13 Jun 2022

Pernod Ricard India Private Limited vs Frost Falcon Distilleries Limited


The plaintiff, Pernod Richard India Pvt. Ltd., is into the business of manufacturing liquor with the trade names "Blenders Pride" and "Imperial Blue," which had been registered and in use since 1994 and 1997, respectively. The plaintiff claims that the defendant's mark CASINOS PRIDE, the defendant's label, the design of the bottle in which the defendant distributes its product, and the packaging in which the bottle is packed infringe on the plaintiff's registered trademarks. The plaintiff's and defendant's products are admittedly in the same segment, namely Indian Made Foreign Liquor (IMFL), and hence serve the same client base. As a result, they can be found in the same market.


Frost Falcon Distilleries, according to the Plaintiff, infringed on the Plaintiff's trademark by utilising the mark "CASINOS PRIDE" and attempted to market its goods as that of the Plaintiff’s. The Plaintiff claimed that the Defendant's products’ label, getup, packaging, colour combination, and feature arrangement were deceptively similar to both of the Plaintiff's products. Furthermore, both parties dealt with a product that catered to the same market sector. The Plaintiff argued that comparable features on different products could lead to customer confusion


It was submitted by the defendant that he had legitimately created and adopted the mark CASINOS PRIDE on May 25, 2016. He claimed that the term ‘CASINOS PRIDE’ is coined and fanciful, and that the defendant is entitled to exclusive use of it. The Defendant contested the Plaintiff's allegations, claiming that its products were not identical phonetically, aesthetically, or otherwise, and so the Plaintiff could not claim exclusivity for its composite mark ‘BLENDERS PRIDE’, which has no secondary meaning in the minds of the general public.


Passing off is a product-specific tort, whereas infringement is a mark-specific tort. As a result, relief in an infringement action is geared at safeguarding the mark, but relief in a passing off case is intended at protecting the product, goodwill and reputation it commands. In an infringement case, the comparison is therefore mark to mark, whereas in a case of passing off, the comparison is product to product. The tort of passing off is committed as long as sufficient factors exist that suggest the defendant is attempting to pass off its product as the plaintiff's. After considering the unique characteristics of infringement and passing off, as well as several other legal concepts, the High Court of Delhi concluded that the Defendant was passing off the Plaintiff's existing marks. The Defendant was barred from manufacturing, marketing, or distributing the IMFL under the trademark "CASINOS PRIDE" by the Court.