Phonetic Similarity

The Single bench found the trademarks to not be phonetically or structurally similar. The diacritical mark in ‘ASĀVA’ created a different sound, rendering it apart from the Plaintiff’s mark ASWA.

The Division Bench disagreed and also set aside the finding. In fact it also pointed out that such a claim had not been made by the Defendant at all. It is interesting to note that the phonetic perception of a trademark depends on the first impression it creates on the mind of the perceiver. Thus, it must be evaluated from the perspective of consumers since they are the ones purchasing the product. Further, importing from the Supreme Court’s principles in Amritdhara Pharmacy decision, the Division Bench emphasised on how the average Indian consumer will most likely with imperfect recollection would pronounce the word. Thus, most of the public lacks the phonetical understanding of “Ā”. In a certain Encore Electronics case the difference in original British pronunciation of the terms ‘Encore’ and ‘Anchor’ was disregarded. The pronunciations were not distinct enough.

Arguments

The defendant’s primarily argued that it does not use ASĀVA as a trademark in itself. It claimed that its brand of whiskey was called RAMPUR, for Rampur Distilleries, under which it sold its products such as ‘RAMPUR Sherry PX Finish’ and ‘RAMPUR Double Cask’. ‘ASĀVA’ merely suggested the process of herbal fermentation, for making the product.

Taking instance from this argument the Single Judge actually accepted it and held that ‘RAMPUR ASĀVA’ is to be read together and could not be held to be deceptively similar to Plaintiff’s THE ASWA. One would think this is an application of the Anti-dissection rule, but that won’t hold true in this case as the Defendant’s primary claim is that ASĀVA is not a trademark at all.

Finally, considering the piece of information that ASĀVA adopted from Sanskrit is not a common term, the Division Bench also invoked McCarthy on Unfair Competition to clarify that consumers’ perception of special, lesser-known words (as trademark) may differ from the user’s intended meaning. In other words, since most consumers may not understand or even remotely have the knowledge of the fact that the Sanskrit meaning of ASĀVA, they might not understand it as the description of a process (involved in the plaintiff’s business). Rather, it might appear to them as what is called ‘arbitrary/fanciful’ word that, on the Abercrombie spectrum of distinguishing power, would lean towards strong trademark protection.

THE DIVISION BENCH’S REASONING

Evaluating Likelihood of Confusion

The evaluation for likelihood of confusion based on an Australian precedent applied directly in Indian context was also criticized.

It was earlier found that the ‘purchasers of single malt whiskey are always discerning and there is no likelihood of confusion in this class of products’ does not account for the nuances that characterize alcoholic beverage consumption in India.

In fact Bombay High Court in its own precedent set in Gorbatschow Wodka v. John Distilleries a rendered by Justice D.Y. Chandrachud, has pointed out that ‘gullibility is a character that pans across social or economic attributes and capacity to discern is not necessarily relatable to social class or financial statuses.

A major point highlighted in the above para is that there cannot be an absolute proposition when it comes to the determination of likelihood of confusion, the Division Bench emphasized that the full spectrum of potential purchasers, the manner of purchase and the pattern of consumption would have to be considered before arriving at a conclusion.

When a defendant in an infringement suit applies for registration of the contested mark, it is deemed to be an acknowledgement of similarity. Thus, it itself operates as estoppel. On this basis, the Defendant had argued that the reverse of this would also be true and the Plaintiff’s attempt to separately register the mark used by the Defendant amounts to admission of dissimilarity between the marks, the Division Bench cautioned that in the absence of any legal precedent or statutory provision, the converse of a statement could not be automatically accepted by substituting completely opposing concepts.

The bench was quite unimpressed with the above argument.

The Bench also refused to accept that because it was the Defendant who brought certain facts on record in the defence, the Plaintiff was guilty of suppressing facts. With this, the Division Bench set aside the Single Judge’s decision and remanded the matter back for reconsideration. While this appellate stage analysis did not bring about a conclusion to the interim application, it goes a long way in clarifying important principles in trademark infringement litigation.

A common pattern is observed in all the issues discussed in this case, it focuses on the various tests from the perspective of actual impact on consumers who would interact with the products in the market. While it remains to be seen what the outcome of the infringement suit would be, the Division Bench has cleared the air on what the adjudicating court must inquire into while deciding the case.