For the reasons explained by the Delhi High Court in the case of Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, injunction may be granted against passing off of goods or services despite of an infringement of a registered trademark not having established.
Pernod Ricard India Private Limited (Pernod Ricard) sells alcoholic beverages under the trademarks "BLENDERS PRIDE" and "IMPERIAL BLUE" in India since 1997and 1995 respectively. FROST FALCON DISTILLERIES LIMITED (Falcon Frost) also sells alcoholic beverages under its own mark "CASINOS PRIDE". Cause of action arose when it came to the knowledge of Pernod Ricard that Falcon Frost had applied for registration for its trademark "CASINOS PRIDE".
Pernod Ricard filed a case in the Delhi High Court, alleging an infringement/passing off of its trademarks, copyrights, and trade dress – an area of trademark law that provides for protection against imitation of specific features including packaging or appearance of the product.
Pernod Ricard contended that the mark "CASINOS PRIDE" was phonetically and deceptively similar with its registered marks "BLENDERS PRIDE" and "IMPERIAL BLUE". Pernod Ricard further claimed that even the overall colour scheme, trade dress, the shape of the bottle and the 3D Mark of "CASINOS PRIDE" were deceptively similar to that of their registered marks.
Source – Judgement
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Against this, Falcon Frost contended that that the expression "PRIDE" is common to the alcoholic beverage trade, and thus Pernod Ricard could not claim exclusivity over the said word.
The Delhi High Court after considering the contentions of the parties, held that Pernod Ricard was not able to make out a case of infringement as the expression/term "PRIDE" is common to the alcoholic beverage trade, and that Pernod Ricard could not claim an exclusivity over the term "PRIDE", instead it could claim its rights over its proprietary marks "BLENDERS PRIDE" and "IMPERIAL BLUE" as a whole, by applying the "Anti-dissection" rule. The anti – dissection rule mandates that the Courts while dealing with cases of trademark infringement involving composite marks, must consider the composite marks in their entirety as a whole rather than dissecting them into its component parts and make comparison with the corresponding parts of a rival mark to determine the likelihood of confusion.
The Delhi High Court observed that although the trademarks were different, in the present matter, all the essential requirements to establish passing off were satisfied. In reaching its conclusions, the Court explained the law on passing off including that, Frost Falcon, had combined distinctive features of different marks so as to suggest an association with Pernod Ricard, which was likely to cause a confusion in the minds of the customers with its label "CASINOS PRIDE‘, the manner in which the mark was being employed and the product was being sold.
Hence, the Delhi High Court granted an interlocutory injunction on an application filed by Pernod Ricard against Falcon Frost.