Carew Phipson Limited v. Deejay Distilleries Private Limited

A.P. SHAH, J.

1. In an action for passing off and for infringement of copyright, the plaintiffs have filed the present Notice of Motion for interim reliefs. Briefly, the facts giving rise to the controversy are as follows :-

2.The plaintiffs are manufacturers of and distribute spirituous liquors such as gin, whisky, brandy and other liquor and alcoholic preparations. The defendants are also manufacturers of and blenders and bottlers of and market Gin and other liquor and alcoholic preparations. The plaintiffs claim that they were the first in the field to come out with the concept and idea to manufacture an alcoholic preparation being a premixture of gin and lime. The plaintiffs then got prepared an original artistic work with the intention of it being applied to the bottle label for the said preparation. The trade mark which was given to this preparation was the word "DUET" as also the trade mark "GIN N LIME". The plaintiffs also filed application for registration of their trade mark "DUET GIN N LIME" and the said application is pending. The plaintiffs have also introduced a preparation being a premix of Gin and Orange called "TANGO GIN N ORANGE". This preparation is sold in a bottle having original artistic work. The plaintiffs spent considerable amount for popularising their products "Duet Gin N Lime" and "Tango Gin N Orange" and according to the plaintiffs these preparations have acquired reputation and goodwill in India. The plaintiffs complain that the defendants have introduced in the market products which are deceptively similar with the plaintiffs products. The defendants have introduced a bottle label bearing a deceptively similar colour combination and colour scheme as those adopted by the plaintiffs with a mark "ENGLISH DUET GIN N LIME" and "DUET GIN N ORANGE" which is deceptively similar to the marks of the plaintiffs. The defendants have used the same get-up and scheme of arrangement which appears in the plaintiffs bottle label which is a piracy of the artistic work in their "Duet Gin N Lime" bottle label and their "Tango Gin N Orange" bottle label. The plaintiffs therefore issued a cease and desist notice dated August 16, 1993 and since the defendants refused to comply with the requisitions contained in the said notice, the plaintiffs have filed the present suit and taken out this Notice of Motion for interim reliefs.

3.The defendants have opposed the prayers for interim reliefs contending inter alia that the word "DUET" and words "GIN N LIME" and "GIN N ORANGE" cannot be used as trade marks in respect of premixture preparations of "Gin and Lime" and "Gin and Orange" as the said words are not invented words and have direct reference to the quality and character of the goods in respect of which the same are applied. The defendants contend that the trade mark of the plaintiffs is "BLUE RIBAND" and their products are sold in the market as "BLUE RIBAND DUET GIN N LIME" and "BLUE RIBAND TANGO GIN N ORANGE". The labels of the word "DUET" and words "GIN N LIME" applied on the bottle of Gin suggest that the said preparation of Gin contained in the bottle is made of Gin and Lime or is mixture of Gin and Lime. Thus the said words have direct reference with the quality and character of the goods. Similarly the label containing the words "Tango Gin N Orange" used on bottles for preparation of Gin also suggest that the said preparation of Gin is the combination of the two, namely, Gin and Orange or is a mixture of Gin and Orange. As regards the plaintiffs claim for infringement of their alleged copyright of the bottle labels, the defendants contend that their labels are altogether different than those of the plaintiffs. The colour scheme designs, lettering and devices of both the labels are quite different in all respects. The defendants also deny the plaintiffs claim that their products have acquired reputation.

4.It is well established that purely descriptive terms are totally unregisterable. The reason for that is they, by definition, do not distinguish goods of one manufacturer from those of another. It has been observed in Electrix Limiteds Application, (1959) R.P.C. 283 as follows :

"...paradoxically perhaps, the more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them; for a word that is apt to describe the goods of A, is likely to be apt to describe the similar goods of B."

If the mark is not an invented word but has a direct reference to the character and quality of the goods concerned, then it cannot be said to be descriptive. For example, it was held that "KWIK KOPY" cannot be registered as mark because it had a direct reference to the character or quality of the goods in respect of which registration was sought. The mark was held to be not distinctive, being the phonetic equivalent of "quick copy". Kwik Kopy Trade Mark, 1982 R.P.C. 102 In SAFEMIX Trade Mark, 1978 R.P.C. 397, registration was refused on the ground that the mark "SAFEMIX" had a direct reference to the character or quality of the goods concerned and that it was not distinctive. It was held that the mark consisted of the words SAFE and MIX conjoined and since these are both dictionary words the combination does not render the mark invented within the meaning of section 9(1)(c) of Trade Marks Act, 1938. Similarly in the matter of an application by R. Demuth Limited, Volume LXV in Reports of Patent, Design, and Trade Mark Cases, it was held that the mark "Seda Seltzer" is not liable to be registered, "Seltzer" being both descriptive and common to the trade. For the same reason in the case of Black N Red Trade Mark, 1993 R.P.C. 25 it was held that the mark "Black N Red" lacked inherent distinctiveness and inherent capacity to distinguish, having regard to its descriptiveness and the widespread use by other traders of the colours black, red and combinations of black and red on stationery articles. Reference may also be made to the judgment of Calcutta High Court in H.D. Corporation v. Dy. Registrar of Trade Marks, A.I.R. 1955 Calcutta 519, holding that the word "Rasoi" for hydrogenated cooking oil has direct reference to the character and quality of the goods and is not eligible for registration and the following observations of Das, J., sums up the legal position:

"The word `Rasoi even if it be held to have direct reference to the character and quality of the goods and to be distinctive, the word nevertheless will be ineligible for registration in view of the fact that it is a common word of the language of which no monopoly should be granted to a particular trader. It is undoubtedly true that the common words of a language are public property and that no one should be allowed to appropriate one of such words to his exclusive use and thereby deprive other persons of the legitimate right to use the said word."

It was however clarified that in exceptional circumstances the rule may however be inapplicable, namely, where the common word has lost its primary meaning by long user of the word by a trader inrelation to his goods and has become identified with the particular goods of that trader.

5.Bearing in mind these legal principles, I propose to consider the plaintiffs prayer for interim reliefs. On perusal of the certificates of the Chartered Accountant of the plaintiffs annexed at Exhs. `C and `D and the invoices at Exhs. `E-1, `E-2 and `E-3 it is clear that the trade mark of the plaintiffs is "Blue Riband Duet Gin N Lime" and "Blue Riband Tango Gin N Orange" and not "Duet Gin N Lime" or "Tango Gin N Orange" as claimed by the plaintiffs in their plaint. The word "Duet" is derived in English language from Latin word "due" equal to "two". The word "duet" is ordinarily used to denote anything or any preparation which contains mixture or combination of "two". The said word "Duet" has become common to the trade in respect of any goods or products which contains combination of two ingredients. The words "Duet Gin N Lime" applied on bottles of Gin imply that the said preparation of "Gin" contained in the bottle is made of Gin and Lime combined. Similarly the words "Tango Gin N Orange" used on bottles for preparation of "Gin" imply that the said preparation of "Gin" is the combination of two, namely, "Gin" and "Orange". The said words are not invented words and are also not inherently distinctive or inherently capable of distinguishing the goods. Similarly the letter "N" used by the plaintiffs to describe the word "AND" is also not plaintiffs invention as the said letter "N" is phonetically equivalent to word "AND" and is commonly used in trade by the public as slang or short form for word "AND". The plaintiffs brand is commonly known as "Blue Riband" and therefore it is difficult to hold that the defendants product "English Duet Gin N Lime" is deceptively similar to the plaintiffs product or for that matter the defendants product "Duet Gin N Orange" is deceptively similar to the plaintiffs product. The words "Duet" and "Gin and Lime" or "Gin N Orange" are clearly referable to the goods and ingredients of the nature of premixtures used by the companies.

6.Even on comparison of the trade mark of the plaintiffs with the defendants trade mark, it is difficult to hold that the two marks are deceptively similar and are likely to create any confusion in the minds of the customers. In Parker Knoll v. Knoll International Ltd., 1962 R.P.C. 265 Lord Denning explained the words "to deceive" and the phrase "to cause confusion" as follows :

"Secondly, `to deceive is one thing. To `cause confusion is another. The difference is this : When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so."

The tests for comparison of the two word-marks were formulated by Lord Parker in Planotist Co. Ltd.s Application, (1906) 23 R.P.C. 774 as follows:

"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case."

On comparison of the two marks bearing the aforesaid principles in mind, it is difficult to appreciate as to how there is even a remote possibility of any customer being misled. In my opinion, when a customer goes to a shop to buy the plaintiffs product, he will not ask for "Duet" or "Gin N Lime" or "Gin N Orange" but he will ask for a "Blue Riband Gin N Lime" or :Blue Riband Tango Gin N Orange". Further having regard to the fact that the customer who is likely to buy the products of the plaintiffs and the defendants will be normally educated and discerning type, it is impossible to hold that there is any likelihood of confusion. It is pertinent to note that the plaintiffs have failed to cite even a single instance showing that there was confusion in the minds of the customers. The absence of evidence of actual deception is a circumstance which definitely weighs in favour of the defendants. It is also necessary to mention that the defendants have produced on record voluminous evidence showing that such premixtures are sold by several other companies under the names "American Extra Dry Gin with Lime Duet Plus", "Forbes Two in One Dry Gin & Lime", "Rainbow Gemlet Gin & Lime" etc. In my opinion, there is no possiblity of any confusion in this case at all.

7.There is one more reason for refusing to grant injunction. The plaintiffs have failed to produce any evidence of sales in respect of their product "Blue Riband Tango Gin N Orange" and as far as their sales in respect of the other products, namely, "Blue Riband, Duet Gin N. Lime" is concerned, the plaintiffs have produced invoices only of the year 1993. On comparison of the labels of the two products, I am also satisfied that the defendants labels are different than the plaitniffs. The colour scheme, lettering and devices are different in many respects. In my opinion, there is no substance in the plaintiffs claim of alleged infringement of copyright. No case has been made out for grant of any interim relief. Hence Notice of Motion dismissed with costs.