In a clash between Magic Moment and Evening Moment, the Hon’ble High Court of Delhi has passed an injunction order against Sarao Distillery (OPC) Pvt. Ltd & and Greentech Blenders and Distillers (“Sarao Distillery & Anr.”) forcing them to stop selling its own brand “Evening Moment” on the grounds that it looks too similar to “MAGIC MOMENTS”.
The injunction order came following a trademark infringement suit brought by Radico Khaitan Ltd. (“Radico”) maker of ‘MAGIC MOMENTS’ manufacturers and dealers of Gin and Vodka against Sarao Distillery & Anr. maker of ‘EVENING MOMENT’ manufacturer and dealer of Whisky.
Initially, the Court granted an ex-parte ad-interim injunction in favour of Radico by restraining Sarao Distillery & Anr. from using the mark ‘EVENING MOMENT’ in respect of any product other than Whisky, due to the submission of Sarao Distillery & Anr. that they have been using the mark for five years in the niche market.
Further, the Sarao Distillery & Anr. did not appear in Court even after seven hearings. In the meanwhile, Radico submitted that the suffix “MOMENTS” is the essential and dominant feature of its mark ‘MAGIC MOMENTS” and other variants with the same suffix, therefore the mark deserves to be protected for whisky as well. Further, Radico submitted the reports from Trademark Registry’s website showcasing that most of the marks registered with the suffix ‘MOMENTS’ belong to the Radico.
Furthermore, in Radico Khaitan Limited v. Vintage Distillers Ltd. [CS(COMM) 441/2020], the adoption of the mark VINTAGE MOMENTS by the Defendant for the identical goods and the objection by the Trademark Registry had made out a prima facie case in favour of Radico, as they would suffer irreparable loss and hence balance of convenience also lied in favour of the plaintiff.
The Hon’ble Delhi High Court, while relying on the averments made by Radico, held that both the marks ‘MAGIC MOMENTS’ and ‘EVENING MOMENT’ are deceptively similar because of the adoption and usage of essential feature ‘MOMENT’ by the Sarao Distillery & Anr., and this would lead the consumers to connect both the products. It was further observed that it would easily be perceived by customers that the product by Sarao Distillery & Anr. is nothing but yet another product extension of Radico’s products.
The court thus held that, the use of the additional word ‘EVENING’ is not sufficient to create a distinguishability between the two products due to the very nature of the product which is usually consumed in the dusk hours of the day. Hence, the major focus lies on the word ‘MOMENT’- the dominant part of the mark.
Hence, the Court extended the injunction to all alcoholic beverages and restrained Sarao Distillery & Anr. in totality to manufacture and market any product of alcoholic beverages product line under the mark “EVENING MOMENT”, till the next date of hearing, i.e., 22.07.2022.
This is undoubtedly going to be an interesting case as it showcases the need for looking out for your registered trademarks as well as keeping a check on infringers. As per my opinion, when we look from the perspective of a person of average intelligence and imperfect recollection, the two marks aren’t similar as the marks when seen as a whole are different. As they contain two different prefix Magic and Evening. Moreover, as per section 17 of the Trade Marks Act, 1999 it says that a mark needs to be observed in its entirety and the protection under the Act is for entire mark and not part of it.
In yet another similar case of Hamdard National Foundation (India) and Anr v. Sadar Laboratories Pvt Ltd., involving Rooh Afza and Dil Afza, the Delhi High Court stated that buying a bottle of sharbat may involve emotions, but not deep to the extent that buyers would confuse between ‘Rooh’ and ‘Dil’, which means ‘spirit’ and ‘heart’ respectively. Justice Menon clarified that Hamdard can lay claim to the complete name ‘Rooh Afza’ but not to either of the two words that constitute the trademark.
Hence, in my opinion the order is not in consonance with the cited case, as merely because word “MOMENT” is involved in both the mark doesn’t make them entirely similar.
Written by Shweta Sood, Associate – IP, Areness