Trade Dress Of 'London Pride' Virtually Same As That Of 'Imperial Blue', Says Supreme Court In Whiskey Brand Dispute

The Supreme Court on Monday (January 22) heard a trademark dispute involving the whiskey brands "Blenders' Pride", "Imperial Blue" and "London Pride".

The bench comprising Chief Justice of India DY Chandrachud, Justices JB Pardiwala and Manoj Misra was hearing a special leave petition filed by Pernod Ricard India Pvt Ltd, the Indian subsidiary of an international liquor manufacturer, challenging the refusal of the Madhya Pradesh High Court to grant an injunction against the alleged infringement of the trademarks of whiskey brands "Blender's Pride", "Imperial Blue" etc.

The grievance of Pernod Ricard is two-fold  - "London Pride" is infringing the tradename "Blenders' Pride" and copying the trade dress (bottle design, writing style and colour combination) of "Imperial Blue" and embossing the logo of "Seagram" (another product of Pernod).

During the hearing, the bench, pointing out that 'pride' is a generic word, asked if an infringement claim could be made over the use of this term.

Senior Advocates Mukul Rohatgi and Dr Abhishek Manu Singhvi, appearing for Pernod, submitted that trademark can be claimed over a combination of words and that the Court has to see the effect of the combination and the tendency to confuse a potential customer.

Rohatgi referred to a judgment of the Supreme Court in the case between "Amrit Dhara" and "Lakshman Dhara". Although the pre-fix words were different, the Court said that the structure of the combination has to be seen and consider the imperfect recollection by a consumer.

At this point,  the CJI asked if a person who goes to buy "Blenders Pride " will buy "London Pride" by mistake.

 “Suppose, he says (give me) Pride?” Rohatgi asked. Senior Advocate Dr S Muralidhar, appearing for the respondent, interjected, “ No discerning buyer of drinks is going to ask for 'Pride'”. He pointed out that a bottle of Blender's Pride costs Rs.1650/- MRP while London Pride was worth Rs. 650/- and thus there existed a difference in the kind of buyers for the two products. He said “ For someone who buys Blenders Pride will never go and buy London Pride …much more expensive than us..". The bench was also told that "Pride" is a common term used in several liquor brands and hence the petitioner cannot claim a monopoly over it.  

The petitioners argued that the term "London Pride" is a created one and not a naturally occuring word. The petitioner referred to a judgment authored by Justice Chandrachud (as a judge of the Bombay High Court) in Gorbatschow Wodka Kg v. John Distilleries Limited 2011 SCC OnLine Bom 557 and submitted that the “affluent is never discerning” and what is tested is the suffix. Petitioner's product, they submitted came way before the respondent's product and was much known already.

On the Issue of Trade Dress and Seagram

Regarding the second issue - the copying of the trade dress and get up of "Imperial Blue" - the bench verbally observed that there was a direct copy of the trade dress and bottle style by "London Pride".

"Why do you adopt the same trade dress, same blue colour etc? You use the same trade dress virtually. Change the trade dress,” CJI told Dr.Muralidhar.

The Court asked Dr Murlidhar to take instructions from their client on a possible agreement to change the label.

“You can enter into consent terms that you will change the trade dress.  Second, you should not use any bottle with the logo of the Seagram...you make a statement on record that you will not use the Seagram embossed on the bottle…..Dr Murlidhar, you have to ask yourselves, why do you suddenly choose 'pride'?”.

The senior counsel agreed to get instructions from the client on this aspect. The matter will be now heard on Friday.

PERNOD RICARD INDIA PRIVATE LIMITED vs. KARANVEER SINGH CHHABRA SLP(C) No. 028489 - / 2023