Publici Juris and Laudatory Terms: Non-Monopolizability in Trademark Law
Introduction: This case delves into the intricate principles of trademark law, particularly focusing on deceptive similarity, the anti-dissection rule, and the dominant feature test in the context of composite marks. The appellants, Pernod Ricard India Private Limited and Pernod Ricard USA LLC, alleged that the respondent's use of the mark "London Pride" for whisky infringed their registered trademarks "Blenders Pride" and "Imperial Blue" and amounted to passing off. The Supreme Court examined whether the marks created a likelihood of confusion among consumers, emphasizing the need for holistic comparison and the perspective of an average consumer with imperfect recollection. Ultimately, the Court held that no deceptive similarity existed, reinforcing that common or laudatory terms like "Pride" cannot be monopolized without acquired distinctiveness.
Factual Background:The appellants are engaged in the manufacture and distribution of wines, liquors, and spirits, selling whisky under the brands "Blenders Pride" and "Imperial Blue", both registered trademarks. They also hold registration for "Seagram's", their house mark used internationally. The trademark "Blenders Pride" was adopted in 1973 and launched in India in 1995, achieving annual turnover exceeding INR 1,700 crores. "Imperial Blue" was launched in 1997, with turnover exceeding INR 2,700 crores. In May 2019, the appellants discovered the respondent marketing whisky under "London Pride" with packaging deceptively similar to theirs, using Seagram's embossed bottles. The respondent, Karanveer Singh Chhabra trading as JK Enterprises, is a proprietary concern manufacturing and selling liquor under "London Pride" in Madhya Pradesh, with a pending trademark application.
Procedural Background: The appellants filed Commercial Suit No. 3/2020 before the Commercial Court, Indore, seeking permanent injunction against trademark infringement, passing off, and other reliefs, along with an interim application under Order XXXIX Rules 1 & 2 CPC. The Commercial Court rejected the interim application on November 26, 2020, finding no deceptive similarity. The appellants appealed to the Madhya Pradesh High Court, which dismissed the appeal on November 3, 2023, upholding the Commercial Court's order. Aggrieved, the appellants filed SLP (C) No. 28489/2023 before the Supreme Court.
Core Dispute:The core issue was whether the respondent's mark "London Pride" and its packaging were deceptively similar to the appellants' registered trademarks "Blenders Pride", "Imperial Blue", and "Seagram's", amounting to infringement under Sections 28 and 29 of the Trade Marks Act, 1999, or passing off. The appellants argued phonetic, visual, and structural similarity, dishonest adoption, and likelihood of confusion. The respondent contended the marks were distinct, "Pride" was generic and publici juris, and no confusion was likely among discerning consumers of premium whisky.
Discussion on Judgments: The appellants relied on several precedents to argue deceptive similarity and the need for holistic comparison. In Ruston & Hornsby Ltd v. Zamindara Engineering Co (1969 (2) SCC 727), cited to emphasize phonetic and visual deceptive similarity where essential features are copied. James Chadwick & Bros Ltd v. National Sewing Thread Co Ltd (OCJ Appeal No. 95 of 1950), referred for principles on confusion from similar marks on related goods. Sky Enterprise Pvt Ltd v. Abaad Masala & Co (2020 SCC OnLine Bom 750), used against generic defenses for distinctive marks. Neon Laboratories Ltd v. Medical Technologies Ltd (2016 (2) SCC 672), invoked for the first-user rule and presumption of confusion. Ultra Tech Cement Ltd v. Alaknanda Cement Pvt Ltd (2011 SCC OnLine Bom 783), cited to argue suffixes do not negate infringement if core is similar. Jagdish Gopal Kamath v. Lime & Chilli Hospitality Services (2015 SCC OnLine Bom 531), referred to counter common-to-trade claims without proof of extensive use. Lupin Ltd v. Eris Lifesciences Pvt Ltd (2015 SCC OnLine Bom 6807), emphasized limiting validity challenges unless ex facie fraudulent. The respondent countered with judgments on composite marks and generic terms. Phonepe Pvt Ltd v. EZY Services (2021 SCC OnLine Del 2635) and Delhivery Pvt Ltd v. Treasure Vase Ventures Pvt Ltd (2020 SCC OnLine Del 2766), cited against dissection and for whole-mark comparison. Paramjeet Singh Nande v. Paramount Toys & Ors (Order in OOCJ Interim Application (L) No. 35055 of 2023 dated June 10, 2025), supported non-solicitation limits. Gufic Ltd v. Clinique Laboratories LLC (FAO (OS) 222/2009 dated July 9, 2010, Delhi High Court), stressed holistic comparison. Ayushakti Ayurved Pvt Ltd v. Hindustan Lever Ltd (2003 (5) Bom CR 523), argued inseparable parts must be pronounced together. Marico Ltd v. Agro Tech Foods Ltd (2010 SCC OnLine Del 3806), defended non-monopolizable generic words. Honda Motor Co Ltd v. Kewal Brothers (1999 SCC OnLine Cal 536), set the relevant date for passing off as defendant's adoption. Sun Pharmaceuticals Industries Ltd v. Emcure Pharmaceuticals Ltd (2012 (2) MhLJ 936) and G.M. Sheik v. Raja Biri Pvt Ltd (FAO No. 94 of 2022 dated August 31, 2022, Kerala High Court), reinforced whole-mark consideration and extensive use for common-to-trade defenses. The Supreme Court discussed these and other precedents like Coca-Cola Co of Canada Ltd v. Pepsi-Cola Co of Canada Ltd (1942 SCC OnLine PC 7), Corn Products Refining Co v. Shangrila Food Products Ltd (AIR 1960 SC 142), Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449), Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980), Parle Products Pvt Ltd v. JP & Co (1972 (1) SCC 618), Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd (AIR 2001 SC 1952), Khoday Distilleries Ltd v. Scotch Whisky Association (2008 (10) SCC 723), Wander Ltd v. Antox India Pvt Ltd (1990 Supp SCC 727), Anand Prasad Agarwalla v. Tarkeshwar Prasad (2001 (5) SCC 568), and Bajaj Auto Ltd v. TVS Motor Co Ltd (2009 (9) SCC 797), in the context of deceptive similarity, anti-dissection, dominant features, generic terms, imperfect recollection, and injunction principles.
Reasoning and Analysis of the Judge: Justice R Mahadevan, writing for the Bench, analyzed the case through statutory provisions and judicial precedents, emphasizing holistic comparison of marks from an average consumer's perspective with imperfect recollection. The Court rejected dissection, finding no deceptive similarity in names, colours, or trade dress. "Pride" was held publici juris, laudatory, and non-monopolizable without secondary meaning. Dominant features like "Blenders" and "London" distinguished the marks. Post-sale confusion doctrine was noted but deemed inapplicable to private consumption goods. Appellate interference was limited absent jurisdictional error. The Court found no prima facie case, irreparable harm, or balance favoring injunction, upholding lower courts' concurrent findings.
Final Decision: The Supreme Court dismissed the appeal, upholding the High Court's judgment denying interim injunction. The Commercial Court was directed to dispose of the suit within four months, uninfluenced by interlocutory observations.
Law Settled in This Case: This case reaffirms that deceptive similarity requires holistic comparison of marks as wholes, from an average consumer's imperfect recollection perspective. Generic or laudatory terms like "Pride" are publici juris and non-monopolizable without acquired secondary meaning. Dominant features aid analysis but do not override overall impression. Post-sale confusion is inapplicable to privately consumed goods. Appellate review of interim orders is limited absent jurisdictional error. Infringement and passing off necessitate likelihood of confusion; mere common elements are insufficient.
Case Title: Pernod Ricard India Private Limited & Another Vs Karanveer Singh Chhabra, Date of Order: August 14, 2025,
Case Number: Civil Appeal No. 10638 of 2025,
Neutral Citation: 2025 INSC 981,
Name of Court: Supreme Court of India,
Name of Hon'ble Judge: J.B. Pardiwala and R. Mahadevan, J.
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
