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  • Writer's pictureAnkita Sabharwal

Damages Worth INR 20 Lakhs (Approx. USD 25,039) Awarded To Seagram For Its “Royal Stag” Trademark


Introduction


In a recent trademark and copyright infringement suit instituted by the multinational conglomerate Seagram (hereinafter the “Plaintiff”) for its “ROYAL STAG” trademark against the use of mark “ROYAL CHAMP”, the Hon’ble High Court of Delhi has ruled in favour of the Plaintiff. The said decision further reinforces the test of an unwary consumer in trademark infringement disputes.


Background


The Plaintiff, vide the present suit alleged that Gwalior Distilleries Private Limited (hereinafter the “Defendant”) was manufacturing, bottling, and selling whiskey bearing the trademark “ROYAL CHAMP,” which was deceptively similar to its mark “ROYAL STAG”, also used for whiskey.


The Plaintiff further claimed that apart from additionally using a deceptively similar label for packaging, The Defendant was also using bottles embossed with the Plaintiff’s trademarks.


As per the Plaintiff, the Defendant had copied all the features that collectively distinguish the Plaintiff’s trade dress of ROYAL STAG. It was argued by the Plaintiff that the bottle of the Defendant has a label affixed upon the front panel, having the same color combination of cream, burgundy, and gold- as that of the Plaintiffs’ ROYAL STAG label. The front panel depicts two thick ribbon devices having a burgundy background and gold borders, upon which the trade mark ROYAL CHAMP is represented in cream color in bold capital letters, in the same font and manner as the ROYAL STAG mark.



It was the plaintiff's case that “ROYAL STAG” whiskey has been manufactured and marketed by Seagram's brand since the year 1995 and the Plaintiff had obtained several Indian and international registrations for its trademark. Thus, it was argued by the Plaintiff that the use of the “ROYAL CHAMP” mark by the Defendant is an infringement of its statutory as well as common law rights and results in passing off, dilution, and unfair competition by the Defendant.


Findings of the Court


While applying the test of average consumer, the Hon’ble Court held that “the goods of the Plaintiffs and Defendant are identical, that is whiskey. The mark of the Defendant is deceptively similar to that of the Plaintiffs.The test to be applied for judging the claim of infringement and passing off is of an unwary consumer with average intelligence and imperfect recollection.”


The Court further added that “applying the above test, it is seen that mere use of the word ‘CHAMP’ instead of ‘STAG’ is not sufficient to distinguish the two marks, especially when combined with the overall get up of the label. The goods are sold over the counter and an unwary consumer is likely to confuse one for the other.”


Apart from upholding trademark infringement, the Court further noted that the Defendant's label is a colorable and slavish imitation of the Plaintiffs’ ROYAL STAG label and also amounts to copyright infringement under Section 51 read with Section 55 of the Copyright Act. Therefore, apart from restraining the Defendant from making any use of the “ROYAL CHAMP” mark, damages worth INR 20 lakhs (Approx. USD 25,039) along with the cost of the suit were granted in favour of the Plaintiff.


Conclusion


This case is a testament to the Delhi High Court’s approach of granting copious damages to create “deterrence” in the minds of infringers. Orders of this nature amplify the fact that the authorized proprietors must be indemnified for the harm suffered by the unauthorized use of their trademarks. While the loss of goodwill may be uncompensable, monetary damages may provide some respite to these proprietors.





For any queries, please feel free to write to Ms. Ankiya Sabharwal at ankita@iprattorneys.com.

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