Phonetic Similarity and Dominant Feature Appropriation in Identical Trade Channels Constitute Infringement Despite Laudatory Prefixes

The Petitioner, a leading liquor manufacturer since 1943, adopted the trademark "MASTIH" in 1969 and its Devanagari transliteration "मस्तीह्" in 1992.

It holds registrations for several composite marks and labels in Class 33 for alcoholic beverages, with "MASTIH" as a flagship brand generating over ₹1,500 crores in annual sales.

In 2021, Respondent No. 1, who had a prior bottling relationship with the Petitioner, adopted the mark "GRAND MASTI / ग्रैंड मस्ती" for country liquor.

After several cease-and-desist notices and a limited "No Objection Certificate" (NOC) granted by the Petitioner in 2023 for a specific label to exhaust old stock "without prejudice" Respondent No. 1 continued using various labels where "MASTI" was the dominant feature.

The Petitioner filed this petition under Section 57 of the Trade Marks Act, 1999, seeking the removal of Respondent No. 1’s registration No. 4832282.

The Court applied Sections 11(1), 11(3)(a), 11(10)(ii), and 57 of the Trade Marks Act, 1999, regarding relative grounds for refusal and rectification based on deceptive similarity and bad faith.

It relied on the "Anti-Dissection Rule" as interpreted in *South India Beverages Pvt Ltd v. General Mills Marketing Inc*, noting that identifying a dominant feature is not a violation of the rule.

The "Dominant Feature Test" from *WOW MOMO Foods v. WOW Burger* was used to determine if a portion of a composite mark is its essential feature.

Regarding the "without prejudice" clause, it relied on *NTPC Ltd. v. Reshmi Constructions* and *Supdt. (Tech. I), Central Excise v. Pratap Rai*, which establish that such declarations preserve rights.

The Court also followed *Mohan Meakin Limited v. A.B. Sugar Limited* regarding lower consumer discernment in the country liquor segment.

The Court found that "MASTIH" is the dominant and distinctive element of the Petitioner’s marks through decades of extensive use and reputation.

Comparing "MASTIH/मस्तीह्" and "MASTI/मस्ती," the Court determined they are phonetically identical.

Applying the "Dominant Feature Test," the Court observed that the Respondent’s packaging (Label-6) emphasized "MASTI" while shrinking the laudatory prefix "GRAND," confirming a dishonest intent to ride on the Petitioner’s goodwill.

The Court rejected the "common to trade" defense, stating a registered proprietor cannot claim a mark is common to trade while asserting its own exclusivity.

The "without prejudice" NOC was held to be a limited interim arrangement for a specific financial year to mitigate losses, which did not constitute a waiver of statutory rights.

Finally, the Court affirmed its jurisdiction, noting that the Excise Commissioner’s role in label approval does not impinge on the Court's power to rectify the Trademark Register.

The issues were answered as follows: 1) Yes, there is a clear likelihood of confusion in the price-sensitive country liquor segment; 2) Yes, the Petitioner can protect the dominant part of its registered composite marks; 3) No, the "without prejudice" NOC did not create an estoppel; 4) No, the Court has exclusive jurisdiction over rectification.

The petition was allowed, and Registration No. 4832282 was ordered to be cancelled and removed from the Register of Trade Marks.