We have for our readers a guest post by Ritvik Kulkarni. Ritvik is a third year law student, studying at ILS, Pune. He has written for us previously here.
Delhi HC: Officer’s Special and Collector’s Choice Deceptively Similar to Officer’s Choice
By Ritvik Kulkarni
In the battle brewing between whiskey manufactures, the proprietor of the mark “Officer’s Choice” has emerged a victorious. The Delhi High Court has vide its order dated 6th July 2015 dismissed the appeals of the proprietors of the marks “Collector’s Choice” and “Officer’s Special” against an injunction order dated 1st July 2014. SpicyIP has blogged about this order here.
In the present case, the Division Bench of the Delhi High Court (consisting of Mr. Justice Pradeep Nandrajog and Ms. Justice Pratibha Rani) dismissed the appeals holding that the impugned marks, viz. “COLLECTOR’S CHOICE” and “OFFICER’S SPECIAL”, are likely to confuse consumers and are therefore deceptively similar to “OFFICER’S CHOICE”. However, the Court held that Sentini Bio Products Pvt. Ltd did not infringe Allied Blenders’ copyright.
The Respondent (Allied Blenders) has been using its registered trademark “OFFICER’S CHOICE” under classes 32, 33, 34 etc. since 1988 in the sale of whiskey in India. The said mark has acquired tremendous goodwill over the years, and the company has spent considerable amounts in sales and promotion to strengthen its brand value across India. Shree Nath Heritage Liquor Pvt. Ltd. (Shree Nath) has been using “COLLECTOR’S CHOICE” since 2013 whereas Sentini Bio Products Pvt. Ltd (Sentini) has been using “OFFICER’S SPECIAL” since 2008.
In order to determine Senitini’s liability in the present case, the Division Bench has relied largely on the grounds, reasons and analysis used by Justice Endlaw in arriving at his decision in the Order dated 1st July 2014 against Shree Nath Heritage Liquor Pvt. Ltd. In determining the liability of both Appellants, the Hon’ble Court conducted an in depth analysis into the principles of passing off and unfair competition in trademark law.
It is to be noted that M/s Allied Blenders and Distillers Pvt. Ltd. (Allied Blenders), the proprietor of the mark “Officer’s Choice”, had previously unsuccessfully challenged the mark ORIGNAL CHOICE before the IPAB. SpicyIP has blogged about this here, wherein it was found that the words ORIGNAL CHOICE are not deceptively similar to OFFICER’S CHOICE.
TM Infringement and Anti-Dissection Principles
The main line of defense for both Appellants was drawn from the provisions of Section 17 of the Trademarks Act, 1999, which inter alia states that a registered trademark can only be protected as a whole. If a word mark consists of more than one word, each word requires to be separately registered in order to claim a monopoly over the use of that particular part. In the present case, the First and Second Appellants’ marks were partially identical to “CHOICE” and “OFFICER” of Respondent’s mark. The Appellants argued that they cannot be held liable for trademark infringement since their marks were not completely identical to the Respondent’s mark in lieu of Section 17 of the TM Act.
Furthermore, the Appellants argued that the Respondent has no case since it has expressly disclaimed monopoly over the word “CHOICE” in two of its trademark registrations. Following the Supreme Court’s decision in Registrar of Trademarks Vs. Ashok Chandra Rakhit[1], the Court stated that the disclaimer is no longer an impediment for protection because the Respondent’s mark has, due to extensive use and tremendous goodwill, acquired a secondary meaning in the market. The Court further stated that albeit dissected, both “OFFICER” and “CHOICE” formed essential features of the Respondent’s mark when compared with that of each Appellant. The Supreme Court in Corn Products v. Shangrila Foods[2] held that “GLUVITA” is deceptively similar to “GLUCOVITA” as it conveys the same idea as the latter.
Semantic Analysis in Passing Off
A major part of the judgment consists of a semantic analysis of both the impugned marks in order to determine ‘likelihood of confusion’. The focus in this analysis was on whether the idea conveyed by the impugned marks is as similar to the Respondent’s mark as to confuse its consumers about the origin of all these marks. The Court also relied on a study titled “Distinctive Brand Cues and Memory for Product Consumption Experiences”[3] which states that “marks containing words with the same sense relation (or falling in the same semantic field, or conveying the same or similar idea in the mind) as that of previously existing marks are likely to be considered so similar as to be refused registration or deemed to constitute infringement of the previously existing trademark.” To that extent, the Court held that the words “COLLECTOR” and “OFFICER” are relatively synonymous and that they conveyed the idea of a “person holding office”. Similarly, the words “SPECIAL” and “CHOICE” were held to have more or less carried the same meaning.
The Price of Impugned Products
The Respondent’s “OFFICER’S CHOICE” is priced at Rs. 207, whereas Shree Nath’s “COLLECTOR’S CHOICE” is priced at Rs. 404. The Court stated that the price-difference was too insignificant to distinguish the products in the minds of the consumers. However, in my opinion, a price difference of Rs. 197 is enough to cause alarm in the minds of those who buy slightly lower-end whiskeys such as those of the Appellants and the Respondent. Nevertheless, the Court acknowledged that the Respondent also sells a similar product under “OFFICER’S CHOICE BLUE” at the same price range as Shree Nath’s “COLLECTOR’S CHOICE”.
The True Officer
Relying on the Supreme Court’s decision in Laxmikant Patel v. Chetan Bhai Shah[4], the Court rejected Sentini’s argument that prefixing the word “SENTINI’S” to its mark “OFFICER’S SPECIAL” would relieve it from any liability of deceiving consumers about the product’s origin.
On comparison of Sentini’s label with that of the Respondent’s, the Court found a clear prima facie case for passing off and infringement of trademark.
However, the Court held in the negative on the question of copyright infringement of Sentini’s label mark.
[1] AIR 1955 SC 558
[2] AIR 1960 SC 142
[3] International Journal of Research in Marketing [22 (2005) 27-44]
[4] (2002) 3 SCC 65