No risk of confusion between marks for pepper sprays and beer

India
In Skol Breweries v Unisafe Technologies (CS(OS) 472/2006 IA 3194/2006, August 25 2010), the Delhi High Court has dismissed Skol Breweries' request for a permanent injunction against Unisafe Technologies on the grounds of trademark infringement, passing off and unfair competition.

Skol is the proprietor of several trademarks for beer, including the mark KNOCK OUT. Skol alleged that Unisafe’s use of the mark KNOCK OUT for pepper sprays would result in dilution of its mark. In particular, Skol contended that the trademark KNOCK OUT had been in existence and in continuous use since 1986. On account of Skol's extensive investments in brand advertising, the KNOCK OUT mark had acquired considerable recognition among the public and was exclusively associated with Skol in the mind of consumers.

Skol also objected to the advertisement campaign run by Unisafe and alleged trademark dilution under Section 29(4) of the Trademarks Act 1999. Skol argued that, while its marketing campaign associated its Knock Out brand with "manhood and strength", Unisafe’s advertisements for its pepper sprays (which aim to protect women against threatening behaviour, generally by men) undermined the image projected by Skol’s product. Skol further submitted that Unisafe's domain name 'knockoutspray.com' infringed Skol’s rights and was intended to take unfair advantage of the goodwill and reputation of Skol’s trademark.

In its defence, Unisafe argued as follows:
  • Skol could not be allowed to monopolise the term 'knock out', which is a dictionary word meaning "to strike a forcible blow on the head, often leading to unconsciousness". In contrast, Unisafe had adopted its mark in good faith, since the word 'knock out' is descriptive of the characteristic of its product (ie, when used in self-defence, Unisafe's pepper spray helps to ‘knock out’ the attacker).
  • The nature of the parties' goods was completely different. Skol’s mark covered goods in Class 32 of the Nice Classification, while Unisafe’s goods fell within Classes 5 and 9.
  • The parties' goods were not sold in the same stores and targeted different consumers. Therefore, there was no likelihood of confusion among the public.
  • Unisafe had been using and promoting the KNOCK OUT mark since April 2004. Skol had thus waited nearly two years before seeking injunctive relief.
The court ruled in favour of Unisafe. It found that Skol had failed to substantiate its claim of trademark dilution, as there was no evidence to indicate that:
  • its mark had acquired secondary meaning; and
  • consumers think only of Skol's beer brand when hearing the expression 'Knock Out'.
Further, the court held that Skol had failed to prove that:
  • there was a likelihood of confusion among the public; and
  • Unisafe intended to take unfair advantage of Skol’s goodwill and reputation.
The court recognised that the marks at issue were identical, but pointed out that the goods, channels of trade and target consumers were very different, thereby precluding a likelihood of confusion.

Skol’s action was thus dismissed.

Aishwarya Menon, Ranjan Narula Associates, Delhi

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