Pernod Ricard India Private Limited v. A B Sugars Limited & Anr.

Facts

• In this case, the Plaintiff (Pernod Ricard India Private Limited) asserted ownership of the “ROYAL STAG” word mark, “ROYAL STAG BARREL SELECT” word mark, and a Stag device mark for alcoholic beverages, claiming extensive use and association with its brand since 1995.
• The Plaintiff contends that the Defendants are selling Indian-made foreign liquor (“IMFL”) under the “INDIAN STAG” brand, featuring a similar Stag device. It was argued by the Plaintiff that this constitutes trademark infringement and sought an injunction against the use of “INDIAN STAG,” the Stag device, and the term “Stag.”
• The Defendants, in turn, argued that “STAG” is publici juris in the liquor industry and has historical associations with whisky, presenting examples of well-known whisky brands. They assert that “INDIAN STAG” is solely exported and plead acquiescence due to the uninterrupted sale of their products.
• The Plaintiff challenged the relevance of the Defendants’ examples, emphasizing territorial trademark rights, disputing the generic nature of “Stag” in India, and rejecting the plea of acquiescence by highlighting the prompt legal action taken upon discovering the sale of “INDIAN STAG” in the UAE.
• The case revolves around the alleged similarity between the Plaintiff’s and Defendant’s marks and the historical context of using “STAG” in the liquor industry.

Arguments Advanced

Petitioner

• The Plaintiff emphasized the significance of “STAG” as the distinguishing feature of its “ROYAL STAG” mark, especially in light of the disclaimer on the distinctiveness of the term “ROYAL.”
• It was contended that the Defendant’s mark “INDIAN STAG” is confusingly similar to “ROYAL STAG”.
• To counter the Defendant’s assertion that “STAG” is generic, the Plaintiff relied on cases such as Automatic Electric Ltd. v. R.K. Dhawan and others.[1]
• The Plaintiff contested the Defendant’s reliance on the use of “SCOTTISH STAG” by an independent entity. They asserted that IMUK and Defendant 1 are separate legal entities per the case of Indowind Energy Ltd. v. Wescare India Ltd.[2]

Defendant

• The Defendants argued that “ROYAL STAG” was a composite mark, and the Plaintiff had disclaimed the distinctiveness of “ROYAL.”
• They highlighted the opposition by Treasury Wine to the Plaintiff’s application for the mark “STAG,” indicating that the Plaintiff had acknowledged no exclusive rights in the term “STAG” by attempting to settle with Treasury Wine.
• The Defendants argued that no exclusivity was granted by the registration of a phrase unless each part was separately applied for, per Section 17 of the Trade Marks Act.
• They challenged the Plaintiff’s claim of the distinctiveness of the “STAG” part of its mark, stating that evidence and reputation provided by the Plaintiff related to the composite mark “ROYAL STAG,” not “STAG” in isolation.
• Referring to Novartis v. Adarsh Pharma,[3] the Defendants claimed that IMUK and Defendant 1 constituted a single economic unit.
• They argued that, as “ROYAL” was disclaimed and “STAG” was unregistered, the present action was essentially one of passing off.
• The Defendants asserted that, as they did not sell their product under the “INDIAN STAG” brand in India, no inference of injury or damage to goodwill could be drawn. They contended that the labels and Stag devices of the Plaintiff and Defendants were different, undermining the passing-off claim.
• Regarding well-known whisky brands cited by the Defendants, they argued that these brands were well-known in India, supported by various documents and articles, and were available in duty-free shops. They asserted that the alcohol business was global, interpreting the words “common to the trade” on a global scale.
• They denied the Plaintiff’s claim that “STAG” was the dominant part of the mark “ROYAL STAG,” emphasizing that “STAG” had never been used as a standalone mark or separately registered.
• The Defendants challenged the Plaintiff’s attempt to differentiate Scotch whisky from IMFL, stating that these products were sold through common outlets.

Decision

• The Court acknowledged a substantial likelihood of trademark infringement, emphasizing the deceptive similarity between “INDIAN STAG” and “ROYAL STAG.” It considered visual and phonetic elements, particularly the use of the Stag device, contributing to potential consumer confusion.
• The Court’s distinction between trademark infringement and passing off, taking into account the Defendants’ exclusive focus on export markets, demonstrates a nuanced approach.
• The Court’s rejection of the plea of acquiescence indicates a strict adherence to the conditions outlined in the Trade Marks Act. This reinforces the principle that mere continuation of practice does not necessarily imply consent, emphasizing the need for specific statutory requirements to establish acquiescence.
• The Court’s clarification on the publici juris nature of the “STAG” mark and its eligibility for trademark registration had established a clear legal stance. This underscores the significance of registration in conferring exclusive rights and protecting against similar marks.
• Acknowledgement of “idea infringement” showcases an understanding of the conceptual aspect of trademark protection. This highlights that protection extended not only to direct visual or phonetic similarities but also to the broader association and perception created by the marks.
• The Court’s consideration of the likelihood of confusion, even in the absence of sales within India by the Defendants, had underscored a proactive approach to safeguarding consumers. It considered the potential impact on consumers, assuming encounters within the Indian market.

[1] 1999 (19) PTC 81

[2] MANU/SC/0300/2010

[3] 2004 (3) CTC 95.