Trademark

Trademark Infringement of Labels and Logos: Which Colour Do You Chose?


2009IndlawDEL3590-1The respondents (Ricard) are world No.2 in the wines and spirits market, having an international presence in around 110 countries. The appellant (Real House Distillery) on the other hand, sell their alcoholic beverages only in the State of Goa.

The respondents sell an anise flavoured aperitif (an alcoholic drink taken before a meal to stimulate appetite) under the label/logo “Ricard”.  The appellant claims it does not sell anise flavoured aperitifs under the label/logo “Real”.

The respondent’s product is priced at more than Rs.2,000/- per bottle.  Whereas, the appellant’s product is price around Rs. 60/- per bottle.

As is evident, these facts stand in contrast to each other almost as obviously as an elephant and an ant. However, the case arises because both the respondents and the appellant use a Navy blue colour scheme for their labels and logos.

Background

The respondents prayed for a permanent injunction restraining the appellant from using the trademarked label and logo “Real” which was claimed to be deceptively similar to the respondent’s registered “Ricard” label and logo.

The respondent’s logo has several distinctive features such as acanthus leaves on a silver background, a red circular device with the number 45, and silver ribbons with “APERITIS” and “ANISE” printed on them. The label, with the name “Ricard” is also claimed to be distinctive and comprises of a colour combination of white, blue, silver and red. This logo and label have been registered in several countries including India.

In 2008 the respondents found out that the appellant had been selling whisky under the trade mark “REAL” on labels and logos deceptively similar to that of the respondent. It was urged that the said use of deceptively similar labels/logos by the appellant would inevitably lead to confusion/deception among consumers.

The Single Judge concluded that the appellant’s original label was prima facie identical to the respondent’s label and restrained them from using the same. However, they were allowed to modify their original label and use a new label with a purple and white colour scheme. They were restrained from using Navy Blue as that would make the two labels similar.

Appellant:

  • The appellant challenge this condition. They contend that the blue label is an intrinsic part of their trade mark. Over time consumers associated their brand of whisky with the blue colour in their label.
  • It was also argued that the respondents’ registered trade mark does not have any colour and hence to that extent, the impugned order is misplaced as it has injuncted the appellant from using the colour Navy Blue.
  • It is further urged that the get up of the label of the appellant is common to the trade and numerous labels of alcoholic and other beverages use the blue and white colour scheme. Therefore, the respondents cannot claim exclusivity over the use of such features.
  • Importantly, it is argued that the respondent’s product is priced at more than 2,000/- per bottle whereas the whisky of the appellant is priced at 60/- per bottle; and it is manufactured and consumed by the lower income bracket only in the State of Goa. Given that the consumers for the products are different, it is highly unlikely that they will be deceived by the appellant’s label.

Respondents:

The respondent’s claim that the new label which retains the blue and white colour scheme is deceptively similar and likely to cause confusion.

Also, the respondents’ label mark registration is without any colour limitation and under S. 10 of the Trademark Act extends to all colours.

Delhi High Court:

The court finds that the new label using the blue colour scheme is not identical to the respondents’ label. So, they inquiry into whether it is deceptively similar. On comparing the two marks, the court finds that the essential features of both the labels are different. “If we compare the two marks, it is clear that the essential features of the two marks are different. Apart from blue bands used at the top and bottom of the label, there is no other similarity in the two marks. The essential feature of the brand of the respondents is the circle shaded in red with the number “45” which is fused with a set of swirling scrolls/arms on either side. None of these essential features are reproduced in the New brand/mark being used by the appellants.”

In order to check if similar colour schemes can cause confusion, the court compares the class of consumers that purchase the product. Because of the huge difference in price, the class of consumers for both products is different. And therefore it is unlikely that a consumer of Ricard, who is educated and from a high income bracket, would be deceived by the appellant’s logo and end up buying Real whisky thinking it was Ricard. They rely on Kellogg Company vs. Pravin Kumar Bhadabhai & Anr where it was held : “Having dealt with the contention of imperfect memory of the customer, we shall now deal with the class of purchasers, which is also an important factor. Who are the persons who go to purchase “Kelloggs” Corn flakes? Prima facie, in our opinion, these people belong to a middle-class or upper middle class and above who are fairly educated in English and are able to distinguish “Kelloggs” and what is not “Kelloggs”

So the court allows Real to use its new label with the Navy Blue colour scheme.

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Aparajita Lath

Aparajita graduated from the WB National University of Juridical Sciences, Kolkata. She was formerly an editor of the NUJS Law Review. She is a lawyer based in Bangalore. All views expressed by her on the blog are her personal views.

4 comments.

  1. AvatarAshutosh Prachand

    Can you share the trademarked label & logo for Real House Distillery which is deceptively similar to registered “Ricard” label and logo ? so that we can compare the deceptive similarity between the two.

    Reply
  2. AvatarAparajita Lath Post author

    hey Ashutosh, i wanted to put the Real House Distillery logo too but i couldn’t find it online.. if you or someone finds it please do share it and i will put it up

    Reply
  3. AvatarAparajita Lath Post author

    Thank you so much Shashi! I have uploaded the logos as they appear in the order of the Single Judge.

    Reply

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