SENTINI BIO PRODUCTS PVT. LTD. vs. M/S. ALLIED BLENDER & DISTILLERS PVT. LTD.

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment Reserved on : May 26, 2015
Judgment Delivered on : July 06, 2015

+ FAO (OS) 368/2014
SHREE NATH HERITAGE LIQUOR PVT. LTD. ….Appellant
Represented by: Mr.Jayant Tripathi, Advocate with
Mr.Sumit Rajput, Advocate

versus
M/S. ALLIED BLENDER & DISTILLERS
PVT. LTD. .....Respondent
Represented by: Mr.Pravin Anand, Advocate with
Mr.Shrawan Chopra, Advocate,
Ms.Abhilasha Nautiyal, Advocate
and Mr.Vibhav Mithal, Advocate
FAO (OS) 493/2014
SENTINI BIO PRODUCTS PVT. LTD. ….Appellant
Represented by: Mr.Gopal Subramaniam,
Sr.Advocate instructed by
Mr.Gagan Gupta, Advocate

versus
M/S. ALLIED BLENDER & DISTILLERS
PVT. LTD. .....Respondent
Represented by: Mr.Pravin Anand, Advocate with
Mr.Shrawan Chopra, Advocate,
Ms.Abhilasha Nautiyal, Advocate
and Mr.Vibhav Mithal, Advocate
CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MS. JUSTICE PRATIBHA RANI

PRADEEP NANDRAJOG, J.
FAO (OS) Nos.368/2014 & 493/2014 Page 1 of 43


1. Shree Nath Heritage Liquor Pvt. Ltd. (the appellant of FAO (OS)
No.368/2014) impugns the order dated July 01, 2014 passed by the learned
Single Judge disposing of IA No.20759/2013 filed by M/s.Allied Blenders
and Distillers Pvt. Ltd. (the plaintiff) confirming the ex-parte ad-interim
injunction granted on December 19, 2013 restraining Shree Nath Heritage
from using the mark „ Collector‟s Choice ‟ for its product (whisky) during
the pendency of the suit. M/s.Sentini Bio Products Pvt. Ltd. (the appellant
of FAO (OS) No.493/2014) impugns the order dated July 01, 2014 allowing
IA No.1685/2009 filed by M/s.Allied Blenders and Distillers Pvt. Ltd. (the
plaintiff) confirming the ex-parte ad-interim order restraining M/s.Sentini
Bio Products Pvt. Ltd. from using the mark „ Officer‟s Special ‟ for its
alcoholic beverages and in particular Indian made foreign liquor during the
pendency of the suit.
2. The two appeals thus pertain to marks used for whisky, „ Officer‟s
Choice ‟ of the respondent and „ Collector‟s Choice ‟ and „ Officer‟s Special ‟
of the two appellants.

3. Briefly stated, the facts relevant and giving rise to the two appeals are
as follows:
a. The respondent is a company incorporated under the Indian
Companies Act and is in the business of manufacturing and marketing
alcoholic beverages, including Indian Made Foreign Liquor. The
respondent‟s alcoholic beverages are sold under various trademarks and
labels, out of which one is „ Officer‟s Choice ‟. It is the respondent‟s case that
„ Officer‟s Choice ‟ is one of its most popular trademarks and was adopted in
the year 1988. The respondent further claims that its whisky under the mark
„ Officer‟s Choice ‟ is one of the highest selling whiskies in the world. The
respondent is also the registered proprietor of the trademark „ Officer‟s
Choice ‟ in various classes such as classes 32, 33, 34 etc.
FAO (OS) Nos.368/2014 & 493/2014 Page 2 of 43


b. The appellant of FAO (OS) No.368/2014 is also incorporated under
the Indian Companies Act and is engaged in the business of manufacturing,
blending and bottling of Indian Made Foreign Liquor. It is the appellant‟s
case that its mark and label „ Collector‟s Choice ‟ was adopted in the year
2013. The parties however dispute the exact month of the appellant‟s
adoption. The appellant of FAO (OS) No.493/2014 is also incorporated as a
company under the Indian Companies Act and sells Indian made foreign
liquor under the mark and label „ Officer‟s Special ‟ and the product was
launched in December, 2008 after obtaining approval of the label „ Officer‟s
Special ‟ from the excise authorities in the State of Andhra Pradesh in
March, 2008 and in the State of Chattisgarh in May, 2008.
c. The respondent filed CS (OS) No.2589/2013 on the original side of
this Court against the appellant of FAO (OS) No.368/2014 claiming
violation of its trademark „ Officer‟s Choice ‟, CS (OS) No.247/2009 against
the appellant of FAO (OS) No.493/2014 claiming violation of its trademark
„Officer‟s Choice ‟, and against the appellant of FAO (OS) No.493/2014
additionally claiming violation of the copyright in its label.
d. It is the respondent‟s case that, being the prior owner and registered
proprietor of the trademark „ Officer‟s Choice ‟, it has exclusive rights in the
said trademark. The appellant‟s trademark „ Collector‟s Choice ‟ and
„ Officer‟s Special ‟ conveys the same idea as that of the respondent‟s
trademark „ Officer‟s Choice ‟, i.e. Choice of a person holding an office of
authority and is deceptively similar to the respondent‟s said mark. Hence, it
is highly likely that consumers will confuse the appellant‟s „ Collector‟s
Choice ‟ and „ Officer‟s Special ‟ as that of the respondents.
e. According to the appellant of FAO (OS) No.368/2014, the mark
„ Collector‟s Choice ‟ was used by it to emphasize upon the unique
characteristics of its product and stature of the customers of its product since
the word „ Collector ‟ in common parlance refers to someone who collects
FAO (OS) Nos.368/2014 & 493/2014 Page 3 of 43


specified articles as per their own choice. Thus, in this regard it refers to
someone who appreciates finer things like the appellant‟s whisky.
f. The said appellant has further claimed that in the respondent‟s
trademark registration for „ Officer‟s Choice ‟ the word „ Choice ‟ has been
disclaimed and hence the respondent has no right in the said word. The
appellant also laid emphasis on the fact that its product under the mark
„ Collector‟s Choice ‟ has a distinctive packaging when compared with the
respondent‟s packaging.
g. The appellant of FAO (OS) No.493/2014 claims that the respondent‟s
trademark „ Officer‟s Choice ‟ consists of two general words in which
trademark rights cannot be claimed and that while obtaining registration of
its trademark „ Officer‟s Choice ‟ the respondent has disclaimed the word
„ Choice ‟. As regards respondent‟s claim for copyright infringement the said
appellant claims that its label is original and artistic and is registered under
the Copyright Act. It is the further claim by the said appellant that since the
respondent does not have separate registration for the words „ Officer ‟ and
„ Choice ‟ its rights if any are limited to the combination of the two words. It
is the further case of this appellant that the respondent is not entitled to any
equitable relief because it has concealed from this Court the accurate status
of the proceedings between the parties before the Excise Commissioner in
the State of Andhra Pradesh and Chattisgarh when said appellant‟s
impugned label was granted approval despite objection by the respondent.
h. The appellant of FAO (OS) No.368/2014 has challenged the Court‟s
jurisdiction to entertain the respondent‟s passing off claim.
General Principles:
4. It would be profitable to quickly summarize the general principles
applicable in trademark cases, and we could do no better than distillate them
from McCarthy on Trademarks and Unfair Competition, Ed. IV :
FAO (OS) Nos.368/2014 & 493/2014 Page 4 of 43


i. Likelihood of confusion (i.e. confusion is probable and not simply
possible) is the standard for both trademark infringement and passing off.
ii. Priority of use needs to be considered.
iii. To establish trademark infringement and/or passing off in most cases
(we discuss one statutory exception where confusion is presumed by court
below) it needs to be shown that an appreciable number of buyers and not
the majority of buyers are likely to be confused. Even 1% of India‟s
population will be an appreciable number of buyers.
iv. Likelihood of confusion may be proved in many ways, such as:
 Through survey evidence;
 By showing actual confusion;
 Through arguments based on a clear inference arising from a
comparison of the marks in question and the context in which the marks are
used;
 Under Section 29 of the Trademarks Act, 1999, confusion is
presumed if the marks are identical and are used for identical goods/
services.
5. Confusion can be of the following categories:
 Point of sale confusion –this refers to confusion that takes place at the
time of purchase.
 Post sale confusion – this includes confusion of those other than the
purchaser.
 Initial interest confusion – this refers to confusion that may be caused
initially, i.e. prior to purchase, but at the time of purchase of the alleged
infringer/ tortfeaser‟s product or using its service, the consumer is not
confused.
FAO (OS) Nos.368/2014 & 493/2014 Page 5 of 43


 Reverse confusion – this occurs when consumers purchase the goods
or use services of the senior user thinking them to originate from the junior
user.
6. When a person knows that the mark in question does not originate
from the senior user but the senior user is called to mind, then it‟s a step
before confusion. If on the other hand, the consumer is in a state of
wonderment if there‟s a connection, this is confusion. Further, if this
consumer then purchases the junior users product, this is then deception.
Factors considered by courts to determine likelihood of confusion in
trademark infringement and passing off:
7. As per the law in the United States of America, while examining
whether a mark resembling another can be registered, the Courts have
interpreted Section 2(d) of the Lanham Act and in particular the expression
„ likelihood of confusion ‟ (For example, Du Pont factors laid down by the
CCPA).
8. While examining whether a mark infringes another under Section 32
of the Lanham Act, the Courts in America in various circuits have also
examined the expression „ likelihood of confusion ‟(For example, Polaroid
nd th
factors of the 2 Circuit and Sleek craft factors of the 9 Circuit).
9. In the above cases, the courts have laid down a series of factors that
need to be looked at, which could be summarized as:-
 Du Pont factors laid down by the erstwhile United States Court of
Customs and Patent Appeal [177 USPQ 563 (CCPA 1973)]
i. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
ii. The similarity or dissimilarity and nature of the goods or services as
described in an application or registration or in connection with which a
prior mark is in use.
FAO (OS) Nos.368/2014 & 493/2014 Page 6 of 43


iii. The similarity or dissimilarity of established, likely-to-continue trade
channels.
iv. The conditions under which and buyers to whom sales are made, i.e.
impulse vs. careful, sophisticated purchasing.
v. The fame of the prior mark (sales, advertising, length of use).
vi. The number and nature of similar marks in use on similar goods.
vii. The nature and extent of any actual confusion.
viii. The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion.
ix. The variety of goods on which a mark is or is not used (house mark,
„family‟ mark, product mark).
x. The market interface between applicant and the owner of a prior
mark:
a. mere „consent‟ to register or use.
b. agreement provisions designed to preclude confusion i.e. limitations
on continued use of the marks by each party.
c. assignment of mark, application, registration and good will of the
related business.
d. laches and estoppel attributable to owner of prior mark and
indicative of lack of confusion.
xi. The extent to which applicant has a right to exclude others from use
of its mark on its goods.
xii. The extent of potential confusion, i. e., whether de minimis or
substantial.
xiii. Any other established fact probative of the effect of use.
 Polaroid factors laid down by the Federal Court of Appeals for the
nd
2 Circuit in 128 USPQ 411 (2d Cir. 1961) Polaroid Corp. v. Polarad
Electronics Corp.
FAO (OS) Nos.368/2014 & 493/2014 Page 7 of 43


While these factors were developed for cases where the products or services
of the two parties were different, they have been used in cases of identical
goods and services as well.
i. The strength of the mark.
ii. The degree of similarity between the two marks.
iii. The proximity of the products.
iv. The likelihood that the prior owner will bridge the gap.
v. Actual confusion.
vi. The reciprocal of defendant's good faith in adopting its own mark
(Bad faith).
vii. The quality of defendant's product.
viii. The sophistication of the buyers.
 Sleekcraft factors laid down by the Federal Court of Appeals for the
th th
9 Circuit [204 USPQ 808 (9 Cir. 1979)]
i. The strength of the plaintiff‟s mark.
ii. Proximity of the goods.
iii. Similarity of the marks.
iv. Evidence of actual confusion.
v. Marketing channels used.
vi. Type of goods and the degree of care likely to be exercised by the
purchaser.
vii. Defendant's intent in selecting the mark.
viii. Likelihood of expansion of the product lines.
Weightage to be given to each of the above factors should depend upon the
facts of each case.
10. The aforesaid factors have been explained in subsequent cases to
include the following considerations, namely (See McCarthy on
Trademarks and Unfair Competition, Ed. IV ):
FAO (OS) Nos.368/2014 & 493/2014 Page 8 of 43


 Similarity of marks:
i. Marks can be similar/ identical in their sound, sight or meaning.
ii. The „Anti-dissection‟ and „comparing dominant parts‟ rules are
applied harmoniously.
iii. It is important to see similarity of context in which the marks appear.
 Class of consumers:
i. Courts have held that if the buyer market consists of both
discriminating and casual purchasers, the court must give consideration to
likely confusion of both kinds of buyers.
 Defendant‟s intention:
i. Courts have held that if the defendant intended confusion, this tends
to show confusion of customers.
ii. Some Courts have even held that proof of defendant‟s bad faith in
adopting the impugned mark shifts the burden to the defendant to disprove
infringement.
iii. Intent may be inferred when the defendant is aware of the plaintiff‟s
trademark.
 Proof of actual confusion:
i. While the test for trademark infringement and passing off is the
likelihood of confusion, instances of actual confusion are obviously relevant
to the determination of the question on confusion.
ii. Having said that, absence of evidence of actual confusion should not
be held against the prior owner of a trademark if there is a likelihood of
confusion arising from a comparison of the conflicting marks and the
context of their use.
11. The factors laid down in India by the Supreme Court in the decision
reported as (2001) 5 SCC 73 Cadila Healthcare Ltd. v. Cadila
Pharmaceuticals Ltd. that are to be considered while deciding the question
of likelihood of confusion in passing off are as follows:
FAO (OS) Nos.368/2014 & 493/2014 Page 9 of 43


i. Nature of the marks, that is, whether the marks are word marks or
label marks or composite marks, i.e. both words and label works.
ii. Degree of resemblance between the marks, phonetically similar and
hence similar in idea.
iii. Nature of goods in respect of which they are used as trademarks.
iv. Similarity in nature, character and performance of goods of rival
traders.
v. Class of purchasers who are likely to buy the goods bearing the
marks they require, on their education and intelligence and degree of care
they are likely to exercise in purchasing and/ or using the goods.
vi. Mode of purchasing the goods or placing orders for the goods.
vii. Any other surrounding circumstances which may be relevant in the
extent of dissimilarity between the competing marks.
The Supreme Court has cautioned that weightage to be given to each of the
above factors should depend upon the facts of each case and same
weightage cannot be given to each factor in every case. The above Cadila
factors for passing off have not been specifically applied to trademark
infringement cases.
12. While applying the above factors while deciding the question of
trademark infringement, the following must be borne in mind:
i. Trademark infringement is governed by Section 29 of the
Trademarks Act, 1999. This provision presumes confusion on the part of the
public if the marks and goods/ services in question are identical.
ii. The view of the Supreme Court on the defence of „ added matter ‟ in
trademark infringement is that if the essential features of the trademark of
the plaintiff have been adopted by the defendant, the fact that the get-up,
packing and other writing or marks on the goods or on the packets in which
he offers his goods for sale show marked differences, or indicate clearly a
FAO (OS) Nos.368/2014 & 493/2014 Page 10 of 43


trade origin different from the of the registered proprietor of the mark would
be immaterial. The relevant extract from the decision reported as AIR 1965
SC 980 Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories is
reproduced below. It reads as under:-
“In an action for infringement, the plaintiff must, no doubt, make
out that the use of the plaintiff‟s mark is likely to deceive, but
where the similarity between the plaintiff‟s and the defendant‟s
mark is so close either visually, phonetically or otherwise and the
court reaches the conclusion that there is an imitation, no further
evidence is required to establish that the plaintiff‟s rights are
violated. Expressed in another way, if the essential features of the
trademark of the respondent have been adopted by the appellant,
the fact that the get-up, packing and other writing or marks on the
goods or on the packets in which he offers his goods for sale show
marked differences, or indicate clearly a trade origin different
from the of the registered proprietor of the mark would be
immaterial; whereas in the case of passing off, the defendant may
escape liability if he can show that the added matter is sufficient
to distinguish his goods from those of the plaintiff.”

13. Instructed by the law as above we proceed by applying the factors for
assessing likelihood of confusion for trademark infringement and passing
off in the two appeals and firstly we discuss the appeal filed by Shree Nath
Heritage Liquor Pvt. Ltd. Our prima-facie observations and findings in the
succeeding paragraphs 14 to 78 relate to FAO (OS) No.368/2014. Our
prima-facie observations and findings in paragraphs 79 onwards relate to
FAO (OS) No.493/2014.
Nature of the mark:
14. The respondent has registrations for its „ Officer‟s Choice ‟ composite
word mark and „ Officer‟s Choice ‟ label dating back to the year 1988 and
1990 respectively. The respondent has been using the trademark „ Officer‟s
Choice‟ since 1988 and is an arbitrary mark for whisky. Therefore, the
respondent has vast reputation and goodwill in the said mark. The appellant
is using a composite word mark „ Collector‟s Choice‟ and a label.
FAO (OS) Nos.368/2014 & 493/2014 Page 11 of 43


Degree of resemblance between the marks :
15. We first need to discuss the effect of the disclaimer on the word
„ Choice ‟ in two of the respondent‟s trademark registrations. In the decision
reported as AIR 1955 SC 558 Registrar of Trademarks Vs. Ashok Chandra
Rakhit , regarding passing off, the Supreme Court held that statutory
disclaimer will have no bearing if the respondent‟s trademark has acquired
secondary meaning. In the facts of the present case, our prima facie view is
in favour of the secondary meaning of the respondent‟s mark „ Officer‟s
Choice ‟ in light of the respondent‟s long use and sales under the said
trademark. Hence, the question of disclaimer is not relevant to the question
of passing off in the present case.
16. Turning to the effect of disclaimer with respect to trademark
infringement, it is pertinent to note at this point that only two registrations
of the respondent, i.e. registrations no. 489582 and 538927, have the word
„ Choice ‟ disclaimed. The respondent has several trademark registrations,
albeit some of which are labels, for alcoholic beverages and a host of other
goods, for „ Officer‟s Choice ‟ without any disclaimer.
17. A disclaimer in a trademark does not travel to the market place.
Hence, for the purpose of comparison of two marks, the disclaimed portion
can also be considered. Therefore, the marks in the two registrations of the
respondent with a disclaimer can be considered as a whole even for
infringement.
18. Concerning the rules of anti-dissection and comparing dominant part,
it is possible for both parts of a composite trademark to be dominant. In the
instant case, while the first part of the respondent‟s trademark (Officer‟s) is
dominant, we need not decide the nature of the second part of the
respondent‟s mark (Choice) since the second part is identical in the
appellant‟s mark. Furthermore, even in the label registrations of the
respondent, at least the word mark „ Officer‟s Choice ‟ is an essential feature
FAO (OS) Nos.368/2014 & 493/2014 Page 12 of 43


of the labels as consumers would refer to the respondent‟s product by the
word mark. Hence, we proceed with comparing the first part of the two
trademarks in question.
19. The words „ Officer ‟ and „ Collector ‟ are phonetically different.
However, Courts have applied the test of similarity in the idea, i.e. semantic
similarity, of two marks in deciding the question of deceptive similarity
between them. In the decision reported as AIR 1960 SC 142 Corn Products
v. Shangrila Foods the Supreme Court held that „ Gluvita ‟ was likely to
cause confusion with the mark „ Glucovita ‟ as both conveyed the same idea
of glucose and life giving properties of vitamins.
20. The Canadian Law of Trademarks and Unfair Competition by Harold
G. Fox notes that “ trademarks may differ in their various component
elements and yet the idea or impression left on the mind may be such that
they amount to confusing marks .”
21. Similarly, P. Narayanan in the Law of Trade Marks and Passing off
states that “ regarding word marks it is necessary to take into account the
meanings conveyed by the words or the ideas suggested by them, for words
are remembered not only by their sound and appearance but also by the
ideas suggested by them .”
22. Sun, for soaps, because Surian is nothing more than the Tamil
translation of the English word Sun, and would thus be considered
deceptively similar to the previously existing mark.
23. That takes us to the heart of the debate. How can similarity in an idea
be created?
24. It is pertinent here to refer to a study which can be found in the
International Journal of Research in Marketing [22 (2005) 27-44] in an
article titled Distinctive Brand Cues and Memory for Product Consumption
Experiences . Researching on consumer experiential learning from a
memory perspective, and referring to „ brand image‟ and the role of brand
FAO (OS) Nos.368/2014 & 493/2014 Page 13 of 43


names as cues that retrieve or signal product attributes, benefits, effect, or
overall quality, the conclusion of this study demonstrated that the
conceptual background behind the brand name is what triggers the
recollection of memory in a consumer, and not the brand name in itself. The
study revealed that, when five brands of the same type of product : „ Orange
Juice ‟, were named on the basis of a shared conceptual background (all five
being named after different islands in the Caribbean : „Bahamas‟,
„Bermuda‟, „Aruba‟, „Dominica‟ and „Barbuda‟), the consumers‟ ability to
distinguish the various brand names was found to be poorer due to this
shared conceptual background. Further, when the various brand names did
not share the same conceptual background, the rate of recollection of the
correct brand names by a consumer was higher. In other words, if the
consumer is asked which brand he preferred, if all brands share the same
conceptual background, then he would first remember that the product he
liked was named after some Caribbean island, and would then need to
exercise his brain to recall which island his favourite brand was named
after.
25. Since this discussion pertains to similarity between Word Marks, a
semantic understanding of how commonness of idea is conveyed through
the use of words is relevant here. As discussed in The Application of
Semantic Field Theory to English Vocabulary Learning by Chunming Gao
and Bin Xu, Theory and Practice in Language Studies, Vol. 3, No. 11, pp.
2030-2035, Nov. 2013 , words in the semantic field can be said to create a
sense relation, and in semantics, there are broadly three sense relations:
„ Hypernyms ‟, „ Synonyms ‟ and „ Antonyms ‟.
26. Whereas hypernyms create the relation of inclusion, synonyms that of
equivalence, antonyms that of opposite relations. Since antonyms by
definition, convey the opposite sense relation of the word, it falls outside the
purview of this discussion.
FAO (OS) Nos.368/2014 & 493/2014 Page 14 of 43


27. We thus need to expand the concepts of hyponymy and synonymy.
(i) Hypernyms
The Oxford English dictionary defines a Hypernym to mean
“ A word with a broad meaning constituting a category into which words
with more specific meanings fall; a subordinate .
For example, colour is a hypernym of red”
It further defines a hyponym as:
“A word of more specific meaning than a general or superordinate term
applicable to it
For example, Spoon is a hyponym of cutlery. Contrasted with hypernym.”
(ii) Synonyms
The Oxford English dictionary defines a synonym to mean:
“A word or phrase that means exactly or nearly the same as another word
or phrase in the same language.
For example, shut is a synonym of close; the east was a synonym for the
Soviet Empire;
and a person or thing so closely associated with aparticular quality or idea
that the mention of their name calls it to the mind: For example the
Victorian age is a synonym for sexual puritanism.
28. When it comes to giving a clear, precise and correct definition of
synonymy, many difficulties arise. There are numerous approaches with
numerous definitions of synonyms and types of synonyms, because there
are different ways in which synonyms may differ. It would be imprecise to
define synonymy as identity of meaning since there are no two terms with
completely identical meaning. However, the general understanding of
synonymy can be stated to be the phenomenon of two or more different
linguistic forms with the same meaning.
29. Synonymy could be classified into absolute synonymy and relative
synonymy. Absolute synonyms refer to words with the exact same meaning
FAO (OS) Nos.368/2014 & 493/2014 Page 15 of 43


in all context, and thus are considered by several academicians to be a
logical impossibility, given that words cannot be interchangeable in all
possible contexts (since that, itself, would entail infinite possibilities), and
given further, that two words being absolute synonyms would normally
result in the language rendering one of them obsolete over the passage of
time.
30. Relative synonyms, on the other hand refer to words or phrases which
are relatively similar, in that they are similar in certain contexts, while not in
others. Such synonymy could be further classified into such categories as
following:
i. Synonymy with different degrees
Words that constitute this type of semantic field have same extended
meanings, yet different in degrees. For example, anger, rage and fury are all
about the emotional excitement induced by intense displeasure, while anger
is used normally without definite degree of intensity; rage focuses on a loss
of self-control; and fury empathises a rage so violent that it may approach
madness
ii. Synonymy with different emotions
This type of synonymy is mainly formed by words with basically same
meaning yet with different emotions. For example, a philanthropist and do-
gooder can be mean both charity and sympathy, while philanthropist usually
means charitable persons who aid people in sufferings and donate for the
poor yet do-gooders refer to those unrealistic humanists who dream of doing
good recklessly and vainly. Another example, Statesman and politician both
mean people who take part in social politics, while Statesman refers to those
who could do well in controlling and governing the state yet politician
mainly means people who play political tricks for their own interests. In
both of the examples, the formers are all commendatory; and the latter‟s
derogatory.
FAO (OS) Nos.368/2014 & 493/2014 Page 16 of 43


iii. Synonymy with Different Styles
This type of semantic field mainly consists of the words with relatively
same meaning yet with different styles. American linguist Martin Joos
(1962) lists five different styles of words in his book Five Clocks as frozen,
formal, consultative, casual and intimate. According to these five styles, we
can label the word Horse with five different tags, charger is frozen, steed is
formal, horse is consultative, nag is casual and plug is intimate.
iv. Synonymy with different collocations
This type of synonymous semantic field is formed by words with relatively
same meaning yet different collocations. For example, the words that could
indicate the meaning of accuse are charge, rebuke, reproach and accuse
itself, while the propositions that collocate with them are different. That is
to say, accuse collocates with „ of ‟, charge collocates with „ with ‟, rebuke
collocates with „ for ‟ and reproach with „ for ‟ or „ with ‟.
31. In the market research study referred to above, Island A and Island B,
both in the Caribbean, are simply hyponyms of the broader hypernym
(Islands in the Caribbean). So a consumer with imperfect recollection would
recall the correct name of his preferred brand, if they do not share the same
conceptual background or hyponym. This is because sharing a hyponym in
the form of a conceptual background as the basis of naming various brands,
would create the same idea in the mind of the consumer impairing his
ability to recall his preferred brand name. Similarly, when various brand
names are synonyms of each other, for example, men‟s perfumes being
called Macho , Tough, Stud and Rugged while each of these words may not
mean the same in every context, in the context of men‟s perfumes, they
convey the same idea as that of masculinity. As per the findings of the study
referred to above, the similar brand name recollection impairment could be
observed in such a case as well. Thus, from the findings of the study
provided above, coupled with the legal position on ascertaining similarity of
FAO (OS) Nos.368/2014 & 493/2014 Page 17 of 43


marks based on the ideas conveyed by them, we may arrive at the
conclusion that marks containing words with the same sense relation (or
falling in the same semantic field, or conveying the same or similar idea
in the mind) as that of previously existing marks are likely to be
considered so similar as to be refused registration or deemed to
constitute infringement of the previously existing trademark.
32. However, it is important to create a parameter within which marks
conveying similar ideas should be accorded protection under trademark law.
This is because if protection is accorded to the sense relation of a word, it
raises a slippery slope as to what extent such monopoly over the sense
relations be extended under trademark law. For example, in contrast with
five brands of Orange juice named after islands of the Caribbean would
naming a brand of orange juice after any other island X (which is not in the
Caribbean) would also be prohibited in stating that island X is a hyponym of
the broader hypernym „Island‟? Similarly, would trademark protection of
synonyms extend to all synonyms of the word, such that men‟s perfumes
cannot be named after any word which is synonymous to the word „Tough‟
(such as dangerous or risky)?
33. Thus, a restrictive application needs to be made for protecting words
which share the sense relation, in that, protection should be accorded only to
those sense relations of the word where the context in which they are
applied to the brand name, is the same, which causes similar ideas to be
conveyed in the minds of the consumers. In this regard, one may also briefly
discuss the concept of contextual correlation of semantic similarity ,
articulated by authors George A Miller ( Dept. of Psychology, Princeton
University, Princeton, New Jersey ) and Walter G Charles ( Dept. of
Psychology, Oregon State University, Corvallis, Oregon ) and in the book
Language and Cognitive Processes , [1991, 6(1) 1-28], under the chapter
titled „ Contextual correlates of semantic similarity , where they observe an
FAO (OS) Nos.368/2014 & 493/2014 Page 18 of 43


inverse linear relationship between the similarity of word meanings and the
difference in contexts in which they are used and conclude:
„ … on an average, for words of the same language drawn from
the same syntactic and semantic categories, the more often two
words can be substituted into the same context the more similar in
meaning they are judged to be ‟

34. In the aforementioned two examples one observes that the similarity
in idea conveyed by the word marks, through hyponymy or synonymy, can
only be said to occur when the hyponymy or synonymy exists in a given
context . Thus, when brands of orange juice are named after various islands
of the Caribbean they convey a similar idea, which is likely to be only in
the context of enjoying a glass of orange juice on a beach at one such
tropical island . Similarly, when Men‟s perfumes are named after synonyms
of the word Tough , the commonness of idea is created only when the words
are synonymous in the context of masculinity , and not when any word
which is synonymous to Tough , in a different context (such as dangerous,
or risky ) is used.
Application of the above stated principles to the given case:
35. In the facts of the instant case, it prima-facie emerges clear that
COLLECTOR and OFFICER, may be considered hyponyms of the
hypernym „ persons holding office ‟ or the word COLLECTOR may be
considered a hyponym of the word OFFICER or both COLLECTOR and
OFFICER may be synonymous to each other : „ persons holding office ‟.
What needs to be ascertained, thus, whether these two words exist in
hyponymy or synonymy with each other in the same context, such that the
same idea is conveyed by the marks „ Officer‟s Choice‟ and „ Collectors‟
Choice‟ , causing the likelihood of confusion or deception in the minds of a
consumer of average intelligence and imperfect collection.
The semantic relationship between the words ‘Officer’ and ‘Collector’:
FAO (OS) Nos.368/2014 & 493/2014 Page 19 of 43


36. The Oxford Dictionary defines the words „ Officer ‟ and „ Collector ‟ as
follows:
„Officer‟ - A person holding a position of authority…In India, the chief
administrative official of a Zillah or district, whose special duty is to collect
revenue, but who also (except in Bengal) holds certain magisterial powers.
„Collector‟ - includes:...an officer employed to collect or receive money due,
as taxes, customs etc.
37. The Essential Commodities Act, 1955 defines a Collector as including
an Additional Collector and such other officer, not below the rank of Sub-
Divisional Officer, as may be authorized by the Collector to perform the
functions and exercise the powers of the Collector under this Act.
38. While the word „ Collector ‟ may have more than one meaning, as
claimed by the appellant, it cannot be ignored that this word is commonly
understood by consumers in India as an officer employed to collect or
receive money due, as taxes, customs etc . as is evident from at least the
above definitions. It is this meaning of the word „ Collector ‟ that is relevant
to the present case for the following additional reasons:
i. According to information on the 2011 census on the website of the
Ministry of Human Resource and Development, at least 27 percent of
India‟s population is illiterate and a substantial population is not well versed
in English. Therefore, this segment of the population is likely to be unaware
of the English meaning of the word „ Collector ‟ that the appellant refers to
and would understand „ Collector ‟ to be an „ Officer ‟. It is highly likely that
even a part of this segment falls in the overlap of consumers of the products
in question.
ii. A large segment of the literate population in India would understand
both Hindi and English. Even for this segment of the population, it cannot
FAO (OS) Nos.368/2014 & 493/2014 Page 20 of 43


be ruled that the primary meaning of the word „ Collector ‟ for these
consumers is an „ Officer ‟.
39. As discussed above, words may be associated with one another by
way of sense relations . Sense relationships may be classified as synonyms,
hyponyms and antonyms.
40. Thus we need to explore the sense relationship between „ Officer ‟ and
„ Collector ‟:
i. The word „Collector‟ can be seen a hyponym of the word „Officer‟ -
phrase „Person holding an office of authority‟
a. As discussed above, hyponymy contains all objects that belong to the
same category. Hyponymy can be seen as the relationship between a genus
and its species.
b. One can therefore prima-facie say that the word „ Collector ‟, in some
contexts, can be considered to be a hyponym of the word „ Officer ‟ - „ Person
holding an office of authority ‟. Based on the meaning of the word
„ Collector ‟, as defined in dictionaries and statutes, and the context in which
this term is used in India („ Collector ‟ as commonly understood in India
means an „ Officer ‟, see the dictionary meaning discussed above), one can
say that „ Collector ‟ is a type of „ Officer ‟ and this relationship maybe
depicted in the following manner:


Officer-

Person
holding an
office of
authority

FAO (OS) Nos.368/2014 & 493/2014 Page 21 of 43


Collector Colonel Commissioner Admiral Chief
Engineer

c. This relationship may also be understood by way of this example:
The following officers were present at the event: Collector, magistrate and
commissioner.

ii) „Collector‟ and „Officer‟ may also be seen as relative synonyms of
the phrase/ idea „Person holding an office of authority‟
a. As discussed above, synonyms can be absolute or relative. The
words „ Collector ‟ and „ Officer ‟ may also be considered as relative
synonyms of the phrase/ idea „ Person holding an office of authority ‟ where
they are related by degree. This relationship maybe depicted in the
following manner:
Person holding an

office of authority

Officer Collector Colonel

b. This relationship may also be understood by way of this example:
The highest ranking officer of the district (Collector) was present at the
event.
c. Therefore the word „ Collector ‟ is a hyponym of the word „Officer‟
and both are synonyms of the phrase/ idea „Person holding an office of
authority‟. Hence, the two words are similar.
Whether the words „Officer‟ and „Collector‟ are deceptively similar?
41. Turning to the question whether the two words are deceptively
similar, i.e. whether confusion is likely to take place between these words,
FAO (OS) Nos.368/2014 & 493/2014 Page 22 of 43


we need to explore how related ideas are stored and retrieved by the human
mind.
42. Philosophers and scientists have long believed that similar ideas are
associated in the brain and this association plays an important role at the
time of retrieval of information. This concept of association of ideas has
been explained by philosophers such as David Hume and John Stuart Mill.
43. David Hume in An enquiry concerning human understanding
introduced the notion that there could be principles of connection amongst
ideas and mentioned three principles of connection namely, resemblance,
contiguity in time or place, and cause or effect.
th
44. In the 19 century, John Stuart [see Mill in Stanford Encyclopedia of
Philosophy („Mill‟) ] used Hume‟s idea that there could be principles of
connection amongst ideas stated by and developed a theory of association to
explain how the human mind associates ideas.

45. Mill‟s theory of associative memory proposes that if „ f’ and „ g’ are
regularly presented in experience as standing in relation to „ R’ , then the
habit forms in the mind, that if we have an impression or idea of „ f’ then it is
accompanied with the idea of „ g’ . „ R’ in Mill‟s theory is the connection
amongst ideas stated by Hume earlier.
46. One can apply Mill‟s above theory to the present case in the
following way:
i. f = Officer
ii. g = Collector
iii. R = Person holding an office of authority.
47. ‘R’ in the present case is a person holding an office of authority and
this is the connection between both „ Officer ‟ and „ Collector ‟. We have
already understood earlier that the words „ Collector ‟ and „ Officer ‟ are
synonyms of a „ Person holding an office of authority ‟. Therefore,
according to the above theory, in the human mind, when both „ Collector ‟
FAO (OS) Nos.368/2014 & 493/2014 Page 23 of 43


and „ Officer ‟ would be regularly presented in relation to „ a person holding
an office of authority ‟ a habit would form where thinking of „ Officer ‟ shall
bring to the mind the word „ Collector ‟.
48. The book Cognitive Psychology, Solso Et. Al, Ed. VIII talks about
various theories of how knowledge is stored in the human mind. The crux of
each of these theories is that similar words, concepts and items that are
linked by association are grouped together in the brain.
49. For instance, the Set-Theoretical Model deals with semantic
concepts. Illustratively, under this theory, a fruit would be a semantic
concept and types of fruits such as banana would be grouped along with
other fruits under the concept of fruit in the human mind. Even under this
theory, one can prima-facie say that the words „ Officer ‟ and „ Collector ‟ can
be grouped under the concept of „ Person holding an office of Authority ‟
and/or „ Collector ‟ may also be stored under the concept of „ Officer ‟.
50. It would be interesting to note that the United States Patent and
Trademark Office Trademark Trial and Appeal Board in a trademark
cancellation proceeding (H. Sichel Sohne, GmbH v. John Gross & Co., 204
USPQ 257), applied the concept of similarity of meanings of marks while
holding the marks „ Blue Nun ‟ and „ Blue Chapel ‟ deceptively similar,
observed as under:-
“…we are particularly aware of the close relationship between
nun and chapel. In view of the fact that the prayer activity and
meditation in the daily life of a nun very frequently takes place in
a rather small edifice or structure known as a chapel we must
conclude that the words nun and chapel are more closely allied to
each other…”

Retrieving information from human memory:
51. Finding information in the organized long term memory store is aided
by retrieval cues. (See Introduction to Psychology, Clifford T. Morgan et al,
FAO (OS) Nos.368/2014 & 493/2014 Page 24 of 43


Ed. VII ). This book explains the concept of retrieval with the following
example:
“Suppose, for example, you are learning German. Some German
words will at the time you encode them be readily associated with
English words; Hund, the German word for dog reminds you of
the English word Hound. When you later see the German word
Hund, you can easily recall its English meaning because you
generated the retrieval cue Hound which you encoded along with
the target word Hund.”
52. These cues need not directly elicit the brand name but may instead
simply enhance the likelihood of a particular brand, or set of brands, being
elicited ( Conceptualizing and Measuring brand salience, Romaniuk and
Sharp, Marketing Theory Vol. 4(4):327-342 ).For example, in the present
case, the cue could be „ Person holding an office of authority ‟.
53. Another factor to bear in mind regarding retrieval of information
from human memory is the process of reconstruction of information or the
generation of false memories. Cognitive Psychology, Solso et al, Ed. VIII ,
explains this process in the following experiment:
“…Students read (or have read to them) the following list: Rest,
Nap, Sheets, Night, Snooze, Bed, Doze, Pillow, Dream, Snore,
Awake, Tired, Wake, Blanket, Slumber, Nap, Yawn, Drowsy…The
researchers found…that participants recalled many of the words
accurately but a large number of them recalled the word
Sleep…The semantically similar and strongly associated words in
the list created the false memory of having read (or heard) the
word Sleep.”
54. That consumers have imperfect recollection is well accepted in
trademark jurisprudence. In Australian Law of Trademarks and Passing Off,
D.R. Shanahan, Ed. 1990,the author talks about recall of ideas by consumers
wherein an idea suggested by a mark is more likely to be recalled than the
precise details of the mark.
55. A similar view is expressed in Kerly‟s Law of Trademarks and Trade
names, Ed. XV:
FAO (OS) Nos.368/2014 & 493/2014 Page 25 of 43


“It would be too much to expect that persons dealing with
trademarked goods, and relying as they frequently do on marks
should be able to remember the exact details of the marks upon
the goods with which they are in the habit of dealing. Marks are
remembered rather by general impressions or some significant
detail then by any photographic recollection of the whole.”
56. In the decision reported as 171 USPQ 696 Watercare Corp. v.
Midwestco Enterprise Inc. the United States Patent Office Trademark Trial
and Appeal Board held:
“It is our opinion that such confusion is likely under the fact
situation herein. The most significant feature of the marks herein
involved and that one by which the goods and services of the
parties will generally be referred to and called for is the literal
feature of each mark, Aquacare and Watercare respectively.
These marks are similar to the extent that each contains the word
CARE which we are not persuaded possesses anything other than
a suggestive significance as applied to water conditioning
equipment and services preceded by words which are synonyms
for one another. Undoubtedly, as used in connection with such
goods and services, Aquacare and Watercare engender the
identical commercial impression. These points of similarity are
significant considering the fallibility of the memory of purchasers
including those considered to be discriminating purchasers as to
their recollection of trademarks and the propensity of individuals,
as a result thereof, to often remember one portion of a mark and
to substitute a synonyms or something similar for what they
believe another portion to be.”
57. So, when a consumer has to make a decision regarding a purchase,
and is confronted with the product of the appellant with the mark
„ Collector‟s Choice ‟, the word „ Collector ‟ shall bring to his mind the cue
„ Person holding an office of authority ‟ which is related to the word „ Officer ‟
since both trademarks in the present case are used in the same context for
whisky. As discussed above, this cue may guide the consumer in confusing
the appellant‟s whisky with that of the respondent or may generate a false
memory that will lead to confusion.
FAO (OS) Nos.368/2014 & 493/2014 Page 26 of 43


58. According to the study on Distinctive Brand cues and memory for
product consumption experiences, Warlop et al , brands that share semantic
associations, like in the present case, which the study refers to as
„ undifferentiated brands ‟ are likely to be confused by consumers.
59. Admittedly, the labels and get up of the two products are dissimilar.
However, the study on Distinctive Brand cues and memory for product
consumption experiences notes that:
i. cue formed from the meaning of the brand is much stronger than the
cue formed by the packaging of the product of the brand. Therefore, if the
meaning of the brands is similar/same, then the difference in packaging may
still lead to confusion.
ii. there is a likely consumer belief that brand names identify different
choice alternatives uniquely, while packaging colours and shape often do
not.
60. McCarthy on trademarks and Unfair Competition also emphasizes
the importance of impact of similarity in meaning and states that “ mental
impact of similarity in meaning maybe so pervasive so as to outweigh any
visual or phonetic differences that is the psychological imagery evoked by
the respective marks may overpower the respective similarities or
differences in appearance and sound.”
61. A similar view was taken by the United States Patent and Trademark
Office Trademark Trial and Appeal Board while deciding trademark
cancellation proceedings in the decision reported as 204 USPQ 257 H.Sichel
Sohne, GmbH v. John Gross & Co., wherein it held that “ the fact that the
marks have aural and optical dissimilarity is not necessarily controlling on
the issue of likelihood of confusion in the marketplace where the marks
convey the same general idea or stimulate the same mental reaction … That
is, similarity in meaning or significance alone is sufficient to indicate a
FAO (OS) Nos.368/2014 & 493/2014 Page 27 of 43


likelihood of confusion, especially where, as in the present case, the marks
are coined or arbitrary.”
62. According to Kerly‟s Law of Trademarks and Trade names, Ed. XV:
“Variations in details might well be supposed by customers to
have been made by the owners of the trademark they are already
acquainted with for reasons of their own.”

63. Since the marks „ Officer‟s Choice ‟ and „ Collector‟s Choice ‟ are
prima-facie deceptively similar as they convey the same meaning, the
impact of different trade dress is highly unlikely to rule out consumer
confusion between the two products in this case, especially since consumers
expect manufacturers of alcoholic beverages to churn out variants.
Nature of goods/ services in respect of which they are used as
trademarks :
64. Admittedly, both parties are using the marks in question for whisky.
The respondent uses the trademark „ Officer‟s Choic e‟ for a series of variants
as „ Officer‟s Choice Blue ‟ as disclosed in the plaint. Therefore goods of
both parties in this case are identical.
Class of purchasers who are likely to buy the goods
65. The class of purchasers of the two products are highly likely to be
overlapping since the two products are whiskies and according to the
appellant, the price difference between the two products is about 126.
`
66. In view of the above, prima-facie it is highly likely that customers of
both parties for the products in question are undiscriminating purchasers.
Mode of purchasing the goods or placing orders for the goods
67. According to Mill , the anticipation of the pleasure from consuming a
product in the future acts as a cause for bodily motion to bring about that
pleasure. Therefore, once a consumer associates the respondent‟s „ Officer‟s
Choice ‟ product with pleasure, the consumer shall, in anticipation of
FAO (OS) Nos.368/2014 & 493/2014 Page 28 of 43


pleasure, once again select „ Officer‟s Choice ‟. Through repeated
consumption that leads to a good experience, the meaning of the
respondent‟s „ Officer‟s Choice ‟ shall for the individual consumer become
associated with the good experience.
68. As noted in Distinctive Brand cues and memory for product
consumption experiences , associations in memory tend to decay over time,
leading to forgetting as well as recall of the wrong targets. In addition,
memory for brand quality may be impeded by significant delays between
consumption experiences and subsequent purchase occasions when retrieval
is attempted.


69. This was also held in the decision reported as [1958] RPC 387 Harry
Reynolds v. Laffeaty‟s Ld., Dodwell & Coy, Ld., and S Guiterman & Coy,
Ld., by the High Court of Justice – Chancery Division:
“I think the ordinary member of the public seeing an
“Aquamatic” water pistol one day and a “Watermatic” water
pistol months afterwards would be more likely to be confused, and
I propose to grant an injunction and ancillary relief accordingly.”
70. Therefore, the likelihood of confusion between similar marks
increases with increase in passage of time and sequential consumption of
the products.
71. The appellant‟s argument that its „ Collector‟s Choice ‟ product is
more expensive than the respondent‟s „ Officer‟s Choice ‟ product does not
negate the likelihood of confusion in this case for at least the following
reasons:
i. The price difference between the respondent‟s „ Officer‟s
Choice ‟(which according to the appellant was sold at ` 208 at the time of
filing the suit and is now sold at ` 277) and the appellant‟s „ Collector‟s
Choice ‟ (which was sold at 404) is under 200 which is a very small
` `
difference.
FAO (OS) Nos.368/2014 & 493/2014 Page 29 of 43


ii. The respondent has stated in the plaint that it introduced a variant of
its „ Officer‟s Choice ‟ whisky called „ Officer‟s Choice Blue ‟ in 2011. The
appellant has stated in its written submissions that the respondent‟s
„ Officer‟s Choice Blue ‟ is in the same price range as the appellant‟s
„ Collector‟s Choice ‟.
72. It is also the appellant‟s case that the products in question are
occasional products. As discussed, likelihood of confusion increases with
increase in passage of time and sequential consumption of the products. In
fact the appellant has not denied that the two products are sold through
common venders.
73. Based on the above, we conclude that it is likely that once a
consumer is confused between the marks „ Officer‟s Choice ‟ and
„ Collector‟s Choice ‟, especially when it is likely that he consumes one
subsequent to the other and after some time, he or she may confuse the
experience associated with them.
Intention of the appellant

74. In this case, it is apparent from the appellant‟s reply to the
Trademarks Examiner that the appellant was aware of the respondent‟s
trademark.
75. The appellant in its reply to the examination report issued by the
Trademarks Office stated as follows:
“We would like to further submit that some of the names/ marks
like “OFFICER‟S CHOICE” & “MINISTER” which have
become customary in the current language have also been
accepted by the Learned Examiners in the past so why not our
mark be accepted and advertised.”

76. On the facts above the possibility of appellant‟s dishonest intention in
adopting the impugned mark cannot be ruled out at this stage.
77. As regards the question of this court‟s jurisdiction for entertaining the
respondent‟s passing off claim, the same can be decided during trial as the
FAO (OS) Nos.368/2014 & 493/2014 Page 30 of 43


averments in the plaint make a case for entertaining such a claim on a quia
timet basis.
78. From the above analysis, we conclude that the view taken by the
learned Single Judge that the use of the mark „ Collector‟s Choice ‟ by the
appellant for whisky is likely to cause confusion with the respondent‟s
whisky sold under the mark „ Officer‟s Choice ‟ is based on sound
application of legal principles, and thus we dismiss the appeal but without
any order as to costs; and the usual line of caution. Facts noted by us and
law applied is limited to decide the interim measure pending adjudication of
the suit on merits, which shall be finally decided uninfluenced by the
present decision keeping in view the evidence led.
79. We now proceed to apply the aforesaid principles to the facts of FAO
(OS) No.493/2014.
Nature of the mark :
80. We are limiting our enquiry to the respondent‟s registrations that are
pleaded in the plaint. It is the respondent‟s case that it adopted the
trademark „ Officer‟s Choice ‟ for alcoholic beverages in 1988 and has been
using the same ever since. The respondent has pleaded registrations for its
„ Officer‟s Choice ‟ label dating back to 1990. In our view, the trademark
„ Officer‟s Choice ‟ is an arbitrary mark for whisky and even though the two
words may be common, they are arbitrary to the goods in question [See 537
F.2d 4 (2d Cir. 1976 Abercrombie and Fitch v. Hunting World,), for the
different categories of trademarks – Generic; descriptive; suggestive and
arbitrary or fanciful]. An example of an arbitrary mark is „Apple‟ the name
of a common fruit, which is also a dictionary word, for computers.The
Respondent‟s huge sales and success under the trademark „ Officer‟s Choice ‟
as pleaded show that the Respondent has vast reputation and goodwill in the
said mark. The Appellant is using a composite word mark „ Officer‟s
Special ‟ and a label.
FAO (OS) Nos.368/2014 & 493/2014 Page 31 of 43


Degree of resemblance between the marks :
81. In paragraphs 15 to 17 above we have already discussed the effect of
the disclaimed on the word „ Choice ‟ in two of the respondent‟s trademark
registration and hence we need not reiterate the said discussion which may
be read as part of the present paragraph.
82. On the question of similarity of the word marks of the parties, i.e.
„ Officer‟s Choice ‟ and „ Officer‟s Special ‟, the Appellant had argued that it
uses the prefix „ Sentini ‟ and hence its mark if sufficiently distinct from that
of the respondent, a contention which we reject since adding a prefix to an
otherwise deceptively similar mark may still not sufficiently distinguish the
marks as held by the Supreme Court in the decision reported as (2002) 3
SCC 65 Laxmikant Patel v. Chetan Bhai Shah . In any event, the font of the
word „ Sentini ‟ on the respondent‟s label is much smaller than that of
„ Officer‟s Special ‟. Therefore, the addition of the word „ Sentini ‟ will not
sufficiently distinguish the appellant‟s mark from that of the respondent if
we were to conclude that the mark „ Officer‟s Special ‟ is deceptively similar
to the respondent‟s mark „ Officer‟s Choice ‟.
83. In paragraphs 18 we have discussed the anti-dissection rule and
comparing dominant part. While discussing FAO (OS) No.368/2014 we
have already held that the first part of the respondent‟s trademark „ Officer ‟
is dominant and is an essential feature of its mark. We are unable to decide
the question of the dominance of the second part of the respondent‟s
trademark i.e. „ Choice‟ at this stage without further material and thus the
question could be decided after the trial.
84. The appellant had argued that under Section 17 of the Trademarks
Act, 1999 the respondent would need a separate application or registration
for each of the words „ Officer ‟ and „ Choice ‟ before it can claim
infringement with respect to the same.
FAO (OS) Nos.368/2014 & 493/2014 Page 32 of 43


85. The appellant‟s trademark „ Officer‟s Special ‟ has the word „ Officer ‟
which is a dominant part of the respondent‟s trademark „ Officer‟s Choice ‟.
In the decision reported as 2012 (50) PTC 433 (Del) (DB) United Biotech
Pvt. Ltd. v. Orchid Chemicals and Pharmaceuticals Ltd. & Ors. it was held
as follows:
We find that the Learned Single Judge rightly held that when a
label mark is registered, it cannot be said that the word mark
contained therein is not registered. We, thus, are of the opinion
that although the word „ORZID‟ is a label mark, the word
„ORZID‟ contained therein is also worthy of protection. The
Learned Single Judge has rightly observed that the judgment of
the Supreme Court in Ramdev Food Products Ltd. (supra) is a
complete answer. This aspect is considered and the argument of
the Appellant is rejected in the following words:

“27. On whether the OCPL could successfully ask for
rectification for UBPL‟s word mark FORZID
notwithstanding that OCPL held registration only for a
label mark, the judgment of the Supreme Court in Ramdev
Food Products Ltd. v. Arvindbhai Rambhai Patel AIR
2006 SC 3304: 2006 (33) PTC 281 (SC) is a complete
answer. The Court there referred to an earlier decision in
Registrar of Trademarks v. Ashok Chandra Rakhit AIR
1955 SC 558: PTC (Suppl) (1) 1 (SC) , which concerned
the proprietory mark „Shree‟ which formed part of the
device as a whole and was an important feature of the
device. The Supreme Court observed that registration of a
trademark as a whole would give the proprietor “a right
to the exclusive use of the word „Shree‟ as if separately
and by itself”. Therefore, it would not be correct for
UBPL to contend that the registration held by OCPL does
not cover the word mark ORZID”.
We are in agreement with the aforesaid approach…

86. Since the appellant has prima-facie copied an essential feature of the
respondent‟s trademark, Section 17 of the Trademarks Act, 1999 is
inapplicable to this case. The appellant had also relied on the decision
reported as 2010 (42) PTC 514 Del Nestle India Ltd. v. Mood Hospitality, in
FAO (OS) Nos.368/2014 & 493/2014 Page 33 of 43


which it was held that the defendant therein was using the mark in question
in a descriptive manner and that the plaintiff did not enjoy reputation in a
part of the composite mark that was used by the defendant. Therefore, the
above decision is inapplicable to the present case.
87. During the course of the hearing, the learned senior counsel for the
appellant also relied on a search report from the Trademarks register for the
word „ Officer ‟ in class 33 (this class covers alcoholic beverages). This list
cited 25 applications/ registrations with the word „ Officer ‟. The respondent
submitted that out of these 25 applications/ registrations:
 18 belonged to the Respondent
 the status of 2 was „removed‟
 2 had been „abandoned‟
 1 was at a preliminary stage and had not been published in the
Trademarks journal so far. Further, there was no proof of use of the said
mark
 1 application belongs to the Appellant for the impugned mark;
 The status of 1 application for „ Officer‟s Club ‟ label is opposed. The
Respondent has submitted that in any event it is the registered proprietor of
the mark „ Officer‟s Club ‟.
88. The fact that a mark is common to the trademarks register may not
mean that it is common to the trade. Furthermore, for an argument common
to the trade to succeed, evidence of extensive use of the mark in question
needs to be shown. The appellant has relied on copies of a few third party
labels, none of which uses the mark „ Officer ‟. In the present case, the word
„ Officer ‟ is not common to the register and there is no evidence to show that
it is common to the trade. For the above stated reasons, the decision
reported as 2010(42) PTC 772 (Del) Schering Corporation & Ors. V. Alkem
FAO (OS) Nos.368/2014 & 493/2014 Page 34 of 43


Laboratories Ltd. , cited by learned senior counsel for the appellant is
inapplicable to the present case.
89. In paragraphs 24 to 34 above we have already discussed how similar
ideas are stored and retrieved in the human mind and how similarity in an
idea can be created. Said discussion may be read as a part of the present
paragraph pertaining to the application thereof to the facts of FAO (OS)
No.493/2014.
Application of the said principles in the given case :
90. Examining the similarity in the meanings of the composite mark of
the appellant and the respondent, as already discussed, the word „ Officer ‟ is
common to both the trademarks in question. Further, the words „ Choice ‟
and „ Special ‟ share a sense relation of relative synonymy where they are
related by degree as explained below.
91. The word „ Choice ‟ is defined by the Oxford Dictionary as:
“ A person or thing specially chosen or selected; the elite; the best
of a group etc. ”


92. The word „ Special ‟ is defined by the Oxford Dictionary as:
“ held in particular esteem or affection; of particular value or
important to ”

93. According to the Collins Word finder, Ed. 1999 , „ Special‟ is
synonymous with „ Choice‟ . Therefore, the meaning conveyed by the
appellant‟s trademark „ Officer‟s Special ‟ is similar to the meaning conveyed
by the respondent‟s trademark „ Officer‟s Choice ‟. Hence, the two word
marks in this case are prima-facie deceptively similar.
Comparison of the labels :
94. Turning to the question of deceptive similarity of the labels of both
parties, the two labels need to be noted. They would be :-
Appellant’s label
FAO (OS) Nos.368/2014 & 493/2014 Page 35 of 43



This is the Appellant‟s label for „ Officer‟s Special ‟
which it claims to have adopted in 2007.

Respondent’s labels



Label 1
Label 2
Label 3



This label is the subject matter of
This label is the
This label is the subject
the Respondent‟s trademark
subject matter of the
matter of the
registration no. 538927 for whisky.
Respondent‟s
Respondent‟s copyright
The date of this trademark
copyright
registration A-57173/99
registration is 538927
registration A-
dated 16.12.1999.
The word „Choice‟ is disclaimed in
54982/98 dated
this registration.
11.08.98.

FAO (OS) Nos.368/2014 & 493/2014 Page 36 of 43






Label 5
Label 4


This is the Respondent‟s „Officer‟s
This label is also used by
the Respondent.
Special‟ label that it submitted was
approved in Chattisgarh in 2005.

Admitedly, this label was not
renewed by the Respondent
therefater.

95. For trademark infringement, we will consider only label 1 of the
respondent which is registered as a trademark in India. The respondent‟s
word mark „ Officer‟s Choice ‟ is an essential feature of this label as
consumers are bound to refer to the respondent‟s product by this mark. We
disagree with the appellant‟s argument that the only essential feature of the
respondent‟s labels is the insignia on the label . Since we have already
held that prima-facie the word mark „ Officer‟s Special ‟ is deceptively
similar to the mark „ Officer‟s Choice ‟, therefore, the appellant‟s mark
„ Officer‟s Special ‟ would prima-facie be deceptively similar to the
FAO (OS) Nos.368/2014 & 493/2014 Page 37 of 43


respondent‟s label „ Officer‟s Choice ‟ label, especially since consumers
expect manufacturers of alcoholic beverages to churn out variants.
96. Furthermore, for the purpose of passing off, we consider labels 1, 2, 3
and 5 of the respondent. The respondent has been using the said labels
and/or their minor variants with the mark „ Officer‟s Choice ‟ since 1988.
While the labels may have been altered over the years, the word mark
„ Officer‟s Choice ‟ has remained consistent, thereby creating the same
commercial impression. We do not consider label 4 for passing off since
the respondent admittedly did not sell any products under this label. The
appellant‟s label for „ Officer‟s Special ‟ prima-facie gives the same visual
impression as labels 1, 2, 3 and 5 of the respondent identified above. As
discussed above, the presence of the prima-facie deceptively similar mark
„ Officer‟s Special ‟ on the appellant‟s label makes the label of the appellant
deceptively similar to the respondent‟s label No.1. Furthermore, similarities
that give the same overall impression between the appellant‟s label and
respondent‟s labels No.2, 3 and 5, in addition to the deceptively similar
mark „ Officer‟s Special ‟ are a golden border on a white background, use of
the deceptively similar mark „ Officer‟s Special ‟ in red font and the style and
font in which „ Officer‟s Special ‟ is written on the label.
97. We therefore prima-facie conclude as follows:
a. The appellant‟s word mark „ Officer‟s Special ‟ is prima-facie
deceptively similar to the trademark „ Officer‟s Choice ‟ of the respondent;
b. The appellant‟s label for „ Officer‟s Special ‟ is deceptively similar to
the trademark „ Officer‟s Choice ‟ label No.1 of the respondent for the
purpose of infringement and labels 1, 2, 3 and 5 for the purpose of passing
off.
Nature of goods/ services in respect of which they are used as
trademarks :
FAO (OS) Nos.368/2014 & 493/2014 Page 38 of 43


98. Both parties are using the marks in question for IMFL. The difference
between the products cited by the appellant, i.e. its whisky is produced from
grains, is highly unlikely to rule out an otherwise probable likelihood of
confusion. Therefore goods of the parties in this case are identical.
99. The respondent has also been using the mark „ Officer‟s Choice ‟ for
packaged drinking water as is evident from the respondent‟s sales
promotion material filed in the suit, a copy of which is filed in the present
appeal by the appellant. Since the product of the appellant, i.e. whisky/
IMFL, is allied and cognate to packaged drinking water, it is likely that
consumers will be confused into believing that the appellant‟s „ Officer‟s
Special ‟ whisky originates from the respondent.
Class of purchasers who are likely to buy the goods
100. The class of purchasers of the two products are highly likely to be
overlapping since the two products are IMFL and they are sold through
common vends.
101. Further, it is highly likely that customers of both parties for the
products in question are undiscriminating purchasers.
Mode of purchasing the goods or placing orders for the goods
102. As discussed while discussing FAO (OS) No.368/2014, the
likelihood of confusion between similar marks increases with increase in
passage of time and sequential consumption of the products.
103. In the instant case, sequential consumption of the two products is of
course highly probable. These products are also sold through common
vendors where not only the consumer can be susceptible to confusion but
also the vendors who deal in these products.
104. It is likely that once a consumer is confused between the marks
„ Officer‟s Choice ‟ and „ Officer‟s Special ‟, especially when it is likely that
he consumes one subsequent to the other and after some time, he or she may
even confuse the experience associated with them.
FAO (OS) Nos.368/2014 & 493/2014 Page 39 of 43


Intention of the Appellant
105. The stark similarities between the appellant‟s „ Officer‟s Special ‟
label and that of the respondent as discussed above are unlikely to be mere
coincidental, especially since the appellant‟s adoption of the impugned label
is admittedly subsequent to that of the respondent.
106. The appellant had filed an opposition against a trademark application
filed by the respondent for the mark „ Officer‟s Choice ‟. The appellant has
stated as follows:
…The mark „Officer‟s Choice‟ under the impugned application is
visually, phonetically, structurally and confusingly, deceptively
similar to our reputed and well known trademark „Officer‟s
Special‟…

107. Based on the above discussion, we prima-facie conclude that the
appellant‟s mark and label for „ Officer‟s Special ‟ are deceptively similar to
the respondent‟s mark and labels 1, 2, 3 and 5 for „ Officer‟s Choice ‟ and are
likely to cause confusion among consumers. The appellant‟s impugned
mark and label amount to infringement of the respondent‟s registered
trademarks No.538927 and 610451 and passing off of the mark „ Officer‟s
Choice ‟ and labels No.1, 2, 3 and 5.
108. Turning to the question of copyright infringement in this case, we
will compare for this purpose the appellant‟s label with labels No.4 and 5 of
the respondent.
General principles for copyright infringement
109. A summary of general principles in copyright infringement of artistic
work should read as under:-
i. Copyright protects expression of an idea and not the idea itself.
ii. A registration is a not a prerequisite for copyright.
iii. According to Section 2(c) of the Copyright Act, 1957, an artistic
work means a painting, a sculpture, a drawing (including a diagram, map,
FAO (OS) Nos.368/2014 & 493/2014 Page 40 of 43


chart or plan), an engraving or a photograph, whether or not any such work
possesses artistic quality; a work of architecture and any other work of
artistic craftsmanship.
iv. Copyright infringement may be of the following kinds:
a. Direct infringement
b. Indirect infringement

 Contributory/ induced infringement:
One who contributes to or promotes copyright infringement may be liable
for contributory or induced infringement.
 Vicarious infringement:
One who controls the acts of the infringer may be liable for vicarious
infringement.
v. To establish copyright infringement, the right holder must show:
a. Ownership of the work
b. Copyright ability of the work
 The work should be original
 The work should have a „modicum of creativity‟
 The work should be protectable expression.
c. Copying of the work by the Defendant
 This can be proved by showing substantial similarity between
protectable elements. According to Copinger and Skone on Copyright,
South Asian edition, 2008 , this test has been put in a number of similar ways
such as „ Has the defendant made a substantial use of those features of the
claimant‟s work in which copyright subsists?‟
 In the United States, the abstraction-filtration-comparison test [as
nd
first laid down in 23 USPQ 2d 1241 (2 Circuit 1992) Computer Associates
Ltd. v. Altai Inc. has been followed by some courts for substantial
reproduction, especially in software infringement cases.
FAO (OS) Nos.368/2014 & 493/2014 Page 41 of 43


110. The appellant submitted that it has a copyright registration for its
impugned label. The respondent has filed a cancellation against this
registration and in our view the appellant‟s copyright registration is not a
bar to the respondent‟s claim enforcing its prior copyright.
111. The respondent‟s copyright claim is limited to infringement of labels
No.2, 3 and 4 above which are covered by the definition of artistic works
under the Copyright Act. In our view, the appellant‟s label is not a
substantial reproduction of the respondent‟s labels No.2 and 3.
112. Comparing label No.4 of the respondent with the appellant‟s label
which according to the respondent was approved by the Excise
Commissioner of Chhattisgarh in 2005, at the very least, the combination of
all features, the insignia on the label, the manner in which „ Officer‟s
Special ‟ is written in the above label are original to the respondent.
113. The appellant‟s label has the same colour
combination, border, manner in which „ Officer‟s Special ‟ is written across
the label as the respondent‟s label. We therefore prima-facie conclude that
the appellant‟s label is a substantial reproduction of the respondent‟s label
No.4.
114. We hold that prima-facie the appellant‟s label for „ Officer‟s Special‟
infringes the label No.4 of the respondent.
115. On the question whether the respondent concealed material facts
regarding the proceedings between the parties before the Excise
Commissioner, in our view, the respondent has disclosed material
FAO (OS) Nos.368/2014 & 493/2014 Page 42 of 43


particulars of these proceedings in the plaint. We agree with the findings of
the learned Single Judge in this regard. Furthermore, the issue of
infringement of trademark, copyright and passing off cannot be decided by
the Excise Commissioner.
116. Dismissing FAO (OS) No.493/2014 we add the usual line of caution
by simply recording that the caution noted by us in paragraph 78 above
pertaining to FAO (OS) No.368/2014 shall also apply to FAO (OS)
No.493/2014.
117. To summarize, both the appeals are dismissed but without any order
as to costs.


(PRADEEP NANDRAJOG)
JUDGE



(PRATIBHA RANI)
JUDGE
JULY 06, 2015
mamta

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