No confusion between SMIRNOFF and BRISNOFF

In Diageo North America Inc v Shiva Distilleries Limited (Case IA 1717/2004 CS (OS) 255 of 2004, July 5 2007), the Delhi High Court has dismissed the plaintiff's claim for an injunction to restrain the use of the mark BRISNOFF for vodka.

Diageo North America Inc owns several registrations for SMIRNOFF, including a composite mark registration for the word 'SMIRNOFF' and an 'eyebrow' device. Smirnoff vodka is a world renowned mark and Diageo has substantial reputation and goodwill in the SMIRNOFF marks.

Shiva Distilleries Limited sells vodka under the mark BRISNOFF. It was using a device which was similar to the 'eyebrow' device used for SMIRNOFF vodka. The colour combinations used for the two parties' labels were also very similar.

Diageo initiated an infringement and passing off action against Shiva Distilleries and applied for an interlocutory injunction. During the course of the hearing, Shiva Distilleries undertook (i) not to use the device which was similar to the SMIRNOFF 'eyebrow' device, and (ii) to change the colour combination of its label so that it was not similar to the SMIRNOFF label. While making these concessions, Shiva Distilleries contended that BRISNOFF was not deceptively similar to SMIRNOFF and its use could not be restrained as it was not likely to cause confusion among the relevant section of the public being the affluent class of society who are discerning consumers of vodka.

The court ruled that there was a close resemblance between, on the one hand, Shiva Distilleries' BRISNOFF mark and 'eyebrow' device and the colour combination of its bottle label and, on the other, the SMIRNOFF mark and label. However, having regard to the concessions made by Shiva Distilleries with regard to the dropping of the 'eyebrow' device and making changes to the colour combination, the real question was whether BRISNOFF was confusingly similar to SMIRNOFF. The court held that this was not the case and Diageo was not entitled to an injunction restraining the use of BRISNOFF for the following reasons:

• The suffix 'NOFF' was common to the trade and there were several other vodka products on the market bearing that suffix.
  
  
• There was no resemblance between the prefixes 'SMIR' and 'BRIS'. Accordingly, the two marks SMIRNOFF and BRISNOFF were not confusingly similar.
  
  
• The intending purchasers of the competing products would be literate persons belonging to the affluent class of society and would be discerning consumers of vodka who would be in a position to distinguish easily between SMIRNOFF and BRISNOFF.
  

Mustafa Safiyuddin, DSK Legal, Mumbai