Supreme Court Notes Trade Dress Of ‘London Pride’ Same As ‘Imperial Blue’ in Whiskey Brands Dispute

Supreme Court Notes Trade Dress Of ‘London Pride’ Same As ‘Imperial Blue’ in Whiskey Brands Dispute

The matter has been scheduled for a hearing on Friday

In a trademark dispute involving whiskey brands ‘Blenders Pride’, ‘Imperial Blue’, and ‘London Pride’, the Supreme Court has pointed out that ‘pride’ was a generic word. It asked if an infringement claim could be made over the use of the term.

The bench comprising Chief Justice of India DY Chandrachud, Justice JB Pardiwala, and Justice Manoj Misra was hearing a Special Leave Petition (SLP) filed by Pernod Ricard India Pvt Ltd, the Indian subsidiary of an international liquor manufacturer.

Pernod had challenged the refusal of the Madhya Pradesh High Court to grant an injunction against the alleged infringement of the trademarks of whiskey brands ‘Blenders Pride’ and ‘Imperial Blue’.

Pernod stated that ‘London Pride’ was infringing the tradename ‘Blenders’ Pride’ and copying the trade dress (bottle design, writing style, and color combination) of ‘Imperial Blue’, and embossing the logo of ‘Seagram’ (another product of Pernod).

During the hearing, the bench pointed out that ‘pride’ was a generic word. It asked if an infringement claim could be made over the use of the term.

Appearing for Pernod, senior advocates Mukul Rohatgi and Dr Abhishek Manu Singhvi submitted that a trademark could be claimed over a combination of words and the court had to see its effect and the tendency to confuse a potential customer.

Rohatgi referred to the Supreme Court judgment in the Amrit Dhara vs Lakshman Dhara case. He stated that although the pre-fix words were different, the apex court had ruled that the structure of the combination was to be seen. It is considered an imperfect recollection by a consumer.

The CJI countered if a person wanting to buy ‘Blenders Pride’ would, by mistake, buy ‘London Pride’.

When Rohatgi stated, “Suppose, he says (give me) Pride,” appearing for the respondent, senior advocate Dr S Muralidhar interjected, “No discerning buyer of drinks is going to ask for ‘pride.’”

Muralidhar pointed out that while a bottle of Blender’s Pride cost Rs.1650, London Pride was worth Rs.650. Thus, there existed a difference in the kind of buyers for the two products.

He added, “For someone who buys Blenders Pride will never go and buy London Pride… much more expensive than ours.”

The bench was informed that ‘pride’ was a common term used in several liquor brands. Hence, the petitioner could not claim a monopoly over it.

However, the petitioner argued that the term ‘London Pride’ was created and was not a naturally occurring word. It referred to a judgment of Justice Chandrachud (as judge of the Bombay High Court) in the Gorbatschow Wodka Kg vs. John Distilleries Limited 2011 SCC OnLine Bom 557 case.

The petitioner submitted that the “affluent was never discerning” and what was tested was the suffix. The petitioner’s product was launched much before the respondent’s product and was already well-known.

On the issue of trade dress and Seagram, and get-up of ‘Imperial Blue’, the bench noted a direct copy of the trade dress and bottle style by ‘London Pride’.

Thus, the CJI asked Dr Muralidhar, “Why do you adopt the same trade dress, same blue color, etc? You use the same trade dress virtually. Change the trade dress.”

The bench directed the counsel to take instructions from his client on a possible agreement to change the label.

The judges further queried, “You can enter consent terms that you will change the trade dress. Second, you should not use any bottle with the logo of the Seagram... you make a statement on record that you will not use the Seagram embossed on the bottle… Dr Murlidhar, you have to ask yourselves, why do you suddenly choose ‘Pride’?”

The senior counsel agreed to get instructions from his client on the aspects.