[Mount's 6000 v. Vasco 60000] MP High Court Allows Brewery's Plea Challenging Registration Of "Similar" Label, Says It May Confuse Public
The Madhya Pradesh High Court, at its Indore bench, recently allowed a plea moved by a brewery–Mount Everest Breweries Limited, which had challenged the registration of a similar beer label–“VASCO 60000 EXTRA STRONG BEER” by a competing brewery alleging that it would lead to a potential trademark infringement.
The high court however held that the there was similarity and resemblance which might confuse the public between the two products.
Taking note of the features of the two products, the division bench of Justice Vivek Rusia and Justice Binod Kumar Dwivedi said, "The red colour background, black strip, and unique colour combination of golden, red and brown colour and especially the word “60000” used by respondent No.3 (competing mark owner) in its label are exactly similar and deceptive to the registered label of the petitioner. In view of the above discussion we are of the considered opinion that there is a similarity and resemblance between the label of respondent No.3 with the registered label of the petitioner which may confuse the people between the two products of the petitioner and respondent No.3. The Writ Court ought to have set aside the order of the Excise Commissioner dated 12.12.2023 instead of relegating the petitioner to civil court. There is no disputed question of facts as the similarity and deceptiveness between the label of respondent No.3 with the registered label of the petitioner could have been examined by the Excise Commissioner while exercising power under Rule 9 of the Foreign Liquor Rules".
Burden on respondent to prove label is not similar to others
Further, referring to Rule 9 of Rules, 1996 (Madhya Pradesh Foreign Liquor Rules,) the high court said that the "burden" will be on Respondent no.3 (competing mark owner) to "prove" that the label/s which are sought to be registered do not bear similarity or resemblance to any prevalent label of any other manufactory.
The court further emphasized that the "duty" is cast upon the Excise Commissioner to satisfy himself that there is no prevalent label of any manufactory. Hence, before registering any subsequent label/labels it is to be seen that there "should not be any infringement, the identity and similarity between two registered marks" which is likely to confuse a part of the public.
The bench also said,“In the State of Madhya Pradesh, every brewery is required to register its label of the wine and beer under Rule 12 of M.P. Bear and Wine Rules, 2002. Rule 12 says that for the purpose of registration, the provisions of the M.P. Foreign Liquor Rules, 1996 shall apply mutatis mutandis to the registration or deregistration of the label of beer and wine”.
Background
The order was passed after the appellant company–Mount Everest Breweries Limited held a license to manufacture foreign liquor, including its popular product, "Mount 6000 Super Strong Beer." The appellant claimed that a competing label "Vasco 60000 Extra Strong Beer," registered by respondent no. 3, was substantially similar to their (petitioner's) label and had allegedly copied key artistic elements, including the numeral 6000, colour scheme, and design features, which could deceive consumers and lead to market confusion.
The appellant had objected to the registration of the respondent no. 3's label with the Excise Commissioner of Madhya Pradesh, stating that it violated Rule 9 of the Madhya Pradesh Foreign Liquor Rules, 1996. This rule prohibits the registration of labels that resemble existing labels in the market. The Excise Commissioner proceeded to register the respondent's label, pursuant to which Mount Everest Breweries moved the high court.
The matter was listed before the single bench first which rejected the petitioner's plea granting it liberty to move civil suit; thereafter Mount Everest moved the division bench in appeal.
Contentions
Before the division bench, the appellant said that the Excise Commissioner had failed to appreciate that the petitioner's label has already been prevalent and registered since last so many years, therefore, the application submitted by respondent No.3 should have been rejected. It said that it was not a disputed question of fact that only both the labels are liable to be examined, and the findings can be recorded that the label of respondent No.3 is similar to the registered label of the petitioner's product. The similarity between the two labels is apparent from the face of it hence, the appellant has unnecessarily been relegated to the civil Court.
Meanwhile, respondent 3 argued that it is ready to face the trial before the civil Court, as the writ petition is not maintainable because the disputed question of facts is involved. It said that there is no similarity between the two products. The appellant's label is altogether different from the label of the product of respondent 3.
Findings
The division bench in its order referred to certain judgments, including the Supreme Court's decision in Parle Products P. Ltd. v. J. P. and Co.(1972) where the apex court had laid down the test for determining deceptive similarity, stating that the overall impression of the two labels on an average consumer is the key factor, rather than a side-by-side comparison of minute details.
The bench went on to allow the Writ Appeal setting aside the Excise Commissioner's order of December 2023 as well the single judge bench's August 12 order. Respondent No.3–competing mark owner was also granted the liberty to apply afresh for registration of a "new label for its product" before the Excise Commissioner which is to be decided "in accordance with law".
Case Title: Mount Everest Breweries Limited v/s Excise Commissioner Madhya Pradesh And Others
Citation: WA-1852-2024