Diageo North America, Inc. v. Shiva Distilleries Ltd.

Badar Durrez Ahmed, J.— This order shall dispose of IA 1717/2004 filed under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908. The plaintiffs have filed the suit for permanent and mandatory injunction, passing off, infringement of trademark, rendition of accounts, delivery up, damages and for unfair competition. The plaintiff No. 1 (Diageo North America Inc) is a corporation organised and existing under the laws of the State of Connecticut, USA. The plaintiff No. 2 (UDV India Ltd) is an Indian company and has been licensed by plaintiff No. 1 to use various brands and trademarks, one of which is the trademark SMIRNOFF which is in question in the present proceedings.

2. The plaintiffs claim to be the registered proprietors of the trade mark SMIRNOFF label under Reg. No. 189744 dated 31.3.1959; the PIERRE SMIRNOFF label under Reg. No. 202251 dated 4.5.1961; the SMIRNOFF mark with eyebrow device under Reg. No. 904318 dated 17.2.2000 It is stated by the plaintiffs that while SMIRNOFF is disclaimed in the first registration there is no disclaimer in the other two. In particular, Reg. No. 904318 ‘SMIRNOFF with eyebrow device’ according to the plaintiffs, gives the plaintiffs the exclusive right to the use of SMIRNOFF under Section 28 of the Trade Marks Act, 1999.

3. It is also contended by the plaintiffs that they are admittedly the prior users of SMIRNOFF, internationally since 1930 and in India since 1994. The defendant has adopted the mark BRISNOFF only in July 2003. By way of this application the plaintiffs are seeking an interim injunction restraining the defendant from using the trade mark BRISNOFF and the eyebrow device or any other trademark or trademarks which are deceptively or confusingly similar to the plaintiffs registered trademark SMIRNOFF and the eyebrow device in respect of any goods or of manufacturing or authorising the manufacture, sale or offering for sale, marketing, advertising, promoting, displaying or in any other manner whatsoever using the trademarks infringing the plaintiffs rights in and to their registered trademark SMIRNOFF and/or the eyebrow device. An injunction is also sought in respect of passing off the defendant's goods as those of the plaintiffs’.

4. Various arguments have been advanced by the Counsellor the parties however, the issue, in main, is whether the trademark BRISNOFF is deceptively or confusingly similar to the plaintiffs’ registered trademark SMIRNOFF. The respective trademarks are used by the plaintiffs and the defendant in respect of Vodka. The plaintiffs’ trademark SMIRNOFF is represented, according to the plaintiffs, in a unique and distinctive art shape with a red background and golden border and white lettering. This is referred to as the eyebrow device.

5. A visual representation of the same is as under:

6. According to the plaintiffs, the defendant has been using the trademark BRISNOFF which is deceptively and confusingly similar to the plaintiffs’ mark SMIRNOFF. The defendant is also alleged to have represented its trademark BRISNOFF in a stylised manner which is virtually identical to the eyebrow device of the plaintiffs. A visual representation of the defendant's trademark BRISNOFF using the eyebrow device is as under—

For a proper appreciation of the similarities or dissimilarities between the trademark of the plaintiffs and that of the defendant, admitted photographs of the bottles in which the Vodka manufactured by each of them is marketed are given as under—

[The SMIRNOFF bottle] [The BRISNOFF bottle]

7. It ought to be pointed out that in the course of arguments, the learned Counsel for the defendant had indicated that the defendant was willing to give up the eyebrow device. The learned Counsel also submitted that the colour combination which is being used by the defendants could also be altered and the defendant would have no difficulty or problem in giving up the colour combination used by it at present. As a consequence of these submissions, the debate is limited to whether BRISNOFF is similar to SMIRNOFF. For the purpose of this application it is safe to assume that the plaintiffs are the registered proprietors of the trademark SMIRNOFF. It may also be relevant to note to that the defendant has applied for registration of its trademark BRISNOFF but, the plaintiffs have filed their opposition to the same.

8. The learned Counsel appearing on behalf of the plaintiffs placed reliance on the Supreme Court decision in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1965 (1) SCR 737. In that decision the Supreme Court observed that where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. He submitted that the marks SMIRNOFF and BRISNOFF are such marks and BRISNOFF is an imitation of SMIRNOFF. Relying upon Amritdhara Pharmacy v. Satyadeo Gupta, 1963 (2) SCR 484, the learned Counsel for the plaintiffs submitted that the test of similarity has to be viewed from the point of view of a man of average intelligence and imperfect recollection. He referred to the Supreme Court observation to the following effect:

“The question where a trademark is likely to deceive or cause confusion by its resemblance to another already registered is a matter of first impression…….. The resemblance has to be viewed from the point of view of a man of average intelligence and in perfect recollection.”

9. The learned Counsel for the plaintiffs submitted that this test was also applied for alcoholic products in the case of The Panipat Co-operative Sugar Mills Ltd. v. Mohan Meakin Breweries Ltd., 53. He submitted that confusion is possible even where one alcoholic brand is a high-priced deluxe band and the other is much cheaper. For this proposition he relied upon the decision in William Grant and Sons v. McDowell and Co. Ltd., 1997 PTC 134, as well as on John Haig and Co. Ltd. v. Forth Blending Co. Ltd. and W.R Paterson Ltd., 120 (1953) RPC 259.

10. It was contended by the learned Counsel for the plaintiffs that in N.R Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, the price of the defendant's product was one third the price of the plaintiff's product and in William Grant (supra) the plaintiff's product only sold through duty-free outlets, yet, in both cases an injunction was granted.

11. It was further contended by the learned Counsel for the plaintiffs that where there is dishonesty, greater attention must be paid to the items of similarity and less to the items of dissimilarity. Relying upon William Grant (supra) the learned Counsel for the plaintiffs submitted that impairment and debasement of reputation and dilution and erosion of a distinctive mark is also actionable. On the basis of these submissions, the learned Counsel for the plaintiffs requested that this Court ought to grant the interim injunction in favour of the plaintiffs.

12. In the suit, the learned Counsel for the defendant raised various issues including that of lack of territorial jurisdiction, deficiency in Court fees and delay in filing of the plaint. However, for the purposes of this application the main issue is whether the defendant's trademark BRISNOFF is similar to the plaintiffs trademark SMIRNOFF. In this context it was submitted by the learned Counsel for the defendant that the intending purchasers of the competing products were literate persons belonging to an affluent class of society who could easily distinguish one product from the other. According to him, the two products were entirely different and their packaging as well as names were different and distinct. He then referred to a number of decisions of Courts to indicate circumstances where the Courts on making overall comparisons including the nature of goods, class of intending purchasers, etc., came to the conclusion that the competing marks were dissimilar. He submitted that in BDA Breweries and Distilleries Ltd. v. Shree Durga Distillery, 2002 (25) PTC 704 (Karn), the High Court of Karnataka held that the trademarks OFFICERS CHOICE and OFFICERS FAVOURITE were different and dissimilar. Furthermore, he submitted that in Sunstar Lubricants Ltd. v. Federal Chemical Industries, 1997 PTC 64 (Del), this High Court found that the trade mark SUN CRUISER 2001 was not deceptively similar to the trademark GOLDEN CRUISER 2001. Again, in Frito-Lay India & Another…Plaintiffs; v. Amit Goswamy & Another…Defendants., 1999 PTC 647, this Court found that the trademark TAZO was not similar to the trade mark AMAZZO. He submitted that in Pfizer Products Inc. v. BL and Co., 2002 (25) PTC 262 (Del), this Court denied the interim injunction on an action for passing off by holding that there was no likelihood of confusion between the trademarks VIAGRA and PENEGRA. The decision of this Court in the case of Sakalain Meghjeee.… v. Bm House (India) Ltd.…., 2002 (24) PTC 207 (Del) was also referred to by the learned Counsel for the defendant.

13. It was also contended on behalf of the defendant that the defendant was not a fly-by-night company and was a large industrial concern. It was contended that the defendant was, therefore, in a position to compensate the plaintiff in the unlikely event of the suit being decreed in favour of the plaintiff. Hence this Court was requested not to pass any ad interim injunction against the defendant. It was also submitted that the two trademarks are clearly not identical and the test applicable with regard to passing off is that they must be compared taking into account the totality of circumstances.

14. The learned Counsel for the plaintiffs in rejoinder tried to distinguish each of the cases that were cited on behalf of the defendant. He submitted that in 2002 (25) PTC 704 the plaintiff, whose trademark was OFFICERS CHOICE, claimed rights since 1988 whereas the defendant was using the trademark OFFICERS FAVOURITE since 1972. It was in these circumstances that the plaintiff was not granted the injunction as the defendant was held to be a prior user of its mark. With regard to 1997 PTC (17) 64, it was submitted that the marks in issue were GOLDEN CRUISER and SUN CRUISER. In that case the Court noted that there was evidence that at least six other parties had used the word CRUISER for car-coolants and accordingly the word CRUISER was held to be descriptive. This was a distinguishing feature. Referring to 1999 PTC 647, the learned Counsel for the plaintiffs submitted that that was a case of design infringement in respect of discs inserted into packets of chips. The mark of the plaintiff was TAZO. The discs were placed inside the packet of chips selling under the brand name LAYS. The defendant put its discs, under the name AMAZZO, in the packet of chips branded as Uncle chips. According to the learned Counsel for the plaintiffs, the mark in that case was not registered and the product was also put inside the packets of chips hence the Court concluded that there was no case for confusion or passing off. He further submitted that the decision in the VIAGRA—PENEGRA controversy was essentially based on the fact that the plaintiff's product was not available in India nor was it registered in India. Thus, according to the learned Counsel for the plaintiffs, all the cases referred to by the learned Counsel for the defendant were distinguishable.

15. Having set out the arguments in detail, the crux of the matter remains to be ‘whether the plaintiffs’ mark SMIRNOFF and the defendant's marked BRISNOFF are similar. The same has to be considered from the stand-point of an average person with imperfect recollection. Viewed in this manner, there is no doubt in my mind that the trademark BRISNOFF used in the eyebrow device and in the colour combination represented above is quite similar to the trademark SMIRNOFF used in similar fashion. But, the defendant has agreed, as pointed out earlier, to not only drop the eyebrow device but also completely alter the colour combination. The impression of similarity that one gets is by looking at not only the eyebrow device but also the colour combination. If these two vital elements are removed then we are left with only a “bland” comparison of the words SMIRNOFF and BRISNOFF and this is where the first impression of similarity recedes into the background. There is no doubt that the second syllable in the two words is common. But, as pointed out by the learned Counsel for the defendant this syllable NOFF has been used by third parties in respect of Vodka. Although the learned Counsel for the plaintiffs had submitted that oppositions have been filed by them in respect of each such third-party, the fact remains that the syllable NOFF has been in use in respect of alcoholic products and particularly in the case of Vodka. Perhaps the same is used to indicate a Russian connection as Vodka is generally discerned as a Russian drink. Whether it has become a descriptive term or not is debateable but, at this prima facie stage it cannot be said that the plaintiffs have established their exclusive right to use the same.

16. So much for the second syllable. As regards the first syllable, I find that there is no similarity between SMIR and BRIS. Although the learned Counsel for the plaintiffs had submitted that all the letters are common except the letter and M in SMIR and the letter B in BRIS, this, to my mind, is of no consequence because the arrangement of the letters is entirely different, as is the phonetic and visual result. I also agree with the submission made by the learned Counsel for the defendant that the intending purchasers of the competing products are literate persons belonging to the affluent class of society and who would be in a position to easily distinguish SMIRNOFF from BRISNOFF particularly when the eyebrow device and the colour combination is sought to be given up by the defendant. The average person with imperfect recollection would have to be from amongst the sub-set of such persons i.e, discerning consumers of Vodka. My prima facie view is that the trademark BRISNOFF is not deceptively similar to, nor can it be confused with the Plaintiffs’ trademark SMIRNOFF.

17. In these circumstances, this application is disposed of by directing the defendant to stop using the eyebrow device and to alter the colour combination as offered by the learned Counsel for the defendant in the course of the arguments. Once this is done, there would be no need to pass any further order restraining the defendant from using its trademark BRISNOFF. No costs.

Application disposed of.