This piece has been authored by Ritesh Raj, 2nd Year student at NLSIU Bangalore
Introduction
A division bench of the Madhya Pradesh HC recently dismissed an appeal in a matter involving (alleged) infringement of the plaintiff’s trade mark ‘Blenders Pride’ and trade dress infringement of ‘Imperial Blue’. The defendant owns the trade mark ‘London Pride’. Deliberating on the “likelihood of consumer confusion test”, the court found no such infringement.
Facts of the Case
In the HC, the plaintiff contended the following; first, the trial court did not compare the marks as a whole but rather dissected them when comparing. Second, the trial court did not consider the viewpoint of a man of average intelligence with imperfect recollection. Rather, it used the consumers’ premium category as an excuse to higher the likelihood of confusion threshold. Third, the court ignored the overall structural, phonetic and visual similarity between the products. Fourth, it even ignored the dishonesty with which the defendant had adopted its mark.
Court’s Analysis
In determining whether the defendant should be injuncted from using its mark ‘London Pride’, the court framed two issues. First, whether the facts of the case call for the grant of a temporary injunction. Second, whether the defendant has infringed the plaintiff’s trade mark.
Relying on Wander Ltd v Antox India, where the SC established principles to be followed while deciding a temporary injunction suit, the court held that an appellate court would not interfere unless the trial court had acted illegally. If the lower court exercised its discretion reasonably, merely because the appellate court would have adopted a different opinion would not justify interference. Thus, based on the peculiarity of facts, the first issue was answered in the negative.
On the primary issue of whether there was any infringement or not, the court used the ‘likelihood of consumer confusion (with imperfect recollection) test’. It held that the correct approach in deciding whether there is confusion or not is the anti-dissection rule (which is considering the mark as a whole without dissecting any of its parts). This is also stipulated under Section 17(1) of the Trade Marks Act, 1999 (the ‘TM Act’). On considering both the marks as a whole, no similarity could be attributed. To the plaintiff’s contention on the similarity of the word ‘Pride’, the Court found that it is a generic word and hence infringement based purely on its similarity cannot be claimed. The dominant part being different (‘Blenders’ and ‘London’), the consumers are not likely to be confused.
In assessing the likelihood of confusion, the court also examined the class of consumers as a factor. It ruled that the disputed marks are for premium whisky, whose consumers are mostly literate. They would be able to differentiate between a bottle of Blenders Pride/Imperial Blue and that of London Pride. Relying on Khoday Distilleries case, the court concluded that generally, a man of average intelligence is the test in assessing confusion. However, if the consumers are of high intelligence, the threshold of confusion increases. The court further held that even if the test of average intelligence (with imperfect recollection) is applied, there is no likelihood of confusion. Thus, there was no confusion and consequently, no infringement.
Analyzing the Court’s Analysis
While the ruling appears to be correct at a glimpse, two themes from the decision can be said to have future implications beyond the decision. This part comments on the same.
Side by Side Comparison v The Test of First Instance
It has long been accepted that a side-by-side comparison is not the correct approach in assessing the marks for the likelihood of confusion. This was further supported by the Delhi HC, which determined that the marks must be assessed at first glance without delving into minute details.
Despite using the average intelligence approach, the Madhya Pradesh HC went into the intricacies of similarities and differences between the two marks. It took into account the bottles’ height and form (which differed only slightly between Imperial Blue and London Pride). For reference, an image has been provided at the end of this section.
It is to be noted here that no trade dress infringement was claimed against Blenders Pride. It was only against Imperial Blue contending a passing off action. Though the plaintiff contended a combination of the trade mark ‘Blenders Pride’ and the trade dress of ‘Imperial Blue’ as amounting to passing off, the court considered both the marks independently.
If the court had considered both the trade mark and trade dress infringements together, a passing off action would have been established. This is supported by Pernod Ricard India Private Limited v Frost Falcon Distilleries Limited, where the plaintiff was the present appellant and the defendant had its trade mark registered in ‘Casinos Pride’ in a similar product category. Concerning passing off, the court ruled that a combination of distinctive features of different marks can establish passing off. It held that while ‘Casinos Pride’ might not infringe ‘Blenders Pride’ or ‘Imperial Blue’ independently, a combination of their features would be interpreted as an attempt to associate with the plaintiff’s reputation. Thus, a case of passing off. This issue was completely ignored by the Madhya Pradesh HC.
Reconciling the Conflict between the Anti-Dissection Rule and the Dominant Feature Rule
Though the court did not explicitly dissect the words ‘Blenders’ and ‘Pride’, it used the latter’s generic nature to hold that the former is the dominant portion of the plaintiff’s mark. It also claimed to assess the trade mark as a whole (the anti-dissection rule). However, this section demonstrates how it ended up dissecting the same by focusing solely on the dominant portion in assessing confusion.
Sections 15 and 17 of the TM Act capture the essence of the anti-dissection rule. A combined reading reveals that if a trade mark consists of multiple components, it should be regarded as an indivisible whole (unless the proprietor has registered the part exclusively). The sections make no mention of giving prominence to one portion of the mark. However, significant jurisprudence has developed that even employing a single component of a composite mark can be infringing if that component is the dominant element. This is the rule of the dominant feature. Its spirit is captured in Section 11(b) of the TM Act, which provides that if a mark is ‘similar’ to an earlier trade mark, it is denied registration. Section 2(h) defines what is deceptively similar, stating that a mark is similar if it “so nearly resembles” another mark as likely to confuse consumers.[A8] “So nearly resembles” suggests that the entire mark need not be similar and only a part thereof can be construed to confuse consumers.
At first inspection, both tests seem to conflict with each other. Giving prominence to one portion of the mark while excluding the non-dominant portion results in the composite mark being dissected. However, the SC settled this conflict way back in 1965, ruling that the correct approach is to look at the marks as a whole and not to disregard the common parts of composite marks. This was further elaborated in South India Beverages Pvt Ltd v General Mills Marketing Inc, where the Delhi HC held that the rule of dominant feature is a preliminary step towards the ultimate application of the anti-dissection rule. It ruled that while considering the mark as a whole, the dominant component can be given prominence.
By reading the two tests holistically, the court attempted to harmonize Sections 11 and 17. It used the dominant rule as a subset of the anti-dissection rule which aided in assessing confusion by considering even the non-dominant as part of the whole mark. It can be concluded that giving prominence to one part does not imply disregarding the non-dominant part in assessing confusion. It is still to be considered as part of a whole mark. This holistic application of the two tests can also be inferred from the decisions of different HCs. The Madras HC, for instance, has ruled that applying the dominant rule doesn’t imply ignoring the non-dominant part completely and comparing only the dominant parts in assessing confusion. Further, in Rich Products Corporation v Indo Nippon Foods Limited, the Delhi HC considered the dominant part only as a subset in assessing the whole mark. While giving the dominant part some prominence, it considered the whole mark in assessing confusion. It did not entirely exclude the generic element (which would be contrary to the application of the anti-dissection rule).
This balance, however, is tedious to maintain. Thus, applying this balanced approach has resulted in courts ignoring the non-dominant part and comparing only the dominant part in assessing confusion. In Himalaya Drug Co v SBL Limited, the Delhi HC ruled that comparing the mark as a whole means comparing only the dominant parts, eliminating the generic part. The Delhi HC has further ruled in another case, that the generic part will be regarded as a part of the whole only if it has acquired distinctiveness. Otherwise, the courts merely consider the dominant part in assessing confusion. This is a misapplication of the harmonious rule as developed in South India Beverages. Nowhere did the court mention excluding the generic part while assessing the mark as a whole. It merely indicated to give prominence to the dominant part while assessing the whole mark.
The Madhya Pradesh HC has committed a similar error in the present case. While it did not dissect the words ‘Blenders’ and ‘Pride’, it considered the dominant nature of ‘Blenders’ and the generic nature of ‘Pride’ (the fact that ‘Pride’ is a generic word and has been used in 48 other variants under Class 32 and 33 trade mark categories). Though it claimed to assess the mark as a whole, it ended up comparing only the dominant parts. Further, it did not explain sufficiently why ‘Blenders’ should be treated as the dominant part. It merely stated that because ‘Pride’ is a generic word, consumers would treat ‘Blenders’ as the dominant one. Since both the parts of a composite mark can be dominant, it is argued that both parts can also be non-dominant in nature. This is also supported by the fact that the term ‘Blenders Pride’ itself is descriptive, referring to blended whisky. Merely because one part is generic doesn’t necessarily lead to the inference that another part is dominant in nature.
Concluding Remarks
The Madhya Pradesh HC’s ruling adds to the plethora of decisions that have erroneously applied the aforementioned tests. While the court completely ignored the passing off action, even its application of ‘the test of first instance’ and a holistic application of ‘the anti-dissection and dominant feature rule’ failed substantially. It is past time for the SC to settle the position by establishing explicit guidelines on how and when to apply these tests.