14 November 2023

Trademarks ‘Indian Royal Stag’ and ‘Indian Stag’, both used for IMFL, are deceptively similar with likelihood of confusion

The Delhi High Court has held that the marks INDIAN ROYAL STAG and INDIAN STAG, both used for IMFL, have necessarily to be regarded as deceptively similar with likelihood of confusion thus leading to prima facie case of infringement.

The Court in Pernod Ricard India Private Limited v. A B Sugars Limited observed that the use of the Stag device by the defendant exacerbated the confusion, even though visually the plaintiff’s stag may not look like the defendant’s. According to the Court, that, however, cannot make a difference, applying the principle laid down in the case of Kirorimal Kashiram Marketing and the decision of the Division Bench of the Court in Amar Singh Chawal Wala. The Court in this regard also observed that in view of the pictorial depiction of a stag, the STAG part of the plaintiff’s mark has necessarily to be held to be its essential and dominating feature, and the use, by the defendant, of the word STAG along with the pictorial depiction of a stag, clearly indicates imitation, by the defendant, of the essential features of the plaintiff’s mark.

The High Court also held that the word STAG cannot, in any manner of speaking, be regarded as descriptive of alcoholic beverages, and that it was a case of idea infringement as stag has nothing to do with alcoholic beverages. The Court further noted that the use of the word STAG by the defendants in INDIAN STAG renders it phonetically and structurally similar to the mark ROYAL STAG of the plaintiff.

Further, the Court in its Judgement dated 31 October 2023 observed that the disclaimer of the ROYAL part of the plaintiff’s mark can make no difference to the aspect of the infringement. According to the Court, the marks are deceptively similar because the STAG part of the plaintiff’s mark has been replicated by the defendant and, therefore, when the two marks are seen as whole marks, especially in conjunction with the stag motif, and the fact that both the marks are used for IMFL, there is a clear possibility of likelihood of confusion.

On confusion, the Court observed that firstly, the plaintiff’s and defendants’ products were both IMFL. Secondly, no example was brought to the notice of the Court of any other brand of IMFL using STAG as part of its name. Thirdly, both the labels used the motif of a stag, and fourthly, both the marks catered to the same consumer segment, which is quite distinct from the consumer segment which consumes scotch whisky. Accordingly, the Court was of the view that possibility of likelihood of an association between the two marks, in the minds of a consumer of average intelligence and imperfect recollection, cannot be ruled out.

Relying on Section 56 of the Trade Marks Act, the Court also held that the fact that the defendants’ INDIAN STAG IMFL is entirely exported cannot make a difference to the aspect of infringement. The Court also rejected the contention that the mark STAG is publici juris and that the mark STAG was common to whisky trade.

It may be noted that while the Court granted interim injunction for prima facie infringement, it ruled out prima facie case of passing off.

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