The Apex Court in an observation on January 22 has asked respondents Indore-based JK Enterprises if they are willing to change the trade dress of the brand London Pride whisky in a trademark infringement case filed by Pernod Ricard India Pvt Ltd., makers of Blenders Pride and Imperial Blue whiskies. A bench of the Chief Justice of India, D.Y. Chandrachud, Justices J.B. Pardiwala and Manoj Misra adjourned the case by two weeks while asking the respondents – JK Enterprises to get instructions in this regard.
The Supreme Court in two recent hearings saw the petitioners – Pernod Ricard India Pvt Ltd and ANR – presenting their case by bringing bottles of whisky of the two contending brands to highlight trademark infringement. Senior Advocate Mukul Rohatgi representing the petitioners had taken permission to display the bottles in the Court to point out the similarities in the name ‘Pride’, trade dress and the bottle shape. The trade dress between London Pride and Pernod Ricard’s another brand ‘Imperial Blue’ has similarities.
Pernod Ricard said, “The respondent has copied the trademark Blender Pride by adoption and use of London Pride and further copied the colour combination, get-up and trade dress of Imperial Blue of petitioners including use of bottles with embossing of Seagram, the house mark of the petitioner.”
Pride is a generic word, CJI
Presenting the bottles to the Court, advocate Rohatgi said, “In this case the name is not the copy. In this case the trade dress, and even the bottle is identical. And something worse, bottle is absolutely identical.” Rohtagi showed “London Pride” to the bench, however, the bench said the bottle had a different shape. Chief Justice Chandrachud said that the term “Pride” is a generic word. Rohatgi went on to argue on the ‘deceptive similarity’ by recalling similarities in name such as Royal Stag-Indian Stag, Blenders Pride-Casino Pride, Amritdhara- Lakshmandhara, Imperial Blue-Imperial Gold, Golden Deer-Double Deer, Johnny Walker-Captain Walker, Lal Kila-Hara Kila, Field Marshal-Sona Marshal, Officer’s Choice-Green Choice etc. It may be mentioned here that the Supreme Court had in September last year refused to grant interim relief to Pernod Ricard India in its trademark infringement plea against United Spirits which manufactures whisky under the name ‘Royal Challengers American Pride’.
Misuse of embossed bottles
Rohatgi further pointed out how the respondent had misused ‘Seagram’ embossed on the bottles. “Seagram is also mine, which they are using. They are either getting manufactured from somewhere else or getting from Kabadi. Because they can’t get Seagram.” The CJI then asked the petitioners to point out where the bottle was embossed with the word ‘Seagram’. The bench in lighter vein asked the petitioners not to hand over the bottle but to indicate from their place where the embossed word was.
The CJI on seeing the bottles remarked “Why have you (London Pride makers) but adopted the same trade dress and colour and all? Get instructions on whether you will change. We will keep it on Friday week. Ask yourselves, why you suddenly chose to use ‘Pride’?”
Price difference pointed out by respondents
The apex court witnessed interesting exchanges between the two parties. When Senior Advocate Dr. S. Muralidhar, appearing for the respondent, said that affluent customers can easily discern between London Pride and Blenders Pride, the latter being a premium product. Countering this argument, Abhimanyu Bhandari, representing JK Enterprises, submitted that London pride was much cheaper. He argued that while Blenders Pride was priced around ₹1,650, London Pride cost about ₹600. Therefore, someone willing to buy a Blenders Pride would never buy a bottle of London Pride, he contended.
The apex court bench pointed out that the question whether ‘London Pride’ name is deceptively similar to ‘Blenders Pride’ requires arguments from both sides. The petitioners had alleged that the Indore-firm was hurting Pernod’s ₹4,400 crore annual turnover.
The Chief Justice of India observed there was no absolute similarity with regard to the names of Blenders Pride and London Pride. “You used the word ‘Blender’, they use the word ‘London’, and the bottles are also different. They are also saying 42 other manufacturers also use the word. Blender and London are two completely different words.” The CJI asked an open-ended question “Will a person walking into a store to buy Blenders Pride only say give me ‘Pride’ or ‘Blenders’?”
Appearing for Pernod Ricard, Senior Advocate Dr. Abhishek Manu Singhvi argued that the makers of London Pride were riding piggy-back on Blenders Pride. Pernod Ricard was also represented by advocates Hemant Singh, Mamta Jha, Mohit D Ram, Rajul Shrivastav, Monisha Handa, Sambhav Jain, Reha Mohan and Anubhav Sharma.
Appeal against Madhya Pradesh High Court order
Pernod Ricard India had approached the Supreme Court following the order of the Madhya Pradesh High Court of November 3, 2023, which had rejected their petition to stop the sale of London Pride whisky on grounds of trademark infringement. The Madhya Pradesh High Court had found no visual, phonetic or structural similarities between the two whisky brands.
The High Court in its judgment had held “…The first word of the trade mark of plaintiffs is ‘Blenders’ whereas that of the defendant is ‘London’. There is absolutely no similarity in them leave aside any dissimilarity. ‘Pride’ being a generic, common place and laudatory expression in ‘Blenders Pride’ mark, the common man would certainly treat ‘Blenders’ part of plaintiff’s mark as the dominant part. The question of comparison of the words ‘Imperial Blue’ and ‘London Pride’ does not even arise…”.
Court contends that consumers can distinguish between two brands
The High Court went on to conclude that “It can be safely presumed with a sufficient deal of certainty that the consumers of such products would be mostly literate and having reasonable intelligence to distinguish between the bottles of Blenders Pride/Imperial Blue and that of London Pride. Even if they are of average intelligence with imperfect recollection, they would be able to differentiate between the rival competing brands… Liquor consumers of scotch whisky are educated and discerning type. They are literate persons belonging to the affluent class of society.” During the conclusion of the day’s hearing in the Supreme Court, the CJI remarked in lighter vein that Dr. Muralidhar had spoken with “much authority” on the whisky products, to which the latter replied “I am the only sober one here.”
– R. Chandrakanth
