Phonetic similarity between two brand names consideration for trademark infringement: Bombay High Court

Phonetic similarity between the brand names is a relevant factor to be taken into consideration when deciding a trademark infringement dispute, the Bombay High Court recently held (Meher Distilleries Pvt Ltd. v. SG Worldwide Inc.)..A Bench of Justices Nitin Jamdar and CV Bhadang observed that the test to determine similarity is how an average consumer would pronounce the word and how a person having imperfect recollection will perceive them.“Each dialect will result in different pronunciations and what needs to be looked at (is) the overall phonetic similarity. Indian consumers tend to mispronounce the English words written in Roman script; and the plaintiff contends that it will be more so for a Sanskrit word written in Roman script,” the Court elaborated.It, therefore, set aside an order passed by a single-judge of the High Court on the ground that the said order failed to consider aspects relating to phonetic similarity..The factual matrix leading to the appeal was as follows..Meher Distilleries Pvt Ltd is a registered proprietor of the trademark THE ASWA for alcoholic beverages. Radico Khaitan (RK) Ltd., the defendant launched a product in the same class using the mark ASĀVA.Meher found out that RK was selling single their product to SG Worldwide Inc. under their registered mark after the Excise department had approved it. However, Meher also applied for registration of their trademark under the Trade Marks Act and it received registration of trademark in respect of several alcoholic beverages..Meher approached the High Court with a commercial suit for trademark infringement and also filed an interim application to restrain SG Worldwide and RK from using a trademark, which they claimed was deceptively similar to Meher’s trademark and also sought for damages.In its reply before the single-judge, RK submitted that the mark RAMPUR ASĀVA’, and its adoption is bonafide. It stated that the mark ASWA and ASĀVA are different..The single-judge bench dismissed the interim application holding that the words ‘THE ASWA’ and ‘ASĀVA ’ are not visually, phonetically or structurally similar.Aggrieved by the order, Meher challenged the order before the Division Bench of High Court which set aside the finding of the single-judge..It was Meher’s contention that “a large volume of sales of single malt whiskey takes place in restaurants and bars, which are often noisy places, an order placed verbally can produce variants.”.The Bench framed the following issues for consideration:Whether the focus of enquiry on the manner of consumption should only be the metropolis or also the rest of the country;Do the purchasers of expensive alcoholic beverages who are attentive and well versed with various Indian and international brands of single malt whiskey constitute the entire class;The pattern of consumption of expensive whiskey in the country and the change in recent years with rapid economic progress;Manner of consumption of single malt whiskey..Accordingly, the Court deduced that the single judge’s opinion that there is no phonetic or visual similarity between THE ASWA and ASĀVA is arrived at by ignoring the well-settled tests and with no reasoning as to what will be the result if the well-settled tests are applied..Snior Advocate Dr. Birendra Saraf with Advocates Ashutosh Kane, Apurva Gupte, Nikhil Sharma and Merin Mathew instructed by W. S. Kane & Co. appeared for Meher.Senior Advocate Sharan Jagtiani with Advocates Hiren Kamod, Mahesh Mahadgut, Rohit Bandekar and Prem Khullar appeared for the Respondents..[Read order]