The
However, readers would undoubtedly note that prima facie the words '
Brief Background
The plaintiff is a well-known Cuban company involved in the business of manufacturing of alcoholic beverages, whereas the Defendant is a Lebanese company involved in the business of manufacturing non-alcoholic beverages. The products under scrutiny includes the famous mildly alcoholic beverage name '
Submissions by the Plaintiff
The plaintiff possesses registrations for the word mark
GROUNDS | FREEZmix | |
MARK & LABEL: Both words are phonetically and visually similar, insofar as the term 'mix' in FREEZmix has been mentioned in an insignifiantly small font on their product's label, leading an average buyer to easily get confused between the two. | ||
COLOUR SCHEME:
The product However, FREEZmix is a colourless drink, irrespective of its flavour. Nevertheless, its packaging corresponds to the flavour of their drink in a manner which is identical to those used by the plaintiff, for their beverages with similar flavour. | ||
BOTTLE SHAPE: The shape of the bottles are also identical. |
In sum, the plaintiff submitted that the overall presentation of FREEZmix was consciously designed to come "as close as possible" to that of
Additionally, the plaintiff also pointed out discrepancies in the trademark applications filed by the Defendants, wherein use claimed for the mark FREEZ was since 2001, however the application was filed in 2015 on a 'proposed to be used' basis. Moreover, use claimed for the word mark FREEZmix was since 2018 and the Defendants did not place on record any material to substantiate their claim of use.
Defences taken by the Defendant
The Defendant's counsel on the other hand defended their case on the following contentions amongst other things:
- That the plaintiffs had discontinued the use of the stylized mark in 2011 and was now using a different format - , subsequently submitting that no visual similarity exists.
However, this contention was rebutted by the Plaintiff's counsel with the submission that the former mark nonetheless continued to retain goodwill and is associated with the plaintiff's product alone, till date.
- With respect to the phonetic similarity, it was contended that the word
BREEZER involves two syllables - 'Bree' and 'zer' whereas the word FREEZ consists just one syllable. - That the Plaintiff cannot monopolize the shape of its bottle stating as it is common to the trade.
-
With respect to the overall labelling, the defendants submitted that no exclusivity can be claimed over primary colours. Further, the graphic design present on the
BREEZER label creates sufficient distinction amongst both the products.
Rationale
While dealing with the similarity between the two products, Hon'ble Mr.
- The shape of the Defendant's bottle is identical to that of the Plaintiff, in respect of which the Plaintiff has a valid and subsisting trademark registration;
- Both bottles have an identical 'champagne style base';
- The neck design of the bottles is also identical; and
- The Defendant has used colours on their label, cap and the bottle, which are identical to those used on the plaintiff's bottles.
In view thereof, it was concluded that the entire attempt by the defendant, prima facie, appears to have been to capitalize on the plaintiff's goodwill.
Applying Section 29(2) of the Trade Marks Act, 1999, the Hon'ble Judge opined that if the Defendant uses its mark in such a way as to lead the public to believe the existence of association between the Defendant's and Plaintiff's mark, the tort of infringement, ipso facto stands committed - confusion or no confusion, further stating that where an attempt to confuse or deceive is discernible, the court leans in favor of finding the attempt to have been successful, rather than a failure.
Subsequently, an injunction was granted in favor of the plaintiffs, restraining the defendant from using the marks FREEZ , or any other mark/label/sign/device/name or domain name, which is identical to any of the plaintiffs registered marks.
Conclusion
This well-reasoned order by the Hon'ble Mr.
The Court's Order dated
The Court also reinforces the notion that in such cases, while comparing the marks/ products in issue, the same has to be done from the perspective of an average consumer having imperfect recollection. Regarding the similarity between the wordmarks in question, the Court has pointed out that the "FREEZE" aspect of Defendant's products' name is phonetically similar to "BREEZ" of the Plaintiff's, and the mere addition of the second minor syllable "er" cannot render the marks dissimilar.
Lastly, to reiterate similarity as a whole, the Court relied upon the below comparisons:
Further to the above, the Court has also inferred that while the Plaintiff's beverage is alcoholic and the Defendant's is decidedly not, the same cannot be a successful defense herein, as the Plaintiff has satisfied the 'Triple Identity Test' - i.e., 1) Similarity of marks; 2) similarity of products; and 3) availability through common sources.
Thus, this case is also an important reiteration of the 'Triple Identity Test'.
Footnote
1. CS (COMM) 464/2021 & I.A. 12323/2021
Girishma Sai Chintalacheruvu, Associate at
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