Delhi High Court decision shows importance of cultural and historical factors

In Allied Blenders and Distillers Pvt Ltd v Shree Nath Heritage Liquor Pvt Ltd (CS (OS) 2589/2013, July 1 2014), the Delhi High Court has confirmed its ex parte ad interim order dated December 19 2013 and restrained Shree Nath Heritage Liquor Pvt Ltd from using the mark COLLECTOR’S CHOICE.

Allied Blenders and Distillers Pvt Ltd objected to Shree Nath’s use of the mark COLLECTOR’S CHOICE by filing a suit for infringement and passing off. It obtained an ex parte ad interim order restraining Shree Nath from using the mark COLLECTOR’S CHOICE (pre-interlocutory stage).

Allied’s product:

Shree Nath’s product:

When the matter came up for hearing at the interim stage (interlocutory stage), Allied claimed, among other things, that it had exclusive rights in its registered mark OFFICER’S CHOICE and that Shree Nath’s COLLECTOR’S CHOICE mark was similar to its own mark. In addition, Allied contended as follows:

1. When responding to the Trademark Registry’s objection that its mark was not distinctive, Shree Nath itself had referred to registrations for OFFICER’S CHOICE and MINISTER in order to obtain registration for its COLLECTOR’S CHOICE mark, thereby admitting that the concepts of 'officer', 'minister' and 'collector' are similar.
2. As the word 'collector' refers to the chief administrative and revenue officer of an Indian district, it conveyed the idea that Shree Nath's product was the choice of such officer. 

In its defence, Shree Nath stated as follows:

1. The marks were not similar and there were a number of similar brands co-existing in the market.
2. Allied had disclaimed the word 'choice' in two of its registrations and had no exclusive rights over that word.
3. In Allied Blenders & Distilleries Pvt Ltd v John Distillers Ltd (2013 (56) PTC 78), the Intellectual Property Appellate Board had held that there was no deceptive similarity or confusion between the marks OFFICER’S CHOICE and ORIGINAL CHOICE, despite the fact that both marks had the acronym 'OC'.
4. Collector’s Choice was a superior product sold for Rs404 with a box, while Officer’s Choice was sold for Rs202 without a box.
5. The Supreme Court's ruling in Khoday Distilleries Ltd v Scotch Whisky Association ((2008) 10 SCC 723), in which it held that surrounding circumstances and the class of customers are an important factor in such cases, was applicable in the present case.

The court granted an injunction prima facie, concluding that the customers' memory was likely to confuse 'officer' with 'collector'. The court observed that a collector is at the highest point of officialdom in a district and that nearly every citizen of that district would come into contact with, or know of, the collector. Further, for residents of a district who never step out of that district (of which there is a large number), the collector is the only officer they know, and other authorities in the country hold no meaning. The learned judge based this reasoning on his own research and on the concept of ‘association of ideas’ set forth in a book by Daniel Kahneman entitled "Thinking, Fast and Slow".

India is a country of diverse culture and religion, where the English language is still important and certain historical systems dating from the British era are still prevalent. In addition to the traditional visual, structural and phonetic similarity, trademark applicants also need to be careful about conceptual similarity. However, it remains to be seen whether the decision in the present case will stand the test of time.

Adheesh Nargolkar, Shailendra Bhandare and Arunadhri Iyer, Khaitan & Co, Mumbai