Brewed Confusion: Similar Label and Trademark Infringement

Introduction

In the vibrant and competitive world of alcoholic beverages, brand identity plays a crucial role in establishing market presence and consumer loyalty. A recent legal dispute, in the case of Mount Everest Breweries Limited through its authorised signatory Mr. Sanjay Tibrewal v. Excise Commissioner Madhya Pradesh and Ors., involving registration of the label “VASCO 60000 EXTRA STRONG BEER” highlights the intriguing overlap between the Trade Marks Act, 1999, and the Madhya Pradesh Foreign Liquor Rules, 1996. Thus striking contrast between State and national laws.

Facts

The Respondent No. 3, Regent Beers & Wines Ltd’s applied for registration of its label “VASCO 60000 EXTRA STRONG BEER.” The Excise Commissioner issued a public notice inviting objections, leading Mount Everest Breweries to raise concerns about the visual and textual similarities. The Petitioner asserted that the Respondent No. 3 had dishonestly copied the entire label, including the numeral "6000," as well as the artistic features, background, style, colour scheme, overall appearance, and the meaning conveyed, making the label highly similar to the Petitioner’s label, “MOUNT’S 6000 SUPER STRONG BEER.”

Despite this objection, the Excise Commissioner approved the registration, prompting Mount Everest to challenge this decision under Article 226 of the Constitution of India which allows the High Court to issue Writs to enforce fundamental rights.

Background

In another preceding case, Anheuser-Busch Inbev India Ltd., owner of the label “HAYWARDS 5000”, had filed a suit against the same Respondent No. 3 in the Delhi High Court. It is pertinent to note that the Respondent No. 3 had given an undertaking to ‘not to utilize the impugned mark “VASCO 60000”’ in that proceeding.

Single Judge Decision

The single judge ruled in favour of the Excise Commissioner, stating that the term “objection” in the Rules of 1996, refers to a legal objection recognized by the Excise Commissioner, and not just any objection from third parties. It highlighted that a mere third-party objection, made for the sake of objecting, does not automatically prevent label registration and held that this interpretation of Sub-Rule (4) would be ‘too far-fetched and would violate the very object of the Rule’.

In response to the undertaking given by Respondent No. 3 before the Delhi High Court, this Court held that, “Though, undertaking was given but it was specifically without prejudice and for the purpose of closure of the suit and particularly such closure without any damages. Thus, it cannot be held that only on the basis of the aforesaid undertaking, respondent No.3 can be precluded in these proceedings from seeking registration of its objected label.”

Further, the commissioner found no prima facie similarity between the two labels. The Court supported the Commissioner’s decision and affirmed its authority, highlighting notable differences in the numerals and wording. It emphasized that factual disputes should be addressed through civil suits rather than writ petitions. Consequently, the petition was dismissed, though the Court permitted Mount Everest to file a civil suit to address their grievances.

Appeal to the Division Bench

Following the single judge’s ruling, Mount Everest Breweries appealed to the division bench, which overturned the previous orders. The bench held that “the similarity between the two labels is apparent from the face of it,” highlighting visual and textual similarities that could mislead consumers. The Court expanded the interpretation of Rule 9 of the Madhya Pradesh Foreign Liquor Rules, clarifying that “make inquiry as it deems proper” means that prior to registration, the commissioner must verify that there are no infringements and assess the identity and similarity between two registered marks that could potentially confuse the public.

Moreover, the Court found Respondent No. 3 to be in violation of the Delhi High Court orders and held that mere amendment of the words i.e., from SUPER to EXTRA does not excuse him for its undertaking given before the Court.

The Bench however, allowed Respondent No. 3 to submit a new label application for review by the Excise Commissioner, underscoring the need for compliance with legal standards.

Conclusion

By determining that the labels “MOUNT’S 6000 SUPER STRONG BEER” and “VASCO 60000 EXTRA STRONG BEER” are deceptively similar, the Court reaffirmed the significance of trademark laws in protecting brand identity. While the Commissioner has the jurisdiction to evaluate and approve applications, the Court underscored that this power must align with broader principles of trademark protection, which are designed to prevent consumer confusion and uphold fair competition.