Punjab and Haryana High Court: In an appeal against order dated 17-1-2022 dismissing application under Order 39 Rule 1 and 2 of Civil Procedure Code, 1908 against infringement of trademark ‘Blenders Pride’ by using, manufacturing and selling goods under alleged trade mark ‘Royal Challenge American Pride’, the Bench of Augustine George Masih and Alok Jain*, JJ. refused to grant any interim relief to the appellant company, since they could not prove any irreparable loss or injury and how the balance of convenience lies in their favour.
It is alleged that the ‘BLENDERS PRIDE’ trade mark was adopted by the predecessor of Seagrams Company Ltd. (appellant company) in 1973 and also obtained trade mark registration No. 623365 in Clause 33 dated 25-3-1994 related to wines, spirits and liquors, under which, a whisky was launched under the same trademark in India. As submitted, the appellant company was generating annual sales of Rs 1770 Crores p.a. by 2019. However, in 2019, the respondent filed an application seeking registration of trademark ‘ROYAL CHALLENGER AMERICAN PRIDE’ for goods falling under Clauses 32 and 33 and approval of label. The appellants, therefore, filed their objections and applied for cancellation of the said registration no. on 6-11-2020.
The appellants filed a suit before the Commercial Court seeking permanent injunction against ROYAL CHALLENGER trademark AMERICAN PRIDE and other reliefs to restrict the defendants against using a mark deceptively identical/similar to the plaintiff’s BLENDERS PRIDE trade mark. Along with it, an application seeking interim protection and restrain of goodwill and reputation was also filed by the appellant. Meanwhile, the label ‘ROYAL CHALLENGE AMERICAN PRIDE’ was allowed by the authorities concerned.
The appellant company filed application for registration of trade mark ‘PRIDE’, and respondents filed a fresh trade mark application for ‘AMERICAN PRIDE’ saying that it was being used since 1-10-2021. Thus, the appellant company sought interim injunction, which was dismissed by Commercial Court through order dated 17-1-2022.
The Court considered the seven parameters laid in Narendra Hirawat & Co. v. Sholay Media Entertainment (P) Ltd., 2022 SCC OnLine SC 1878 for granting interim injunction including the extent of damages, protection of plaintiff’s interest, balance of convenience or inconvenience, etc.
The Court scrutinized the facts and applicable law in the instant matter with several supporting judgments and commented that the bone of contention revolves around the two trade marks, i.e., appellant’s ‘Blenders Pride’ and respondent’s ‘Royal Challenge American Pride’. The Court pointed that the appellant holds registered trade mark for ‘Blenders Pride’ collectively and the instant case raises objection against infringement by the common word ‘Pride’. The Court held that “the absence of registration of the word ‘Pride’ independently and separately disentitles appellant to any stay qua. The act and conduct of appellant also demonstrates that they have themselves foregone their right and never objected to the separate use of word ‘Pride’”.
The Court relied on Dr Reddys Laboratories Ltd. v. Controller of Patents, (2022) 2 HCC (Del) 440, wherein, the appellant consented and did not raise any objection. The Court referred to the well-established principle that ‘opposition’ to a trade mark is distinct from applying for ‘cancellation’ of trade mark, since opposition can be raised when a trade mark application is pending. While in the instant case of cancellation, trade mark is already approved and registered, only thereafter, a cancellation of trade mark can be filed.
The Court said that the requirements under Order 39 Rule 1 and 2 of CPC were not met, since the appellant company was unable to prove any irreparable loss, or a balance of convenience. Thus, the Court rejected the grant of injunction or any order in favour of the appellant company.
Regarding passing off, the Court expressed that “it is too far stretch at the behest of appellant that by use of the word ‘Pride’, there could be any misconception or dilution in the mind of common man on the street, who is the ultimate consumer, which would lead to any confusion.” The appellant failed since the said parameter of facing irreparable loss or injury was not met. Since the two companies were competitors, the single word cannot be taken as an infringement or passing off, the Court did not find any merit.
The Court therefore dismissed the instant appeal saying that any interim relief to the appellant will adversely affect the open market and may lead to monopolistic trade activity.
[Pernod Ricard India Pvt. Ltd. v. United Spirits Ltd., FAO-COM-2-2022, decided on 21-3-2023]
Judgment/Order by: Justice Alok Jain
Advocates who appeared in this case :
For Appellant: Senior Advocate M.L. Sarin, Advocate Himmat Singh, Advocate Mamta Jha, Advocate Nakul Sharma;
For Respondent: Senior Advocate Chetan Mittal, Senior Advocate Amit Jhanji, Advocate Gurpreet S. Kahlon, Advocate Himanshu Gupta, Advocate Nikita Garg, Advocate Aarti Aggarwal, Advocate Uday Vir Rana, Advocate Sehej Sandhawalia.