Search

Obtaining an Interim Injunction: In New Delhi, it's a breeze.

In the UK in the 1990s, a particular kind of alcoholic beverage called ‘alcopops’ became popular. English is fairly good at inventing portmanteau words – basically, words that are made up of two other words. Recent notable examples of portmanteau words in English are ‘Brexit’ (made up of ‘British’ and ‘exit’), referring to the process of the UK leaving the European Union, and ‘affluenza’ (a mixture of ‘affluent’ and ‘influenza’, and referring to the idea that being affluent – wealthy – makes you more prone to having a lack of motivation or empathy).


One particular alcopop (a mixture of alcohol and a soft - ‘pop’ - drink) that became popular, both in the UK and worldwide, was manufactured by Bacardi Limited, a company which was first known for its white rum but now with a wide portfolio in the alcoholic beverages and spirits sector. This particular alcopop, made of a cocktail of rum, fruit flavouring, and sparkling water, was given the trade name ‘Bacardi Breezer’.


On Friday 12th November 2021, the New Delhi (India) High Court heard an application by Bacardi for an interim injunction in a trademark infringement action it has brought against an Indian company, Bahety Overseas Pvt Limited (‘Bahety’).


Bahety is a limited company which manufactures non-alcoholic beverages. One of these beverages, which Bahety began to market, is called ‘FREEZ Mix’. Bacardi commenced legal proceedings against Bahety. The essence of the claim is that Bahety’s product infringes Bacardi’s registered trademarks (numbers 32 and 33) which contain the word ‘BREEZER’. The trademark also includes the shape of the bottle in which the product is sold.


In June 2015, Bahety applied for trademark registration of a device mark, ‘FREEZ’. This application was, in fact, refused by the Registrar of Trade Marks. In September 2020, Bacardi issued a ‘cease and desist’ [1] notice to Bahety, alleging that the ‘FREEZ’ mark was deceptively similar to Bacardi’s registered ‘BREEZER’ mark. A month later, Bahety applied to register the trademark ‘FREEZMIX’ with the Ahmedabad Registrar of Trade Marks, which was successfully completed in April 2021. Subsequently, Bacardi filed a law suit against Bahety, claiming infringement of its own registered trade mark.


The High Court judge, Justice Hari Shankar, granted Bacardi’s application for an interim injunction. Justice Shankar accepted that the two trade marks were not visually similar, but were phonetically similar. The court held that phonetic similarity is what is required, rather than phonetic identity.


Justice Shankar further held that Bahety intended to establish a trademark of a kind that was so similar to Bacardi’s that:


“it would lead an uninformed and unwary customer to justifiably presume an association between the two marks.”


The interim order will remain in force until the conclusion of the legal proceedings. A full transcript of the court’s ruling can be found here [2].


Notes:

[1] ‘cease and desist’ is what is called a ‘legal doublet/double/pair’. Essentially, these are two words that are synonyms, or close synonyms. Best practice in legal writing and drafting now is to try to avoid these kinds of expressions. However, care should be taken, as occasionally the two words do have different meanings, even if the difference might be slight. ‘Cease and desist’ is one such legal pair.

[2] https://curiousforlaw.com/wp-content/uploads/2021/11/Read-Judgment-4.pdf


If something is 'a breeze', it means it is easy to do.



Note: This article is for information and educational purposes only. It is not intended to be, and should not be taken to be, legal advice or assistance. If you need legal advice, you should consult an appropriate lawyer.



© Cambridge Legal English Academy 2021

6 views0 comments