Plaintiff’s two products – BLENDERS PRIDE, IMPERIAL BLUE – and Defendant’s CASINOS PRIDE belong to same segment i.e., Indian Made Foreign Liquor (IMFL) and, therefore, cater to same customer base. They are also available from same outlets. But, “one does not blend in a casino, and blenders don‘t play dice.” Arrangement of letters and overall appearance of Defendant’s mark cannot be said to be ‘deceptively similar’ to Plaintiff’s mark. Be it noted, Plaintiff does not hold any separate trademark registration either regarding i) color: blue or ii) border: golden dome shaped.
An action for ‘passing off’ is independent of The Trade Marks Act, 1999. An action based on deceit, fraud is not a necessary element to maintain a successful prosecution for ‘passing off’ if it is clear, Defendant has imitated or adopted Plaintiff‘s trademark, in a manner as would confuse public into believing goods of Defendant to be those of Plaintiff [Wockhardt Ltd v. Torrent Pharmaceuticals Ltd., (2018) 18 SCC 346; S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683; Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65].
It does appear, prima facie, Defendant is seeking to create an association, in mind of a customer, of its product with Plaintiff’s. Coincidences are just too many. Defendant has ingeniously combined features of BLENDERS PRIDE and IMPERIAL BLUE marks to create an overall label and packaging which, in mind of a customer of average intelligence and imperfect recollection, is ‘perilously likely’ to invite an inference of association between Defendant‘s product and of Plaintiff’s.
Justice Kekewich in Munday v. Carey, (1905) RPC 273: Where you see dishonesty, then even though similarity were less than it is here, you ought, I think, to pay great attention to items of similarity, and less to items of dissimilarity.
Lindley, LJ in Slazenger & Sons v. Feltham & Co., (1889) 6 RPC 531: If you are driven to conclude, what is intended to be done is to deceive, if possible – why should we be astute to say, he cannot succeed in doing that which he is straining every nerve to do?
A case of ‘passing off’ does exist.
– Hon’ble Justice C. Hari Shankar of Hon’ble High Court of Delhi, Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, [IA 2821/2021 in CS (COMM) 94/2021].