Eve-Teasers Knocked Out, Beer-bellied or Otherwise! Trademark Battle between Skol Breweries and Unisafe Technologies

In this case, the plaintiff (Skol) proprietor of the beer brand “Knock Out”, had sought permanent injunction against the defendant (Unisafe) alleging infringement, passing off and unfair competition regarding plaintiff’s trade mark, “KNOCK OUT”. Skol had got this proprietorship vide an assignment deed on May 27, 2005, executed by MBL Investments Ltd, (that later merged with Skol). The brand itself has existed since 1986 and enjoys considerable reputation in domestic and international markets. The plaintiff carries out the business of brewing, distilling and marketing beer under various trademarks and had spent considerable sums of money in popularizing and advertising the said brand. Skol stated that the extensive sales promotion and brand building exercise and resultant huge sales turnover go to show that the trademark, KNOCK OUT has exclusively been associated with Skol.

Unisafe was manufacturing a self-defence pepper spray under the trademark “KNOCKOUT” as well as having the domain name of its website as http://www.knockoutspray.com, which according to Skol amount to violation of Skol’s rights, with an intention to take unfair advantage of the goodwill and reputation enjoyed by Skol’s trademark. It was further alleged that Unisafe’s advertising campaign with the tag line- “if your daughter gets raped tomorrow, then who is to blame, you or her,” has been developed as a weapon against men, which, according to Skol, clashed with its own advertising campaign associating its alcoholic beverage with “manliness and manhood”, thereby causing immense injury to Skol’s brand [the said campaign had been withdrawn following a controversy reported on NDTV news channel].

Unisafe argued that while it had been using the trade mark since April, 2004 and has already spent money to popularize its product, it had taken Skol almost 2 years to ask for this injunctive relief. Moreover, the two goods in question were completely different [Skol’s product falling under class 32 and Unisafe’s goods fall under classes 5 and 9]. The next argument by Unisafe was that Skol’s trademark cannot be considered as a well-known trade mark within the meaning of Section 11 (sic 2 (1)(zg)) of the Trade Marks Act, 1999. “Knock out” was a common English dictionary word, meaning “punch to the forehead or a strike to the head to cause unconsciousness” and hence cannot be monopolized by Skol.

Unisafe’s adoption of the said mark was also bonafide, since the aforementioned meaning is descriptive of the characteristic of the product, i.e. it is meant for self-defence, and when used, it knocks-out (incapacitates) the attacker for some time, giving the victim opportunity to escape or get help. Moreover, the two products were not sold at the same outlets and the dissimilarity precluded any scope for confusion, especially since the clientele for the two products are also different. In course of the hearing, Unisafe, however, chose to withdraw and the case was accordingly heard ex-parte.

Skol had also alleged trademark dilution under Section 29 (4) of the Trademarks Act, 1999. It was averred that Unisafe’s mark is capable of causing injury to Skol’s, especially given the manner of advertisement campaign adopted by Unisafe. Skol’s counsel urged that one of the main or principal identifying factors of Skol’s product is the strength (“strong beer”) of its product, signifying a certain level of masculinity. However, Unisafe’s mark, by virtue of its product-association, viz. its ability to “knock out” an eve-teaser or a threatening man, has sought to undermine this very quality. The decision in Daimler Benzaktiegesellschaft & Anr. v. Eagle Flask Industries Ltd. [ILR (1995) 2 Del 817], was relied upon in this instance, wherein it had been held that “the Trade Mark law is not intended to protect a person who deliberately, sets out to take the benefit of somebody else’s reputation with reference to goods, especially so when the reputation extends worldwide…none should be continued to be allowed to use a world famed name to goods which have no connection with the type of goods which have generated the worldwide reputation.” So was the decision in Larsen & Toubro Limited v. Lachmi Narain Traders [ILR (2008) 2 Del 687].

In the matter at hand, Justice Bhat remarked that in trademark dilution claims, the plaintiff has to establish the identity or similarity with the registered trademark and that his mark has “a reputation in India” and the use of that mark “without due cause” takes unfair advantage, or is “detrimental to” the distinctive character or repute of his (the plaintiff’s) mark. “A reputation in India” requirement is usually absent in normal infringement matters. This duty is underscored by the circumstance that infringement (i.e. competing similar mark, in relation to similar goods) is presumed, by virtue of the mandate of Section 29 (3); there is no such presumption in trademark dilution claims, and all the elements prescribed under Section 29 (4) are to be made good, for a claim of infringement, through dilution, to succeed.

Regarding the question whether and to what extent a trader can claim exclusivity in relation to common words, reference was made to the decision in SBL Limited v. Himalaya Drug Company [67 (1997) DLT 803 (DB)], wherein it was held that “nobody can claim exclusive right to use any generic word, abbreviation, or acronym which has become publici juris. In the trade of drugs it is common practice to name a drug by the name of the organ or ailment, which it treats or the main ingredient of the drug. Such an organ ailment or ingredient being public jurisdiction or generic cannot be owned by anyone for use as a trademark.” Similar opinion was voiced in Schering Corporation v. Alkem Laboratories, while in Rhizome Distilleries P. Ltd. & Ors. v. Pernod Ricard S.A. France & Ors. [165 (2009) DLT 474], court had underlined that common words, generic or descriptive names, do not automatically evoke protection of the Court unless a plaintiff establishes that such marks have acquired secondary meaning.

Several foreign judgments were also referred to, highlighting the necessity for a trader to add a prefix or suffix, preferably showing origins in order to get any protection in respect of a word which is descriptive. While the employment of descriptive words was not the question under consideration in the resent case, the underlying rationale was held to be similar, viz. that if words of common parlance are used, exclusivity cannot be claimed. Justice Bhat also referred to cases such as Sona Spices Pvt. Ltd. v. Soongachi Tea Industries Pvt. Ltd. [2007 (34) PTC 91 (Del)] and First Computers v. A. Guruprasad [1996 PTC (16) 27 (Mad) (DB)] as authorities on the question of use by the alleged infringer, of the mark, before the plaintiff’s mark was registered [in both cases, injunctive relief was denied to the plaintiff]. The question of consumer confusion was also decided against the plaintiff with reference to precedents. It was also held that the defendant’s mark had greater degree of association or claim to descriptiveness of the product than the plaintiff’s.

Referring to British Petroleum Company Ltd v. European Petroleum Distributors Ltd. [1968 RPC 54], the court quoted: “In considering whether or not the mark is “inherently adapted” to distinguish the goods, it is relevant to ask oneself whether and to what extent if the proposed mark was not given a statutory protection, other producers of the goods would be likely in the normal course of events to wish to use the mark themselves.” The essence of trademark protection, according to Justice Bhat, is premised on protection of consumers from being mislead. An essential condition for protection is that the mark should have acquired some distinctiveness, and the claim for that is not founded on mere continued use. In the case of a trademark dilution claim, the degree of distinctiveness has to be higher because of the reference to acquisition (by the plaintiff) of “a reputation in India”.

Justice Bhat went on to draw attention to the UK practice of calling a trademark dilution claim for injunction as an “anti-detriment” remedy as per Sections 5 and 10 of the Trade Marks Act, 1994 (U.K.). Mention was also made of Daimler Chrysler AG v. Alavi [2001] RPC 42, wherein the following steps had been mentioned to be taken in such a case:
“(1) Does the proprietor’s mark have a reputation? If so, (2) is the defendant’s sign sufficiently similar to it that the public are either deceived into the belief that the goods are associated with the proprietor so that the use of the sign takes unfair advantage of the mark, or alternatively causes detriment in their minds to either (a) the repute or (b) the distinctive character of the mark, or (3) even if they are not confused, does the use of the sign nonetheless have this effect, and (4) is the use complained of nonetheless with due cause. Detriment can take the form either of making the mark less attractive (tarnishing, to use Neuberger J.’s word) or less distinctive (blurring).“

The test of similarity or confusion, as mentioned in Sabel BV v. Puma AG [1998] RPC 199, also found its way in the judgment: “The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case .That global appreciation of the visual, aural or conceptual similarity or the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.” The knowledge threshold required was that the earlier mark should be known by a significant part of the public concerned by the products or services covered by that trade mark. In considering the same, the court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. This was held in General Motors Corp v. Yplon SA [1999] All ER (EC) 865. The need to establish “linkage” or mental association of the offending mark, with that of the plaintiff was also emphasized.

In the matter at hand, the court finally held that there was a dearth of evidence to establish that the plaintiff’s mark has acquired distinctiveness and association with its product of such nature or fame that the consumer or user only thinks of the plaintiff’s brand of beer on any reference to the expression Knock Out. Nor did Skol prove that there was likelihood of consumer confusion, or that the defendant, knowing the plaintiff’s mark, deliberately chose to use it.

Funnily enough, the court also noted “some unusual elements”, viz. Skol’s case being based on the strong message of “manliness” or machismo associated with the consumer of its KNOCK OUT beer, which, according to Skol, has been severely damaged by Unisafe’s use of the mark for its product. As Justice Bhat said, Unisafe’s mark being closer in description of the product Than Skol’s, the use of such an inherently descriptive mark can only be proper and legitimate. He also remarked that if Skol’s argument was to be accepted, it would mean accepting that it is “masculine” or “manly” to “indulge and persist in such unwarranted attentions towards women”! In fact, when taken to the next level, if the argument implied that Skol’s product results in such “machismo”, its utter untenability is laid bare, because it would amount to saying that consumption of the KNOCK OUT beer would result in such manliness that would need the use of pepper spray to stave off uncalled physical advances!!!

Noting the difference in the consumer bases of the respective products, the difference in trade channels as well as absence of any evidence that Skol’s mark have acquired such degree of secondary distinctiveness that the term KNOCK OUT certainly, or almost invariably implies it or its product, the court thus dismissed the petition.