CAN A FAUJI AND OFFICER LOOK ALIKE?

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1.INTRODUCTION

The Plaintiff (M/s Allied Blenders and Distillers Pvt. Ltd.) is the proprietor of the trademark “Officer’s Choice”, and is using the same in respect of its alcoholic products.

The Defendants are using the mark “Fauji” in respect of their alcoholic products.

A not so recent price list of Indian liquor can be accessed here, products of the Plaintiff and the Defendant are visible at sr. nos. 692 to 699 and sr. no. 599, respectively.

2.DISPUTE

The Plaintiff had claimed that the Defendant’s label was similar to their label and also that the trademark of the Defendant was conceptually and deceptively similar to that of the Plaintiff.

3.SUBMISSIONS

  • Plaintiff’s trademark and the defendants’ trademark were conceptually and deceptively similar.
  • Plaintiff’s and defendants’ labels were conceptually and deceptively similar.

4.CITATIONS

Sr. No. Citation Relevance to the Present Case
1. Shree Nath Heritage Liquor Pvt. Ltd.

vs.

M/s Allied Blender and Distillers Pvt. Ltd

the defendant therein was using mark “Collectors Choice‟ which was held to be deceptively similar to “Officer’s Choice” on the ground that both represent the person in power and the consumer is likely to be get confused. However, there is no such similarity/likelihood in the present case.
2. M/s Allied Blenders and Distillers Pvt. Ltd. vs.

Shree Nath Heritage Liquor Pvt. Ltd

the defendant therein was using mark “Collectors Choice‟ which was held to be deceptively similar to “Officer’s Choice” on the ground that both represent the person in power and the consumer is likely to be get confused. However, there is no such similarity/likelihood in the present case.
3. Hindustan Lever

Ltd.

vs.

Pioneer Soap Factory

The Court was dealing with marks “Sun‟ and “Suraj‟ which were held to be deceptively similar on the ground that that “Suraj‟ being the translation of the word “Sun‟ and was likely to create confusion.
4. M/s Surya Roshini Ltd.

vs.
M/s Electronic Sound Components Co.

the two marks were “Surya‟ and “Bhaskar‟ and the Court found deceptive similarity on the ground that both are the different names of Sun and likely to create confusion.
5. M/s Bhatia

Plastics
vs.
M/s Peacock Industries Ltd. and Anr

the Court was dealing with marks “Peacock‟ and “Mayur‟ which were held to be deceptively similar being the translation of the name of bird and likely to create confusion.
6. Padma Sundara Rao
vs.
State of Tamil Nadu
The Supreme Court held that the ratio of a judgment has to be read in the context of the facts of the case and even a single fact can make a difference.
7. Bharat Petroleum Corporation Ltd
vs.
N.R. Vairamani
the Supreme Court held that a decision cannot be relied on without considering the factual situation.

 

5.RULING

  • The two words i.e. ‘Fauji’ and ‘Officer’ are phonetically different and bear different meanings.
  • The Hon’ble Court was of the view that there was no similarity between the marks and labels of both the parties and there was no likelihood of deception or confusion of a consumer getting confused to buy the defendants’ product thinking to be that of the plaintiff’s.
  • The Hon’ble Court relied on two judgments (refer citation nos. 6 and 7 of the table) to reiterate the well settled principle that – “judicial precedent cannot be followed as a statute and has to be applied with reference to the facts of the case involved in it. The ratio of any decision has to be understood in the background of the facts of that case. What is of the essence in a decision is its ratio and not every observation found therein nor what logically follows from the various observations made in it. It has to be remembered that a decision is only an authority for what it actually decides. It is well settled that a little difference in facts or additional facts may make a lot of difference in the precedential value of a decision. The ratio of one case cannot be mechanically applied to another case without regard to the factual situation and circumstances of the two cases.”
  • The Hon’ble Court was of the view that there was no legal and valid cause of action in favour of the Plaintiff and against the Defendants and therefore treated this as a frivolous suit and a abuse of the process of law, thereby rejecting the suit and vacating the interim order dated 7th May, 2018 by which the Defendants were restrained with immediate effect from selling alcoholic beverage especially whisky, under the mark ‘Fauji’.

6. RECENT TRADEMARK RULINGS FROM THE HON’BLE DELHI HIGH COURT 

  1. Bigtree Entertainment Pvt. Ltd. vs. D Shama & Anr.
  • The Plaintiff’s trademark ‘BookMyShow’ has been the reason several parties have been taken to Court time and again for using the prefix ‘BookMy’.
  • In this case, the Plaintiff have objected the usage of the mark ‘BookMyEvent’ by the Defendant.
  • The Hon’ble Court relied upon the judgment of the Hon’ble Division Bench of the Delhi High Court in the matter of Living Media Ltd. vs. Alpha Dealcom Pvt. Ltd. & Ors. wherein the Court upheld the judgment of the Ld. Single Judge that the word TODAY had not acquired such distinctiveness for the Appellants, to make out a prima facie strong case for grant of ad interim injunction.
  • The Court opined that a closer look at the mark shows that prima facie the visual effect of both Trade Marks is not the same in the minds of the buyers. Prima facie the colour scheme, the font used by the defendant are entirely different and people are unlikely to be misguided or confused by the said trade names and looks of the defendant’s trade mark.
  • In lieu of the aforesaid, the Court ruled that the plaintiff has failed to make out a prima facie case and did not grant any injunction order in favour of the plaintiff.
  1. Whatman International Ltd. vs. P Mehta & Ors.
  • The plaintiff had filed the present suit for permanent injunction restraining infringement of trademark, copyright, trade-dress, passing off, unfair competition, dilution, etc.
  • The Counsel for the Plaintiff had emphasized on the fact that all the Defendants were related to each other and have been deliberately and intentionally violating the Plaintiff’s rights in the trademark WHATMAN.
  • It is the stand of the Plaintiff that the Defendants are habitual infringers, and have a long history of manufacturing and selling counterfeit Whatman filter paper, beginning from 1992, and thereafter in 2005.
  • The broad grievance of the Plaintiff was that the  Defendants are manufacturing and selling WHATMAN filter paper and are also using an identical colour combination for other filter papers sold by them under various trademarks including “HIRAL”, “ACHME‟, “LABSMAN‟, “UCHEM‟ and “SUN‟. 
  • The documents placed on record clearly show that the Defendants have a history of repeatedly using the WHATMAN trademark as also an identical getup, colour combination and layout for filter paper sold by them under different marks including “HIRAL”, “ACHME‟, “LABSMAN‟, “UCHEM‟ and “SUN‟.
  • The Hon’ble Court asserted, that there is no doubt that throughout the period despite giving undertakings, and despite the interim injunction, the Defendants have jointly carried out business of counterfeit Whatman filter paper and lookalike filter paper. They are guilty of infringement and passing off. They are also liable for making false statements before Court, which results in impediment of the administration of justice. The violation of the orders of the Court and non-adherence to repeated undertakings given constitutes wilful disobedience
  • The chronology of events shows that the illegalities as also repeated violations and disobedience of the orders and undertakings are deliberate and conscious. The pleadings contained false statements. The reports of the Local Commissioners totally exposed the illegalities of the Defendants. The final nail in the coffin was the scant regard shown even before the Court, when completely false statements were made. The contemptuous acts of the Defendant deserve to be punished in accordance with law.
  • The Hon’ble Court awarded Rs. 1.85 crore as damages and costs to the tune of Rs. 14.55 Lacs in favour of the plaintiff and passed permanent injunction in terms of para 36 (i) to (v) of the plaint.

7.ADDITIONAL READ

On a parting note, a very well curated article crossed my path on LinkedIn and it was too apt to not share in conclusion to this article.

Do read the article, On private labels and in-house brands, this is a marvel, it takes the discussion on intellectual property rights to a whole new level, beyond Court corridors and settlement talks, it shows a reality that lives unnoticed underneath our nose.

Image source: here and here