Delhi High Court: In a case wherein it was alleged that, by using the mark ‘Royal Queen' for whisky and adopting a trade dress which was nearly identical to the trade dress of the plaintiff, the defendant had committed the torts of infringement and passing off, a Single Judge Bench of C. Hari Shankar, J.* granted an interlocutory ad interim injunction to the plaintiff and further restrained the defendants from advertising, manufacturing, offering for sale, selling, or dealing in any manner with alcoholic beverages using the mark ‘Royal Queen' and/or the packaging/trade dress, or any other mark or trade dress which was deceptively similar to the registered trade mark ‘Royal Green' and trade dress of the plaintiff.
Background
The plaintiff manufactured and sold whisky under the name ‘Royal Green ' and in 2014, it introduced a distinctive packaging and trade dress for its Royal Green Whisky, which was modified in 2019. The plaintiff submitted that the defendant was earlier selling its Royal Queen product in Punjab in a packaging which was completely dissimilar to that of the plaintiff but, recently, the defendant, for sales in Delhi, introduced a trade dress which was nearly identical to the plaintiff's and this similarity extended not only to the outer packaging of the defendant's product but also to the bottles.
Analysis, Law, and Decision
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Current trade dress/packaging of defendant as used in Punjab |
Impugned trade dress of defendant introduced for Delhi |
Plaintiff's Packing |
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The Court opined that prima facie, it was apparent that the present trade dress of the defendant was nearly identical to the trade dress of the plaintiff, to the extent that a similar colour combination was used, the placement of the name of the product was also similar, and the bottles, too, were similar in shape and colour. The Court further opined that a customer of average intelligence and imperfect recollection, who came across the plaintiff's Royal Green Whisky, whether in packed or unpacked condition, on a particular date and, a few days later, came across the defendant's Royal Queen product would be confused between the two products. The likelihood of confusion stood exacerbated by the phonetic similarity between the names ‘Royal Queen' and ‘Royal Green '. Moreover, the letters in which the names of the products were figured on the bottles, the outer packaging of the plaintiff's and the defendant's products were also similar, along with a similar green font.
The Court further opined that the two rival marks were deceptively similar as they were used for the same product, that is, whisky and even the trade dress in which the plaintiff's and defendant's products were sold, were nearly identical. Moreover, the products were available at the same outlets, that is, liquor vends, and they catered to the same category of consumers. Thus, the triple test which was often used to decide whether a prima facie case of infringement existed or not, was also satisfied.
The Court relied on Laxmikant v. Patel v. Chetanbhai Shah, (2002) 3 SCC 65 and Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia, (2004) 3 SCC 90 wherein the Supreme Court held that “where a prima facie case of infringement and passing off was made out, the Court had to necessarily injunct further release, manufacture and sale of the infringing product ”.
The Court opined that a prima facie case of infringement as well as passing off was made out, hence, the plaintiff was entitled to interlocutory ad interim injunction. Further, the Court restrained the defendants from advertising, manufacturing, offering for sale, selling, or dealing in any manner with alcoholic beverages using the mark ‘Royal Queen' and/or the packaging/trade dress, or any other mark or trade dress which was deceptively similar to the registered trademark and trade dress of the plaintiff.
The matter would next be listed on 27-7-2023.
[ADS Spirits (P) Ltd. v. Shubhom Juneja, 2023 SCC OnLine Del 2654, Order dated 4-5-2023]
Advocates who appeared in this case :
For the Plaintiff: Ajay Sahni, Chirag Ahluwalia, Advocates
For the Defendant: Payal Jain, Sumit Kumar, Advocates
*Order by: Justice C. Hari Shankar