Pernod Ricard India (P) Ltd. v. Gagan Wine Trade and Financiers Ltd and Anr. SCC Online Del 5711

Abstract: This case involves a dispute between the plaintiff, who holds trademarks and intellectual property rights for 'Imperial Blue' whiskey packaging, and the defendants, who were accused of imitating the plaintiff's packaging with their product labeled 'Imperial VAT No.1'. The court ordered the defendants to modify their packaging and dispose of existing stock while issuing a permanent injunction against further infringement. The verdict aims to protect the plaintiff's intellectual property rights while allowing the defendants to continue their business with appropriate modifications.

Keywords: Trademark infringement, intellectual property rights, packaging imitation, permanent injunction, whiskey industry

Hashtags: Trademark Infringement , Intellectual Property, Packaging Imitation ,Whiskey Industry ,Court Verdict

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Background of the Case

Defendant 3, Galestorm Distillery (P) Ltd., was involved in blending and bottling Indian-made foreign liquor, such as whisky. Defendants 1 and 2, Gagan Wine Trade and Financiers Ltd., and Green Valley Town Planners (P) Ltd., respectively, approached Defendant 3 to blend and manufacture whisky under the trade label of 'Imperial VAT No.1.' The plaintiff's complaint was related to the packaging, label, and overall get-up of the plaintiff's product labelled 'Imperial Blue' whiskey. The plaintiff claimed that it had trademark registrations for the mark 'Imperial Blue,' the label, the three-dimensional bottle, the packaging, and other elements that constituted the plaintiff's distinctive packaging. The plaintiff's contention was that the defendants, who were selling 'Imperial VAT No.1' whiskey, had copied the label, get-up, font size, writing style, colour combination, placement of elements, and even the shape of the bottles of the plaintiff's whiskey.

Comparison of plaintiff’s and defendant’s product:

The plaintiff argued that several features of the defendant's product were imitative in nature, including the predominantly blue label with brands written in white, borders and textual material in golden colour, the identical manner of writing the brands with "Imperial" in an arched-manner, and the remaining portion of the brand written below it. The insignia with the crest device placed on top of the label in golden colour, right above the depiction of the trademark, was also claimed to be imitative.

The plaintiff claimed that it had the rights to the mark 'Imperial Blue', as well as various elements forming the part of the whole product, including the label, packaging, colour combination, get-up, and various depictions on the said product. It was alleged that the defendants had intentionally imitated the distinctive elements of the plaintiff's packaging and products, and hence an injunction was sought in the suit along with damages and other relief.

Analysis, Law, and Decision

The court has given its verdict on a case where the defendants had agreed to modify the packaging, colour, and other writing styles of their product. The proposed label, carton, colour scheme, packaging, and shape of the bottle have been accepted by the plaintiff. However, for the already manufactured stock, the defendants have been permitted to dispose of the 2806 bottles of whiskey within three months by either destroying or recycling them. They will then have to provide confirmation of the same to the plaintiff. The court has directed the defendants to not use the manufactured stock of packaging or labels bearing the mark ‘Imperial VAT No.1’ under the impugned packaging, which were infringing in nature. The defendants have agreed to use the coat of arms that was used earlier, without the words ‘Green Valley’. As a result, the court has held that the defendants shall not manufacture any fresh stock carrying the impugned cartons/labels and packaging. The court has granted a permanent injunction, thereby restraining the defendants, their directors, distributors, retailers, assigns, etc., or anyone acting for or on their behalf, from manufacturing, selling, offering for sale, advertising or in any other manner using the impugned ‘Imperial VAT No.1’ product label, packaging, get up, and trade dress, including the shape of the bottle or any other packaging or label which was deceptive or imitative of the plaintiff’s packaging/label/get up under the mark ‘Imperial Blue’. The defendants are allowed to use the mark ‘Imperial Vat No.1’ as their trademark for any fresh manufacture under the label/get-up/trade dress. They are further allowed to use the proposed packaging/label/get up along with the emblem/coat of arms without the mark/name ‘Green Valley’.

Conclusion

The court resolved the dispute over the alleged imitation of the plaintiff's 'Imperial Blue’ whiskey packaging by the defendants' 'Imperial VAT No.1' product. The defendants agreed to modify their packaging and labelling for future production and dispose of their existing stock. The court issued a permanent injunction restraining the defendants from manufacturing, selling, advertising, or using any deceptive or imitative elements associated with the 'Imperial VAT No.1' product that infringe upon the plaintiff's trademark. The verdict aims to protect the plaintiff's intellectual property rights while allowing the defendants to continue their business with appropriate modifications.