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Court Case Bulletin (CCB): Infringement Of Trade Mark Is Mark Specific While Passing Off Is Product Specific
Author: Intern - Shouraseni Chakraborty
In the matter of Pernod Ricard India Private Limited v. Frost Falcon Distilleries Limited, [CS (Comm) 94/2021], Single Judge [C. Hari Shankar, J.] of the High Court of Delhi, vide order dated March 2, 2022, held that a passing off action in a trademark suit is product specific and can exist even in the absence of infringement.
Section 29(1) of the Trade Marks Act, 1999 (the “Act”) states that a registered trademark is infringed by “a mark which is identical with, or deceptively similar to, the trade mark”. Section 27(2) of the Act reserves a proprietor’s right to initiate action against “passing off goods or services as the goods of another person or as services provided by another person.” The question that arises is whether “passing off of goods or services” would also include establishing “similarity” of a “mark” with the registered “trade mark”, or whether a connection based on the overall picture is enough?
The Plaintiffs, proprietors of the marks “BLENDERS PRIDE” and “IMPERIAL BLUE” in Class 33 used for Indian Made Foreign Liquor (IMFL) contended that the Defendant’s mark “CASINOS PRIDE” (containing the word “PRIDE”), used in the same class, bears phonetic similarity to the former mark and visual similarity to the latter’s trade-dress, including its “essential features” such as the blue colour, golden dome design, etc. The Defendants argued that the marks should be seen in a composite manner (by application of the anti-dissection rule) and claimed that the individual aspects of the Plaintiff’s marks, design, and representation could not be sought for protection as they were not registered individually. The Defendant’s also argued that their marks, label, and packaging were distinctive.
The Court held that none of the similarities pointed out in the separate marks constituted a strong infringement case. The Court held that “infringement is a mark specific tort whereas, passing-off is goods specific. Relief in an action for infringement is, therefore, aimed at protecting the mark whereas relief in an action for passing off protects the product and the goodwill and reputation commanded by the product. The comparison in an infringement case is, therefore, mark to mark, whereas the comparison, in a case of passing off, is, product to product.”. The Court further held that passing-off action can suffice if it is shown that “by combining distinctive features of different marks of its goods, the defendant is seeking to create an overall picture of association between the products of the defendant and the plaintiff”.
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