Pernod Ricard S.A. France & Anr. v. Rhizome Distilleries Pvt. Ltd. & Ors.

A significant trademark, copyright and passing-off case protecting established brand identity, trade dress and goodwill against a deceptively similar competing product.

Short Description About the Case

The case concerned the well-known whisky brands “IMPERIAL BLUE”, “IMPERIAL RED” and “ROYAL STAG” of Pernod Ricard and the defendant's use of “IMPERIAL GOLD.” The plaintiffs alleged trademark infringement, copyright infringement, passing off, dilution and unfair competition. The Delhi High Court found a prima facie case in favour of the plaintiffs and granted an injunction against the defendant.

Facts

Pernod Ricard and its group companies were engaged in the manufacture and sale of alcoholic beverages and owned several internationally recognised brands.

The plaintiffs had been using the trademark “IMPERIAL BLUE” continuously in India since 1997 and had obtained trademark registrations for it.

They also owned the trademark “IMPERIAL RED” and the well-known “ROYAL STAG” brand and label.

The defendants adopted “IMPERIAL GOLD” along with a label/trade dress which the plaintiffs alleged was deceptively similar to their established marks.

The plaintiffs therefore approached the Delhi High Court seeking injunction against trademark infringement, copyright infringement and passing off.

Findings

The Court examined the similarity between the competing marks and, importantly, the label and trade dress used on the products.

The Court found that the plaintiffs had established a strong prima facie case that the defendant's “IMPERIAL GOLD” mark and label/trade dress could lead to confusion or deception.

The Court also considered the plaintiffs' substantial sales, advertising expenditure and established goodwill in the IMPERIAL BLUE brand.

The balance of convenience was found to be in favour of the plaintiffs.

Suggestion

This case is useful in matters involving trademark infringement, passing off, copyright in labels, trade dress, brand extension, dilution, unfair competition and protection of established goodwill.

It can be cited where a defendant adopts a similar brand name together with similar packaging, label or overall trade dress.

For practical legal use, this case supports the principle that similarity must be assessed not only by comparing words but also by considering the overall label, packaging, trade dress and commercial impression of the competing products.

Judgment

The Delhi High Court allowed the plaintiffs' application and restrained the defendants from manufacturing, selling, advertising or dealing in whisky or alcoholic beverages under “IMPERIAL GOLD” or any deceptively similar trademark, label or trade dress.