.
No Exclusive Right Over Common or Descriptive Terms
The word ‘PRIDE’ was a laudatory and commonly used English term, employed to suggest notions of excellence, heritage, or national identity. Under Class 33, there were multiple registrations, such as McDowell’s Pride, Highland Pride, Royal Pride, and Pride of India, all incorporating the term ‘PRIDE’. This widespread usage illustrated that the word ‘PRIDE’ was publici juris, not inherently distinctive, and therefore incapable of exclusive appropriation in the absence of compelling evidence of secondary meaning.
In the present case, the appellants failed to produce consumer surveys, brand recognition studies, or consistent third-party references, to demonstrate that the term ‘PRIDE’ had acquired secondary meaning exclusively pointing to their product. The marks ‘BLENDERS PRIDE’ and ‘LONDON PRIDE’ were visually, phonetically, and conceptually distinct and in the absence of demonstrable confusion or misrepresentation, the respondent’s use did not amount to infringement under Section 29, nor did it constitute passing off.
Average Consumer Test and Imperfect Recollection
The average consumer test assessed whether there existed a likelihood of confusion between two marks, or whether a mark lacked distinctiveness or was merely descriptive. In it, the test was the recognition that consumers rarely recalled trade marks with perfect accuracy, whereas the doctrine of imperfect recollection emphasized the importance of first impression.
The Court stated that the appellants’ marks ‘BLENDERS PRIDE’, ‘IMPERIAL BLUE’, and ‘SEAGRAM’S’, convey distinct commercial impressions, when compared with the respondent’s mark ‘LONDON PRIDE’. The overall visual appearance, phonetic structure, and trade dress, though sharing some generic elements such as use of blue and gold, were sufficiently different. These structural and conceptual dissimilarities outweigh incidental similarities, negating the likelihood of confusion in the mind of a consumer of average intelligence and imperfect recollection. Thus, the Court held that the respondent’s mark was not deceptively similar.
Post-Sale Confusion Doctrine
The doctrine though well recognized in US and UK, was still relatively novel in India. The post-sale confusion referred to the confusion that occurred not at the point of purchase, but rather after the product had been bought and was seen in use by others. It focused on the deceptive appearance of legitimacy, which could impair the distinctiveness and perceived exclusivity of the genuine product. It was relevant in sectors like fashion, luxury goods, automobiles, and food items, where brand visibility and public perception were essential aspects of consumer engagement and brand equity. The Court thus opined that, the goods in the present case were not intended for public display and were for private consumption. Therefore, the doctrine of post-sale confusion, while significant, was not directly applicable to the facts of the present matter.
Conclusion
The Court opined that there was no deceptive similarity between the competing marks that would give rise to confusion. The respondent’s marks, in their entirety, did not show visual, phonetic, or structural similarity to lead to a real and tangible likelihood of confusion in the mind of an average consumer possessing imperfect recollection. The overall trade dress, distinctive components, and market presentation of the respondent’s product sufficiently distinguished it from that of the appellants.
The Commercial Court and High Court had rightly held that the term ‘PRIDE’ was publici juris and commonly used in the liquor industry. The Court further held that the Courts below rightly observed that the products in present case were premium and ultra-premium whiskies, targeted at a discerning consumer base, that were likely to exercise greater care in their purchase decisions. Further, the appellants’ attempt to combine elements from ‘BLENDERS PRIDE’ and ‘IMPERIAL BLUE’, to challenge the respondent’s mark ‘LONDON PRIDE’, constituted a hybrid and untenable pleading. Also, cherry-picking generic or unregistered features from multiple marks to fabricate a composite case of infringement was not legally sustainable.
The Court dismissed the appeal and held there was no ground to interfere with the findings of the Commercial Court and the High Court and there was no prima facie case for grant of interim injunction.
[Pernod Ricard India (P) Ltd. v. Union of India, 2025 SCC OnLine SC 1701, decided on 14-8-2025]
*Judgment authored by: Justice R. Mahadevan
Advocates who appeared in this case:
For the Appellants: Neeraj Kishan Kaul, Senior Advocate; Mohit D. Ram, AOR; Hemant Singh, Mamta Jha; Sambhav Jain, Akhil Saxena, Reha Mohan, Rajul Shrivastav, Monisha Handa, Anubhav Sharma, Sidhant Oberoi, Akanksha Majumdar, Nayan Gupta, Sabir Kachhi, Pritha Suri, Ira Mahajan, Tabeer Riyaz, Advocates.
For the Respondent: Ekansh Mishra, AOR; Vaibhav Mishra, Ayush Jain, Advocates.